UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AMAZON.COM, INC. AND AMAZON.COM SERVICES LLC
`Petitioners,
`
`v.
`
`XR COMMUNICATIONS, LLC,
`Patent Owner.
`
`IPR2022-01353
`U.S. Patent No.: 10,715,235
`Issued: July 14, 2020
`Application No.: 15/495,539
`Filed: April 24, 2017
`
`Title: DIRECTED WIRELESS COMMUNICATION
`
`_________________
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,715,235
`
`
`
`
`
`

`

`IPR2022-01353
`Patent 10,715,235
`
`TABLE OF CONTENTS
`
`II.
`
`Page(s)
`TABLE OF CONTENTS .......................................................................................... ii
`TABLE OF AUTHORITIES ................................................................................... iv
`LIST OF EXHIBITS ................................................................................................ vi
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ............................... viii
`A.
`Real Party-In-Interest ........................................................................ viii
`B.
`Related Matters .................................................................................. viii
`C.
`Lead And Back-Up Counsel, And Service Information ..................... ix
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................. 1
`A. Grounds For Standing ............................................................................ 1
`B.
`Challenge And Relief Requested ........................................................... 2
`C.
`Level Of Ordinary Skill In The Art ....................................................... 3
`D.
`Claim Construction ................................................................................ 4
`III. THE ’235 PATENT ......................................................................................... 4
`A.
`Brief Description ................................................................................... 4
`B.
`Relevant History Of The ’235 Patent..................................................... 9
`1.
`Applicant’s Arguments During Prosecution ................................ 9
`2.
`Applicant Failed To Establish
`A February 2002 Invention Date ..............................................11
`The Effective Filing Date Is After November 4, 2002 ..............15
`3.
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE ........................... 20
`A. GROUND 1: Claims 8-12 Are Obvious Over Burke ..........................20
`Overview Of Burke ...................................................................20
`1.
`
`Page ii
`
`

`

`V.
`
`IPR2022-01353
`Patent 10,715,235
`2. Manner In Which Burke Renders Claims 8-12 Obvious ...........25
`B. GROUND 2: Claims 13 And 14 Are
`Obvious Over Burke In View Of Shull ...............................................47
`1.
`Overview Of Shull .....................................................................47
`2.
`Combination Of Burke And Shull .............................................48
`3. Manner In Which The Prior Art
`Renders Claims 13 And 14 Obvious .........................................50
`PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 57
`A.
`Factor 1: Likelihood Of A Stay ...........................................................58
`B.
`Factor 2: The FWD Will Likely
`Issue Around The Same Time As The Trial........................................59
`Factor 3: Substantial Investment By The
`Parties And The Court Remains To Occur In Litigation ....................60
`Factor 4: Overlap Of Issues .................................................................61
`D.
`Factor 5: Identity Of Parties ................................................................62
`E.
`Factor 6: Institution Of The Apple IPR Favors Institution Here ........62
`F.
`VI. CONCLUSION ............................................................................................. 63
`VII. PAYMENT OF FEES ................................................................................... 63
`CERTIFICATE OF COMPLIANCE ...................................................................... 64
`CERTIFICATE OF SERVICE ............................................................................... 65
`
`
`
`C.
`
`
`
`
`
`Page iii
`
`

`

`TABLE OF AUTHORITIES
`
`IPR2022-01353
`Patent 10,715,235
`
`Page(s)
`
`Board Decisions
`Apple Inc. v. XR Communications, LLC,
`IPR2022-00367, Paper 10 (PTAB July 14, 2022) ................................................57
`Chewey, Inc. v. Int’l Bus. Machs.,
`IPR2021-00757, Paper 9 (PTAB Oct. 12, 2021) ..................................................62
`Garmin Int’l v. Phillips North America LLC,
`IPR2020-00910, Paper 8 (PTAB Nov. 19, 2020) ................................................62
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ...............................................62
`Cases
`Apator Miitors ApS v. Kamstrup A/S,
`887 F.3d 1293 (Fed. Cir. 2018) ..................................................................... 11, 12
`Cooper v. Goldfarb,
`154 F. 3d 1321 (Fed. Cir. 1998) .................................................................... 11, 12
`Dynamic Drinkware v. National Graphics,
`800 F.3d 1375 (Fed. Cir. 2015) .............................................................................. 3
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ...............................................................................11
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) ............................................................................11
`UMC Elecs. Co. v. United States,
`816 F.2d 647, 2 U.S.P.Q.2d 1465 (Fed.Cir.1987) ................................................14
`Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355 (Fed. Cir. 2011) .............................................................................. 4
`Statutes
`35 U.S.C. § 102 .......................................................................................................... 2
`
`Page iv
`
`

`

`IPR2022-01353
`IPR2022-01353
`Patent 10,715,235
`Patent 10,715,235
`35 U.S.C. § 103 ....................................................................................................2, 10
`35 ULS.C. § 103 wee eesessecseecseecssecsseesseessnessecesseesesecsseessssessecseecseessseesseseeeesneeees2,10
`35 U.S.C. § 314 ........................................................................................................57
`35 ULS.C. § 314 ee eescsssesseecssecssecsseesseeeseesseeeseseseesesseeseeesesecssecssecuesssesessesseeeseeees57
`Rules
`Rules
`37 C.F.R. § 42.15 .....................................................................................................63
`37 C.ELR. § 42.15 voceeeeeccsssssecssecesecssecsscessecssecesneeseeeessessneesssesssecseecaessseseseeseeeenseeees63
`37 C.F.R. § 42.24 .....................................................................................................64
`37 CLELR. § 42.24 ie eeccsssscssecsecsecssecesecssscssesesesesnesesseseneeeesesssecsuecsuecsseeeseeseeseeeeeees64
`37 C.F.R. § 42.6 ......................................................................................................... 1
`37 CLELR. § 42.6 oc eeccccssscesscesssecseecssecssessseseseessceeseessnecssceeseeeenesseeesssecesecssecsaeseeeseseees 1
`
`
`
`
`
`Page v
`Page v
`
`

`

`IPR2022-01353
`Patent 10,715,235
`
`LIST OF EXHIBITS
`
`Description
` U.S. Patent No. 10,715,235 (“the ’235 Patent”)
` File History of U.S. Patent No. 10,715,235
` Declaration and Curriculum Vitae of Dr. Robert Akl (“Akl Decl.”
`or “Akl”)
` Complaint, XR Communications, LLC v. Apple Inc., 6:21-cv-
`00620 (W.D. Tex.), June 16, 2021
` [RESERVED]
` U.S. Patent No. 7,155,231 (“Burke”)
` U.S. Patent No. 6,006,077 (“Shull”)
` U.S. Patent Application Publication No. 2002/0158801 (“Crilly”)
`
` U.S. Provisional Application No. 60/423,660 (“’660 Provisional
`Application”)
` U.S. Patent No. 6,879,823 (“Raaf”)
` PCT Application Publication No. WO 02/47286 (“Hottinen”)
` U.S. Patent No. 6,662,024 (“Walton”)
` U.S. Patent No. 6,208,863 (“Salonaho”)
` U.S. Patent Application Publication No. 20020080862 (“Ali”)
` U.S. Patent No. 7,340,017 (“Banerjee”)
` U.S. Patent No. 6,792,031 (“Sriram”)
` Andrea Goldsmith, Wireless Communications, Cambridge
`University Press, 2005
` Complaint, XR Communications, LLC v. HP Inc., 6:21-cv-
`00694, W.D. Tex., July 1, 2021
` U.S. Patent No. 6,661,832 (“Sindhushayana”)
`
`No.
`1001
`1002
`1003
`
`1004
`
`1005
`1006
`1007
`1008
`
`1009
`
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`
`1018
`
`1019
`
`Page vi
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`

`

`IPR2022-01353
`Patent 10,715,235
`
`No.
`1020-
`1100
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`Description
`[RESERVED]
`
`to Transfer, XR
` Redacted Copy of Amazon’s Motion
`Communications, LLC v. Amazon.com, Inc., 6:21-cv-00619
`(W.D. Tex.), dated April 13, 2022
` Eero’s Motion to Dismiss for Improper Venue, or Alternatively,
`to Transfer, XR Communications, LLC v. Amazon.com, Inc., 6:21-
`cv-00619 (W.D. Tex.), dated September 7, 2021
` Scheduling Order, XR Communications, LLC v. Amazon.com,
`Inc., 6:21-cv-00619 (W.D. Tex.), dated January 13, 2022
` Complaint, XR Communications, LLC v. Amazon.com, Inc., 6:21-
`cv-00619 (W.D. Tex.), dated June 16, 2021
` Order resetting Markman Hearing, XR Communications, LLC v.
`Amazon.com, Inc., 6:21-cv-00619 (W.D. Tex.), dated May 23,
`2022
` Order resetting Markman Hearing, XR Communications, LLC v.
`Amazon.com, Inc., 6:21-cv-00619 (W.D. Tex.), dated June 21,
`2022
` Order resetting Markman Hearing, XR Communications, LLC v.
`Amazon.com, Inc., 6:21-cv-00619 (W.D. Tex.), dated August 1,
`2022
`Infringement Contentions, XR
`Preliminary
` Plaintiff’s
`Communications, LLC v. Amazon.com, Inc., 6:21-cv-00619
`(W.D. Tex.), dated December 20, 2021
`
`
`
`
`
`
`
`Page vii
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`

`

`IPR2022-01353
`Patent 10,715,235
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest
`
`Petitioners Amazon.com, Inc. and Amazon.com Services LLC are real
`
`parties-in-interest. Petitioners also identify as a real party-in-interest eero LLC
`
`(“eero”), which is a co-defendant in the parallel district court litigation.
`
`B. Related Matters
`
`The ’235 Patent (Ex. 1001) has been asserted in the following litigations:
`
`•
`
`•
`
`•
`
`XR Communications LLC, d/b/a Vivato Technologies v. HP Inc.,
`
`Case No. 6:21-cv-00694 (W.D. Tex.) , filed July 1, 2021
`
`XR Communications LLC v. Microsoft Corporation, Case No.
`
`6:21-cv-00695 (W.D. Tex.), filed July 1, 2021
`
`XR Communications LLC, d/b/a Vivato Technologies v. Dell
`
`Technologies Inc., et. al., Case No. 6:21-cv-00646 (W.D. Tex.),
`
`filed June 22, 2021
`
`•
`
`XR Communications LLC, d/b/a Vivato Technologies v.
`
`Amazon.com, Inc., et. al., Case No. 6:21-cv-00619 (W.D. Tex.),
`
`filed June 16, 2021.
`
`•
`
`XR Communications LLC v. Apple, Inc., Case No. 6:21-cv-00620
`
`(W.D. Tex.), filed June 16, 2021
`
`Page viii
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`

`

`IPR2022-01353
`Patent 10,715,235
`
`•
`
`•
`
`•
`
`XR Communications LLC v. ASUSTek Computer Inc., Case No.
`
`6:21-00622 (W.D. Tex.) filed June 16, 2021
`
`XR Communications LLC v. Google LLC, Case No. 6:21-cv-
`
`00625 (W.D. Tex.), filed June 16, 2021
`
`XR Communications, LLC, d/b/a Vivato Technologies v.
`
`Samsung Electronics Co., Ltd., et al., Case No. 6:21-cv-00626
`
`(W.D. Tex.), filed June 16, 2021
`
`The ’235 Patent is involved in the following proceedings before the Board:
`
`•
`
`•
`
`Apple Inc., et al. v. XR Communications LLC, Case No.
`
`IPR2022-01155
`
`Apple Inc., et al. v. XR Communications LLC, Case No.
`
`IPR2022-00367
`
`Apple Inc. (“Apple”) previously challenged claims 8-14 of the ’235 Patent in
`
`IPR2022-00367 (“Apple IPR”). The Board instituted review of claims 8-14 based
`
`on Apple’s petition. IPR2022-0367, Paper 10 (PTAB July 14, 2022).
`
`C. Lead And Back-Up Counsel, And Service Information
`
`Lead Counsel
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`
`Back-up Counsel
`(First Back-Up)
`Todd M. Siegel, Reg. No. 73,232
`todd.siegel@klarquist.com
`
`Cameron D. Clawson, Reg. No. 73,509
`cameron.clawson@klarquist.com
`
`Page ix
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`

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`IPR2022-01353
`Patent 10,715,235
`
`
`Claire Green, Reg. No. 75,290
`claire.green@klarquist.com
`
`KLARQUIST SPARKMAN, LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon, 97204
`503-595-5300 (phone)
`503-595-5301 (fax)
`
`Petitioners consent to service via email at the above email addresses.
`
`Pursuant to 37 C.F.R. § 42.10(b), concurrently filed with this Petition is a
`
`Power of Attorney executed by Petitioners and appointing the above counsel.
`
`
`
`Page x
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`

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`IPR2022-01353
`Patent 10,715,235
`Inc. and Amazon.com Services LLC
`(collectively,
`
`Amazon.com,
`
`“Petitioners” or “Amazon”) respectfully request inter partes review (“IPR”) of
`
`claims 8-14 of U.S. Patent No. 10,715,235 (“’235 Patent”) (Ex. 1001), allegedly
`
`assigned to XR Communications, LLC (“Patent Owner”). For the reasons explained
`
`below, there exists a reasonable likelihood that Petitioners will prevail with respect
`
`to at least one of the Challenged Claims.
`
`As noted above in the Mandatory Notices section, the Board previously
`
`instituted review of claims 8-14 based on Apple’s petition in the Apple IPR. The
`
`challenges to claims 8-14 presented herein are substantively identical to Apple’s
`
`challenges in the Apple IPR and are based on the same or substantially the same
`
`evidence presented in the Apple IPR, as further explained in the motion for joinder
`
`submitted with this petition.
`
`II. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A. Grounds For Standing
`
`Petitioners certify that the ’235 Patent is available for IPR and that Petitioners
`
`are not barred or estopped from requesting review. Petitioners file this Petition with
`
`an accompanying motion for joinder.
`
`Petition for Inter Partes Review of USP 10,715,235
`
`Page 1
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`

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`IPR2022-01353
`Patent 10,715,235
`
`B. Challenge And Relief Requested
`
`Petitioners request IPR of the Challenged Claims on the obviousness grounds
`
`listed below. A declaration from Dr. Robert Akl (EX-1003, ¶¶[1]-[114]) supports
`
`this Petition.
`
`Ground
`
`Claims
`
`35 U.S.C. § 103
`
`1
`
`2
`
`8-12
`
`Burke (EX-1006)
`
`13, 14
`
`Burke in view of Shull (EX-1007)
`
`The ’235 Patent is a part of a family of patent applications claiming priority to
`
`U.S. Patent Appl. No. 13/855,410, filed on April 2, 2013 and now issued as U.S.
`
`Patent No. 9,462,589. EX-1001, 2. Appl. No. 13/855,410 is a divisional of U.S.
`
`Patent App. No. 10/700,329, filed on November 3, 2003, which further claims
`
`priority from U.S. Provisional Patent Appl. No. 60/423,660, filed on November 4,
`
`2002. Id. As explained below in Section III.B, Appl. No. 60/423,660 does not
`
`support the Challenged Claims. Accordingly, the earliest priority date of the ’235
`
`Patent is November 3, 2003. As shown below, each reference predates the ’235
`
`Patent’s earliest priority date (November 3, 2003) and qualifies as prior art under 35
`
`U.S.C. § 102(b) or § 102(e).
`
`Petition for Inter Partes Review of USP 10,715,235
`
`Page 2
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`

`

`IPR2022-01353
`Patent 10,715,235
`
`Reference(s)
`
`Filing Date
`
`Issue Date
`
`Burke (USPN 7,155,231)
`Shull (USPN 6,006,077)
`
`October 15, 20021
`October 2, 1997
`
`December 26, 2006
`December 21, 1999
`
`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 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-1003, ¶¶[24]- [26].
`
`
`1 Burke claims priority to U.S. Provisional Appl. No. 60/355,296, which was filed
`
`Feb. 8, 2002, and the ‘296 provisional supports at least one of Burke’s issued claims.
`
`Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed. Cir. 2015).
`
`Petition for Inter Partes Review of USP 10,715,235
`
`Page 3
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`IPR2022-01353
`Patent 10,715,235
`
`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
`
`only be construed to the extent necessary to resolve the controversy.”).
`
`III. 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
`
`station 102 and remote client devices 202 and 204. The access station 102 includes
`
`a multi-beam directed signal system 206 coupled to an antenna assembly 208 via a
`
`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 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 302, which
`
`is part of the antenna assembly 208. Id., 2:24-28, 4:44-5:67; EX-1003, ¶[46].
`
`
`2 Petitioners reserve the right to advance specific constructions in district court
`
`litigation.
`
`Petition for Inter Partes Review of USP 10,715,235
`
`Page 4
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`IPR2022-01353
`Patent 10,715,235
`
`
`
`
`
`EX-1001, FIGS. 2, 3
`
`The ’235 Patent also teaches receiving and weighting various communication
`
`signals at the access station 102 through its multi-beam directed 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 1202 (e.g.,
`
`sources A and B).” Id. “These signals … are received via antenna array 302 and are
`
`provided to the signal control and coordination logic 304.” Id., 24:34-36.
`
`The signal control and coordination logic 304 includes (i) routing information
`
`1206 such as “connection indexed routing table(s) based on identification
`
`information, such as address information, CID”, and (ii) “stored weighting values
`
`Petition for Inter Partes Review of USP 10,715,235
`
`Page 5
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`

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`IPR2022-01353
`Patent 10,715,235
`(w) each associated with a particular signal source 1202 (e.g., sources A and B).”
`
`EX-1001, 24:34-53. In particular, “[a] description of the received signal(s) can be
`
`stored in the routing table in the form of the pattern or weighting of the signal(s). In
`
`this example, a polynomial expansion in z, w(z)=w0+w1z+w2z2+w3z3+w4z4+ …
`
`+wizi can be utilized to establish the values of the weights (wi) to be applied to a
`
`weight vector.” Id., 24:54-60. “The stored weighting values associated with each
`
`connection, data signal, and/or source are utilized in a weighting matrix 1210 which
`
`operates to apply the latest weighting values to the received signals and also to
`
`transmitted signals.” Id., 25:15-30. The signal control and coordination logic 304
`
`uses the weighting values to “control the transmission amplitude frequency band and
`
`directionality of data” transmissions sent to wireless client devices like mobile
`
`phones while minimizing data sent in other directions. Id., 25:22-30. FIG. 2
`
`(reproduced above), for example, illustrates that communication beam 214 can be
`
`“aimed” and “directionally controllable such that only an intended client device will
`
`receive a directed wireless communication[.]” Id., 6:64-7:5; EX-1003, ¶¶[47]-[48].
`
`Petition for Inter Partes Review of USP 10,715,235
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`Page 6
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`IPR2022-01353
`Patent 10,715,235
`
`EX-1001, FIG. 123
`
`
`
`The routing table may also include information indicative of the nominal
`
`signal strength indicator (RSSI) level received from a node, which can be used to
`
`select a preferred communication link for communications with a client device. EX-
`
`1001, 15:59-16:10, 31:48-32:23. For instance, as shown in FIG. 19 below, the ’235
`
`
`3 Annotations to the figures throughout this petition are shown in color.
`
`Petition for Inter Partes Review of USP 10,715,235
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`Page 7
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`IPR2022-01353
`Patent 10,715,235
`Patent teaches that “[a]t block 1904, signal strength indications are received for data
`
`packets received from [a] client device via the directed communication beam” and
`
`“[a]t block 1906, a signal strength average for the client device is calculated from
`
`the received signal strength indications.” Id., 31:55-63. “At block 1908, adjacent
`
`signal strength indications are sampled for an adjacent directed communication
`
`beam. At block 1910, a second signal strength average is calculated for the adjacent
`
`directed communication beam.” Id., 31:63-67. “At block 1912, the signal strength
`
`average is compared to the second signal strength average and a determination is
`
`made as to which provides a more effective, or better, communication link.” Id.,
`
`32:4-23; EX-1003, ¶¶[49]-[50].
`
`Petition for Inter Partes Review of USP 10,715,235
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`Page 8
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`IPR2022-01353
`Patent 10,715,235
`
`EX-1001, FIG. 19
`
`B. Relevant History Of The ’235 Patent
`
`1.
`
`Applicant’s Arguments During Prosecution
`
`
`
`The ’235 Patent issued from U.S. App. No. 15/495,539 (“’539 Application”).
`
`See generally EX-1001, 1. The ’539 Application was filed on April 24, 2017 and
`
`Petition for Inter Partes Review of USP 10,715,235
`
`Page 9
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`

`

`IPR2022-01353
`Patent 10,715,235
`claims priority from U.S. Application Nos. 13/855,410 and 10/700,329, which
`
`further claim priority from U.S. Provisional Application No. 60/423,660, filed on
`
`November 4, 2002 (“’660 Provisional Application” or EX- 1009). EX-1002, 1214,
`
`1110; EX-1001, 1-2; see infra Section II.B; EX-1003, ¶[51].
`
`During prosecution of the ’539 Application, the Examiner rejected all the
`
`claims under 35 U.S.C. § 103 based on the combination of U.S. Patent Publication
`
`No. 2002/0158801 (“Crilly” or EX-1008) and U.S. Patent No. 6,714,584 (“Ishii”).
`
`EX-1002, 1008. After unsuccessfully attempting to overcome the rejection by
`
`differentiating the claims from the prior art, Applicant “traverse[d] the rejection,
`
`contending that Crilly is not prior art to the present application.” EX-1002, 268-
`
`272, 986-987, 282; EX-1003, ¶[52].
`
`In particular, in the Amendment dated July 26, 2018, Applicant argued that
`
`“at least the limitations that the Office Action contends are taught by Crilly were
`
`invented by Applicant prior to Crilly’s publication” on October 31, 2002. EX- 1002,
`
`268-272. The only support Applicant provided for its assertion was a document
`
`(“Document C”) contained within the ’660 Provisional Application, which was filed
`
`on November 4, 2002, several days after Crilly’s publication. Id.; see also EX-1008,
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`cover; EX-1009, 134-158. Although Applicant claimed that Document C had been
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`authored “at least as early as February, 2002” (i.e., 8 months before Crilly’s
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`publication), Document C does not have a date on its face, its contents do not suggest
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`a particular date of creation, and Applicant did not corroborate its asserted date of
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`February 2002. Thus, the only evidence upon which Applicant relied to support its
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`attempt to antedate Crilly was a self-serving, uncorroborated date of February 2002
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`included in the ’660 Provisional Application’s description of Document C. EX-
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`1003, ¶[53]. As set forth below, this is legally insufficient to show prior conception.
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`2.
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`Applicant Failed To Establish
`A February 2002 Invention Date
`An inventor can swear behind a reference by proving conception of the
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`invention before the effective filing date of the reference and diligent reduction of
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`the invention to practice after that date. See Apator Miitors ApS v. Kamstrup A/S,
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`887 F.3d 1293, 1295 (Fed. Cir. 2018) (citing Perfect Surgical Techniques, Inc. v.
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`Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016)). “A reduction to practice
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`can be either a constructive reduction to practice, which occurs when a patent
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`application is filed, or an actual reduction to practice.” Cooper v. Goldfarb, 154 F.
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`3d 1321, 1327 (Fed. Cir. 1998). “[W]hen a party seeks to prove conception through
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`an inventor’s testimony,” “the party must proffer evidence, ‘in addition to [the
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`inventor’s] own statements and documents,’ corroborating
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`the
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`inventor’s
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`testimony.” Apator Miitors, 887 F.3d at 1295 (quoting Mahurkar v. C.R. Bard, Inc.,
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`79 F.3d 1572, 1577 (Fed. Cir. 1996)).
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`Simply citing to disclosure in the ’660 Provisional Application—a document
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`filed many months after the purported invention date—is not sufficient to swear
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`behind a reference or to establish an invention date prior to the provisional filing.
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`Applicant did not submit an affidavit with an inventor’s testimony explaining or
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`corroborating the conception and reduction to practice of the alleged invention, nor
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`did Applicant provide or cite to any contemporaneous evidence corroborating its
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`allegations. See generally EX-1002, 265-270; EX-1003, ¶[54]; Apator Miitors, 887
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`F.3d at 1295. “While the requirement of corroboration exists to prevent an inventor
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`from describing his actions in an unjustifiably self-serving manner, even the most
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`credible inventor testimony is a fortiori required to be corroborated by independent
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`evidence.” Apator Miitors, 887 F.3d at 1295 (quotations and citations omitted). An
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`undated document filed with a later-filed provisional application cannot meet this
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`exacting standard.
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`Even beyond corroboration, the arguments made by Applicant during
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`prosecution are legally incomplete. Applicant argued that Document C showed prior
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`disclosure of “the limitations that the Office Action contends are taught by Crilly.”
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`EX-1002, 265. But “[c]onception is the formation, in the mind of the inventor, of a
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`definite and permanent idea of the complete and operative invention, as it is
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`thereafter to be applied in practice.” Cooper, 154 F.3d at 1327 (emphasis added).
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`Applicants’ arguments addressing only “the limitations that the Office Action
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`contends are taught by Crilly” do not prove conception of the “complete and
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`operative invention.”
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`For example, claim 8 requires that the first and second signal from the same
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`remote station are received “simultaneously,” but Applicant never addresses this
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`limitation and Document C does not teach it. See EX-1002, 267. Document C is
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`titled “Beamforming for Little Joe,” where “Little Joe is the name for a high-
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`performance WLAN Access Point product[.]” EX-1009, 134. An access point is a
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`device connected directly to a wired local area network and can provide access to
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`the network to other devices like laptops or handheld user/client devices that are
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`connected to it. EX-1003, ¶[54]. At most, in Document C, multiple different
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`user/client devices each send a single signal (described as a “packet reception” at C-
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`4) that is received via multiple paths between the antenna of the transmitting
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`user/client device (also referred to as a “remote antenna” at C-2) and the antenna
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`array of the Little Joe Access Point. EX-1003, ¶[54] (citing EX-1009, 135-137).
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`Even if a client device’s single packet transmission received at the Little Joe Access
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`Point via different propagation paths could be considered different signals—which
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`Applicant never alleged and the record does not support— Document C does not
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`describe or suggest that the Access Point receives the packet via the multiple
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`propagation paths simultaneously. Applicant appeared to agree because the
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`limitation-by-limitation analysis in the prosecution history specifically removed the
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`word “simultaneously” from the quoted limitation. EX-1002, 270; EX-1003, ¶[54].
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`Further, Applicant never alleges that Document C represents a reduction of
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`the claimed invention to practice. See UMC Elecs. Co. v. United States, 816 F.2d
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`647, 652, 2 U.S.P.Q.2d 1465, 1468 (Fed.Cir.1987) (“[T]here cannot be a reduction
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`to practice of the invention ... without a physical embodiment which includes all
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`limitations of the claim.”). Indeed, Document C only purports to explain the
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`outcome of modeling based on a computer simulation, which is not a physical
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`embodiment. See EX-1009, 143 (“Since interference was not modeled, the
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`interference-rejection performance of the different beamforming methods was not
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`compared. The current simulation code could be easily extended to study this”); EX-
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`1003, ¶[55]. Without proof of an actual reduction to practice prior to Crilly’s
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`publication date, Applicant would need to show diligence between the alleged
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`conception set forth in Document C and constructive reduction to practice
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`represented by the filing of the ’660 Provisional Application—assuming this
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`provisional application even supports every limitation of the Challenged Claims,
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`which it does not. However, the prosecution record does not even mention diligence,
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`much less provide any evidence of it.
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`For at least these reasons, Applicant has not established an invention date any
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`earlier than the filing of the ’660 Provisional Application.
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`The Effective Filing Date Is After November 4, 2002
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`3.
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`Moreover, even if the applicant had properly shown that Document C
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`predated Crilly, the ’660 Provisional Application did not disclose all the claimed
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`features and thus cannot support a claim of priority for the challenged claims of the
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`’235 Patent. EX-1003, ¶[56]. The only support in the ’660 Provisional Application
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`that Applicant identified in the prosecution for the claims was from Document C.
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`But neither Document C nor other parts of the ’660 Provisional Application provide
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`support for certain limitations of the Challenged Claims. Because of this lack of
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`support, the ’235 Patent is entitled to a priority date no earlier than November 3,
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`2003. Id.
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`Specifically, there are at least two limitations recited in claim 8 that are not
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`supported in Document C:
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`1. “receiving a first signal transmission from a remote station via a first
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`antenna element of an antenna and a second signal transmission from
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`the remote station via a second antenna element of the antenna
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`simultaneously”; and
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`2. “wherein the set of weighting values is configured to be used by the
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`remote station [from which the first and second signals are received]
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`to construct one or more beam-formed transmission signals.”
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`EX-1001, 33:48-34:2; EX-1003, ¶¶[57]-[58]. As to the first limitation, Applicant
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`did not show that Document C describes “simultaneous” receipt of the first and
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`second signals, nor did Applicant show that the first and second signals come from
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`the same remote station, conspicuously leaving these requirements of the claims out
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`of its arguments entirely. See EX-1002, 267; EX-1003, ¶[59].
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`The portions of Document C to which Applicant cited do not support
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`“simultaneous” receipt of first and second signals transmitted by the same remote
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`station as required by claim 8. Document C discloses an “evaluation of various
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`beamforming options for Mabuhay Network’s Little Joe 802.11 WLAN Access
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`Point” that uses “a 16-element linear antenna array to increase range and
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`performance.” EX-1009, 134. The Little Joe Access Point is described as containing
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`two different beamformers: (1) a “searcher” that comprises a 16-port Butler matrix
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`coupled to 16 different WLAN wireless cards for “obtain[ing] the received signal
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`levels for each received packet” from the remote user devices and the computation
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`of complex weights; and (2) a “card 13” that is used to apply the computed complex
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`weights and transmit beamformed signals. Id. Each of these beamformers is
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`contained in the Little Joe Access Point and connected to the set of 16 antennas, as
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`shown in Document C’s Figure 1 (reproduced below). EX-1003, ¶[59] (citing EX-
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`1009, 134-135).
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`EX-1009, 135
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`