Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: February 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL TECHNOLOGIES INC. and DELL INC,
`Petitioner,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`IPR2022-01398
`Patent 10,715,235 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, BARBARA A. PARVIS, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
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`571-272-7822
`
`Paper 7
`Date: February 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL TECHNOLOGIES INC. and DELL INC,
`Petitioner,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`IPR2022-01398
`Patent 10,715,235 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, BARBARA A. PARVIS, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-01398
`Patent 10,715,235 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Dell Technologies Inc. and Dell Inc. (collectively, “Petitioner”), filed
`a Petition requesting inter partes review of claims 8–14 (the “Challenged
`Claims”) of U.S. Patent No. 10,715,235 B2 (Ex. 1001, the “’235 patent”).
`Paper 2 (“Pet.”), 1. Concurrently, Petitioner filed a Motion for Joinder
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.122(b) (2022), seeking
`to be joined as a party to Apple Inc. v. XR Communications LLC, Case No.
`IPR2022-00367 (the “Apple & HP IPR”), which was instituted on July 14,
`2022, and also challenges claims 8–14 of the ’235 patent. Paper 3
`(“Motion” or “Mot.”), 1; IPR2022-00367, Paper 10 (providing the Decision
`on Institution)1.
`XR Communications LLC (“Patent Owner”) did not file a Preliminary
`Response to the Petition or an opposition to the Motion.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (permitting the
`Board to institute trial on behalf of the Director). To institute an inter partes
`review, we must determine that the information presented in the Petition
`shows “a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons that follow, we determine that institution of inter partes
`
`
`1 Amazon.com, Inc. and Amazon.com Services LLC were joined to
`IPR2022-00367 on January 26, 2023. See IPR2022-01352, Paper 7.
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
`Google LLC were joined to IPR2022-00367 on February 3, 2023. See
`IPR2022-01362, Paper 9.
`
`2
`
`
`
`IPR2022-01398
`Patent 10,715,235 B2
`review is warranted on the same grounds instituted in the Apple & HP
`IPR, and we grant Petitioner’s Motion.
`Real Parties-in-Interest
`B.
`Petitioner identifies Dell Technologies Inc. and Dell Inc. as the real
`parties-in-interest. Pet. 1. Patent Owner identifies itself as the real
`party-in-interest. Paper 5, 2.
`Related Matters
`C.
`The parties each identify the following litigations as matters related to
`the ’235 patent: XR Communications, LLC, dba Vivato Technologies. v.
`Amazon.com, Inc., Amazon.com Services LLC, and Eero LLC, No.
`6:21-cv-0619-ADA (W.D. Tex.); XR Communications, LLC, dba Vivato
`Technologies. v. Apple Inc., No. 6:21-cv-0620-ADA (W.D. Tex.);
`XR Communications, LLC, dba Vivato Technologies. v. ASUSTek Computer
`Inc., No. 6:21-cv-0622-ADA (W.D. Tex.); XR Communications, LLC, dba
`Vivato Technologies. v. Google LLC, No. 6:21-cv-0625-ADA (W.D. Tex.);
`XR Communications, LLC, dba Vivato Technologies. v. Samsung Electronics
`Co. Ltd. and Samsung Electronics America, Inc., No. 6:21-cv-0626-ADA
`(W.D. Tex.); XR Communications, LLC, dba Vivato Technologies. v. Dell
`Technologies Inc., No. 6:21-cv-0646-ADA (W.D. Tex.);
`XR Communications, LLC, dba Vivato Technologies. v. HP Inc., No.
`6:21-cv-0694-ADA (W.D. Tex.); and XR Communications, LLC, dba Vivato
`Technologies. v. Microsoft Corporation, No. 6:21-cv-0695-ADA (W.D.
`Tex.). Pet. 2–3; Paper 5, 2–3.
`The parties also identify the following Patent Office proceedings
`related to the ’235 patent: Samsung Electronics Co., Ltd. et al v. XR
`Communications LLC., IPR2022-01362 (PTAB); Amazon.com, Inc. et al v.
`
`3
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`
`
`IPR2022-01398
`Patent 10,715,235 B2
`XR Communications LLC, IPR2022-01353 (PTAB) Apple Inc., et al v. XR
`Communications LLC., IPR2022-01155 (PTAB); Apple Inc., et al v. XR
`Communications LLC., IPR2022-00367 (PTAB). Pet. 2; Paper 5, 2.
`The ’235 Patent
`D.
`The ’235 patent, titled “Directed Wireless Communication,” issued
`July 14, 2020, from application US 15/495,539. Ex. 1001, codes (54), (45),
`(22). The ’235 patent ultimately claims priority to a provisional application,
`US 60/423,660, filed on November 4, 2002. Id. at code (60).
`The’235 patent relates to “a multi-beam directed signal system [that]
`coordinates directed wireless communication with client devices.”
`Ex. 1001, 2:8–10. “In a described implementation, a multi-beam directed
`signal system (e.g., also referred to as an access point or Wi-Fi switch) is a
`long-range packet switch . . . in accordance with an 802.11 standard.”
`Id. at 3:43–47. “[S]imultaneous transmission and reception may occur at a
`wireless routing device by applying multi-channel techniques.”
`Id. at 3:41–43. Further, “[a]n increase in communication range is achieved
`by beamforming directed communication beams which simultaneously
`transmit directed signals and receive communication signals from different
`directions.” Id. at 3:47–51.
`Figure 2, reproduced below, “illustrates an exemplary directed
`wireless communication system 200.” Ex. 1001, 4:44–45.
`
`4
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`IPR2022-01398
`Patent 10,715,235 B2
`
`
`As shown, “antenna assembly 208 can be implemented as two or more
`antennas . . . to emanate multiple directed communication beams 214(1),
`214(2), . . . , 214(N).” Ex. 1001, 4:54–57. “[C]lient device 202 can
`communicate via directed communication beam 214(1) with a first channel
`of the multi-beam directed signal system 206, and client device 204 can
`communicate via directed communication beam[] 214(N) with a second
`channel of the multi-beam directed signal system 206.” Id. at 5:16–21.
`
`5
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`IPR2022-01398
`Patent 10,715,235 B2
`“Communication and/or data transfer signals . . . are considered
`desired signals [if] they are from nodes within the wireless routing network.”
`Ex. 1001, 24:27–31. “[S]ignals such as noise and WLAN interference
`associated with another external wireless system 1204 are not desired.”
`Id. at 24:31–33. “These signals, both desired and undesired, are received via
`antenna array 302 [of antenna assembly 208] and are provided to the signal
`control and coordination logic 304.” Id. at 24:34–36; see also id. at Fig. 3.
`Using logic 304, “multi-beam directed signal system 206 is configured to
`control the transmission amplitude frequency band and directionality of data
`packets to other nodes[,] and [thereby] assist in reducing noise and
`interference.” Id. at 25:22–29.
`“[S]canning receiver 822 [of system 206] . . . is configured to update
`routing information 1206 with regard to the received signals[ and, for
`example,] . . . may identify information about different classes of interferers
`. . . within the routing information 1206.” Ex. 1001, 24:41–44;
`see also id. at Fig. 8B. “[R]outing information 1206 includes connection
`indexed routing table(s) based on identification information, such as . . .
`identifiers of the desired sources and other identifiers for the desired sources
`and other identifiers for the interferers.” Id. at 24:44–49. “Further, the
`routing table includes stored weighting values (w) each associated with a
`particular signal source 1202 [of desired signals.]” Id. at 24:49–51. The
`stored weighting values are used in weighting matrix 1210, which applies
`the latest weighting values to received signals and transmitted signals.
`Id. at 25:16–19.
`
`6
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`IPR2022-01398
`Patent 10,715,235 B2
`Challenged Claims
`E.
`The Petition challenges claims 8–14. Pet. 1. Claim 8 is the sole
`independent claim, which we reproduce below.
`8. A method in a wireless communications system, the
`method comprising:
`receiving a first signal transmission from a remote station
`via a first antenna element of an antenna and a second signal
`transmission from the remote station via a second antenna
`element of the antenna simultaneously, wherein the first signal
`transmission and the second signal transmission comprise
`electromagnetic signals comprising one or more transmission
`peaks and one or more transmission nulls;
`determining first signal information for the first signal
`transmission;
`determining second signal information for the second
`signal transmission, wherein the second signal information is
`different than the first signal information;
`determining a set of weighting values based on the first
`signal information and the second signal information, wherein
`the set of weighting values is configured to be used by the remote
`station to construct one or more beam-formed transmission
`signals; and
`transmitting to the remote station a third signal comprising
`content based on the set of weighting values.
`Ex. 1001, 33:48–34:2.
`
`7
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`
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`IPR2022-01398
`Patent 10,715,235 B2
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on two grounds:
`Claims Challenged
`8–12
`13, 14
`Pet. 2.
`Petitioner relies on the declaration testimony of Dr. Robert Akl
`(Ex. 1003) in support of these grounds.
`
`
`35 U.S.C. §
`103(a)
`103(a)
`
`References/Basis
`
`Burke2
`Burke, Shull3
`
`II. ANALYSIS - JOINDER UNDER 35 U.S.C. § 315(C)
`Joinder in inter partes review proceedings is subject to the provisions
`of 35 U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`the statute requires that the Director (or the Board acting through a
`delegation of authority) . . . determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`
`
`2 Burke et al., US 7,155,231 B2; issued Dec. 26, 2006 (Ex. 1006, “Burke”).
`3 Shull, US 6,006,077; issued Dec. 21, 1999 (Ex. 1007, “Shull”).
`
`8
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`
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`IPR2022-01398
`Patent 10,715,235 B2
`joinder, § 315(c) requires the Director to exercise h[er] discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to joinder. 37 C.F.R. § 42.20(c). A motion for joinder should:
`(1) set forth the reasons joinder is appropriate; (2) identify any new grounds
`of unpatentability asserted in the petition; and (3) explain what impact (if
`any) joinder would have on the trial schedule for the existing review. See
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB
`Apr. 24, 2013).
`A motion for joinder must be filed “no later than one month after the
`institution date of any inter partes review for which joinder is requested.”
`37 C.F.R. § 42.122(b).
`A. Whether the Petition Warrants Institution
`Petitioner moves to join the Petition with the Apple & HP IPR.
`Mot. 1. Petitioner contends that the “Petition and supporting declaration are
`substantively identical to the petition and declaration submitted in the Apple
`& HP IPR.” Id. Petitioner “assert[s] that the same claims are obvious over
`the same prior art based on the same arguments presented by the same expert
`as in the Apple & HP IPR.” Id.; see also id. at 4–5 (arguing that joinder is
`appropriate).
`We incorporate our previous analysis in our Decision on Institution in
`IPR2022-00367 regarding the asserted grounds of unpatentability, and
`conclude that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim of the ’235 patent challenged in
`the Petition for the same reasons. See IPR2022-00367, Paper 10, 40.
`Accordingly, we determine that Petitioner has met its burden of showing that
`
`9
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`IPR2022-01398
`Patent 10,715,235 B2
`joinder is appropriate, and that the Petition warrants institution of inter
`partes review on all claims and all challenges asserted in the Petition.
`B. Whether to Join Petitioner as a Party to the Apple IPR
`Petitioner has filed a timely Motion in accordance with 35 U.S.C.
`§ 315(c). See Paper 4, 1 (affording a filing date for the Petition of August
`12, 2022); IPR2022-00367, Paper 10 (mailed July 14, 2022). Petitioner’s
`Motion is unopposed.
`As discussed above, the Petition does not present any new grounds or
`issues. See Mot. 1, 3, 4–5. Petitioner has shown that the trial schedule will
`not be affected by joinder. Mot. 5–6. No changes in the schedule are
`anticipated or necessary, and the limited participation, if at all, of Petitioner
`will not impact the timeline of the ongoing trial. Id. Petitioner has agreed to
`an “understudy” role, which will simplify matters in the ongoing Apple &
`HP IPR and will be an efficient use of resources. Id. at 6. “Petitioners will
`assume a primary role only if the Apple & HP IPR petitioners cease to
`participate in the IPR.” Id.
`Accordingly, we determine that Petitioner has met its burden of
`showing that we should exercise our discretion to join Petitioner to
`IPR2022-00367.
`
`
`III. CONCLUSION
`We determine that the Petition warrants institution under § 314, and
`that Petitioner should be joined with IPR2022-00367, the Apple & HP IPR.
`
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`10
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`IPR2022-01398
`Patent 10,715,235 B2
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted as to claims 8–14 of U.S. Patent No. 10,715,235 B2;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this Order;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2022-00367 is granted, and Petitioner is hereby joined with Apple Inc.,
`HP Inc., Amazon.com, Inc., Amazon.com Services LLC, Samsung
`Electronics Co., Ltd., Samsung Electronics America, Inc., and Google LLC
`as petitioner entities in IPR2022-00367;
`FURTHER ORDERED that the grounds on which trial in
`IPR2022-00367 were instituted are unchanged, and no other grounds are
`added in IPR2022-00367;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2022-00367 (Paper 11) and schedule changes agreed to by the parties in
`IPR2022-00367 (pursuant to the Scheduling Order) shall govern the trial
`schedule in IPR2022-00367;
`FURTHER ORDERED that Petitioner’s role in IPR2022-00367 shall
`be limited as stated by Petitioner in the Motion for Joinder (Mot. 6) unless
`and until Apple Inc., HP Inc., Amazon.com, Inc., Amazon.com Services
`LLC, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Google LLC are terminated from that proceeding;
`FURTHER ORDERED that the case caption in IPR2022-00367 shall
`be changed to reflect joinder of Apple Inc., HP Inc., Amazon.com, Inc.,
`
`11
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`
`
`IPR2022-01398
`Patent 10,715,235 B2
`Amazon.com Services LLC, Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., and Google LLC, and Dell Technologies Inc. and
`Dell Inc. as petitioner entities in accordance with the attached example;
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of IPR2022-00367; and
`FURTHER ORDERED that all further filings shall be made in
`IPR2022-00367.
`
`12
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`
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`IPR2022-01398
`Patent 10,715,235 B2
`For PETITIONER:
`Christopher T.L. Douglas
`Lauren N. Griffin
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`lauren.griffin@alston.com
`
`For PATENT OWNER:
`
`Reza Mirzaie
`Philip Wang
`RUSS, AUGUST & KABAT
`rmirzaie@raklaw.com
`rak_vivato@raklaw.com
`
`
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`13
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., HP INC., AMAZON.COM, INC., AMAZON.COM
`SERVICES LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., GOOGLE LLC,
`DELL TECHNOLOGIES INC. and DELL INC.,
`Petitioner,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`
`IPR2022-00367
`Patent 10,715,235 B2
`
`
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