UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL TECHNOLOGIES INC. AND DELL INC.,
`Petitioners,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case: IPR2022-01398
`U.S. Patent No. 10,715,235
`____________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §311-319 AND 37 C.F.R. §42
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL TECHNOLOGIES INC. AND DELL INC.,
`Petitioners,
`v.
`XR COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case: IPR2022-01398
`U.S. Patent No. 10,715,235
`____________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §311-319 AND 37 C.F.R. §42
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`I.
`
`A.
`B.
`C.
`D.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................ 1
`Real Party in Interest (37 C.F.R. §42.8(b)(1)) .......................................... 1
`Related Matters (37 C.F.R. §42.8(b)(2)) ................................................... 2
`Lead and Back-Up Counsel (37 C.F.R. §42.8(b)(3)) ................................ 3
`Service Information (37 C.F.R. §42.8(b)(4)) ............................................ 3
`Fees (37 C.F.R. §42.103) ................................................................................ 3
`II.
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 4
`A.
`Grounds for Standing ................................................................................ 4
`B.
`Challenge and Relief Requested ................................................................ 4
`C.
`Level of Ordinary Skill in the Art ............................................................. 5
`D.
`Claim Construction .................................................................................... 6
`IV. THE ’235 PATENT ....................................................................................... 6
`A.
`Brief Description ....................................................................................... 6
`B.
`Relevant History of the ’235 Patent ........................................................11
`1.
`Applicant’s Arguments During Prosecution ...........................11
`2.
`Applicant Failed to Establish a February 2002 Invention Date
` .................................................................................................13
`The Effective Filing Date is After November 4, 2002 ............17
`3.
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .....................22
`GROUND 1: Claims 8–12 are obvious over Burke ................................22
`1.
`Overview of Burke ..................................................................22
`2.
`Manner in which Burke Renders Claims 8–12 Obvious .........28
`
`V.
`
`A.
`
`i
`
`
`
`B.
`
`4.
`
`GROUND 2: Claims 13 and 14 are obvious over Burke in view of Shull
` .................................................................................................................50
`1.
`Overview of Shull ....................................................................50
`2.
`Combination of Burke and Shull .............................................51
`3.
`Manner in which the Prior Art Renders Claims 13 and 14
`Obvious ....................................................................................53
`VI. PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION ....61
`1.
`Factor 1: Dell’s Requested Stay of the District Court Case ....62
`2.
`Factor 2: The FWD will likely issue before the Trial .............62
`3.
`Factor 3: Petitioners’ Diligence and Investment in IPR
`Outweighs the Parties’ Minimal Investment in Litigation ......64
`Factor 4: The Petition’s Grounds are Materially Different from
`any that Might be Raised in Litigation ....................................65
`Factor 5: Parties .......................................................................66
`Factor 6: The Merits of this Petition Strongly Favor Institution
` .................................................................................................66
`VII. CONCLUSION ............................................................................................67
`
`5.
`6.
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apator Miitors ApS v. Kamstrup A/S,
`887 F.3d 1293 (Fed. Cir. 2018) .................................................................... 13, 14
`Apple Inc. and HP Inc. v. XR Communications LLC,
`IPR2022-00367, Paper No. 10 (PTAB Jul. 14, 2022) ............................ 61, 63, 65
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) ............................................. 61
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ............................................. 62
`Chewey, Inc. v. Int’l Bus. Machs.,
`IPR2021-00757, Paper 9, 14 (PTAB Oct. 12, 2021) .......................................... 67
`Cooper v. Goldfarb,
`154 F. 3d 1321 (Fed. Cir. 1998) ................................................................... 13, 14
`Dynamic Drinkware v. National Graphics,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 4
`Garmin Int’l v. Phillips North America LLC,
`IPR2020-00910, Paper 8 (PTAB Nov. 19, 2020) ............................................... 66
`Intuitive Surgical, Inc. v. Ethicon LLC,
`IPR2018-01703, Paper 7 (PTAB. Feb. 19, 2019) ............................................... 66
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ............................................................................ 13
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) .......................................................................... 13
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking
`LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) .............................. 65, 66
`UMC Elecs. Co. v. United States,
`816 F.2d 647, 2 U.S.P.Q.2d 1465 (Fed.Cir.1987) .............................................. 16
`
`iii
`
`
`
`Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355 (Fed. Cir. 2011) ............................................................................ 5
`Statutes
`35 U.S.C. § 102(b) ..................................................................................................... 4
`35 U.S.C. § 102(e) ..................................................................................................... 4
`35 U.S.C. § 103 .................................................................................................... 4, 12
`Other Authorities
`37 C.F.R. § 42.8 ......................................................................................................... 1
`37 C.F.R. § 42.104 ..................................................................................................... 3
`37 C.F.R. § 42.122 ..................................................................................................... 3
`
`iv
`
`
`
`TABLE OF EXHIBITS
`
`Description
`Short Name
`“the ’235 Patent” U.S. Patent No. 10,715,235 to Da Silva
`“the Prosecution
`History”
`
`Prosecution History of the ’235 Patent
`
`Exhibit
`EXHIBIT-1001
`
`EXHIBIT-1002
`
`EXHIBIT-1003
`
`EXHIBIT-1004
`EXHIBIT-1005
`EXHIBIT-1006
`EXHIBIT-1007
`
`RESERVED
`RESERVED
`Burke
`Shull
`
`EXHIBIT-1008
`
`Crilly
`
`EXHIBIT-1009
`
`EXHIBIT-1010
`
`EXHIBIT-1011
`
`EXHIBIT-1012
`EXHIBIT-1013
`
`EXHIBIT-1014
`
`EXHIBIT-1015
`EXHIBIT-1016
`
`’660 Provisional
`Application
`Raaf
`
`Hottinen
`
`Walton
`Salonaho
`
`Ali
`
`Banerjee
`Sriram
`
`EXHIBIT-1017
`
`Goldsmith
`
`EXHIBIT-1018
`EXHIBIT-1019
`EXHIBIT-1020
`EXHIBIT-1021
`EXHIBIT-1022
`
`RESERVED
`Sindhushayana
`RESERVED
`RESERVED
`RESERVED
`
`Declaration and Curriculum Vitae of
`Dr. Robert Akl
`RESERVED
`RESERVED
`U.S. Patent No. 7,155,231
`U.S. Patent No. 6,006,077
`U.S. Patent Application Publication No.
`2002/0158801
`U.S. Provisional Application No.
`60/423,660
`U.S. Patent No. 6,879,823
`PCT Application Publication No. WO
`02/47286
`U.S. Patent No. 6,662,024
`U.S. Patent No. 6,208,863
`U.S. Patent Application Publication No.
`20020080862
`U.S. Patent No. 7,340,017
`U.S. Patent No. 6,792,031
`Andrea Goldsmith, Wireless
`Communications, Cambridge
`University Press, 2005
`RESERVED
`U.S. Patent No. 6,661,832
`RESERVED
`RESERVED
`RESERVED
`
`v
`
`
`
`Exhibit
`EXHIBIT-1023
`EXHIBIT-1024
`EXHIBIT-1025
`
`Short Name
`RESERVED
`RESERVED
`RESERVED
`
`RESERVED
`RESERVED
`RESERVED
`
`Description
`
`vi
`
`
`
`Dell Technologies Inc. and Dell Inc. (collectively “Petitioners”) petition for
`
`Inter Partes Review (“IPR”) of 8-14 (“the Challenged Claims”) of U.S. Patent No.
`
`10,715,235 (“the ’235 Patent”). For the reasons explained below, there exists a
`
`reasonable likelihood that Petitioners will prevail with respect to at least one of the
`
`Challenged Claims.
`
`Indeed, the Board has already instituted review of the Challenged Claims in
`
`an IPR filed by Apple. This Petition presents the same or substantially the same
`
`grounds as the prior IPR and is based on the same or substantially the same evidence
`
`as the prior IPR. This Petition is accompanied by a motion for joinder.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A.
`
`Real Party in Interest (37 C.F.R. §42.8(b)(1))
`
`Dell Technologies Inc. and Dell Inc. are the real parties-in-interest1.
`
`1 Certain suppliers of components of products at issue in the district court litigation
`
`are obligated to indemnify Dell against claims asserted in that litigation. However,
`
`none of these suppliers have directed, controlled, funded, reviewed, participated in,
`
`or otherwise influenced Dell’s IPR petition. For at least these reasons, Dell does not
`
`believe that these suppliers constitute real parties in interest.
`
`- 1 -
`
`
`
`B.
`
`Related Matters (37 C.F.R. §42.8(b)(2))
`
`The ’235 Patent is the subject of Apple Inc. et al v. XR Communications, LLC,
`
`IPR2022-01155 (PTAB); Apple Inc. et al v. XR Communications, LLC, IPR2022-
`
`00367 (PTAB); Amazon.com, Inc. et al v. XR Communications LLC, IPR2022-01353
`
`(PTAB); Samsung Electronics Co., Ltd. et al v. XR Communications LLC, IPR2022-
`
`01362 (PTAB); XR Communications, LLC, dba Vivato Technologies v. HP Inc.,
`
`Case No. 6:21-cv-00694-ADA (WDTX)2; XR Communications, LLC, dba Vivato
`
`Technologies v. Microsoft Corporation, Case No. 6:21-cv-00695-ADA (WDTX);
`
`XR Communications, LLC, dba Vivato Technologies v. Dell Technologies Inc. et al,
`
`Case No. 6:21-cv-00646-ADA (WDTX); XR Communications, LLC, dba Vivato
`
`Technologies v. Amazon.com, Inc. et al, Case No. 6:21-cv-00619-ADA (WDTX);
`
`XR Communications, LLC, dba Vivato Technologies v. Apple, Inc., Case No. 6:21-
`
`cv-00620-ADA (WDTX); XR Communications, LLC, dba Vivato Technologies v.
`
`ASUSTeK Computer
`
`Inc., Case No. 6:21-cv-00622-ADA
`
`(WDTX); XR
`
`2 On August 1, 2022, the Court transferred this case to the Northern District of
`
`California. See XR Communications, LLC, dba Vivato Technologies v. HP Inc., Case
`
`No. 6:21-cv-00694-ADA, ECF No. 53 (WDTX Aug. 1, 2022). A new case number
`
`has not yet issued.
`
`- 2 -
`
`
`
`Communications, LLC, dba Vivato Technologies v. Google LLC, Case No. 6:21-cv-
`
`00625-ADA (WDTX); and XR Communications, LLC, dba Vivato Technologies v.
`
`Samsung Electronics Co., Ltd. et al, Case No. 6:21-cv-00626-ADA (WDTX).
`
`Petitioners are not aware of any other proceedings addressing the ’235 Patent.
`
`C.
`
`Lead and Back-Up Counsel (37 C.F.R. §42.8(b)(3))
`
`Lead counsel is Christopher T.L. Douglas (Reg. No. 56,950), of Alston & Bird
`
`LLP, One South at the Plaza, 101 South Tryon Street, Suite 4000, Charlotte, NC
`
`28280-4000, Tel: 704.444.1000, Fax: 704.444.1111. Backup counsel is Lauren N.
`
`Griffin (Reg. No. 77,865), of Alston & Bird LLP, One South at the Plaza, 101 South
`
`Tryon Street, Suite 4000, Charlotte, NC 28280-4000, Tel: 704.444.1000, Fax:
`
`704.444.1111.
`
`D.
`
`Service Information (37 C.F.R. §42.8(b)(4))
`
`Petitioners
`
`consent
`
`to
`
`electronic
`
`service
`
`directed
`
`to
`
`christopher.douglas@alston.com,
`
`lauren.griffin@alston.com,
`
`and
`
`dell-
`
`vivato@alston.com.
`
`II.
`
`Fees (37 C.F.R. §42.103)
`
`Petitioners authorize Account No. 16-0605 to be charged for any fees.
`
`- 3 -
`
`
`
`III. 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,
`
`in view of their concurrently filed motion for joinder, are not barred or estopped
`
`from requesting review of the challenged claims of the ’235 Patent on the ground
`
`identified herein. 37 CFR § 42.122) (b) (“The time period set forth in § 42.101(b)
`
`shall not apply when the petition is accompanied by a request for joinder.”).
`
`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
`
`Claim(s)
`
`35 U.S.C. § 103
`
`1
`
`2
`
`8-12
`
`13, 14
`
`Burke
`
`Burke in view of Shull
`
`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
`
`priority from U.S. Provisional Patent Apl. No. 60/423,660, filed on November 4,
`
`2002. Id. As explained below in Section IV.B, Apl. No. 60/423,660 does not
`
`- 4 -
`
`
`
`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).
`
`Reference
`
`Filing Date
`
`Issue Date
`
`Burke
`(USPN 7,155,231)
`
`Shull
`(USPN 6,006,077)
`
`Oct. 15, 20023
`
`Dec. 26, 2006
`
`Oct. 2, 1997
`
`Dec. 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
`
`3 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).
`
`- 5 -
`
`
`
`degree in electrical engineering with a year of related work experience in wireless
`
`communication systems. EX-1003, ¶¶[24]-[26].
`
`D.
`
`Claim Construction
`
`No formal claim constructions are necessary for this petition. 4 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.”)
`
`IV. 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
`
`4 Petitioners reserve the right to advance specific constructions in district court
`
`litigation.
`
`- 6 -
`
`
`
`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].
`
`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.
`
`- 7 -
`
`
`
`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
`
`(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].
`
`- 8 -
`
`
`
`EX-1001, FIG. 125
`
`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
`
`5 Annotations to the figures throughout this petition are shown in color.
`
`- 9 -
`
`
`
`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].
`
`- 10 -
`
`
`
`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
`
`- 11 -
`
`
`
`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 III.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,
`
`cover; EX-1009, 134-158. Although Applicant claimed that Document C had been
`
`authored “at least as early as February, 2002” (i.e., 8 months before Crilly’s
`
`publication), Document C does not have a date on its face, its contents do not suggest
`
`- 12 -
`
`
`
`a particular date of creation, and Applicant did not corroborate its asserted date of
`
`February 2002. Thus, the only evidence upon which Applicant relied to support its
`
`attempt to antedate Crilly was a self-serving, uncorroborated date of February 2002
`
`included in the ’660 Provisional Application’s description of Document C. EX-
`
`1003, ¶[53]. As set forth below, this is legally insufficient to show prior conception.
`
`2.
`
`Applicant Failed to Establish a February 2002 Invention
`Date
`
`An inventor can swear behind a reference by proving conception of the
`
`invention before the effective filing date of the reference and diligent reduction of
`
`the invention to practice after that date. See Apator Miitors ApS v. Kamstrup A/S,
`
`887 F.3d 1293, 1295 (Fed. Cir. 2018) (citing Perfect Surgical Techniques, Inc. v.
`
`Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir. 2016)). “A reduction to practice
`
`can be either a constructive reduction to practice, which occurs when a patent
`
`application is filed, or an actual reduction to practice.” Cooper v. Goldfarb, 154 F.
`
`3d 1321, 1327 (Fed. Cir. 1998). “[W]hen a party seeks to prove conception through
`
`an inventor’s testimony,” “the party must proffer evidence, ‘in addition to [the
`
`inventor’s] own statements and documents,’ corroborating
`
`the
`
`inventor’s
`
`testimony.” Apator Miitors, 887 F.3d at 1295 (quoting Mahurkar v. C.R. Bard, Inc.,
`
`79 F.3d 1572, 1577 (Fed. Cir. 1996)).
`
`- 13 -
`
`
`
`Simply citing to disclosure in the ’660 Provisional Application—a document
`
`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.
`
`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
`
`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
`
`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.”
`
`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).
`
`Applicants’ arguments addressing only “the limitations that the Office Action
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`- 14 -
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`
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`contends are taught by Crilly” do not prove conception of the “complete and
`
`operative invention.”
`
`For example, claim 8 requires that the first and second signal from the same
`
`remote station are received “simultaneously,” but Applicant never addresses this
`
`limitation and Document C does not teach it. See EX-1002, 267. Document C is
`
`titled “Beamforming for Little Joe,” where “Little Joe is the name for a high-
`
`performance WLAN Access Point product[.]” EX-1009, 134. An access point is a
`
`device connected directly to a wired local area network and can provide access to
`
`the network to other devices like laptops or handheld user/client devices that are
`
`connected to it. EX-1003, ¶[54]. At most, in Document C, multiple different
`
`user/client devices each send a single signal (described as a “packet reception” at C-
`
`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).
`
`Even if a client device’s single packet transmission received at the Little Joe Access
`
`Point via different propagation paths could be considered different signals—which
`
`Applicant never alleged and the record does not support—Document C does not
`
`describe or suggest that the Access Point receives the packet via the multiple
`
`propagation paths simultaneously. Applicant appeared to agree because the
`
`- 15 -
`
`
`
`limitation-by-limitation analysis in the prosecution history specifically removed the
`
`word “simultaneously” from the quoted limitation. EX-1002, 270; EX-1003, ¶[54].
`
`Further, Applicant never alleges that Document C represents a reduction of
`
`the claimed invention to practice. See UMC Elecs. Co. v. United States, 816 F.2d
`
`647, 652, 2 U.S.P.Q.2d 1465, 1468 (Fed.Cir.1987) (“[T]here cannot be a reduction
`
`to practice of the invention ... without a physical embodiment which includes all
`
`limitations of the claim.”). Indeed, Document C only purports to explain the
`
`outcome of modeling based on a computer simulation, which is not a physical
`
`embodiment. See EX-1009, 143 (“Since interference was not modeled, the
`
`interference-rejection performance of the different beamforming methods was not
`
`compared. The current simulation code could be easily extended to study this”);
`
`EX-1003, ¶[55]. Without proof of an actual reduction to practice prior to Crilly’s
`
`publication date, Applicant would need to show diligence between the alleged
`
`conception set forth in Document C and constructive reduction to practice
`
`represented by the filing of the ’660 Provisional Application—assuming this
`
`provisional application even supports every limitation of the Challenged Claims,
`
`which it does not. However, the prosecution record does not even mention diligence,
`
`much less provide any evidence of it.
`
`For at least these reasons, Applicant has not established an invention date any
`
`earlier than the filing of the ’660 Provisional Application.
`
`- 16 -
`
`
`
`3.
`
`The Effective Filing Date is After November 4, 2002
`
`Moreover, even if the applicant had properly shown that Document C
`
`predated Crilly, the ’660 Provisional Application did not disclose all the claimed
`
`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
`
`that Applicant identified in the prosecution for the claims was from Document C.
`
`But neither Document C nor other parts of the ’660 Provisional Application provide
`
`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,
`
`2003. Id.
`
`Specifically, there are at least two limitations recited in claim 8 that are not
`
`supported in Document C:
`
`1. “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”; and
`
`2. “wherein the set of weighting values is configured to be used by the
`
`remote station [from which the first and second signals are received]
`
`to construct one or more beam-formed transmission signals.”
`
`- 17 -
`
`
`
`EX-1001, 33:48-34:2; EX-1003, ¶¶[57]-[58]. As to the first limitation,
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`Applicant did not show that Document C describes “simultaneous” receipt of the
`
`first and second signals, nor did Applicant show that the first and second signals
`
`come from the same remote station, conspicuously leaving these requirements of the
`
`claims out of its arguments entirely. See EX-1002, 267; EX-1003, ¶[59].
`
`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
`
`of complex weights; and (2) a “card 13” that is used to apply the computed complex
`
`weights and transmit beamformed signals. Id. Each of these beamformers is
`
`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).
`
`- 18 -
`
`
`
`EX-1009, 135
`
`Document C describes that “[t]he signal received by the array elements will
`
`be the vector sum of signals arriving by many paths” from multiple different “desired
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`and undesired users.” EX-1009, 136. Document C further explains that the
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`“performance of different beamforming techniques … will depend on:
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`EX-1009, 136. Thus, while Document C describes the receipt of different signals,
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`those signals are from different users (i.e., “desired and undesired users”) or from
`
`interference/noise, not from the same remote station as required by claim 8. EX-
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`1003, ¶¶[60]-[61].
`
`The user/client devices in Document C each transmit a single signal
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`(described as a “packet reception” at C-4) that propagates and is received via
`
`- 19 -
`
`
`
`multiple paths between the antenna of the transmitting user/client device (also
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`referred to as a “remote antenna” at C-2) and the antenna array of the Little Joe
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`Access Point. EX-1003, ¶[62] (citing EX-1009, 135-137). Even if, arguendo, a
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`client device’s single packet transmission received via different propagation paths
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`were considered different signals—which Applicant never alleged and the record
`
`does not support—Document C does not describe or suggest that the access point
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`receives the packet via the multiple propagation paths simultaneously. EX-1003,
`
`¶[62].
`
`Indeed, at no point does Document C disclose that any of the signals it
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`describes—whether from desired users, undesired users, interference, or noise—are
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`received “simultaneously” by the Little Joe Access Point, much less that two signals
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`from the same “remote station” are received simultaneously. EX-1003, ¶[62]. The
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`word “simultaneously” is not used once in Document C. Id. Thus, Document C
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`does not support “simultaneous” receipt of first and second signals transmitted by
`
`the same remote station, as recited in the challenged claims.
`
`As to the second limitation, Document C also does not support determining a
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`set of weighting values configured to be used by the remote station from which the
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`first and second signals are received, as required by claim 8. Rather, as described
`
`above with reference to the Little Joe Access Point shown in Figure 1 of Document
`
`C, the Little Joe Access Point computes complex weights for use by its own “card
`
`- 20 -
`
`
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`13” beamformer, not for use by the “desired and undesired users” that are remote
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`from the Little Joe Access Point. EX-1003, ¶[63]. Specifically, the beamforming
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`weights in Document C are computed by the “searcher” and “store[d] [] in a table
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`which is made available to the application running the modified (polling) MAC
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`protocol on ‘card 13’.” EX-1009, 137. These weights are not used by the individual
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`clients (i.e. the desired and undesired users), but instead by the Access Point to
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`communicate with each of these individual clients. EX
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