Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: July 21, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CORNING OPTICAL COMMUNICATIONS LLC,
`Petitioner,
`v.
`DALI WIRELESS, INC.,
`Patent Owner.
`
`IPR2021-00408
`Patent 10,506,454 B2
`
`Before MELISSA A. HAAPALA, Senior Lead Administrative Patent Judge,
`and KARL D. EASTHOM and SHARON FENICK, Administrative Patent
`Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`INTRODUCTION
`I.
`A. Background and Summary
`Corning Optical Communications LLC (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–19 (the “challenged claims”) of
`U.S. Patent No. 10,506,454 B2 (Ex. 1001, “the ’454 patent”). Paper 2
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`(“Pet.”), 1. Dali Wireless, Inc. (“Patent Owner”), filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35
`U.S.C. § 314(a), we may not authorize an inter partes review unless the
`information in the Petition and the Preliminary Response “shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons that follow,
`we institute an inter partes review as to the challenged claims of the ’454
`patent on all grounds of unpatentability presented.
`B. Real Parties in Interest
`Petitioner identifies Corning, Inc., and Corning Research and
`Development Corp. as additional real parties in interest. Pet. 1. Patent
`Owner identifies no additional real parties in interest. Paper 4, 1.
`C. Related Matters
`Petitioner and Patent Owner each identify Dali Wireless Inc. v.
`Corning Optical Communications LLC, Case No. 3:20-cv-06469-EMC
`(N.D. Cal.) (“the related district court action”) as a related action involving
`the ’454 patent.1 Pet. 1; Paper 4, 1.
`D. The ’454 Patent
`The ’454 patent, titled “Optimization of Traffic Load in a Distributed
`Antenna System,” describes dynamically routing signals in a Distributed
`
`
`1 According to Petitioner, the case is in the early stages, a stay is likely, and
`no trial date has yet been set. See Pet. 81–83. Patent Owner did not present
`arguments towards exercising discretion to deny institution under 35 U.S.C.
`§ 314(a). See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential). We do not consider this issue further.
`
`2
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`Antenna System (DAS) as part of a distributed wireless network. Ex. 1001,
`codes (54), (57), 1:15–17. The patent describes traffic monitoring and
`optimization to provide flexibility to manage, control, enhance, and facilitate
`radio resource efficiency and usage, and the overall performance of the
`distributed wireless network. Id. at 1:17–19, 4:13–17. One example of a
`DAS is provided in Figure 1, reproduced below.
`
`
`
`3
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`Figure 1 is a block diagram showing a DAS system employing multiple
`Digital Access Units (DAUs) and Digital Remote Units (DRUs).
`In the example according to one embodiment of the invention, as
`shown in Figure 1, a three-sector base station (BTS) includes sectors 101,
`109, and 110, which provide downlink signals to DAU 1 102, DAU 2 108
`and DAU 3, respectively. Id. at 2:20–24, 5:2–4 (“A typical base station
`comprises 3 independent radio resources, commonly known as sectors.”),
`5:60–65, 6:62–63, 7:2–4. The DAUs “function as the interface between the
`base stations and digital remote units (DRUs).” Id. at 4:60–63. DAU 1 102
`is connected to and transports signals to DAU 2 108, and DAU 2 108 is
`connected to DAU 3. Id. at 6:23–24, 7:2–4. The inter-networking of the
`DAUs facilitates the routing of DRU signals among the multiple DAUs and
`supports transport of radio frequency (RF) downlink and uplink signals
`between the base station (BTS) and the DRUs. Id. at 6:23–29, 7:4–7, 17:41.
`Groups of DRUs, such as DRU 1 107, DRU 2 104, DRU 3 106, and
`DRU 4 through DRU 7 in Figure 1 are daisy chained together to achieve
`network coverage for a specific geographical area, which is identified as a
`cell (e.g. Cell 1). Id. at 5:65–6:1, 6:48–60. In this way each individual base
`station sector’s radio resources are transported to a given geographical area
`through the daisy-chained DRUs in that area. Id. at 6:54–60. Thus, for
`example, downlink RF signals from BTS Sector 1 101 are received by
`DAU 1 102. Id. at 6:62–63. DAU 1 102 translates these signals to optical
`signals that are transported via optical cable 103 to DRU 2 104. Id. at 6:63–
`66. Optical cable 105 transports the optical signals to DRU 3 106, from
`where they are passed to each DRU in the daisy chain of Cell 1, ending at
`DRU 1 107. Id. at 6:66–7:4.
`
`4
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`Additionally, traffic monitoring unit 121 tracks and collects traffic
`load at each DAU in the network, and stores this information in the network
`optimization unit 120. Id. at 7:8–12, 10:31–38, Fig. 9 (element 910).
`Network performance may be expressed by key performance indicators
`(KPIs) collected from different parts of the network. Id. at 5:52–54, 10:31–
`38, 11:48–50. Quality of service (QoS) metrics are determined by KPIs. Id.
`at 5:52–59, 11:25–31, 11:48–50, 11:54–55, 14:41–42, 14:50–51, Fig. 10.
`Optimization of the network is performed in one embodiment as per a
`method illustrated in Figure 9, reproduced below.
`
`
`
`5
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`Figure 9 is a flowchart illustrating a method of optimizing the DAS network.
`Id. at 2:63–64.
`As shown in Figure 9, KPIs of the network traffic are collected in the
`DAS network. Id. at 10:30–38. Network optimization unit 120 “calculates
`the overall DAS network performance and determines the optimum
`reconfigured network to improve or maximize performance.” Id. at 7:12–14,
`10:39–47, Fig. 9 (elements 912, 914, 916). Network optimization unit 120
`can “implement[] load rebalancing by communicating with the DAUs and
`shifting traffic between sectors.” Id. at 7:27–32, 10:47–54, Fig. 9 (element
`918).
`In other embodiments, multiple cells share the radio resources of one
`sector of the base station. Id. at 7:55–60, Fig. 2. Still other embodiments
`include a base station hotel with multiple BTSs or a base station hotel
`comprised of multiple Picocells. Id. at 8:23–47, 9:58–60, 10:5–6, 10:27–29,
`Fig. 3, Figs. 6–8.
`
`E. Illustrative Claims
`The Petition challenges independent claims 1 and 10 and dependent
`claims 2–9 and 11–19. Claim 1 illustrates the challenged claims at issue:
`1. A system for dynamically routing signals in a
`Distributed Antenna System (DAS) operable to communicate
`with a plurality of signal sources, the system comprising:
`one or more Digital Access Units (DAUs) operable to
`receive at least one signal from at least one of a first
`signal source and a second signal source from the
`plurality of signal sources, each DAU of the one or
`more DAUs including an input port configured as an
`uplink/downlink port and an output port configured as
`an uplink/downlink port;
`a plurality of Digital Remote Units (DRUs) coupled to the
`one or more DAUs and operable to transport signals
`
`6
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`between the plurality of DRUs and the one or more
`DAUs;
`a plurality of sectors formed from the plurality of DRUs
`comprising a first sector and a second sector different
`from the first sector, each sector comprising a subset of
`the plurality of DRUs; and
`a traffic monitoring unit coupled to at least one of the
`DAUs comprising the input port and output port each
`configured as an uplink/downlink port, wherein the
`traffic monitoring unit is configured to:
`determine one or more key performance indicators
`(KPIs) and a quality of service (QoS) of a
`network traffic for the one or more DAUs,
`wherein the QoS is a function of the one or more
`KPIs; and
`reconfigure the plurality of sectors based on the one
`or more KPIs and QoS by allocating at least one
`DRU from the first sector to the second sector.
`Ex. 1001, 17:50–18:11.
`
`F. Asserted Grounds
`Petitioner asserts that claims 1–19 would have been unpatentable on
`the following grounds:
`Claim(s) Challenged
`1–17, 19
`7
`
`Reference(s)/Basis
`Kummetz-4643
`Kummetz-464
`
`35 U.S.C. §2
`102
`103
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the
`effective filing date for the claims of the ’454 patent appears to be before the
`effective date of the applicable AIA amendment, we refer to the pre-AIA
`version of 35 U.S.C. § 102 and § 103. See Ex. 1001, code (60) (provisional
`application filing date of July 31, 2012). Our institution determination
`would not change under the post-AIA version of these statutes.
`3 Kummetz et al., US 9,398,464 B2, iss. July 19, 2016 (Ex. 1005).
`
`7
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`Reference(s)/Basis
`35 U.S.C. §2
`Claim(s) Challenged
`Kummetz-464, Kummetz-5794
`103
`7
`Kummetz-464
`103
`17
`Kummetz-464, Kummetz-9995
`103
`17
`Kummetz-464
`103
`15, 16, 18
`Kummetz-464, Evans6
`103
`15, 16, 18
`Petitioner additionally relies on the declaration of James A. Proctor,
`
`Jr. (Ex. 1003).
`
`II. ANALYSIS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring [inter partes] review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner must explain with
`particularity how the prior art would have rendered the challenged claims
`unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104 (“The petition must
`specify where each element of the claim is found in the prior art patents or
`printed publications relied upon.”).
`
`
`4 Kummetz et al., US 2011/0281579 A1, pub. Nov. 17, 2011 (Ex. 1006).
`5 Kummetz et al., US 9,735,999 B2, iss. Aug. 15, 2017 (Ex. 1007).
`6 Evans et al., US 2012/0057572 A1, pub. Mar. 8, 2012 (Ex. 1008).
`
`8
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`A claim is unpatentable under 35 U.S.C. § 102(b) “if each and every
`[claim] limitation is found either expressly or inherently in a single prior art
`reference.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851
`F.3d 1270, 1273 (Fed. Cir. 2017) (citation omitted). “A claim limitation is
`inherent in the prior art if it is necessarily present in the prior art, not merely
`probably or possibly present.” Akamai Techs., Inc. v. Cable & Wireless
`Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (citing Rosco,
`Inc. v. Mirror Lite, Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002)).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations7. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`Relying on the testimony of Mr. Proctor, Petitioner contends that one
`of ordinary skill in the art at the time of the invention “would have had: (1) a
`bachelor’s degree in electrical engineering; and (2) a minimum of 3-4 years
`of industry experience in wireless communications networks and
`
`
`7 The preliminary record does not include any evidence of secondary
`considerations of nonobviousness. See Pet. 83.
`
`9
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`engineering” but that “an individual with an advanced degree in electrical
`engineering would require less industry experience (e.g., 1-2 years).” Pet.
`14 (citing Ex. 1003 ¶ 28).
`Patent Owner submits that prong (2) of Petitioner’s definition should
`be modified to specify that one of ordinary skill in the art “should also have
`a minimum of 3-4 years of industry experience in wireless communications
`networks and engineering including knowledge and experience with DAS,”
`citing testimony given by Mr. Proctor in the related district court action.
`Prelim. Resp. 23 (emphasis added) (citing Ex. 2019, 101:7–17). Reading the
`relevant portion of Mr. Proctor’s testimony in its entirety, Mr. Proctor
`testifies that one of ordinary skill in the art would “understand the [DAS]
`art” and agrees that a person of ordinary skill “would have some experience
`or knowledge with DAS” at least to the extent that they would be aware of
`DAS art. Ex. 2019, 100:15–102:8 (emphasis added).
`On the present record, requiring “knowledge and experience with
`DAS” as part of industry experience does not appear to be supported.
`Rather, for the purposes of institution and on the present record, we adopt
`Petitioner’s definition for one of ordinary skill in the art, with the addition of
`the requirement that the person of ordinary skill at the time of the invention
`would additionally possess some experience with or knowledge of DAS.
`This level of skill comports with the disclosures of the ’454 patent and the
`asserted prior art. We note that our current analysis and determinations with
`respect to unpatentability would be the same if we had adopted Petitioner’s
`proposed definition or Patent Owner’s proposed definition.
`C. Claim Construction
`Petitioner argues that, “unless stated otherwise in the discussion of
`particular limitations [in the Petition],” we should give all terms their plain
`
`10
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`and ordinary meaning under the standard articulated in Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2015) (en banc). Pet. 15. Patent
`Owner argues that we should construe “sector[]” as used in claims 1 and 10
`to mean “a grouping of DRUs in a particular area or region.” Prelim. Resp.
`at 24–33.
`
`1. Compliance with 37 C.F.R. § 42.104(b)(3)–(4)
`Patent Owner argues that in the related district court action, “the term
`‘sectors’ is hotly disputed and fully briefed by the parties,” and that, in not
`providing a specific claim construction for “sectors,” Petitioner has failed to
`comply with 37 C.F.R. § 42.104(b)(3)–(4). Prelim. Resp. 1–2, 19–23 (citing
`Orthopediatrics Corp. v. K2M, Inc., IPR2018-01548, Paper 9, 9–11 (PTAB
`Mar. 1, 2019)). We note that the nonprecedential decision cited by Patent
`Owner was limited to the circumstances of that case, which included the
`petitioner advocating only for “how the claim limitations at issue should not
`be construed,” “tak[ing] conflicting positions [in the IPR] and the related
`district court litigation,” and not presenting any positive argument with
`respect to construction in a case where the interpretation of a claim
`limitation as a means-plus-function limitation was likely to be at issue.
`Orthopediatrics Corp. v. K2M, Inc., IPR2018-01548, Paper 9, 9–10.
`Additionally in that proceeding “Petitioner advocated for a different claim
`construction in the related district court litigation.” Id. at 10–11.
`Thus, that decision is distinguishable for those reasons. Petitioner
`here, while initially asserting that all claim terms “unless stated otherwise in
`the discussion of particular limitations,” should be interpreted according to
`their plain and ordinary meaning, does proceed to provide indications
`(though not clearly stated discussion) regarding its understanding of that
`plain and ordinary meaning. Pet. 15, 26–27, 42 n.5. Additionally, no
`
`11
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`means-plus-function construction is implicated here. See 35 C.F.R.
`§ 42.104(b)(3) (specifically discussing requirements for identification of
`how a challenged claim should be construed where the claim contains a
`means-plus-function limitation). Lastly, while consistency between
`proceedings is not necessarily required8, Petitioner appears to be advocating
`for a construction (here as “plain and ordinary”) consistent with what it
`proposed in the related district court action. Compare Pet. 26, 42 n.5 (“[A]
`‘sector’ refers to independent sets of radio resources”), with Ex. 2017, 9–12
`and Ex. 20219, 10–15 (Petitioner’s position in the related district court action
`proposing, e.g., “a plurality of independent radio resources” as the proper
`construction for “a plurality of sectors”). While we agree that the rules place
`an affirmative burden on petitioners to show how the challenged claims
`should be construed and how the construed claims are unpatentable, in this
`case, we do not agree that the Petition has failed to meet its burden.
`2. “sector” terms – claims 1 and 10
`Claim 1 and claim 10 each recite a system comprising, inter alia, “a
`plurality of sectors formed from the plurality of DRUs comprising a first
`sector and a second sector different from the first sector, each sector
`comprising a subset of the plurality of DRUs” and a traffic monitoring unit
`“configured to . . . reconfigure the plurality of sectors based on the one or
`
`8 The Board does, however, “consider statements regarding claim
`construction made by patent owners and by a petitioner filed in other
`proceedings, if the statements are timely made of record.” Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (“Trial Practice Guide”)
`(Nov. 2019) (available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf), 48–49.
`9 In citations to papers from the related district court action, consistent with
`Patent Owner’s citations, we cite to the original page numbers of the
`document rather than the numbers added at bottom right.
`
`12
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`more KPIs and QoS by allocating at least one DRU from the first sector to
`the second sector.” Ex. 1001 17:64–67, 18:9–11, 18:50–53, 18:62–64.
`As discussed supra, Petitioner requests only that we give terms their
`“plain and ordinary meaning” under Phillips. Pet. 15. Patent Owner directs
`us to Petitioner’s arguments in the related district court action that the term
`“sectors” should be construed as “independent radio resources.” Prelim.
`Resp. 19–20 (citing Ex. 2017; Ex. 2021, 10–15).
`Patent Owner argues that the proper construction for “sector” in these
`claims is “a grouping of DRUs in a particular area or region.” Id. at 24–33.
`Patent Owner argues that one of ordinary skill in the art “would understand
`that a sector is a subset or ‘group’ of DRUs” from the claim language itself,
`in which the sectors are “formed from the plurality of DRUs” and in which
`each of first and second sectors “compris[e] a subset of the plurality of
`DRUs.” Id. at 25 (citing Ex. 1001, 17:66–67, 18:52–53). Patent Owner
`additionally cites the claim limitation describing “reconfiguring the plurality
`of sectors” as “simply allocat[ing]” a DRU “to another group of DRUs or
`subset of DRUs.” Id. (citing Ex. 1001, 18:9–11, 18:62–64).
`Patent Owner describes the specification of the ’454 patent as
`supporting this definition, describing Figure 1 as illustrating “DRU
`sectorization” “with groupings of DRUs in ‘sectors’ (‘DRU sectors’)
`identified as cells 1–12 in contrast to BTS sectors 1–3. Id. at 27 (citing
`Ex. 1001 11:37–39, 11:57–62 (“Given the sectorization of DRUs at time
`period t, our problem is to obtain new sectorization at time period t+l that
`adaptively balances the change in traffic demands.”), 12:8–10, Figs. 9–11).
`Patent Owner annotates Figure 1, as reproduced below.
`
`13
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`
`
`Annotated Figure 1 illustrates Patent Owner’s interpretation in which a
`“BTS sector” is assigned to a “Sector formed from DRUs (DRU Sector).”
`Id. at 26.
`With reference to the embodiment of Figure 1, Patent Owner argues
`that, according to the ’454 patent, “DRUs 1-7 in cell 1 are daisy-chained
`together to achieve coverage in a specific geographic area referred to as a
`‘sector’ and each individual sector covers an independent geographical area
`which is identified as a ‘Cell.’” Id. at 27 (citing Ex. 1001, 5:65–6:1, 17:64–
`65; Ex. 2002 ¶ 33). Patent Owner contends that, with reference to this
`embodiment, “the ’454 Patent uses ‘sector’ synonymously with ‘the DRUs’
`as in a group of DRUs covering a specific area or region.” Id. Patent Owner
`also relies on portions of a provisional application incorporated by reference
`into the ’454 patent (Provisional US 61/600,530 (Ex. 2004)), an argument
`
`14
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`made during prosecution, and a declaration of an inventor of the ’454 patent
`(Ex. 2002).10 Id. at 25–29, 31–33 (citing Ex. 1002, 421; Ex. 2002 ¶¶ 8, 9,
`16, 27–51; Ex. 2004 ¶¶ 18, 21, 22, Figs. 2–6); see Ex. 1001, 10:60–65. The
`provisional application discusses “a three sector” base station, and then
`describes how to “dynamically sectorize the DRUs” in order “to balance the
`traffic for each sector.” Ex. 2004 ¶¶ 19, 20, 21, 23, 25.
`Patent Owner additionally cites references applied by the Examiner
`describing “how the term ‘sectors’ has traditionally meant a particular
`‘coverage area.’” Prelim. Resp. 29–31 (citing Ex. 2002 ¶¶ 10–15; Ex. 2007
`¶¶ 2, 3, Fig. 1; Ex. 2008, 9:36–37, Fig. 4). This usage, argues Patent Owner,
`is consistent with its argued construction of “sector.” Id.
`As discussed above, Petitioner presents an argument consistent with
`its construction from the related district court action, noting that Kummetz-
`464 describes sectors as “represent[ing] an amount of telecommunication
`capacity that can be allocated to wireless devices in one or more coverage
`zones,” and that “a ‘sector’ refers to independent sets of radio resources.”
`
`10 Patent Owner argues that its declaration of an inventor (Dr. Stapleton)
`“should be considered by the board to understand the invention.” Prelim.
`Resp. 32 (citing Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379–80
`(Fed. Cir. 2000)). That case holds that an inventor’s statements should be
`considered during prosecution of an application, but describes that such
`testimony, at a time when claims have been issued, is given “little or no
`probative weight” in a determination of claim construction. Solomon, 216
`F.3d at 1377–1380. We consider Exhibit 2002, keeping in mind that
`inventor testimony “cannot be relied on to change the meaning of the patent
`claims” but also “may be pertinent as a form of expert testimony, for
`example, as to understanding the established meaning of particular terms in
`the relevant art.” Howmedica Osteonics Corp. v. Wright Medical Tech.,
`Inc., 540 F.3d 1337, 1346–47 & n.5 (Fed. Cir. 2008) (citing Markman v.
`Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995) (en banc) and
`Phillips, 415 F.3d at 1318).
`
`15
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`Pet. 26–27 (quoting Ex. 1005, 3:16–24, citing Ex. 1005, 5:19–23, 5:35–39),
`42 n.5. However, Petitioner argues that the sectors are disclosed by
`Kummetz-464’s remote antenna units “divided into a plurality of different
`sectors,” and by the disclosure that subsets of remote antenna units are
`“allocated to” or “associated with” sectors of one or more
`telecommunication systems operators. Id. at 26–27 (citing Ex. 1003 ¶¶ 87–
`88; Ex. 1005, 10:30–38), 33–35 (reconfiguration of sectors occurs “by
`allocating at least one DRU (remote antenna unit) from one sector to a
`different sector”). Thus, it appears that Petitioner’s arguments with respect
`to Kummetz-464 are also consistent with Patent Owner’s proposed
`construction of “sector.”
`We determine that Patent Owner’s construction is consistent with the
`use of the term in the intrinsic and extrinsic evidence in the record, including
`the claim limitation relating to “allocating at least one DRU from the first
`sector to the second sector.” Ex. 1001, 18:10–11, 18:63–64. We therefore
`preliminarily adopt that construction (“a grouping of DRUs in a particular
`area or region”) for the term “sector” for the purposes of this Institution
`Decision. We reiterate the preliminary nature of this construction. As a trial
`is being instituted in this IPR, the parties may address this initial claim
`construction determination during the course of the proceeding.11 Trial
`Practice Guide, 49.
`
`
`11 In particular, we note that, in the final week of the period set forth for
`institution, see 35 U.S.C. § 314(b)(1), a claim construction order has issued
`in the related district court action and Petitioner has requested permission to
`file that claim construction order in this proceeding. We invite the parties to
`address at trial, to the extent permissible under our rules, whether our
`preliminary construction is correct.
`
`16
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`D. Anticipation of Claims 1–17 and 19 by Kummetz-464
`Petitioner argues that claims 1–17 and 19 are anticipated by
`Kummetz-464. Pet. 20–60. Patent Owner contends that Petitioner has not
`shown how Kummetz-464 discloses certain features required in independent
`claims 1 and 10. Prelim. Resp. 36–50.
`1. Kummetz-464
`Kummetz-464 is titled “Base Station Router for Distributed Antenna
`Systems” and describes a DAS, through which cellular communication
`systems provide data services via remote antenna units. Ex. 1005 codes
`(54), (57), 1:14–27, 1:40–56. Figure 1 of Kummetz-464 is reproduced
`below:
`
`Figure 1 illustrates a schematic view of a DAS. Id. at 2:14–15.
`Kummetz-464 describes that, in the downlink direction, base stations
`12a–12n send signals to base station router 14. Id. at 5:14–31. These
`
`
`
`17
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`signals are associated with one or more sectors, where each sector includes
`communication channels and represents an amount of telecommunication
`capacity. Id. at 1:43–46, 1:64–67, 3:20–24, 5:19–23, 5:28–31. Different
`sectors may also be associated with different telecommunications system
`operators. Id. at 4:5–7, 5:19–23. Base station router 14 can route signals
`between base stations 12a–12n and coverage zones 16a–16f. Id. at 5:32–33,
`5:50–62.
`Base station router 14 includes circuitry for routing signals from base
`stations 12a–12n to remote antenna units in coverage zones 16a–16f. Id. at
`5:50–52. Each of coverage zones 16a–16f contains one or more remote
`antenna units (e.g. remote antenna units 18a–18c for coverage zone 16a) that
`wirelessly communicate (radiate) the signals received from base station
`router 14 to wireless devices positioned in their physical area. Id. at 3:7–8,
`3:12–14, 3:28–30, 3:51–53, 5:37–39, 7:4–8. All remote units in one
`coverage zone receive the same group of signals from base station router 14.
`Id. at 7:8–10. These coverages zones thus provide extended signal coverage
`for base stations 12a–12n. Id. at 1:21–25, 5:16–19, 6:63–7:3.
`Base station router 14 includes an input interface that receives signals
`from and provides signals to the base stations 12a–12n, allowing uplink and
`downlink functionality. Id. at 7:45–48, 7:50–52, 7:66–8:1, 8:8–10, Fig. 2.
`Base station router 14 also includes an output section that receives signals
`from and provides signals to the remote antenna units, similarly allowing
`uplink and downlink functionality. Id. at 7:45–49, 8:23–24, 8:27–32, 8:41–
`42, Fig. 2.
`Base station router 14 includes a controller that itself includes
`executable instructions for a configuration engine. Id. at 2:19–20, 8:54,
`8:63–67, 9:22, Fig. 2, Fig. 3. Alternatively, the controller could be a
`
`18
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`separate device external to and in communication with base station router
`14. Id. at 8:60–62. The controller 108 can re-configure the configurable
`digital signal processing circuitry of a backplane in the base station router to
`change the routing of signals from the base stations 12a–12n to coverage
`zones 16a–16f. Id. at 8:55–58.
`The controller can receive data describing the routing of signals by the
`base station router 14, including data relating to the determined demand on
`each of coverage zones 16a–16f. Id. at 9:34–39. “The configuration engine
`. . . can include a configuration management function for determining how to
`redistribute signal capacity among coverage zones . . . in response to the
`detection of a traffic indicator.” Id. at 9:40–44. This redistribution changes
`which sectors are provided to which coverage zones. Id. at 3:15–16. For
`example, one sector may be distributed to a decreased number of coverage
`zones, which will increase the capacity density for those zones (how many
`mobile devices can use telecommunications services in the zones). Id. at
`3:43–49, 3:54–68. Figures 4 and 5 are reproduced below:
`
`19
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`
`
`Figures 4 and 5 provide an example of an initial configuration and a changed
`configuration of signal routing. Id. at 2:21–26, 10:30–32.
`In these figures, coverage zones 16a–16f include remote antenna
`units, depicted as darkened circles. Id. at 10:35–38. As seen in Figure 4,
`base station router 14 distributes sectors 302a–302c among coverage zones
`16a–16f communicating the signals of sector 302a to coverage zones 16a–
`16d, the signals of sector 302b to coverage zone 16e, and the signals of 302c
`to coverage zone 16f. Id. at 10:46–49. Thus the capacity of sector 302a is
`divided among coverage zones, while the capacity of sectors 302b and 302c
`are each devoted to one respective coverage zone. Id. at 10:49–53. Figure 5
`depicts a change in this configuration, in which base station 14
`communicates the signals of sector 302a to only one coverage zone
`
`20
`
`

`

`IPR2021-00408
`Patent 10,506,454 B2
`(coverage zone 16a) and the signals of sectors 302b and 302c each are
`communicated to two coverage zones per sector. Id. at 11:21–25. This
`change in configuration may better serve users of wireless devices if, for
`example, fewer wireless devices are located in the area of coverage zones
`16a–16d at a first time (thus requiring less capacity) and subsequently at a
`second time, more capacity is required in coverage zones 16a–16d because
`more wireless devices are in coverage zones 16a–16d relative to coverage
`zones 16e and 16f. Id. at 3:43–4:19, 10:64–11:28.
`This redistribution may be in response to the detection of a traffic
`indicator. Id. at 1:46–1:48, 1:60–1:63, 9:42–44. “A traffic indicator can
`include data describing or otherwise corresponding to a number of mobile
`devices in each coverage zone. Examples of a traffic indicator can include a
`scheduled event of a game, concert, or other type of event, a scheduled
`sequence of events with pre-game, game, and post-game configurations,
`traffic measurements passing low or high thresholds, base transceiver station
`failure events, and loss of capacity due to high inter-sector interference.” Id.
`at 9:44–52.
`
`2. Analysis of Claim 1
`Petitioner argues that claim 1 is anticipated by Kummetz-464. Pet.
`20–40. Patent Owner presents several arguments asserting that Kummetz-
`464 does not anticipate. Prelim. Resp. 35–50.
`a) Preamble
`The preamble of claim 1 describes “[a] system for dynamically
`routing signals in a Distributed Antenna System (DAS) operable to
`communicate with a plurality of signal sources.” Ex. 1001, 17:50–52.
`Petitioner argues that even if the preamble is limiting, Kummetz-464
`discloses it. Pet. 20–21.
`
`