UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC. AND HP INC.,
`Petitioners
`
`v.
`
`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-00367
`Patent No. 10,715,235
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC. AND HP INC.,
`Petitioners
`
`v.
`
`XR COMMUNICATIONS, LLC, D/B/A VIVATO TECHNOLOGIES,
`Patent Owner
`____________
`
`IPR2022-00367
`Patent No. 10,715,235
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`Introduction ........................................................................................................ 2
`I.
`II. Petitioner’s Asserted Grounds and References .................................................. 2
`III. Institution Should Be Denied Under the Fintiv Factors ..................................... 2
`A. Parallel Proceedings ..................................................................................... 22
`B. Factor 1 weighs against institution, as there is no stay in the district court
`now and no evidence exists that a stay may be granted in the future. ................. 23
`C. Factor 2 weighs strongly against institution, as trial in the district court is
`scheduled to be completed seven months before the FWD. ................................ 24
`D. Factor 3 weighs strongly against institution, as claim construction
`proceedings in the district court case are already completed, and discovery is
`well under way, with fact discovery to be substantially completed before the date
`the institution decision is due. ............................................................................. 25
`E. Factor 4 weighs against institution, as there is overlap between this IPR and
`the district court case. .......................................................................................... 27
`F. Factor 5 weighs against institution, as Petitioner is a Respondent in the
`parallel district court case. ................................................................................... 29
`G. Factor 6 weighs in against institution. .......................................................... 29
`H. Summary Regarding Fintiv Factors .............................................................. 30
`IV. Conclusion ....................................................................................................... 31
`
`
`
`i
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`IPR2022-00367
`Patent No. 10,715,235
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`Exhibits
`
`2002
`
`2003
`
`2004
`
`2005
`
`Exhibit No. Description
`2001
`Complaint, XR Communications v. Apple Inc., W.D. Tex. Case
`No. 21-cv-00620-ADA
`Complaint, XR Communications v. HP Inc., W.D. Tex. Case No.
`21-cv-00694-ADA
`Scheduling Order, XR Communications v. Apple Inc., W.D. Tex.
`Case No. 21-cv-00620-ADA, Dkt. No. 27 (W.D. Tex., Jan. 13,
`2022)
`Scheduling Order, XR Communications v. HP Inc., W.D. Tex.
`Case No. 21-cv-00694-ADA, Dkt. No. 24 (W.D. Tex., Jan. 13,
`2022)
`Notice of Agreed Extension of Deadline, XR Communications v.
`Apple Inc., W.D. Tex. Case No. 21-cv-00620-ADA, Dkt. No. 27
`(W.D. Tex., Jan. 13, 2022)
`Notice of Agreed Extension of Deadline, XR Communications v.
`HP Inc., W.D. Tex. Case No. 21-cv-00694-ADA, Dkt. No. 24
`(W.D. Tex., Jan. 13, 2022)
`Exhibit A-14 to Defendants’ Preliminary Invalidity Contentions
`in XR Communications v. Apple Inc., W.D. Tex. Case No. 21-cv-
`00620-ADA and XR Communications v. HP Inc., W.D. Tex.
`Case No. 21-cv-00694-ADA
`Excerpts of Defendants’ Preliminary Invalidity Contentions in
`XR Communications v. Apple Inc., W.D. Tex. Case No. 21-cv-
`00620-ADA and XR Communications v. HP Inc., W.D. Tex.
`Case No. 21-cv-00694-ADA
`
`
`2006
`
`2007
`
`2008
`
`1
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`IPR2022-00367
`Patent No. 10,715,235
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`I.
`
`Introduction
`The Petition (“Pet.”) challenges the claims 8-14 of U.S. Patent No. 10,715,235
`
`(Ex. 1001) under two grounds of unpatentability. One of the primary objectives of
`
`the AIA was “to provide an effective and efficient alternative to district court
`
`litigation.” But this IPR cannot be an alternative (much less an effective and efficient
`
`one) to a WDTex trial between Petitioner and Patent Owner scheduled to conclude
`
`before the FWD deadline. The parties have already begun investing significant
`
`resources in that case and at the time of the institution decision, the parties in the
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`WDTex will have completed the Markman process and be in the midst of fact
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`discovery. Further, the WDTex case and scheduled trial will involve the same claim
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`construction standard, same invalidity theories, and same prior art references that
`
`are at issue in this IPR. Under the PTAB’s precedential orders in NHK Spring and
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`Fintiv, the Board should deny institution under § 314(a).
`
`II.
`
`Petitioner’s Asserted Grounds and References
`The Petition asserts the following two grounds of unpatentability:
`
`• Claims 8-12 are obvious over Burke. (Pet. at 2).
`
`• Claims 13, 14 are obvious over Burke in view of Shull. (Pet. at 2).
`
`III.
`
`Institution Should Be Denied Under the Fintiv Factors
`35 U.S.C. § 314(a) only permits the Director to authorize institution when
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`there is a reasonable likelihood that the petitioner will prevail with respect to at least
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`
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`2
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`IPR2022-00367
`Patent No. 10,715,235
`one of the challenged claims. Petitioners’ arguments on the merits suffer from
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`several weaknesses that apply to all grounds and challenged claims. Patent Owner
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`addresses the Petition’s merits below, particularly to show that the merits are not
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`“particularly strong” and do not establish a reasonable likelihood of success. While
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`these substantive issues provide an independent bases for denying institution of this
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`IPR, they also fail to support institution under Fintiv Factor 6.
`
`The Petition asserts only two grounds of unpatentability. Pet. at 2. Both
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`grounds are based on the Burke reference. Pet. at 2. Patent Owner respectfully
`
`submits that Exhibit-1006 (Burke) does not qualify as prior art under 35 U.S.C. §
`
`102(b) or § 102(e).
`
`The Petition asserts that the Burke reference was filed on October 15, 2002.
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`Pet. at 2. The Petition then asserts that Burke qualifies as prior art under 35 U.S.C.
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`§ 102(b) or § 102(e) based on an alleged priority date for the ’235 Patent of
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`November 3, 2003. Pet. at 2. However, as Applicant explained during the
`
`prosecution of the ’534 Application, the challenged claims are entitled to a priority
`
`date at least as early as February 1, 2002. See EX-1002, 268-272 (‘235 Patent File
`
`History, Office Action Response, dated July 25, 2018, at 2-6). Indeed, the Examiner
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`found these arguments “persuasive” and agreed that the challenged claims are
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`entitled to a priority date at least as early as February 1, 2002. EX-1002, 98 (‘235
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`Patent File History, Office Action, dated September 26, 2018, at 2).
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`3
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`IPR2022-00367
`Patent No. 10,715,235
`Because the challenged claims are entitled to a priority date at least as early
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`as February 1, 2002, Exhibit-1006 (Burke) does not qualify as prior art under 35
`
`U.S.C. § 102(b) or § 102(e). The Petition also asserts in Footnote 1 that “Burke
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`claims priority to U.S. Provisional Appl. No. 60/355,296, which was filed Feb. 8,
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`2002, and the ‘296 provisional supports at least one of Burke’s issued claims.” Pet.
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`at 2. Even if true, Burke would still not qualify as prior art under 35 U.S.C. § 102(b)
`
`or § 102(e), because the challenged claims are entitled to a priority date at least as
`
`early as February 1, 2002.
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`A. The Examiner Found The Challenged Claims Are Entitled To A
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`Priority Date of February 1, 2002
`
`During prosecution of the ’539 Application, the Examiner rejected all the
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`claims under 35 U.S.C. § 103 based on the combination of U.S. Patent Publication
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`No. 2002/0158801 (“Crilly” or EX-1008) and U.S. Patent No. 6,714,584 (“Ishii”).
`
`However, Applicant successfully “traverse[d] the rejection, contending that Crilly is
`
`not prior art to the present application.” EX-1002, 268-272, 986-987. As Applicant
`
`explained:
`
`“The present application claims priority to Provisional Application No.
`60/423,660, which was filed November 4, 2002. The Provisional
`application includes a compilation of several documents, labeled
`Appendices A-L on page 2. These documents describe aspects and
`embodiments of Applicant’s invention existing at the time the
`particular document was written.
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`4
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`IPR2022-00367
`Patent No. 10,715,235
`Document A, at page A-71, lists several “References” used in
`compiling Document A. Included in the References list is “[2] Ed
`Casas, ‘Beamforming for LittleJoe’, ViVATO Technical Report, Feb 1
`2002,” which is Document C of the Provisional. At least Document C
`describes aspects of Applicant’s invention that had been invented at
`least as early as February, 2002, which is well before Crilly was
`published (October 31, 2002). As such, at least the disclosure in
`Document C was invented before Crilly was published, and Crilly is
`not prior art to such disclosure.
`
`
`Ex. 1002, 268. Thus, as Applicant explained, the invention was conceived and
`
`reduced to practice at least as early as February 1, 2002—the date of “[2] Ed Casas,
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`‘Beamforming for LittleJoe’, ViVATO Technical Report, Feb 1 2002,” which is
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`included as Document C of Provisional Application 60/423,660 (the “’660
`
`Provisional Application”). EX-1009, 134 (Feb. 1, 2002 “Beamforming for LittleJoe”
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`Vivato Technical Report).
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`Applicant then proceeded to explain that each of the limitations that the Office
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`Action contended were taught by Crilly were invented prior to Crilly’s publication.
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`EX-1002, 268-272. Accordingly, as the Examiner agreed, each element of the
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`challenged claims is disclosed in EX-1009, 134 (Ed Casas, “Beamforming for
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`LittleJoe,” ViVATO Technical Report, Feb. 1, 2002). This article was included
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`5
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`Patent No. 10,715,235
`within Provisional Application 60/423,660 as Document C. The article is dated
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`February 1, 2002. This February 1, 2002 date is confirmed in the Little Joe
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`Functional Specification in Provisional Application 60/423,660 at A-71 (EX-1009,
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`77):
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`This date
`
`is also confirmed
`
`
`in Document C. See, e.g., Ex-1009, 148
`
`(“AUTHOR/DATE: Ed Casas 2002/2/1”).
`
`B.
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`The ’660 Provisional Application Establishes A February 1, 2002
`
`Priority Date For The Challenged Claims
`
`The Examiner correctly found that the challenged claims are entitled to a
`
`priority date of February 1, 2002. The ’660 Provisional Application includes an
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`article dated February 1, 2002 that discloses the elements of the challenged claims.
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`EX-1009, 77 (“[2] Ed Casas, ‘Beamforming for LittleJoe’, ViVATO Technical
`
`Report, Feb 1 2002”), 134 (Ed Casas, “Beamforming for LittleJoe,” ViVATO
`
`Technical Report, Feb. 1, 2002), 148 (“AUTHOR/DATE: Ed Casas 2002/2/1”).
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`The Petition wrongly contends that the ’660 Provisional Application does not
`
`establish a February 1, 2002 invention date. Pet. at 11-12. Petitioner contends that
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`an affidavit with inventor testimony corroborating the conception and reduction to
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`6
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`IPR2022-00367
`Patent No. 10,715,235
`practice was required. Pet. at 11-12 (arguing that “[s]imply citing to disclosure in
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`the ’660 Provisional Application…is not sufficient to swear behind a reference or to
`
`establish an invention date prior to the provisional filing.”). But there is no legal
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`authority for Petitioners’ flawed argument—and Petitioners fail to cite a single case
`
`in support of it. Indeed, such an affidavit is not necessary where contemporaneous
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`documentary evidence corroborates the alleged priority date.
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`Here, the prosecution history record makes clear that the ’660 Provisional
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`Application must be afforded a priority date no later than February 1, 2002, in light
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`of the dates listed and corroborating evidence contained within the ’660 Provisional
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`Application itself. As Applicant expressly stated (and as the Examiner correctly
`
`found), the ’660 Provisional Application included documents corroborating that
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`Document C (EX-1009, 134, Ed Casas, “Beamforming for LittleJoe,” ViVATO
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`Technical Report, Feb. 1, 2002), which provides the support for all the elements of
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`the ’235 patent claims, was completed and published on February 1, 2002. Ex. 1002,
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`268 (citing EX-1009, 77 (’660 Provisional Application, A-71) (“[2] Ed Casas,
`
`‘Beamforming for LittleJoe’, ViVATO Technical Report, Feb 1 2002”)); EX-1002,
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`1081-1083, 1091-1107.
`
`Thus, the authenticating and corroborating evidence has been in the
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`prosecution history of the ’235 patent from day one. Indeed, although such
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`documentary evidence is not required to establish a priority date through
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`
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`7
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`IPR2022-00367
`Patent No. 10,715,235
`corroboration, it is generally regarded as the best kind of corroborating evidence.
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`See, e.g., Loral Fairchild Corp. v. Matsushita Elec., 266 F. 3d 1358, 1364 (Fed. Cir.
`
`2001) (earlier priority date assertion must be sufficiently corroborated by
`
`independent evidence beyond the inventor’s own testimony, “but not necessarily
`
`documentary evidence.”)
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`Moreover, even if inventor declarations were necessary, the inventors in this
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`case filed general oaths affirming the contents of and statements in the application,
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`just as they did the prior applications from the same patent family. Ex. 1002, 1081-
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`1083, 1091-1107.
`
`Longstanding precedent confirms that documentary corroborating evidence is
`
`more than sufficient. “Conception must be proved by corroborating evidence which
`
`shows that the inventor disclosed to others his ‘completed thought expressed in such
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`clear terms as to enable those skilled in the art’ to make the invention.” Coleman v.
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`Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) ((quoting Field v. Knowles, 183 F.2d 593,
`
`600 (C.C.P.A. 1950)). However, “there is no final single formula that must be
`
`followed in proving corroboration.” Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed.
`
`Cir. 1997) (quoting Berry v. Webb, 412 F.2d 261, 266 (C.C.P.A. 1969). For example,
`
`in REG Synthestics Fuels, the Federal Circuit held that the patent owner “has proven
`
`conception prior to the filing date of” the prior art, “based on” documentary evidence
`
`alone. REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 962 (Fed. Cir.
`
`
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`8
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`IPR2022-00367
`Patent No. 10,715,235
`2016) (reversing the Board’s findings on conception). The Federal Circuit noted that
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`“there is no final single formula that must be followed in proving corroboration.” Id.
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`(citing Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997) (quoting Berry v.
`
`Webb, 412 F.2d 261, 266 (C.C.P.A. 1969)). While the patent owner in REG
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`Synthetics provided a declaration from the inventor, the Federal Circuit nonetheless
`
`held that the documentary evidence alone was sufficient to "prove[] conception prior
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`to the filing date of" the asserted prior art. Id. Indeed, the Federal Circuit explained,
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`“[t]hese three exhibits provide documentary evidence that, by April 2008, [the
`
`inventor] conceived of a definite and permanent idea of the complete and operative
`
`invention, and that he had disclosed to a third party his complete thoughts in such
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`clear terms that the third party was able to make his invention using his process.” Id.
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`Here, as shown above, contemporaneous documentary evidence corroborates
`
`the alleged priority date of February 1, 2002, which is the date of the article
`
`submitted as Document C in the ’660 Provisional Application. For example, the
`
`Little Joe Functional Specification—included as Document A in the ’660
`
`Provisional Application—corroborates that Document C was dated February 1,
`
`2002. (EX-1009, 77 (’660 Provisional Application, A-71) (“[2] Ed Casas,
`
`‘Beamforming for LittleJoe’, ViVATO Technical Report, Feb 1 2002”). This
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`matches the date appearing in Document C. EX-1009, 148 (“AUTHOR/DATE: Ed
`
`Casas 2002/2/1”). Accordingly, Document A and Document C in the ’660
`
`
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`9
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`IPR2022-00367
`Patent No. 10,715,235
`Provisional Application corroborate an invention date of February 1, 2002. The
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`Petition does not challenge the admissibility of this evidence—nor could they, as the
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`documents are self-authenticating. And thus, Applicant has successfully established
`
`and corroborated the February 1, 2002 priority date.
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`Next, Petitioner contends that Applicant’s arguments during prosecution did
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`not prove conception of the “complete and operative invention.” Pet. at 13. However,
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`Applicant’s Arguments, and Document C itself, prove conception of the “complete
`
`and operative invention.” See EX-1002, 268-272; EX-1009 (’660 Provisional
`
`Application), 134-137. Applicant’s arguments proved conception of the complete
`
`and operative invention, including because Applicant provided citations showing the
`
`disclosure in Document C for each of the challenged claim elements of Challenged
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`Claim 8. EX-1002, 268-272. Patent Owner respectfully submits that Document C
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`discloses each of the challenged claim elements of Challenged Claim 8, as shown in
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`the following table.
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`Challenged Claim 8
`
`in a wireless
`A method for use
`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
`
`134-137
`EX-1009,
`in
`Support
`[Document C of ’660 Provisional
`Application]
`[C-3]: “The signal
`EX-1009, 136
`received by the array elements will be
`the vector sum of signals arriving by
`many paths.” EX-1009, 136 [C-3] also
`refers to the “arrival of signals from the
`desired and undesired users.”
`
`
`
`
`10
`
`
`
`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;
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`IPR2022-00367
`Patent No. 10,715,235
`137
`[C-4]:
`“The
`EX-1009,
`beamforming application uses the signal
`strength
`information derived
`from
`packet receptions by the ‘searcher’
`receivers.”
`
`EX-1009, 134-35 [C-1-C-2]: “Since this
`architecture
`cannot
`adjust
`the
`beamformer in real time it cannot cope
`with random-access transmissions from
`clients. This requires that the clients use
`a polling protocol rather
`than
`the
`standard random-access 802.11 MAC
`protocol.” This “require[s] installing a
`‘shim’ in the client’s protocol stack.”
`
`[C-3]: “The signal
`EX-1009, 136
`received by the array elements will be
`the vector sum of signals arriving by
`many paths.” EX-1009, 136 [C-3] also
`refers to the “arrival of signals from the
`desired and undesired users.”
`
`“The
`[C-4]:
`137
`EX-1009,
`beamforming algorithm computes the
`beamforming weights for a particular
`client (identified by its wireless MAC
`address) and stores it in a table which is
`made available
`to
`the application
`running the modified (polling) MAC
`protocol on ‘card 13.’”
`
`EX-1009, 140 [C-7]: “using the as
`above, ‘boresight’ angle of the beam
`
`
`
`11
`
`
`
`determining first signal information for
`the first signal transmission [and];
`
`determining second signal information
`for the second signal transmission,
`wherein the second signal information
`is different
`than
`the
`first signal
`information;
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`IPR2022-00367
`Patent No. 10,715,235
`with the strongest signal as the angle of
`arrival and setting the weights to the
`complex conjugates of the signals that
`would be received due to a signal in this
`direction”
`
`EX-1009, 138 [C-5]: “estimate[s] the
`angle of arrival using a ‘center of mass’
`calculation over the three beams which
`are centered on the beam with the
`strongest signal.”
`“The
`[C-4]:
`EX-1009,
`137
`beamforming application uses the signal
`strength
`information derived
`from
`packet receptions by the ‘searcher’
`receivers.”
`“The
`[C-4]:
`137
`EX-1009,
`beamforming application uses the signal
`strength
`information derived
`from
`packet receptions by the ‘searcher’
`receivers. However, not all of these
`receivers will correctly receive each
`packet.”
`Also, “Each beam points in a different
`direction…”
`
`“The
`[C-4]:
`137
`EX-1009,
`beamforming algorithm computes the
`beamforming weights for a particular
`client (identified by its wireless MAC
`address) and stores it in a table which is
`made available
`to
`the application
`running the modified (polling) MAC
`protocol on ‘card 13’”.
`
`
`
`12
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`
`
`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;
`
`transmitting to the remote station a third
`signal comprising content based on the
`set of weighting values.
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`IPR2022-00367
`Patent No. 10,715,235
`137
`[C-4]:
`“The
`EX-1009,
`beamforming algorithm computes the
`beamforming weights for a particular
`client (identified by its wireless MAC
`address) and stores it in a table which is
`made available
`to
`the application
`running the modified (polling) MAC
`protocol on ‘card 13’”.
`“The
`[C-4]:
`EX-1009,
`137
`beamforming algorithm computes the
`beamforming weights for a particular
`client (identified by its wireless MAC
`address) and stores it in a table which is
`made available
`to
`the application
`running the modified (polling) MAC
`protocol on ‘card 13’”.
`
`EX-1009, 134 [C-1]: “This signal level
`information is used to compute the
`complex weights for a second RF
`beamformer. This so-called ‘card 13’
`beamformer
`allows
`independent
`complex weights on each array element.
`This beamformer is connected to an
`additional WLAN card which is the one
`actually used for communication (it can
`transmit and receive).”
`
`EX-1009, 134-35 [C-1-C-2]: “Since this
`architecture
`cannot
`adjust
`the
`beamformer in real time it cannot cope
`with random-access transmissions from
`clients. This requires that the clients use
`a polling protocol rather
`than
`the
`
`
`
`13
`
`
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`IPR2022-00367
`Patent No. 10,715,235
`standard random-access 802.11 MAC
`protocol.” This “require[s] installing a
`‘shim’ in the client’s protocol stack.”
`
`
`
`Document C also proves that reduction to practice had occurred at least as
`
`early as February 1, 2002. Petitioner contends that Document C does not represent
`
`a reduction to practice because a portion of Document C describes a “current
`
`simulation code.” Pet. at 14, citing EX-1009, 143. Petitioner contends that a
`
`“computer simulation” is not a “physical embodiment.” Id. As an initial matter, even
`
`if Document C were limited to describing a “computer simulation,” that would still
`
`qualify as a physical embodiment and a reduction to practice of the claimed
`
`invention. But in any event, Document C proves that the “simulation code” was
`
`written to explore improvements to the physical embodiment of the Little Joe
`
`architecture that pre-dated the “simulation code.” Document C confirms that Little
`
`Joe was an architecture that “uses two separate RF beamformers. The first
`
`beamformer, the ‘searcher,’ is for receiving only and uses a 16-port Butler matrix
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`whose outputs are connected to 16 standard WLAN cards installed in a PC. An
`
`application on the PC obtains the received signal levels for each received packet.
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`The signal level information is used to compute the complex weights for a second
`
`RF beamformer.” EX-1009, 134. This evidences that the Little Joe architecture was
`
`reduced to practice before any “simulation code” was written.
`
`
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`14
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`IPR2022-00367
`Patent No. 10,715,235
`Further, in the descriptions of the “simulation code,” Document C provides
`
`that “[t]he results show that in most cases there is little advantage to a continuously-
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`steerable beamformer as compared to one that can be steered over a small (N)
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`number of angles. This raises the question of whether the Little Joe architecture
`
`could be simplified by using the same Butler matrix for transmitting and receiving.”
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`EX-1009, 142. This establishes that the Little Joe architecture was already built and
`
`reduced to practice as of the date that the “simulation code” was written to explore
`
`further improvements to an already-existing deployment. Once the invention has
`
`been shown
`
`to work for
`
`its
`
`intended purpose, reduction to practice
`
`is
`
`complete. Loral Fairchild Corp. v. Matsushita Elec., 266 F.3d 1358, 1362–63 (Fed.
`
`Cir. 2001) (citing Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996)).
`
`C. Document C in the ’660 Provisional Application Provides Support
`
`For Each Limitation of the Challenged Claims
`
`As shown above, the ’660 Provisional Application disclosed all of the claimed
`
`features of the Challenged Claims, and thus supports a priority date of February 1,
`
`2002.
`
`Petitioner argues that there are “two limitations recited in claim 8 that are not
`
`supported in Document C.” Pet. at 15. But Patent Owner respectfully submits that
`
`the two challenged claim elements are clearly disclosed in Document C. EX-1009,
`
`134-143 (Feb. 1, 2002 “Beamforming for LittleJoe” Vivato Technical Report)
`
`
`
`15
`
`
`
`1.
`
`IPR2022-00367
`Patent No. 10,715,235
`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
`The first challenged element is “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.” EX-1001, 33:48-34:2.
`
`Petitioner only disputes the portion of this element requiring “simultaneous”
`
`receipt of a first and second signal transmission from the same remote station. Pet.
`
`at 16. However, these elements are disclosed in Document C. As Petitioners note,
`
`the “searcher” “comprises a 16-port Butler matrix coupled to 16 different WLAN
`
`wireless cards.” Id. As will be shown below, Document C describes methods by
`
`which multiple signals are received simultaneously. EX-1009, 134 [C-1] (“The first
`
`beamformer, the ‘searcher,’ is for receiving only and uses a 16-port Butler matrix”),
`
`136 [C-3] (“The signal received by the array elements will be the vector sum of
`
`signals arriving by many paths…the performance of different beamforming
`
`techniques [will depend on] the direction of arrival of signals from the desired and
`
`undesired users.”). Similarly, the Little Joe Functional Specification in the ’660
`
`Provisional Application [A-46-A-47] confirms that each “WLAN radio on each
`
`Butler matrix port” “listen simultaneously.” EX-1009, 51-52 (“All of the radios
`
`
`
`16
`
`
`
`IPR2022-00367
`Patent No. 10,715,235
`listen simultaneously”). The written description requirement is evaluated through
`
`the perspective of one of ordinary skill in the art, and these disclosures demonstrate
`
`that the inventors had possession of the claimed invention. Inphi Corp. v. Netlist,
`
`Inc., 805 F.3d 1350, 1354-55 (Fed. Cir. 2015).
`
`Document C discloses receiving a first and second signal transmission
`
`simultaneously from the same remote station (as an example, the “desired user”).
`
`Petitioners concede that “Document C further explains that the ‘performance of
`
`different beamforming techniques… will depend on: the direction of arrival of
`
`signals from the desired and undesired users (which in turn depends on the locations
`
`of the scatterers)’.” Pet. at 17. Indeed, Petitioners acknowledge that “Document C
`
`describes that ‘[t]he signal received by the array elements will be the vector sum of
`
`signals arriving by many paths.’” Id. Document C describes multiple examples of
`
`determining the direction of the arriving signals from the “desired users,” such as
`
`through “Beamforming Methods” (e.g. summing of signals) which provide that
`
`“beamforming weights were computed in three ways.” EX-1009, 140.
`
`Document C describes that the “searcher” receivers use a “Butler matrix” with
`
`“N = 16 array elements to form N beams.” EX-1009, 137. Moreover, the
`
`“beamforming application uses the signal strength information derived from packet
`
`receptions by the ‘searcher’ receivers.” Id. This design enables the searcher receiver
`
`to receive multiple signals simultaneously via the receive beams.
`
`
`
`17
`
`
`
`IPR2022-00367
`Patent No. 10,715,235
`One possible method uses the “‘boresight’ angle of the beam with the
`
`strongest signal as the angle of arrival and setting the weights to the complex
`
`conjugates of the signals that would be received due to a signal in this direction.”
`
`Id., 140. As described in Document C, this method employs one “beam with the
`
`strongest signal” as well as other beams resulting from the “conjugates… that would
`
`be received due to a signal in this direction.” Id. These conjugate signals are “due”
`
`to the “beam with the strongest signal.” Id. Thus, these multiple beams are received
`
`at the same time from the same device for purposes of evaluation in this method.
`
`Similarly, Document C describes another possible method which
`
`“estimate[es] the [direction of arrival] by means of the ‘center of mass’ algorithm.”
`
`EX-1009, 139. This method “estimate[s] the angle of arrival using a ‘center of mass’
`
`calculation over the three beams which are centered on the beam with the strongest
`
`signal.” EX-1009, 138. Document C explains that “signal powers are used as each
`
`beam’s ‘mass’ and each beam’s boresight direction as it ‘position.’” EX-1009, 138.
`
`This is depicted in “Table 1,” indicating the “adjacent beam levels (dB) versus angle
`
`of arrival (degrees).” EX-1009, 139. The table identifies multiple beams (“Beam -
`
`1,” “Beam 0,” and “Beam 1”) from a single device which are necessarily received at
`
`the same time because they are “adjacent” to one another. Id. Further, these three
`
`beams are used in the same equation to “estimate the direction of arrival” allowing
`
`the formation of a beam. EX-1009, 139. Indeed, Document C confirms that
`
`
`
`18
`
`
`
`IPR2022-00367
`Patent No. 10,715,235
`“Measuring the level of the second-strongest adjacent beam with an accuracy of
`
`about 2 dB would be sufficient to identify the direction of arrival to within 1 degree.”
`
`EX-1009, 138.
`
`Under either of these methods, Document C indicates that the signals will be
`
`received simultaneously because “scatterers will be moving and the phases and
`
`magnitudes will change over time.” EX-1009, 136.
`
`2.
`
`“wherein the set of weighting values is configured to
`be used by the remote station to construct one or
`more beam-formed transmission signals”
`The next challenged element is “wherein the set of weighting values is
`
`configured to be used by the remote station to construct one or more beam-formed
`
`transmission signals.” EX-1001, 33:48-34:2.
`
`This challenged element is disclosed at Document C-4, which provides: “The
`
`beamforming algorithm computes the beamforming weights for a particular client
`
`(identified by its wireless MAC address) and stores it in a table which is made
`
`available to the application running the modified (polling) MAC protocol on ‘card
`
`13.’” EX-1009, 137. See EX-1002, 268-272.
`
`Petitioner disputes that Document C discloses computing beamforming
`
`weights for use by “a particular client.” EX-1009, 137. However, the disclosure at
`
`EX-1009, 137 shows that the set of weighting values (i.e., the “complex weights”)
`
`are configured to be used by the remote station (“[t]he beamforming algorithm
`
`
`
`19
`
`
`
`IPR2022-00367
`Patent No. 10,715,235
`computes the beamforming weights for a particular client (identified by its wireless
`
`MAC address)”) to construct one or more beam-formed transmission signals. EX-
`
`1009, 137.
`
`As another example, Document C also discloses that the “beamforming
`
`weights for a particular client (identified by its wireless MAC address)” are
`
`transmitted to the client device that is running a “modified (polling) MAC protocol”
`
`installed on the client device. EX-1009, 137 [C-4]. Document C states that “the
`
`beamforming weights for a particular client (identified by its wireless MAC
`
`address)” are “stored in a table which is made available to the application running
`
`the modified (polling) MAC protocol on card 13.” EX-1009, 137 [C-4]. The
`
`beamforming weights are then transmitted to the client device for use with its
`
`modified (polling) MAC protocol. Document C discloses that “the clients use a
`
`polling protocol rather than the standard random-access 802.11 MAC protocol,”
`
`which “require[s] installing a ‘shim’ in the client’s protocol stack.” EX-1009, 135
`
`[C-2]. Thus, the “beamforming weights for a particular client (identified by its
`
`wireless MAC address)” ar
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