Trials@uspto.gov Paper 53
`Tel: 571-272-7822
`
`Entered March 7, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SPRINT SPECTRUM, L.P,
`Petitioner,
`
`v.
`
`GENERAL ACCESS SOLUTIONS LTD,
`Patent Owner.
`____________
`
`Case IPR2017-01885 (Patent 7,173,916 B2)
`Case IPR2017-01887 (Patent 6,891,810 B2)
`____________
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, KALYAN K. DESHPANDE and DAVID M. KOHUT,
`Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`

`

`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Sprint Spectrum L.P. (“Petitioner”) filed a Petition to institute an inter
`
`partes review of claims 1‒16 of U.S. Patent No. 7,173,916 B2 (Ex. 1001,1
`
`“the ’916 patent”) and claims 1–14 of U.S. Patent No. 6,891,810 B2 (1887
`
`Ex. 1001, “the ’810 patent”). Paper 1 (“1885 Pet.” or “Pet.”); 1887 Paper 1
`
`(“1887 Pet.”).
`
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review of the
`
`ʼ916 patent and the ’810 patent, on March 9, 2018, under 35 U.S.C.
`
`§ 103(a), as to claims 1‒16 of the ’916 patent as unpatentable over Ahy2 and
`
`Csapo,3 and claims 1–3, 6, 8–10, and 13 of the ’810 patent as unpatentable
`
`over Ahy and Csapo, and claims 2–7 and 9–14 of the ’810 patent as
`
`unpatentable over Ahy Csapo, and Sanders.4 Paper 6 (“Dec.”); 1887 Paper 5
`
`(“1887 Dec.”). On April 24, 2018, the Supreme Court held that a final
`
`written decision under 35 U.S.C. § 318(a) must decide the patentability of all
`
`
`1 IPR2017-01885 and IPR2017-01887 include substantially the same papers
`and exhibits. The arguments and evidence set forth by Petitioner and Patent
`Owner are generally similar in IPR2017-01885 and IPR2017-01887.
`Accordingly, we issue a consolidated Final Written Decision, and all
`citations are to IPR2017-01885 unless otherwise indicated. Citations to
`IPR2017-01885 may be preceded by “1885” and citations to IPR2017-01887
`are preceded by “1887.”
`
`2 U.S. Patent No. 7,366,133 B1, issued Apr. 29, 2008 (Ex. 1004, “Ahy”).
`
`3 U.S. Patent No. 6,411,825 B1, issued June 25, 2002 (Ex. 1006, “Csapo).
`
`4 Sanders, Ray, “Proposed Amendments to 802.16.1pc-00/02 for a PHY
`Layer to Include a Bandwidth-On-Demand MAC/PHY Sublayer,” IEEE
`802.16 Broadband Wireless Access Group, December 24, 1999 (1887
`Ex. 1006, “Sanders”).
`
`2
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`

`

`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348
`
`(2018); see also “Guidance on the Impact of SAS on AIA Trial Proceedings”
`
`(Apr. 26, 2018), https://www.uspto.gov/patents-application-process/patent-
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`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (stating that if the
`
`PTAB institutes a trial, the PTAB will institute on all challenges raised in
`
`the petition). Accordingly, on April 28, 2018, we issued an Order modifying
`
`our Decisions to further institute inter partes review of claims 1–16 of the
`
`’916 patent as unpatentable over Klein5 and a person with ordinary skill in
`
`the art, claims 1 and 8 of the ’810 patent as unpatentable over Klein and a
`
`person with ordinary skill in the art, and claims 2–7 and 9–14 of the ’810
`
`patent as unpatentable over Klein, a person with ordinary skill in the art, and
`
`Sanders. Paper 9; 1887 Paper 8.
`
`Patent Owner filed a Response in each proceeding ((Paper 31, “PO
`
`Resp.”); (Paper 29, “1887 PO Resp.”)), Petitioner filed a Reply in each
`
`proceeding ((Paper 41, “Pet. Reply”); (Paper 38, “1887 Pet. Reply”)), and
`
`Patent Owner filed a Sur-Reply in each proceeding ((Paper 50, “PO Sur-
`
`Reply”); (Paper 46, “1887 PO Sur-Reply”)). A consolidated oral hearing
`
`was held on December 6, 2018, and the hearing transcript has been entered
`
`in the record. Paper 56 (“Tr.”). Petitioner also filed a Motion to Exclude
`
`(Paper 45, “Pet. MTE”), to which Patent Owner filed an Opposition (Paper
`
`51, “PO MTE Opp.”), and Petitioner filed a Reply to Patent Owner’s
`
`Opposition (Paper 53, “Pet. MTE Reply”). Patent Owner also filed a Motion
`
`to Strike (Paper 48, “PO MTS”), to which Petitioner filed an Opposition
`
`(Paper 52, “Pet. MTS Opp”).
`
`
`5 Klein et al., “PHY Layer Proposal for BWA”, IEEE 802.16, January 5,
`2000 (Ex. 1005, “Klein”).
`
`3
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`

`

`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`Pursuant to our jurisdiction under 35 U.S.C. § 6, we conclude, for the
`
`reasons discussed below, that Petitioner has shown by a preponderance of
`
`the evidence that claims 1–16 of the ’916 patent and claims 1–14 of the ’810
`
`patent are unpatentable under 35 U.S.C. § 103(a).
`
`B. Related Proceedings
`
`The parties indicate that the ’916 patent and ’810 patent are involved
`
`in General Access Solutions, Ltd. v. Sprint Spectrum L.P., Civil Action No.
`
`2:16-CV-465 (E.D. Tex.). Pet. 2; Paper 3, 1; 1887 Pet. 2; 1887 Paper 3, 1.
`
`IPR2017-01889 involves the same parties and is also before the Board.
`
`C. The ʼ916 Patent and the ’810 Patent
`
`The ’916 patent and the ’810 patent disclose an improved air interface
`
`system for use in a fixed wireless access network that maximizes usage of
`
`the available bandwidth in a cell site. Ex. 1001, 9:9–11; 1887 Ex. 1001,
`
`9:9–11.6 The ’916 patent and the ’810 patent provide a radio frequency (RF)
`
`modem shelf for use in a fixed wireless access network comprising a
`
`plurality of base stations capable of bidirectional time division duplex
`
`(TDD) communication with wireless access devices disposed at a plurality
`
`of subscriber premises. Id. at 9:35–40.
`
`
`6 The ’916 patent and ’810 patent include substantially similar specifications
`and figures. Accordingly, all citations are to the ’916 patent unless
`otherwise specified.
`
`4
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`

`

`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`The fixed wireless access network is disclosed in Figure 1 as follows:
`
`
`
`Figure 1 illustrates fixed wireless access network 100, which
`
`comprises transceiver base station 110 that transmits forward channel
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`broadband signals to subscriber premises 121, 122, 123, and antennas 131,
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`132, and 133. Id. at 11:57–12:6. Transceiver base station 110 is coupled to
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`RF modem shelf 140, which converts baseband data traffic received from
`
`external network 150 to RF signals transmitted in the forward channel to
`
`subscriber premises 121, 122, and 123. Id. at 12:15–22.
`
`RF modem shelf 140 comprises a plurality of RF modems capable of
`
`modulating the baseband data traffic and demodulating the reverse channel
`
`RF signals. Id. at 12:23–26. Transceiver base stations cover a cell site area
`
`that is divided into a plurality of sectors, and each RF modem shelf is
`
`assigned to modulate and demodulate signals in a particular sector of each
`
`cell site. Id. at 12:27–32.
`
`D. Illustrative Claims
`
`Petitioner challenges claims 1‒16 of the ’916 patent and claims 1–14
`
`of the ’810 patent. Pet. 13‒66; 1887 Pet. 13–64. Claims 1 of each patent are
`
`illustrative of the claims at issue and are reproduced below:
`
`5
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`For use in a fixed wireless access network comprising a
`1.
`plurality of base stations performing bidirectional time division
`duplex (TDD) communication with wireless access devices disposed
`at a plurality of subscriber premises, a radio frequency (RF) modem
`shelf comprising:
`
`a first RF modem communicating with a plurality of said wireless
`access devices using TDD frames, each TDD frame having an
`uplink for receiving data and a downlink for transmitting data;
`and
`
`a modulation controller associated with said RF modem shelf
`determining an optimum modulation configuration for each of
`said plurality of wireless access devices communicating with
`said first RF modem, wherein said modulation controller causes
`said first RF modem to transmit downlink data to a first
`wireless access device in a first data block within a TDD frame
`using a first modulation configuration and to transmit downlink
`data to a second wireless access device in a second data block
`within said TDD frame using a different second modulation
`configuration.
`
`Ex. 1001, 25:35‒54.
`
`For use in a fixed wireless access network comprising a
`1.
`plurality of base stations performing bidirectional time division
`duplex (TDD) communication with wireless access devices disposed
`at a plurality of subscriber premises, a radio frequency (RF) modem
`shelf comprising:
`
`a first RF modem communicating with a plurality of said wireless
`access devices using TDD frames, each TDD frame having an
`uplink for receiving data and a downlink for transmitting data;
`and
`
`a modulation controller associated with said RF modem shelf
`determining an optimum modulation configuration for each of
`said plurality of wireless access devices communicating with
`said first RF modem, wherein said modulation controller causes
`said first RF modem to transmit first downlink data to a first
`wireless access device in a first data block having a first
`optimum modulation configuration and to transmit second
`downlink data to said first wireless access device in a second
`
`6
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`data block having a different second optimum modulation
`configuration.
`
`1887 Ex. 1001, 25:38‒57.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b) (2017); 7 see also Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard as the claim construction
`
`standard to be applied in an inter partes review proceeding). Under the
`
`broadest reasonable interpretation standard, claim terms are generally given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art, in the context of the entire disclosure. In re
`
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). See Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(“[O]nly those terms need be construed that are in controversy, and only to
`
`the extent necessary to resolve the controversy.”). We determine that no
`
`terms need to be construed for the purposes of this decision.
`
`
`7 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`
`
`7
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
`
`
`B. Level of Ordinary Skill in the Art
`
` “Section 103(a) forbids issuance of a patent when ‘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).
`
`Mr. James A. Proctor Jr., Petitioner’s expert, explains that a
`
`hypothetical person of ordinary skill in the art, with respect to and at the
`
`time of the ’916 patent and ’810 patent, would have “a Bachelor of Science
`
`in Computer Science, Computer Engineering, Electrical Engineering, or an
`
`equivalent field as well as at least 2 years of academic or industry experience
`
`in both wireless networking and related protocols.” Pet. 8 (citing Ex. 1003 ¶
`
`27); 1887 Pet. 7 (citing 1887 Ex. 1003 ¶ 24).8 Patent Owner agrees. PO
`
`Resp. 2–3; 1887 PO Resp. 2.
`
`We accept Petitioner and Patent Owner’s proffered level of ordinary
`
`skill in the art as it is agreed upon and consistent with the prior art of record.
`
`See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the
`
`art is a prism or lens through which a judge, jury, or the Board views the
`
`
`8 Petitioner argues that Mr. Humphrey, Patent Owner’s expert, has a degree
`in “Ceramic Engineering,” and does not qualify as a person with ordinary
`skill in the art under Patent Owner’s own definition. Pet. Reply 25 n. 15.
`Petitioner, however, does not explain the difference between
`Mr. Humphrey’s testimony and the testimony that a person with ordinary
`skill in the art would offer. Accordingly, we understand Petitioner’s
`footnote to be directed towards the weight we afford Mr. Humphrey’s
`testimony.
`
`8
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`

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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
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`prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`
`F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of
`
`ordinary skill in the art lies in the necessity of maintaining objectivity in the
`
`obviousness inquiry.”). To that end, we note that the prior art itself often
`
`reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.
`
`C. Obviousness of claims 1–16 of the ’916 patent and claims 1–3, 6,
`8–10, and 13 of the ’810 patent over Ahy and Csapo
`
`Petitioner contends that claims 1‒16 of the ’916 patent are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Ahy and Csapo.
`
`Pet. 13–47. Petitioner contends that claims 1‒3, 6, 8–10, and 13 of the ’810
`
`patent are unpatentable under 35 U.S.C. § 103 as obvious over Ahy and
`
`Csapo. 1887 Pet. 13–37. For the reasons discussed below, we determine
`
`that Petitioner has established, by a preponderance of the evidence, that
`
`claims 1‒16 of the ’916 patent and 1‒3, 6, 8–10, and 13 of the ’810 patent
`
`are unpatentable under 35 U.S.C. § 103 as obvious over the combination of
`
`Ahy and Csapo.
`
`1. Ahy (Ex. 1004)
`
`Ahy is directed to wireless communication systems, including
`
`adaptive point to multipoint wireless communication. Ex. 1004, 1:19–21.
`
`The disclosed method and system integrates adaptive and dynamic
`
`responsiveness for communication parameters related to multiple
`
`characteristic of wireless communication links. Id. at 1:67–2:3. In a first
`
`aspect, a wireless physical (PHY) layer and wireless media-access-control
`
`(MAC) layer collectively include a set of communication parameters, each
`
`of which is adaptively modified by a base station controller (BSC) for
`
`communication with a plurality of customer premises equipment (CPE). Id.
`
`at 2:15–21. In a second aspect, a wireless transport layer includes adaptive
`
`9
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
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`and dynamic characteristics responsive to communication characteristics
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`between the BSC and each selected CPE. Id. at 2:33–36. These
`
`communication characteristics are responsive to each individual
`
`communication link so as to optimize communication bandwidth between
`
`the BSC and each selected CPE. Id. at 2:37–40.
`
`2. Priority date of the challenged claims of the ’916 patent and the
`’810 patent with respect to Ahy
`
`Petitioner asserts that Ahy was filed on July 21, 2000, and qualifies as
`
`prior art under at least 35 U.S.C. § 102(e). Pet. 3; 1887 Pet. 3. Patent
`
`Owner argues that Mr. Paul Struhsaker, a named inventor of the ’916 patent
`
`and the ’810 patent, conceived of and diligently reduced to practice the
`
`inventions of the ’916 patent and ’810 patent at least by July 20, 2000,
`
`before the filing date of Ahy. PO Resp. 13–35; 1887 PO Resp. 13–35.
`
`Patent Owner provides the testimony of Mr. Michael Eckert and other
`
`contemporaneous documents to corroborate that Mr. Struhsaker conceived
`
`of the subject matter claimed prior to July 21, 2000. Id.; 1887 PO Resp. 13–
`
`35.
`
`In an inter partes review, the burden of persuasion is on the petitioner
`
`to prove “unpatentability by a preponderance of the evidence.” 35 U.S.C.
`
`§ 316(e). A petitioner also has the initial burden of production, or the
`
`burden of going forward with evidence. Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015).
`
`Petitioner met its initial burden of production by offering Ahy into
`
`evidence and asserting that Ahy is prior art, under 35 U.S.C. § 102(e), to the
`
`’916 patent and the ’810 patent because the actual filing date of Ahy is
`
`before the actual filing date of the ’916 and ’810 patents. See Pet. 3; 1887
`
`Pet. 3. The burden of production then shifted to Patent Owner to produce
`
`10
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
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`evidence supporting a date of invention before Ahy. See Dynamic
`
`Drinkware, 800 F.3d at 1379–80; Mahurkar v. C.R. Bard, Inc., 79 F.3d
`
`1572, 1576–77 (Fed. Cir. 1996).
`
`A “patentee bears the burden of establishing that its claimed invention
`
`is entitled to an earlier priority date than an asserted prior art reference.” In
`
`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). The
`
`Federal Circuit has held:
`
`When the issue of priority concerns the antedating of a
`reference, the applicant is required to demonstrate, with
`sufficient documentation, that the applicant was in possession of
`the later-claimed invention before the effective date of the
`reference. Demonstration of such priority requires
`documentary support, from which factual findings and
`inferences are drawn, in application of the rules and law of
`conception, reduction to practice, and diligence. The purpose
`is not to determine priority of invention—the province of the
`interference practice—but to ascertain whether the applicant
`was in possession of the claimed invention sufficiently to
`overcome the teachings and effect of an earlier publication of
`otherwise invalidating weight.
`
`In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see
`
`also Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d
`
`1004, 1008 (Fed. Cir. 2016) (citing Steed).
`
`Patent Owner contends that Ahy is not prior art to the ’916 patent and
`
`the ’810 patent because the claimed inventions were conceived of before the
`
`filing date of Ahy, and thereafter the conceived inventions were diligently
`
`reduced to practice. PO Resp. 13–35; 1887 PO Resp. 13–35. We, however,
`
`are not persuaded that Patent Owner has established conception of the
`
`claimed invention prior to Ahy for the reasons discussed below.
`
`11
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
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`
`a. Conception
`
`“[C]onception is established when the invention is made sufficiently
`
`clear to enable one skilled in the art to reduce it to practice without the
`
`exercise of extensive experimentation or the exercise of inventive skill.”
`
`Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973). “Conception
`
`must be proved by corroborating evidence which shows that the inventor
`
`disclosed to others his ‘completed thought expressed in such clear terms as
`
`to enable those skilled in the art’ to make the invention.” Coleman v. Dines,
`
`754 F.2d 353, 359 (Fed. Cir. 1985) (quoting Field v. Knowles, 183 F.2d 593,
`
`601 (CCPA 1950)). “[C]onception must encompass all limitations of the
`
`claimed invention.” Brown v. Barbacid, 276 F.3d 1327, 1336 (Fed. Cir.
`
`2002).
`
`Patent Owner asserts that the subject matter of the claims of the ’916
`
`patent and the ’810 patent was completely conceived by at least May 24,
`
`2000. PO Resp. 16; 1887 PO Resp. 16–17. Mr. Struhsaker states that he
`
`and Mr. Eckert conceived of the “Total Access System” in late 1999. PO
`
`Resp. 15 (citing Ex. 2472 ¶ 10); 1887 PO Resp. 16 (citing 1887 Ex. 2472
`
`¶ 10). Patent Owner asserts that on May 24, 2000, Mr. Struhsaker
`
`memorialized conception of the “Total Access System” by drafting a
`
`document entitled “Last Mile Business Overview.” Id.; 1887 PO Resp. 16.
`
`Accordingly, Patent Owner asserts that conception of the claimed invention
`
`is demonstrated by “Last Mile Business Overview.” Id. (citing Ex. 2457);
`
`1887 PO Resp. (citing 1887 Ex. 2457); Ex. 2472 ¶ 16.
`
`We, however, are not persuaded the claimed inventions of the ’916
`
`patent and the ’810 patent were conceived of prior to the filing date of Ahy
`
`because (i) Patent Owner did not to set forth in its briefing persuasive
`
`12
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`IPR2017-01885 (Patent 7,173,916 B2)
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`arguments and evidence demonstrating that each claim element was
`
`disclosed in the “Last Mile Business Overview,” and (ii) even if we were to
`
`consider the statements provided by Mr. Struhsaker, absent a discussion of
`
`this issue in Patent Owner’s briefing, we are not persuaded that Patent
`
`Owner has established that the feature of “determining of an optimum
`
`modulation configuration” was conceived of prior to the filing date of Ahy.
`
`i.
`
`Improper Incorporation by Reference
`
`In its Response, Patent Owner sets forth that Mr. Struhsaker
`
`memorialized the conception of the claims of the ’916 patent and the ’810
`
`patent in the document entitled the “Last Mile Business Overview,” which
`
`discloses the “Total Access System,” at least as of May 24, 2000. PO
`
`Resp. 16; 1887 PO Resp. 16. Patent Owner asserts that Mr. Struhsaker
`
`provides an analysis of mapping the claims of the ’916 patent and the ’810
`
`patent to the “Last Mile Business Overview.” PO Resp. 16–17 (citing
`
`Ex. 2457); 1887 PO Resp. 16–17 (citing 1887 Ex. 2457). Patent Owner
`
`argues that “[i]n mapping the claim elements to Exhibit 2457 Mr. Struhsaker
`
`demonstrates that at least as of May 24, 2000 he had conceived of the
`
`inventions claimed” in the ’916 patent and the ’810 patent. PO Resp. 16;
`
`1887 PO Resp. 17. Patent Owner argues that “[i]n reducing the idea to
`
`writing in Exhibit 2457, Mr. Struhsaker demonstrates that he had a
`
`permanent idea of the operative invention in those claims as it was to be put
`
`into practice.” PO Resp. 16–17; 1887 PO Resp. 17.
`
`“Arguments must not be incorporated by reference from one
`
`document into another document.” 37 C.F.R. § 42.6(a)(3). Patent Owner
`
`acknowledges it is incorporating Exhibit 2457 into its Response and has not
`
`provided a substantive analysis of the conception of the claims of the ’916
`
`13
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`IPR2017-01885 (Patent 7,173,916 B2)
`IPR2017-01887 (Patent 6,891,810 B2)
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`patent and the ’810 patent in its Response or Sur-Reply. See Tr. 44:4–16;
`
`PO Resp. 16–17; PO Sur-Reply 1–2; 1887 PO Resp. 16–17; 1887 PO Sur-
`
`Reply 1–2. Therefore, Patent Owner attempts to improperly incorporate the
`
`arguments set forth in Exhibit 2457 into its own briefing. Accordingly, we
`
`do not consider the arguments and evidence set forth in Exhibit 2457 that are
`
`not substantively presented in Patent Owner’s Response or Sur-Reply.
`
`Based on the arguments offered by Patent Owner in its Response,
`
`which merely direct us to incorporate arguments set forth in Exhibit 2457,
`
`we determine that Patent Owner has not established that Mr. Struhsaker
`
`conceived of the challenged claims of the ’916 patent and the ’810 patent.
`
`Accordingly, we determine that the inventions in the ’916 and ’810 patent
`
`were not conceived of prior to the filing date of Ahy, and, therefore, Ahy
`
`qualifies as prior art under 35 U.S.C. § 102(e). See Pet. 3; 1887 Pet. 3.
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`ii. Patent Owner failed to establish that the feature “determining an
`optimum modulation configuration” was conceived prior to the
`priority date of Ahy
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`Even if we consider the arguments and evidence set forth in Exhibit
`
`2457, we are not persuaded that Patent Owner has demonstrated that the
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`feature of “determining an optimum modulation configuration” was
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`conceived prior to the filing date of Ahy. PO Resp. 16–17; 1887 PO Resp.
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`16–17. Mr. Struhsaker provides a claim chart summarizing mapping the
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`subject matter of claims 1–7 and 9–15 of the ’916 patent and claims 1–14 of
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`the ’810 patent to the “Last Mile Business Overview.” Ex. 2472, App’x A;
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`1887 Ex. 2472, App’x A. Patent Owner further provides the Declaration of
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`Mr. Eckert as corroboration of Mr. Struhsaker’s statements. Ex. 2456 ¶¶
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`12–14; 1887 Ex. 2456 ¶¶ 12–14.
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`14
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`As evidence of conception of “determining an optimum modulation
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`configuration,” Patent Owner relies upon Mr. Struhsaker’s testimony that
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`The excerpt from Slide 21 below indicates that the system
`determines an optimum modulation configuration (order and
`coding rate) for each wireless access device communicating with
`the RF modem discussed above.
`
`The optimum downlink modulation configuration transitions
`from 64QAM to 16QAM as a function of increasing distance of
`wireless access devices from the cell tower/base station which is
`also a function of the specific transmission band, in this case
`“FWA” versus “UNII”. These changes in optimal modulation
`reflect changes in overall signal quality. Again, the modulation
`configurations shown in Slide 21 are shown in the context of
`TDD transmissions.
`
`Ex. 2472, 13 (App’x A, 3). Patent Owner does not provide any more
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`analysis identifying the disclosure in the “Last Business Mile Overview” as
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`evidence of conception of the limitation “determining an optimum
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`modulation configuration.”
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`Petitioner argues that Patent Owner identifies “RF Modem cards that
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`are responsible for the modulation complexity or modulation index of each
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`downlink (DL) transmission,” but “fails to show how those cards would
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`determine an optimum modulation configuration.” Pet. Reply 3 (quoting
`
`Ex. 1012 ¶ 12; citing Ex. 2472, App’x A, 5); 1887 Pet. Reply 3. Petitioner
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`argues that, at best, the “Last Business Mile Overview” describes “that the
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`modulation index is determined based on link distance and the frequency
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`band of transmission.” Id. (citing Ex. 1012 ¶ 12). Such a system would not,
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`in Petitioner’s view, “determine an optimum modulation configuration”
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`because a “modulation index based only on link distance (as shown in Ex.
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`2457) might be optimum for a first customer premises equipment (CPE) in a
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`15
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`first location, but not optimum for a second CPE in a second location, even
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`if the locations have the same distance from the base station.” Pet. Reply 5–
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`6 (citing Ex. 1012 ¶¶ 16–21) (emphasis omitted).
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`Patent Owner responds that the “Last Mile Business Overview”
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`describes more than a fixed distance system using only link distance to
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`determine modulation parameters. PO Sur-Reply 2–7. In addition to the
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`“Last Mile Business Overview,” Patent Owner asserts that an email from
`
`Mr. Struhsaker to Mr. Eckert further “confirms that Mr. Struhsaker
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`contemplated more than just link distance to determine modulation
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`parameters.” Id. at 4–5 (citing Ex. 1271). Patent Owner further directs us to
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`the Declaration of Mr. Struhsaker where additional channel conditions,
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`beyond link distance and frequency, are discussed as impacting signal
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`strength to the user. Id. at 3–4 (citing Ex. 2472,9 App’x A, 7).
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`We are not persuaded that Patent Owner has provided sufficient
`
`corroborating evidence to prove that the inventors of the ’916 patent and the
`
`’810 patent conceived of the claimed “determining an optimum modulation
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`configuration” prior to the filing date of Ahy. As an initial matter, Petitioner
`
`and Patent Owner agree that the “Last Mile Business Overview” describes
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`varying modulation configurations by link distance. Pet. Reply 4–5; PO
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`Sur-Reply 4. We agree with Petitioner that such a system would not take
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`into account actual channel conditions and, therefore, would not “optimize”
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`the modulation. Pet. Reply 4–6 (citing Ex. 1012 ¶ 14).
`
`
`9 Patent Owner’s Sur-Reply refers to Mr. Struhsaker’s Declaration, but
`provides the citation to the “Last Mile Business Overview” at Exhibit 2457.
`The citation is understood to reference Mr. Struhsaker’s Declaration at
`Exhibit 2472.
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`16
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`Although we agree with Patent Owner that its proffered evidence
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`describes more than mere modulation configurations that varied by link
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`distance, we are not persuaded that evidence is sufficient to corroborate
`
`conception of the “determination of an optimum modulation configuration”
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`because it does not describe what the optimum modulation is or how such
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`optimum modulation is determined. Rather, we agree with Petitioner that
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`the evidence does not establish that “there were some consideration of these
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`channel conditions in order to optimize.” Tr. 13:10–11. Absent evidence
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`corroborating the conception of “determining an optimum modulation
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`configuration,” Patent Owner has not established conception of all
`
`limitations of the claimed inventions.
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`Accordingly, we determine Patent Owner fails to prove conception of
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`“determining an optimum modulation configuration,” as recited by
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`independent claims 1 and 9 of the ’916 patent and independent claims 1 and
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`8 of the ’810 patent, prior to July 21, 2000, the filing date of Ahy. For the
`
`same reasons, we determine that Patent Owner has not established
`
`conception of dependent claims 2–8 and 10–16 of the ’916 patent and
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`dependent claims 2–7 and 9–14 of the ’810 patent because these claims
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`incorporate “determining an optimum modulation configuration” based on
`
`their dependency on the independent claims.
`
`b. Reasonable Diligence in Reducing the Invention to Practice
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`As discussed above, we determine that Patent Owner has not
`
`established conception of the challenged claims prior to July 21, 2000.
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`Accordingly, we need not reach whether Patent Owner has diligently
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`reduced to practice the conceived invention.
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`17
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`3. Priority Date of Ahy
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`Petitioner argues that Ahy is entitled to the filing date of its parent
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`patent, U.S. Patent No. 6,654,384 B1. Pet. Reply 13–21; 1887 Pet. Reply
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`14–23. We, however, determine that Ahy qualifies as prior art with respect
`
`to the challenged claims of the ’916 patent and the ’810 patent based on its
`
`actual filing date. See Section II.C.2. Because we determine that Ahy
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`qualifies as prior art based on its actual filing date, we need not reach the
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`issue of whether Ahy is entitled to an earlier filing date.
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`4. Csapo (Ex. 1006)
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`Csapo is directed to base station transceiver subsystems used in a code
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`division multiple access (CDMA) network or other digital and analog
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`communication systems. Ex. 1006, 1:14–18. Csapo discloses a base station
`
`transceiver subsystem (BTS) with a radio unit (RU) located proximate to an
`
`antenna mounting location. Id. at 3:41–43. A main unit (MU) is connected
`
`to the RU and remotely located from the RU, where a plurality of RUs can
`
`be connected to a single MU. Id. at 3:43–46.
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`5. Analysis
`
`Petitioner contends that claims 1‒16 of the ’916 patent are
`
`unpatentable under 35 U.S.C. § 103 as obvious over Ahy and Csapo.
`
`Pet. 13–47. Petitioner contends that claims 1‒3, 6, 8–10, and 13 of the ’810
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`patent are unpatentable under 35 U.S.C. § 103 as obvious over Ahy and
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`Csapo. 1887 Pet. 13–37.
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`The preambles of claim 1 of the ’916 patent and claim 1 of the ’810
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`patent recite “[f]or use in a fixed wireless access network comprising a
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`plurality of base stations performing bidirectional time division duplex
`
`(TDD) communication with wireless access devices disposed at a plurality
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`18
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`of subscriber premises.” Petitioner contends that Ahy discloses the
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`preamble. Pet. 13–15 (citing Ex. 1003 ¶¶ 106–113).10 Petiti