Paper No. 46
`
`Trials@uspto.gov
`571-272-7822 Date Entered: September 16, 2019
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`XR COMMUNICATIONS, LLC d/b/a VIVATO TECHNOLOGIES,
`Patent Owner.
`____________
`
`Case IPR2018-00764
`Patent 7,062,296 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, TERRENCE W. MCMILLIN, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Determining that the Challenged Claims are Unpatentable
`Denying Patent Owner’s Motion to Amend
`Denying Petitioner’s Motion to Strike
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Date Entered: September 16, 2019
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`XR COMMUNICATIONS, LLC d/b/a VIVATO TECHNOLOGIES,
`Patent Owner.
`____________
`
`Case IPR2018-00764
`Patent 7,062,296 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, TERRENCE W. MCMILLIN, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Determining that the Challenged Claims are Unpatentable
`Denying Patent Owner’s Motion to Amend
`Denying Petitioner’s Motion to Strike
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
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`IPR2018-00764
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`INTRODUCTION
`I.
`Cisco Systems, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 1, 2, 4–7, 17, 18, 20–23, 33, and
`35–38 (“the challenged claims”) of U.S. Patent No. 7,062,296 B2 (Ex. 1001,
`“the ’296 Patent”). XR Communications, LLC d/b/a Vivato Technologies
`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`Upon consideration of the parties’ contentions and supporting evidence, we
`instituted an inter partes review pursuant to 35 U.S.C. § 314, as to the
`challenged claims of the ’296 Patent. Paper 10 (“Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`18, “PO Resp.”); Petitioner filed a Reply (Paper 27, “Pet. Reply”); and
`Patent Owner filed a Sur-Reply (Paper 32, “PO Sur-Reply”). Also, the
`parties filed motions, including Patent Owner’s Motion to Amend (Paper 19,
`“Mot. to Amend”), oppositions, and replies, when appropriate. See infra
`§§ II.G–II.I. A transcript of the hearing held on June 18, 2019, has been
`entered into the record as Paper 45 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has demonstrated
`by a preponderance of evidence that the challenged claims of the ’296 Patent
`are unpatentable. Additionally, we deny Patent Owner’s Motion to Amend.
`
`Related Matters
`A.
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies judicial
`and administrative matters that would affect, or be affected by, a decision in
`this proceeding. In particular, the parties inform us that the ’296 Patent is
`the subject of additional district court proceedings as follows: XR
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`Communications, LLC d/b/a Vivato Technologies v. ARRIS International plc
`et al., 8-18-cv-00192 (C.D. Cal.), filed February 2, 2018; XR
`Communications, LLC d/b/a Vivato Technologies v. Aruba Networks, Inc.,
`2-17-cv-02945 (C.D. Cal.), filed April 19, 2017; XR Communications, LLC
`d/b/a Vivato Technologies v. Newo Corp. d/b/a Amped Wireless, 5-17-cv-
`00744 (C.D. Cal.), filed April 19, 2017; XR Communications, LLC d/b/a
`Vivato Technologies v. ASUS Computer International et al., 2-17-cv-02948
`(C.D. Cal.), filed April 19, 2017; XR Communications, LLC d/b/a Vivato
`Technologies v. Cisco Systems, Inc., 2-17-cv-02951 (C.D. Cal.), filed April
`19, 2017; XR Communications, LLC d/b/a Vivato Technologies v. Extreme
`Networks, Inc., 2-17-cv-02953 (C.D. Cal.), filed April 19, 2017; XR
`Communications, LLC d/b/a Vivato Technologies v. NETGEAR, Inc., 2-17-
`cv-02959 (C.D. Cal.), filed April 19, 2017; XR Communications, LLC d/b/a
`Vivato Technologies v. Ruckus Wireless, Inc., 2-17-cv-02961 (C.D. Cal.),
`filed April 19, 2017; XR Communications, LLC d/b/a Vivato Technologies v.
`Ubiquiti Networks, Inc., 2-17-cv-02968 (C.D. Cal.), filed April 19, 2017; XR
`Communications, LLC d/b/a Vivato Technologies v. Belkin International,
`Inc., 8-17-cv-00674 (C.D. Cal.), filed April 13, 2017; XR Communications,
`LLC d/b/a Vivato Technologies v. D-Link Systems, Inc., Case No. 8:17-cv-
`00596 (C.D. Cal.), filed April 3, 2017; and XR Communications, LLC d/b/a
`Vivato Technologies v. Xirrus, Inc., 3-17-cv-00675 (C.D. Cal.), filed April 3,
`2017. Pet. 8–9; Paper 5, 2–4.
`The parties further state the ’296 Patent is the subject of other
`petitions for inter partes review in Case No. IPR2018-00725, in which a
`Final Written Decision was entered on September 4, 2019, and Case No.
`IPR2018-01017, which is pending. Pet. 8–9; Paper 5, 2–4; Paper 15.
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`
`The ’296 Patent
`B.
`The ʼ296 Patent is directed to a method and apparatus for allowing a
`wireless communication system using a smart antenna to cause a receiving
`device to switch from one transmitted beam to another transmitted beam.
`Ex. 1001, 1:15–20. According to the ’296 Patent, in wireless
`communications that use smart antennas, a receiving device has difficulty
`switching from one beam to another beam because the smart antenna
`produces narrower, directed beams as compared to conventional, omni-
`directional antennas. Id. at 2:25–31.
`Figure 1 of the ’296 Patent is reproduced below.
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`Figure 1 of the ’296 Patent, above, illustrates a block diagram of
`wireless communications system 100 having access point 102 in
`communication with client 104 over one of main beams 116. Ex. 1001, 5:1–
`3. As shown in Figure 1 of the ’296 Patent, access point 102 includes beam
`switching logic 110, smart antenna 114, and transceiver 112, which is
`coupled to beam switching logic 110 and smart antenna 114. Id. at 5:3–6,
`Fig. 1. Smart antenna 114 transmits main beams 116 in correspondence
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`with transmit signals output by transceiver 112 and receives signals
`transmitted by client 104. Id. at 5:6–16.
`Access point 102 is configured to cause receiving client 104 to switch
`between main beams 116. Id. at 4:61–65. In particular, beam switching
`logic 110 detects the location of client 104. Id. at 5:47–49. When beam
`switching logic 110 determines that client 104 is associated with the “wrong
`beam,” beam switching logic 110 causes client 104 to re-associate with
`another one of main beams 116 by altering the operation of transceiver 112.
`Id. at 5:55–60.
`
`Illustrative Claim
`C.
`Petitioner challenges claims 1, 2, 4–7, 17, 18, 20–23, 33, and 35–38
`of the ’296 Patent. Pet. 7–8. Claims 1, 17, and 33 are independent claims.
`Each of claims 2, 4–7, 18, 20–23, and 35–38 depends, directly or indirectly,
`from one of claims 1, 17, and 33. Independent claim 1, reproduced below, is
`illustrative of the claimed subject matter:
`1. A method for use in a wireless communication system, the
`method comprising:
`configuring a first device having a smart antenna to selectively
`allow a second device to operatively associate with a beam
`downlink transmittable to said second device using said
`smart antenna;
`configuring said first device to determine information from at
`least one uplink transmission receivable from said second
`device through said smart antenna;
`configuring said first device to determine if said associated
`second device should operatively associate with a different
`beam downlink transmittable using said smart antenna based
`on said determined information; and
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`if said associated second device should operatively associate
`with a different beam, then configuring said first device to
`allow said second device to operatively associate with said
`different beam by at least one of configuring said first
`device to identify that said second device is allowed to
`operatively associate with said different beam, or
`configuring said first device to identify that said second
`device is not allowed to operatively associate with said
`beam.
`Ex. 1001, 10:57–11:11.
`
`Instituted Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability (Pet. 19):
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`Claims 1, 6, 7, 17, 22,
`23, 33, 37, and 38
`
`§ 1031
`
`Claims 2 and 18
`
`Claims 4, 5, 20, 21, 35,
`and 36
`
`§ 103
`
`§ 103
`
`
`
`U.S. Patent No. 5,890,067
`(“Chang,” Ex. 1005) and U.S.
`Patent No. 6,208,858 B1
`(“Antonio,” Ex. 1006)
`
`Chang, Antonio, and Campbell2
`
`Chang, Antonio, and U.S. Patent
`No. 5,548,813 (“Charas,”
`Ex. 1007)
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’296
`Patent was filed before the effective date of the relevant amendment, the pre-
`AIA version of § 103 applies.
`2Andrew T. Campbell et al., Design, Implementation, and Evaluation of
`Cellular IP, IEEE PERSONAL COMMUNICATIONS, August 2000 (“Campbell,”
`Ex. 1008).
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`The earliest priority date claimed for the ’296 Patent is November 4,
`2002. Ex. 1001, (60). Chang issued on March 30, 1999 (Ex. 1005, (45));
`Antonio issued March 27, 2001 (Ex. 1006, (45)); and Charas issued August
`20, 1996 (Ex. 1007, (45)). Campbell was published in August 2000.
`Ex. 1008, 1. Chang, Antonio, Charas, and Campbell qualify as prior art to
`the ’296 Patent.
`As support, Petitioner submits a Declaration of Jack Winters, Ph.D.,
`who has been retained by Petitioner for the instant proceeding.
`Ex. 1003 ¶ 1. In support of its Opposition to the Motion to Amend,
`Petitioner proffers an additional declaration of Dr. Winters. Ex. 1025.
`Patent Owner submits a Declaration of Robert Short, Ph.D., who has
`been retained by Patent Owner for the instant proceeding. Ex. 2002 ¶ 1. In
`support of its Motion to Amend, Patent Owner proffers an additional
`Declaration of Dr. Short. Ex. 2004.
`
`II. DISCUSSION
`Principles of Law Relating to Obviousness
`A.
`A patent claim is unpatentable if the differences between the claimed
`subject matter 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.
`35 U.S.C. § 103(a). 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
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`nonobviousness, i.e., secondary considerations.3 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). When evaluating a combination of
`teachings, we also “determine whether there was an apparent reason to
`combine the known elements in the fashion claimed by the patent at issue.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
`441, F.3d 977, 988 (Fed. Cir. 2006)).
`
`Level of Ordinary Skill
`B.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner contends, relying on the testimony of
`Dr. Winters, that a person of ordinary skill in the art would have had a
`Master’s degree in electrical engineering and two years of smart antenna
`design experience. Pet. 16 (citing Ex. 1003 ¶ 18). Petitioner contends that a
`“[l]ack of work experience can be remedied by additional education, and
`vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level
`of ordinary skill or propose an alternative. See generally PO Resp.; Tr.
`33:5–15, 50:2–5.
`Therefore, we adopt Dr. Winters’s assessment of a person with
`ordinary skill in the art because it is consistent with the problems and
`solutions in the prior art of record. We further note that the prior art of
`
`
`3 The record does not include evidence of objective indicia of
`nonobviousness.
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`record in the instant proceeding reflects the appropriate level of ordinary
`skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed.
`Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill
`in the art).
`
`Claim Construction
`C.
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017).4
`Relying on the ’296 Patent Specification and the testimony of
`Dr. Winters, Petitioner contends that “a [person having ordinary skill in the
`art (POSITA)] would have understood that the broadest reason[able]
`interpretation of ‘logic,’ includes ‘hardware, firmware, software, digital
`logic, analog logic,” as well as other forms of circuitry such as processing
`units, computer instructions, and combinations of the aforementioned
`examples. Pet. 17 (citing Ex. 1001, 4:49–60; Ex. 1003 ¶¶ 31–33).
`Consistent with Petitioner’s contentions, the ’296 Patent Specification states
`Before describing the exemplary methods and apparatuses, it
`should first be understood that as used herein, the term “logic”
`is meant to convey a broad range of implementation capabilities
`and/or design choices, and is not meant to limit the scope of the
`
`4 The claim construction standard to be employed in an inter partes review
`changed. 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, 2017) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018). At the time of the filing of the Petition in this
`proceeding, however, the applicable claim construction standard was set
`forth in 37 C.F.R. § 42.100(b)(2017).
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`methods and apparatuses to just digital logic circuitry. By way
`of example, in certain implementations, the term “logic” may
`include hardware, firmware, software, digital logic, analog
`logic, other forms of circuitry, memory, data, processing units,
`computer instructions, input/output devices, a combination of
`one or more of these and/or any other form of technology
`capable of performing at least a part of the methods and/or
`apparatuses described herein.
`Ex. 1001, 4:48–60.
`Relying on the ’296 Patent Specification and the testimony of
`Dr. Winters, Petitioner contends that “a POSITA would have understood
`that the broadest reasonable interpretation of a ‘smart antenna’ includes ‘an
`adaptive antenna or a phased array antenna.’” Pet. 17–18 (citing, e.g.,
`Ex. 1001, 1:61–2:2, 4:36–39, 5:12–15; Ex. 1003 ¶¶ 34–37). Consistent with
`Petitioner’s contentions, the ’296 Patent Specification describes “[o]ne
`example of a smart antenna” is described in a patent entitled “Wireless
`Packet Switched Communication Systems And Networks Using Adaptively
`Steered Antenna Arrays” and the base station described therein “includes a
`phased array antenna panel.” Ex. 1001, 1:61–2:2; see also id. at 4:36–39
`(describing “for example, the smart antenna may include a
`directional/adaptive antenna”); 5:12–15 (describing “smart antenna 114 may
`include one or more phased array antenna panels”).
`Patent Owner does not dispute Petitioner’s contentions or provide
`alternative proposed constructions. See generally PO Resp. Furthermore,
`the parties assert with respect to the challenged claims that no claim
`construction issues are in dispute. Tr. 7:4–7, 19:22–25. We agree with
`Petitioner’s contentions regarding claim construction and credit the
`testimony of Dr. Winters as we find that both are consistent with the
`evidence of record. We, therefore, adopt Petitioner’s proposals for the
`
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`reasons given in the Petition, as well as those discussed above. We
`determine that no other claim terms need express construction to resolve the
`parties’ controversies. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017), cert. denied, 138 S. Ct.
`1695 (April 30, 2018) (noting that “we need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`
`D. Obviousness over Chang and Antonio—
`Independent Claims 1, 17, and 33 and
`Dependent Claims 6, 7, 22, 23, 37, and 38
`Petitioner contends each of claims 1, 6, 7, 17, 22, 23, 33, 37, and 38 is
`unpatentable, under 35 U.S.C. § 103(a), as obvious over Chang and Antonio.
`Pet. 19–56. Patent Owner opposes. See generally PO Resp. In our
`discussion below, we first provide a brief overview of the prior art, and then
`we address the parties’ contentions in turn.
`
`Overview of Chang
`1.
`Chang is directed to multi-beam adaptive antenna arrays in which the
`communication channel follows the mobile unit. Ex. 1005, (54), 1:8–10.
`Figure 3 of Chang is reproduced below.
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`Figure 3 of Chang, above, illustrates an adaptive array antenna system
`including adaptive antenna array 304 having antennas 306. Id. at 5:6–12.
`Adaptive antenna array 304 transmits forward channels and receives
`corresponding reverse channels. Id. at 5:17–18. As shown in Figure 3, each
`one of beam spots 302 in cell 300 is produced from antennas 306 in multi-
`beam adaptive antenna array 304. Id. at 5:7–10. A beam forming network
`located at the base of adaptive antenna array 304 controls the amplitude and
`phase of the signals transmitted by antennas 306 to adjust the beam spots
`302. Id. at 5:17–23.
`
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`
`Figure 4 of Chang is reproduced below.
`
`
`Figure 4 of Chang, above, illustrates cell 400 divided into zones and
`further divided into beam spots. Id. at 5:28–31, Fig. 4. In particular, cell
`400 is divided into high capacity zone 405, medium capacity zone 420, and
`low capacity zone 430. Id. at 5:31–33. As further shown in Figure 4, zone
`405 includes beam spots 406 through 415, zone 420 includes beam spots 421
`and 422, and zone 430 includes beam spot 430. Id. at 5:36–38.
`
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`Overview of Antonio
`2.
`Antonio is directed to a method for reducing call dropping in a
`wireless communication system having multiple beam communication links.
`Ex. 1006, 1:17–21. Figure 1 of Antonio is reproduced below.
`
`
`
`Figure 1 of Antonio, above, illustrates system 100 having base station
`112, satellites 116 and 118, gateways 120 and 122, and user terminals 124,
`126, and 128. Id. at 6:1–5. Base station 112 projects beams within a cell
`covering a predetermined service area on the Earth’s surface. Id. at 7:25–27.
`Each of user terminals 124, 126, and 128 is a wireless communication
`device. Id. at 6:26–35. As shown in Figure 1, signal paths are used for
`establishing communications between user terminals 124, 126, and 128 and
`base station 112 through satellites 116 and 118 with gateways 120 and 122.
`Id. at 6:60–63.
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`According to Antonio, a beam handoff procedure begins by a gateway
`transmitting a Beam Mask Message (BMM) containing a list of beam
`identifiers to a user terminal. Id. at 8:55–58. The user terminal measures the
`beam strength of each beam identified in the most recent BMM. Id. at 9:11–
`13. The user terminal transmits a Pilot Strength Measurement Message
`(PSMM) to the gateway. Id. at 9:57–59. The PSMM contains one or more
`beam identifiers from the BMM and corresponding beam strength values.
`Id. at 10:16–18.
`
`Discussion of Claim 1
`3.
`We begin our analysis with independent claim 1. Petitioner asserts
`that the combination of Chang and Antonio renders claim 1 obvious.
`Pet. 19–40. Petitioner provides detailed explanations as to how the prior art
`combination purportedly teaches or suggests each limitation of claim 1, and
`provides purported reasons why one of ordinary skill would have combined
`the prior art teachings, citing Dr. Winters’s testimony for support. Id. (citing
`e.g., Ex. 1003 ¶¶ 48–112).
`Patent Owner counters that Petitioner fails to present reasoning to
`apply Antonio’s teachings to Chang’s system. See generally PO Resp.
`Patent Owner does not dispute that the combined teachings of Chang and
`Antonio teach or suggest each limitation of claim 1. Id.
`Upon review of the arguments and evidence in the current record, we
`find that Petitioner has shown how the combined teachings of Chang and
`Antonio teach or suggest each limitation of claim 1. Additionally, we find
`that Petitioner articulates reasoning to combine the teachings in the manner
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`recited in claim 1 and that Patent Owner’s arguments and evidence do not
`undermine Petitioner’s showing.
`
`Limitation-by-Limitation Analysis
`a.
`Regarding the preamble of claim 1, which recites “[a] method for use
`in a wireless communication system” (Ex. 1001, 10:57–58), Petitioner
`contends “Chang discloses the preamble, to the extent that it is limiting” and
`points to Chang’s teaching of a method of communicating wirelessly
`between a mobile unit and a base station. Pet. 28 (citing e.g., Ex. 1005,
`1:12–14, 3:50–64; Ex. 1003 ¶¶ 58–61).5 Regarding the first element in
`claim 1 referred to by Petitioner as “1.1,” i.e., “configuring a first device
`having a smart antenna to selectively allow a second device to operatively
`associate with a beam downlink transmittable to said second device using
`said smart antenna” (Ex. 1001, 10:59–61),6 Petitioner points to Chang’s
`teachings relating to the adaptive antenna array, as well as the assignment of
`channels in a beam spot to mobile units, and cites to Dr. Winters’s testimony
`as support. Pet. 28–31 (citing, e.g., Ex. 1005, 2:7–8, 3:63–4:4, 5:17–18,
`6:1–11, Fig. 4; Ex. 1003 ¶¶ 62–74).
`Regarding “a smart antenna” recited in element 1.1, Dr. Winters
`testifies that Chang “teaches a base station (‘a first device’) having an
`adaptive antenna array.” Ex. 1003 ¶¶ 63–64 (citing, e.g., Ex. 1005, (54),
`
`
`5 For the purposes of this Decision, we assume, without deciding, that the
`preamble is limiting because we are persuaded by Petitioner’s showing.
`6 In particular, Petitioner refers to “configuring a first device having a smart
`antenna to selectively allow a second device to operatively associate with a
`beam” as element “1.1.1” and “downlink transmittable to said second device
`using said smart antenna” as element “1.1.2.” Pet. 28, 30.
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`3:64–4:4) (cited at Pet. 29). For the reasons given above in Section II.C
`regarding claim construction, we adopt Petitioner’s proposal that “a POSITA
`would have understood that the broadest reasonable interpretation of a
`‘smart antenna’ includes ‘an adaptive antenna or a phased array antenna.’”
`Pet. 17–18.
`We agree with Petitioner’s contentions and we credit and give
`significant weight to the testimony of Dr. Winters because we find both are
`consistent with the evidence of record. For instance, Chang discloses “an
`adaptive antenna array for providing reconfigurable beam-spots within a
`predefined area, each beam-spot containing one or more channels assigned
`to mobile units.” Ex. 1005, 3:64–67 (emphasis added); see also id. at 6:1–11
`(providing further details regarding assigning channels).
`Also relying on Dr. Winters’s testimony, Petitioner asserts that a
`person having ordinary skill in the art would have understood that Chang’s
`“beam-spot 412, which includes the forward channel, is a downlink
`transmission.” Pet. 30–31 (citing e.g., Ex. 1005, 2:7–8, 3:66–67, 5:17–18,
`6:1–11; Ex. 1001, 3:13; Ex. 1011, (57); Ex. 1003 ¶¶ 72–74); see also id. at
`21–22 (citing, e.g., Ex. 1005, 2:5–10, 3:64–4:4; Ex. 1003 ¶¶ 39–40). Dr.
`Winters testifies that a person having ordinary skill in the art would have
`understood that Chang’s communication channels “include forward traffic
`channels for downlink communications from the base station to the mobile
`units and reverse traffic channels for uplink communications from the
`mobile units to the base station.” See, e.g., Ex. 1003 ¶ 40 (cited in Pet. 22).
`We agree with Petitioner’s contentions and we credit and give
`significant weight to the testimony of Dr. Winters because we find both are
`consistent with the evidence of record. For instance, Chang describes that
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`“[e]ach communication channel 116 through 118 includes a pair of actual
`communication frequencies: a forward channel (the communication channel
`from the base station to the mobile unit) and a reverse traffic channel (the
`communication channel from the mobile unit to the base station).”
`Ex. 1005, 2:5–10; see also id. at 5:17–18 (“[a]daptive antenna array 304
`transmits forward channels and receives corresponding reverse channels”).
`We find that Petitioner shows that the subject matter of the preamble
`and first element in claim 1 (i.e., 1.1) are taught by the asserted art.
`We next turn to the remaining elements in claim 1, referred to by
`Petitioner as “1.2,” “1.3,” and “1.4,” respectively (Pet. 32, 33, 35, 36, 38),
`which are reproduced below.
`[1.2] configuring said first device to determine information
`from at least one uplink transmission receivable from said
`second device through said smart antenna;
`[1.3] configuring said first device to determine if said
`associated second device should operatively associate with a
`different beam downlink transmittable using said smart
`antenna based on said determined information;
`[1.4] if said associated second device should operatively
`associate with a different beam, then configuring said first
`device to allow said second device to operatively associate
`with said different beam by at least one of configuring said
`first device to identify that said second device is allowed to
`operatively associate with said different beam, or
`configuring said first device to identify that said second
`device is not allowed to operatively associate with said
`beam.
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`Ex. 1001, 10:63–11:11. 7 For the second and third elements in claim 1, (i.e.,
`1.2 and 1.3), Petitioner points to Chang’s teaching of using received signal
`strength to switch between beam spots, and cites to Dr. Winters’s testimony
`as support. Pet. 32–33 (citing, e.g., Ex. 1005, 2:8–10, 3:59–64, 5:17–18,
`6:3–11; Ex. 1003 ¶¶ 76–89). Regarding element 1.2, Dr. Winters testifies
`that “a POSITA would have understood that communication received over
`Chang’s reverse channel is an ‘uplink transmission”” and that “to determine
`information” recited in element 1.2 is taught by Chang’s system sensing that
`the reverse channel is stronger. Ex. 1003 ¶¶ 76–80 (citing, e.g., Ex. 1005,
`2:8–10, 3:59–63, 6:3–9). Regarding, element 1.3, Dr. Winters testifies that
`Chang’s description of “based on the stronger signal strength in beam-spot
`409, the base station switches from transmitting over beam-spot 412 to
`transmitting over beam-spot 409” teaches “to determine if said associated
`second device should operatively associate with a different beam downlink
`transmittable using said smart antenna based on said determined
`information” recited in element 1.3. Ex. 1003 ¶¶ 81–89 (citing, e.g.,
`Ex. 1005, 5:17–18, 6:1–11, Fig. 4).
`We agree with Petitioner’s contentions and we credit and give
`significant weight to the testimony of Dr. Winters that Chang teaches
`
`
`7 In particular, Petitioner refers to “if said associated second device should
`operatively associate with a different beam, then configuring said first
`device to allow said second device to operatively associate with said
`different beam by at least one of” as element “1.4.1”; “configuring said first
`device to identify that said second device is allows to operatively associate
`with said different beam, or” as element “1.4.2”; and “configuring said first
`device to identify that said second device is not allowed to operatively
`associate with said beam” as element “1.4.3.” Pet. 35, 36, 38.
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`elements 1.2 and 1.3 because we find Petitioner’s contentions and
`Dr. Winters’s testimony consistent with the evidence of record. For
`instance, Chang discloses:
`When the mobile unit is in a beam-spot, for example,
`beam-spot 412, the multi-beam antenna system transmits the
`forward channel to only beam-spot 412. As the mobile unit
`moves into a neighboring beam-spot, for example, beam-spot
`409, the system senses that the reverse channel signal (the
`communication channel from the mobile unit to the base
`station) is stronger in this new beam-spot and consequently
`turns off the forward channel from beam-spot 412 and turns on
`the same forward channel signal to beam-spot 409. Thus, the
`system switches the transmitted channel between the beam-
`spots to follow the mobile unit.
`Ex. 1005, 6:1–11 (emphases added); see also id. at 3:59–61 (describing that
`“the method senses at the base station received signal strength of the mobile
`unit communicating in the cell”).
`For element 1.4, Petitioner points to the combined teachings of Chang
`and Antonio, as well as the knowledge of one having ordinary skill in the
`art. Pet. 20–23, 35–40 (citing, e.g., Ex. 1005, 6:1–11; Ex. 1006, 2:34–46,
`3:10–12, 8:30–32, 10:65–11:2, 11:10–15, 13:12–15, 13:19–21; Ex. 1018,
`112–13; Ex. 1003 ¶¶ 38–47, 90–112); see also id. at 23–28 (regarding
`reasoning to combine). Petitioner’s reasoning to combine is discussed below
`in Section II.D.3.b.
`Dr. Winters references his testimony for element 1.3 (see, e.g., Ex.
`1003 ¶ 91) and Dr. Winters testifies further as follows:
`97. First, as discussed at [1.4.1], Chang’s base station
`(“first device”) allows the mobile unit to operatively associate
`with beam-spot 409 by turning on the forward channel to beam-
`pot 409 (“different beam”) when the signal is stronger in beam-
`spot 409.
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`98. Chang does so because it is desirable for the mobile
`unit to associate with beam-spot 409 when that beam's signal is
`stronger. Chang at 6:5–11. A POSITA would have understood
`that, in some situations, beam-spot 409 may be blocked,
`rendering the forward channel in beam-spot 409 unusable,
`resulting in interruption in communication services. Antonio at
`8:30–32, 2:34–46.
`Ex. 1003 ¶¶ 97–98.
`Dr. Winters also testifies “Antonio teaches that a base station selects
`multiple beams having stronger signal strength as the beams for
`communication between the base station and the user terminal (i.e., mobile
`unit)”; “Antonio’s base station includes identifiers of the selected beams
`(having stronger signal strengths) in an ‘add beam set’”; and “[i]n Antonio,
`the base station transmits the add beam set to the user terminal, which then
`associates with the identified beams for communication with the base
`station.” Id. ¶¶ 99–101 (citing, e.g., Ex. 1006, 10:65–11:2, 11:10–15,
`13:12–17, 13:33–36). Dr. Winters testifies, therefore, “Antonio’s base
`station ‘identifies’ that the user terminal should and is allowed to operatively
`associate with the beams (‘different beam’) in the add beam set” recited in
`element 1.4. Id. ¶ 102. Dr. Winters additionally testifies that “Antonio’s
`base station also generates a ‘drop beam set’” and
`[b]y including in the drop beam set identifiers of beams
`(having weaker signal strengths) that should not be used for
`communication and by transmitting the drop beam set to the
`user terminal, Antonio’s base station “identifies” that the user
`terminal is not allowed to operatively associate with the
`identified beam (“said beam”).
`Ex. 1003 ¶¶ 108–109 (citing Ex. 1006, 13:12–15).
`We agree with Petitioner’s contentions and we credit and give
`significant weight to the testimony of Dr. Winters that the combination of
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`Chang and Antonio teach element 1.4 because we find Petitioner’s
`contentions and Dr. Winters’s testimony are both consistent with the
`evidence of record. For instance, An
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