Trials@uspto.gov
`571-272-7822
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`Paper: 44
`Date: October 10, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUCKUS WIRELESS, INC., ARRIS SOLUTIONS, INC.,
`NETGEAR, INC., and BELKIN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`XR COMMUNICATIONS, LLC d/b/a VIVATO TECHNOLOGIES
`Patent Owner
`____________
`
`IPR2018-01017
`Patent 7,062,296 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, TERRENCE W. MCMILLIN, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper: 44
`Date: October 10, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUCKUS WIRELESS, INC., ARRIS SOLUTIONS, INC.,
`NETGEAR, INC., and BELKIN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`XR COMMUNICATIONS, LLC d/b/a VIVATO TECHNOLOGIES
`Patent Owner
`____________
`
`IPR2018-01017
`Patent 7,062,296 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, TERRENCE W. MCMILLIN, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01017
`Patent 7,062,296 B2
`
`INTRODUCTION
`I.
`Ruckus Wireless, Inc., ARRIS Solutions, Inc., Netgear, Inc., and
`Belkin International, Inc. (“Petitioner”) filed a Petition (Paper 1, “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”).1 XR Communications, LLC d/b/a Vivato Technologies
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“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 12 (“Inst. Dec.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`24, “PO Resp.”), and a Motion to Amend (Paper 25, “Mot. to Amend”).
`Petitioner filed a Reply (Paper 31, “Pet. Reply”) and an Opposition to Patent
`Owner’s Motion to Amend (Paper 32, “MTA Opp.”). Patent Owner filed a
`Sur-Reply (Paper 35, “PO Sur-Reply”) and a Reply to Petitioner’s
`Opposition to the Motion to Amend (Paper 34, “MTA Reply”). Petitioner
`filed a Sur-Reply to Patent Owner’s Reply to the Opposition to the Motion
`to Amend (Paper 40, “MTA Sur-Reply”). A transcript of the hearing held
`on July 19, 2019, has been entered into the record as Paper 43 (“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.
`
`
`1 Petitioner omits claim 6 from certain listings of the challenged claims (see,
`e.g., Pet. 1), but presents contentions for claim 6 (id. at 56–58). We treat
`Petitioner’s omission as a typographical error.
`
`2
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`IPR2018-01017
`Patent 7,062,296 B2
`
`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 district court proceedings as follows: XR 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. 2–3; Paper 4, 1–4.
`
`3
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`IPR2018-01017
`Patent 7,062,296 B2
`The parties further state the ’296 Patent is the subject of other
`petitions for inter partes review in IPR2018-00725 and IPR2018-00764. Id.
`Final Written Decisions were entered in both those proceedings in
`September 2019.
`
`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.
`
`4
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`Patent 7,062,296 B2
`
`
`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
`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
`
`5
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`IPR2018-01017
`Patent 7,062,296 B2
`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. 5. 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:
`[1a] 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;
`[1b] configuring said first device to determine information from
`at least one uplink transmission receivable from said second
`device through said smart antenna;
`[1c] 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
`[1d] 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.
`
`6
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`IPR2018-01017
`Patent 7,062,296 B2
`Ex. 1001, 10:57–11:11.2
`
`Prior Art and Asserted Ground
`D.
`Petitioner asserts that claims 1, 2, 4–7, 17, 18, 20–23, 33, and 35–38
`
`would have been unpatentable on the following ground:
`
`References
`Reudink4 and Antonio5
`
`Claims Challenged Statutory Basis
`1, 2, 4–7, 17, 18, 20–
`§ 103(a)3
`23, 33, and 35–38
`
`The earliest priority date claimed for the ’296 Patent is November 4,
`2002. Ex. 1001, at code (60). Reudink was filed October 19, 1999, and
`issued May 2, 2006. Ex. 1009, at code (22). Antonio issued March 27,
`2001. Ex. 1010, at code (45). Patent Owner does not challenge the prior art
`status of the cited references. See generally PO Resp.; Tr. 7:14–16, 34:25–
`27. We determine that the cited art qualifies as prior art to the ’296 Patent.
`The parties also submit Declarations in support of their arguments. In
`particular, Petitioner submits a Declaration of Kevin Negus, Ph.D., who has
`been retained by Petitioner for the instant proceeding. Ex. 1006 ¶ 1. In
`support of its Opposition to the Motion to Amend, Petitioner proffers an
`additional declaration of Dr. Negus. Ex. 1020.
`
`
`2 Above we insert Petitioner’s references for limitations recited in claim 1
`that we use herein. See Pet. 29, 32, 35, 39.
`3 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.
`4 U.S. Patent No. 7,039,441 B1, filed Oct. 19, 1999, issued May 2, 2006
`(Ex. 1009, “Reudink”).
`5 U.S. Patent No. 6,208,858 B1 filed July 21, 1998, issued Mar. 27, 2001
`(Ex. 1010, “Antonio”).
`
`7
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`IPR2018-01017
`Patent 7,062,296 B2
`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 additional
`Declarations of Dr. Short. Ex. 2004 (supporting Motion to Amend);
`Ex. 2011 (supporting Reply to Opposition to Motion to Amend).
`
`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) (2006). The question of obviousness is resolved on the
`basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and (4) objective
`evidence of nonobviousness, i.e., secondary considerations.6 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).
`
`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;
`
`
`6 The record does not include evidence of secondary considerations of
`nonobviousness.
`
`8
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`IPR2018-01017
`Patent 7,062,296 B2
`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.
`Negus, that a person of ordinary skill in the art would have had a Master’s
`degree in Electrical Engineering, or an equivalent field, and two years of
`experience in the field of wireless communications or a Bachelor of Science
`in Electrical Engineering, or an equivalent field, and three to four years of
`experience in the field of wireless communications. Pet. 27–28 (citing
`Ex. 1006 ¶ 29). Patent Owner does not dispute Petitioner’s proposed level
`of ordinary skill or propose an alternative. See generally PO Resp.
`We adopt Dr. Negus’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 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).7
`
`
`7 The claim construction standard to be employed in an inter partes review
`recently 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, 2018) (amending 37 C.F.R.
`§ 42.100(b) effective November 13, 2018). At the time of the filing of the
`
`9
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`IPR2018-01017
`Patent 7,062,296 B2
`“smart antenna” and “access point”
`1.
`Petitioner proposes constructions for the terms “smart antenna” and
`“access point.” Pet. 25–27. In our Decision to Institute, we determined that
`“the term ‘smart antenna’ does not need to be construed expressly to resolve
`the parties’ controversies.” Inst. Dec. 9. We determined that “‘access point’
`as used in the ’296 Patent includes a base station” and we found
`“Petitioner’s showing of Reudink’s base station sufficient for teaching
`‘access point device’ recited in claims 2 and 18.” Id. at 10.
`Neither party disputes our determinations or findings in the Decision
`to Institute. See generally Pet. Reply; PO Resp. We determine that no
`further determinations need to be made regarding an express construction of
`“smart antenna” and “access point” 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)).
`
`2.
`
`“configuring said first device to determine if said associated second
`device should operatively associate with a different beam”
`Each of claims 1 and 17 recites “configuring said first device to
`determine if said associated second device should operatively associate with
`a different beam.” Ex. 1001, 10:66–11:1, 13:31–33. Claim 33 recites “logic
`. . . configured to . . . determine if said associated second device should
`operatively associate with a different beam.” Id. at 15:48–55. The parties
`
`
`Petition in this proceeding, however, the applicable claim construction
`standard was set forth in 37 C.F.R. § 42.100(b) (2017).
`
`10
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`IPR2018-01017
`Patent 7,062,296 B2
`agree these recitations should be treated the same. PO Resp. 25; see
`generally Pet. Reply.
`Petitioner contends “operatively associate with” should be construed
`to be at least as broad as “establish a communication link with.” Pet. 26
`(citing Ex. 1001, 6:13–16; Ex. 1006 ¶ 112). In our Decision to Institute, we
`discussed the parties’ contentions regarding “operatively associate with” and
`determined that Petitioner’s showing was sufficient even using Patent
`Owner’s proposal that the claims require the device to be already
`operatively associated with one beam before switching to a different beam.
`Inst. Dec. 9–10. We, therefore, determined no express construction was
`needed for “operatively associate with.” Id. Neither party disputes our
`determinations or findings regarding “operatively associate with” in the
`Decision to Institute. See generally Pet. Reply; PO Resp.
`Patent Owner contends “the Federal Circuit has distinguished
`‘configured to’ as narrower than ‘capable of’ or ‘suited to’” and, therefore,
`“the ‘first device’ must be specifically designed to ‘determine if said
`associated second device should operatively associate with a different
`beam.’” PO Resp. 6–8. Patent Owner contends, therefore, the asserted prior
`art is deficient because it describes “determining the beam to which the
`remote station should be assigned, without determining whether that
`preferred beam is a ‘different beam.’” PO Resp. 15 (cited in Sur-Reply 3).
`Patent Owner contends further that the claims require determining whether
`the beam is different by identifying the current beam. See Sur-Reply 4
`(asserting the prior art is deficient because “the identity of a remote stations
`‘current beam’ is irrelevant” and, therefore, no determination is made “as to
`whether a ‘different beam’ should be used”); id. at 6 (asserting the prior art
`is deficient because it “does not teach that this assignment process takes into
`
`11
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`IPR2018-01017
`Patent 7,062,296 B2
`account the identity of the current beam of the remote station”); id. at 14
`(asserting the prior art is deficient because it makes a determination “without
`comparison of the identified best beam to the remote stations current
`beam”).
`Petitioner does not dispute that “configured to” is narrower than
`“capable of” and “suited to.” See generally Pet. Reply; Tr. Petitioner
`contends that Patent Owner improperly “compares the prior art to the
`embodiments” of the ’296 Patent. Pet. Reply 16. Other than the terms
`“smart antenna” and “operatively associate with” (Pet. 25–26), Petitioner
`contends the remainder of the recitation should be given its plain and
`ordinary meaning and no further express construction is needed. See, e.g.,
`Pet. Reply 5, 16.
`Each of claims 1 and 17 recites “configuring said first device to
`determine if said associated second device should operatively associate with
`a different beam.” Ex. 1001, 10:66–11:1. The limitation is commensurately
`recited in claim 33. We agree with Petitioner that Patent Owner relies on
`preferred embodiments in the ’296 Patent Specification rather than claim
`limitations in its arguments that the independent claims are distinguishable
`over the prior art. Pet. Reply 15–16. Patent Owner’s contentions regarding
`“configured to” (PO Resp. 7–8) do not support Patent Owner’s implied
`proposed construction that the claims require identifying the current beam.
`See, e.g., PO Sur-Reply 4, 6, 14. Also, Patent Owner’s implied proposed
`construction is explained only in Patent Owner’s Sur-Reply and is nothing
`more than importing an embodiment of the ’296 Patent Specification into the
`claims.
`In applying a broadest reasonable construction, claim terms generally
`are given their ordinary and customary meaning, as would be understood by
`
`12
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`one of ordinary skill in the art in the context of the entire disclosure. See In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Additionally, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`Accordingly, we agree with Petitioner that the aforementioned
`limitation should be given its plain and ordinary meaning and no further
`express construction is needed, except we conclude that the language of the
`claims does not require identifying the current beam, as Patent Owner
`proposes.8
`
`D. Obviousness over Reudink and Antonio
`Petitioner contends each of claims 1, 2, 4–7, 17, 18, 20–23, 33, and
`35–38 of the ’296 Patent are unpatentable, under 35 U.S.C. § 103(a), as
`obvious over Reudink and Antonio. Pet. 5, 28–71. 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 Reudink
`1.
`Reudink is directed to wireless communication systems and providing
`high data bandwidth channels at a plurality of base stations optimizing use
`
`
`8 Nonetheless, for the reasons given below in Section II.D.3, we are
`persuaded that the asserted prior art combination teaches that preferred
`embodiment.
`
`13
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`of the radio frequency spectrum. Ex. 1009, 1:6–10. Figure 2A of Reudink
`is reproduced below.
`
`
`
`
`Figure 2A of Reudink, above, illustrates base station (BS) 101 (id. at
`6:14–15, 6:53, 8:22) having BS radio 201 coupled to antennas 211–222
`through switch matrix 202 (id. at 8:22–23). Switch matrix 202 directs
`energy between antennas 211–222 and BS radio 201 (into and out of beams
`1–N) on command. Id. at 8:23–25. BS controller 203 is a processor based
`control system that controls switch matrix 202 and BS radio 201. Id. at
`8:25–27. BS 101 is adapted to having a set of narrow antenna beams, in
`particular 12 narrow beams, providing wireless communication within a cell.
`Id. at 7:61–8:8. High data rate communications are provided to
`geographically-dispersed remote stations (RSs). Id. at 6:57–58.
`Reudink further describes using a multiple beam antenna access
`channel (MBAACH) data container to transmit information including
`received signal strength indicator (RSSI) information, the number of antenna
`beams, and the current antenna beam. Id. at 11:45–61; 15:33. The RS
`measures signal strengths and logs the carrier numbers and beam numbers
`
`14
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`that produce the strongest received signal strengths. Id. at 12:14–28. The
`RS adjusts its antenna beam angle to the strongest BS beam and transmits
`the reverse MBAACH to the appropriate BS. Id. at 12:28–35.
`
`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. 1010, 1:17–21. Figure 1 of Antonio is reproduced below.
`
`
`
`Figure 1 of Antonio, above, illustrates a wireless communication
`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 and also is referred to as a
`subscriber unit or a mobile station. Id. at 6:26–35. As shown in Figure 1,
`
`15
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`Patent 7,062,296 B2
`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.
`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 Reudink and Antonio renders claim 1 obvious.
`Pet. 11–24, 28–46. 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. Negus’s testimony for
`support. Id. (citing, e.g., Ex. 1006).
`Patent Owner counters that Petitioner (1) does not show the asserted
`prior art combination teaches “configuring said first device to determine if
`said associated second device should operatively associate with a different
`beam” (PO Resp. 5–20) and (2) fails to present reasoning to modify
`Reudink’s system (id. at 20–24).
`Based on the record before us, Petitioner has shown how the
`combined teachings of Reudink and Antonio teach or suggest each limitation
`
`16
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`Patent 7,062,296 B2
`of claim 1 and we agree with Petitioner that a skilled artisan would have
`been motivated to combine the references for the reasons cited by Petitioner.
`We determine that Patent Owner’s arguments do not undermine Petitioner’s
`showing.
`
`a.
`
`Limitation-by-Limitation Analysis
`Preamble
`i.
`We start with the preamble of claim 1, which recites “[a] method for
`use in a wireless communication system.” Ex. 1001, 10:57–58. Petitioner
`contends “[i]f the preamble is limiting, Reudink discloses it.” Pet. 28 (citing
`Ex. 1009, 1:6–10; Ex. 1006 ¶¶ 241–247). Reudink discloses the “invention
`relates to wireless communication systems.” Ex. 1009, 1:6 (emphasis
`added). Because Petitioner makes the requisite showing that Reudink
`discloses the subject matter recited in the preamble and Patent Owner does
`not dispute Petitioner’s showing, for purposes of making determinations
`regarding claim 1, we assume, without deciding, that the preamble is
`limiting and determine that Reudink teaches it.
`
`Limitation 1a
`ii.
`We turn to the first recitation in claim 1 referred to by Petitioner as
`“1a” (Pet. 29), 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. Petitioner points to Reudink’s teachings relating to
`base stations having multi-beam smart antennas, as well as the messaging
`protocol used by the base stations for beam selection, and cites to
`Dr. Negus’s testimony as support. Pet. 29–32 (citing Ex. 1009, at code (57),
`
`17
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`1:14–39, 2:64–3:4, 3:46–59, 6:15–16, 7:1–4, 7:61–67, 8:1–13, 8:22–25,
`10:49–56, 12:36–13:9, 13:29–33, 19:23–26, Fig. 2A; Ex. 1006 ¶¶ 253–257,
`263, 265, 268–271, 273). For the first device, Petitioner points to Reudink’s
`teaching of base stations having multi-beam smart antennas. See, e.g., id. at
`29–30 (citing Ex. 1009, at code (57), 1:14–39, 2:64–3:4, 3:46–59, 6:15–16,
`7:1–4, 7:61–67, 8:1–13, 8:22–25, Fig. 2A; Ex. 1006 ¶¶ 253–257, 263, 273).
`For the second device, Petitioner points to Reudink’s teaching of remote
`stations that communicate with the base stations. Id. at 29–32 (citing e.g.,
`Ex. 1009, at code (57), 1:14–39, 2:64–3:4, 3:46–59; Ex. 1006 ¶¶ 253–257,
`273).
`We agree with Petitioner’s contentions and we credit and give
`significant weight to the testimony of Dr. Negus because both are consistent
`with the evidence of record. For example, Reudink discloses:
`BS 101 adapted according to the present invention is
`shown in FIG. 1 as having a set of, preferably 12, narrow
`antenna beams (beams 111–122) providing wireless
`communication within cell 102. BS 101 is preferably adapted
`to direct energy into and out of any antenna beam on command.
`A preferred embodiment of circuitry of BS 101 adapted as
`described above is shown in FIG. 2.
`Ex. 1009, 7:61–67. Reudink further describes the base station providing
`wireless signal coverage to remote stations in the area. See, e.g., id. at 1:14–
`39, 2:64–3:4.
`Regarding the requirement of “a first device having a smart antenna to
`selectively allow a second device to operatively associate with a beam
`downlink transmittable,” recited in claim element “1a” (Ex. 1001, 10:59–61
`(emphasis added)), Petitioner asserts that Reudink’s “messaging protocol . . .
`allows the base station to select the best beam for a remote station’s
`communication by using the Multi-Beam Antenna Access Channel
`
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`IPR2018-01017
`Patent 7,062,296 B2
`(MBAACH).” Pet. 31 (citing Ex. 1009, 12:36–61). Petitioner, more
`specifically, asserts that the messaging involves Reudink’s base station
`transmitting a “direction message” with signal parameter information. Id. at
`31–32 (citing Ex. 1009, 12:36–13:9, 13:29–33, 19:23–26, Fig. 14;
`Ex. 1006 ¶¶ 268–271). Relying on the testimony of Dr. Negus, Petitioner
`provides an annotated Figure 14 of Reudink depicting a direction message,
`which is reproduced below. Id. at 31; Ex. 1006 ¶ 268 (citing Ex. 1009,
`12:52–61, Fig. 14).
`
`Figure 14 of Reudink above depicts a direction message including a user
`identifier annotated in blue, base station identification information annotated
`in red, and beam number identification information annotated in green. Pet.
`31; Ex. 1006 ¶ 268.
`
`
`
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`We are persuaded by Petitioner’s contentions and we credit and give
`significant weight to the testimony of Dr. Negus because both are consistent
`with the evidence of record. For instance, Reudink discloses:
`[a]ccordingly, the greatest efficiency in the use of available
`resources according to a preferred embodiment of the present
`invention occurs when transmission and reception between a
`BS and RS occur only on a single antenna beam of the BS.
`According to a preferred embodiment, a most preferred antenna
`beam for communications with each active RS is identified and
`subsequent communication occurs using this most preferred
`antenna beam.
`Ex. 1009, 10:49–56. Reudink describes that the “RS listens on a direction
`MBAACH portion of the channel” for a “direction message,” which
`instructs “the RS that the identified best carrier, angle and beam is
`acceptable for communication or, if unavailable, perhaps to look for another
`BS or RF carrier.” Id. at 12:53–59.
`Regarding the direction message, Reudink, more specifically,
`discloses:
`
`[a] preferred embodiment of the direction message from
`the BS is shown in FIG. 14. The preferred embodiment
`direction message includes synch bits, RS identification
`information, BS identification information, carrier number,
`antenna beam number, timing advance information, and end
`bits. The synch bits of the preferred embodiment set the
`beginning of the direction message. The RS identification
`information identifies the RS to which the direction message is
`directed. The BS identification information identifies the BS
`from which the direction message was sent. The carrier number
`identifies the carrier to which the direction message relates.
`The beam number identifies the beam to which the direction
`message relates. The timing advance information provides
`timing information related to the RSs relative position to the BS
`in order to allow reduced reliance on guard times in
`
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`communication of data packets. The end bits set the end of the
`direction message.
`Id. at 12:60–13:9.
`Patent Owner does not dispute Petitioner’s showing for the first
`recitation. We determine that Petitioner’s arguments and evidence
`demonstrate that Reudink teaches the first recitation in claim 1 (i.e., 1a).
`
`Limitation 1b
`iii.
`We now turn to the second recitation in claim 1, referred to by
`Petitioner as “1b” (Pet. 32), which is “configuring said first device to
`determine information from at least one uplink transmission receivable from
`said second device through said smart antenna.” Ex. 1001, 10:63–65.
`Petitioner points to Reudink’s teachings relating to the remote station
`providing signal strength information, and cites to Dr. Negus’s testimony as
`support. Pet. 32–34 (citing, e.g., Ex. 1009, 3:46–59, 10:56–67, 11:1–4,
`11:18–32, 12:14–18, 12:24–32, 12:39–61, 15:21–26, 15:31–36, 15:42–43,
`Fig. 13; Ex. 1006 ¶¶ 278, 283, 285–287, 289, 291–294, 306). Relying on the
`testimony of Dr. Negus, Petitioner provides an annotated Figure 13 of
`Reudink depicting a reverse MBAACH message, which is reproduced
`below. Id. at 34; Ex. 1006 ¶ 292 (ci
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