PTAB

IPR2018-00763

CISCO SYSTEMS, INC. v. XR Communications, LLC d/b/a Vivato Technologies

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1. Case Identification

2. Patent Overview

  • Title: Wireless Communication System with Beam Switching
  • Brief Description: The ’728 patent describes a wireless communication system using a smart antenna to selectively cause a receiving device to switch its operative association from one transmitted beam to another available transmitted beam. The invention purports to solve issues arising when a receiving device in a narrow-beam system cannot determine when to switch beams.

3. Grounds for Unpatentability

Ground 1: Claim 16 is obvious under 35 U.S.C. §103 over Alastalo in view of Antonio.

  • Prior Art Relied Upon: Alastalo (Application # 2004/0066762) and Antonio (Patent 6,208,858).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Alastalo teaches an access point with a transceiver and a "smart antenna arrangement" (argued to be a phased-array antenna) that generates multiple directional beams for communication. However, Alastalo only acknowledges the problem of maintaining connections for moving nodes without providing a complete solution. Antonio was argued to supply the missing elements by teaching a specific method for managing beam handoffs. Antonio’s method includes the access point actively probing a user device (transmitting a Beam Mask Message), receiving uplinked signal strength reports (in a Pilot Strength Measurement Message), and using this data to determine the most desirable beam for the user device to associate with, thereby reducing dropped calls.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Antonio's established beam-management method with Alastalo's system. Both references operate in the same field of wireless communication with directed beams. A POSITA would be motivated to implement Antonio’s solution to solve the exact problem of connection-dropping for mobile users that Alastalo identifies, thereby improving the performance and reliability of Alastalo's system.
    • Expectation of Success: Petitioner asserted that the combination involved applying a known beam management technique to a known type of wireless system. This would yield the predictable and beneficial result of improved connection stability for mobile users, and any necessary modifications would be well within the skill of a POSITA.

Ground 2: Claim 16 is obvious under §103 over Alastalo in view of Antonio and WTEC Report.

  • Prior Art Relied Upon: Alastalo (Application # 2004/0066762), Antonio (Patent 6,208,858), and WTEC Report (“Smart Antennas,” July 2000).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1, contingent on a narrower construction of "phased array antenna" as a device steering beams using only phase changes, not amplitude. Petitioner introduced the WTEC Report to show this specific type of antenna was a well-known species within the broader "smart antenna" genus disclosed by Alastalo. Petitioner argued a POSITA would find it obvious to substitute the specific phased-array antenna described in the WTEC Report for the generic "smart antenna" in Alastalo. Once this substitution is made, the motivation to combine this system with Antonio's beam-switching logic proceeds for the same reasons as in Ground 1.
    • Motivation to Combine: A POSITA implementing Alastalo's system would look to well-known art like the WTEC Report, which identifies a finite number of smart antenna types. The choice to use a phased array would be an obvious design choice. The WTEC Report notes that phased arrays produce narrow beams and use well-developed algorithms, aligning with the goals of Alastalo’s system and providing further motivation for the substitution.
    • Expectation of Success: The substitution of a specific, well-understood antenna type for a more general one was a simple design choice. Because phased-array technology was mature and widely used, a POSITA would have had a high and reasonable expectation of success in integrating it into Alastalo’s system.

4. Key Claim Construction Positions

  • The petition’s arguments centered on the construction of the term "phased array antenna."
  • Petitioner contended that no special construction was necessary. However, it presented two alternative positions in the event construction was deemed necessary, which formed the basis for its two distinct invalidity grounds.
  • Primary Alternative: Petitioner proposed adopting the construction advanced by the Patent Owner in co-pending litigation: "array of antenna elements that transmits beams by changing the phases of the signals at the antenna elements." This construction underpins Ground 1.
  • Secondary Alternative: Petitioner argued that "phased array antenna" could be construed as a term of art meaning an array that transmits beams by changing only the phases, and not the amplitudes, of the signals. This narrower construction, supported by the WTEC Report, underpins Ground 2.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) would be inappropriate.
  • It acknowledged a separate, third-party IPR had been filed against the ’728 patent (IPR2018-00726). However, Petitioner asserted that since it (Cisco) was not a party to that earlier petition, the "same petitioner" or "time elapsed" factors considered under the General Plastic framework for analyzing serial petitions were not implicated.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review of claim 16 of the ’728 patent and that the claim be found unpatentable and cancelled.