Case: 19-1856    Document: 50    Page: 1   Filed: 05/11/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

       GENERAL ACCESS SOLUTIONS, LTD.,
                  Appellant

                            v.

                SPRINT SPECTRUM L.P.,
                         Appellee
                  ______________________

                   2019-1856, 2019-1858
                  ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 01885, IPR2017-01887.
                  ______________________

                  Decided: May 11, 2020
                  ______________________

     GLEN E. SUMMERS, Bartlit Beck Herman Palenchar &
 Scott LLP, Denver, CO, for appellant. Also represented by
 JOHN HUGHES, NOSSON KNOBLOCH, DANIEL TAYLOR.

    BRIAN DAVID SCHMALZBACH, McGuireWoods LLP, Rich-
 mond, VA, for appellee. Also represented by DAVID EVAN
 FINKELSON.
                 ______________________

      Before CHEN, LINN, and STOLL, Circuit Judges.
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 2              GEN. ACCESS SOLS., LTD.   v. SPRINT SPECTRUM L.P.



 CHEN, Circuit Judge.
     General Access Solutions (GAS) appeals from the final
 written decision of the United States Patent and Trade-
 mark Office Patent Trial and Appeal Board (the Board) in
 the above-captioned inter partes review (IPR) proceedings
 holding claims 1–16 of U.S. Patent No. 7,173,916 and
 claims 1–14 of U.S. Patent No. 6,891,810 as obvious over
 prior art cited by petitioner Sprint. We affirm.
                          BACKGROUND
     The ’916 and ’810 patents, issued to the same inven-
 tors, describe fixed wireless access networks in which one
 or more base stations communicate with access devices at
 fixed locations. ’916 patent at col. 11 l. 57–col. 12 l. 22; ’810
 patent at col. 11 l. 44–col. 12 l. 9. The claims of both pa-
 tents are directed to radio frequency (RF) modem shelves
 for the base stations, specifically containing a modulation
 controller that determines various modulation configura-
 tions used by an RF modem for certain transmissions to the
 wireless access devices. With the exception of claims 6, 7,
 14, and 15 of the ’916 patent, the claims of both patents
 require that the modulation controller must determine an
 “optimum modulation configuration,” as illustrated by
 claim 1 provided below:
     1. For use in a fixed wireless access network com-
     prising a plurality of base stations performing bidi-
     rectional    time       division    duplex    (TDD)
     communication with wireless access devices dis-
     posed 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
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     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 con-
     figuration and to transmit downlink data to a sec-
     ond wireless access device in a second data block
     within said TDD frame using a different second
     modulation configuration.
 ’916 patent at claim 1 (emphasis added).
      Claims 6, 7, 14, and 15 of the ’916 patent do not specify
 that the determined modulation configuration is “opti-
 mum,” but nevertheless require the modulation controller
 to “determ[ine] a[] modulation configuration” for a first and
 second wireless access device “based on channel conditions
 associated with channels used to communicate with said
 first and second wireless access devices.” See, e.g., ’916 pa-
 tent at claim 6.
      Claims 8 and 16 of the ’916 patent further employ first
 and second “physical beam forming technique[s].” Claim 8
 is representative of both claims:
     8. The RF modem shelf as set forth in claim
     2 wherein said first modulation configuration com-
     prises a first physical beam forming technique and
     said second modulation configuration comprises a
     different second physical beam forming technique.
 ’916 patent at claim 8 (emphases added).
     The Board found claims 1–16 of the ’916 patent and
 claims 1–14 of the ’810 patent unpatentable based on vari-
 ous grounds relying on U.S. Patent No. 7,366,133 (Ahy) as
 prior art under 35 U.S.C. § 102(e). Relevant to this appeal,
 GAS did not argue against the Ahy-based obviousness
 analysis for claims 1–7 and 9–15 of the ’916 patent and
 claims 1–14 of the ’810 patent. Instead, GAS attempted to
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 4              GEN. ACCESS SOLS., LTD.   v. SPRINT SPECTRUM L.P.



 swear behind Ahy on the basis that inventor Paul Struh-
 saker conceived of these claimed inventions prior to
 July 21, 2000, the filing date of Ahy.
     The Board determined that GAS’s briefing on the issue
 of prior conception violated 37 C.F.R. § 42.6(a)(3), which
 specifies that “[a]rguments must not be incorporated by
 reference from one document into another document.” The
 Board declined to consider arguments that were not sub-
 stantively presented in GAS’s briefing. Considering only
 GAS’s briefing, which “merely direct[ed]” the Board to the
 arguments and evidence set forth in another document, 1
 the Board concluded that GAS had not met its burden of
 establishing that the inventors conceived of the inventions
 claimed in the ’916 and ’810 patent prior to the filing date
 of Ahy. J.A. 14.
     In the alternative, even if the Board were to consider
 the arguments it held improperly incorporated, the Board
 nevertheless maintained that GAS had not established
 prior conception due to insufficient corroboration of the
 claimed limitation of “determining an optimum modulation
 configuration.” Specifically, the Board explained that
 GAS’s corroborating evidence failed to “describe what the
 optimum modulation is or how such optimum modulation
 is determined.” J.A. 17.
     As to claims 8 and 16 of the ’916 patent, the Board re-
 jected GAS’s contention that “beam forming technique”



     1Although the Board referred specifically to arguments
 incorporated from “Exhibit 2457,” the parties appear to
 agree that the Board intended to refer to attachment A of
 Exhibit 2472. Appellant’s Br. at 13 n.2; Appellee’s Br. at
 17 n.8. Exhibit 2472 is a declaration from inventor Struh-
 saker, and attachment A is a claim chart purporting to map
 claim elements to evidence submitted by GAS in support of
 conception. J.A. 1862–82.
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 should be narrowly construed to require a technique that
 uses “constructive and destructive interference to illumi-
 nate specific portions or areas of a cell or sector thereby
 improving link quality and reducing interference effects.”
 J.A. 26. Instead, the Board found that claims 8 and 16
 would have been obvious because Ahy’s use of a parameter
 to select antennas for transmission met the “physical beam
 forming technique” limitations. J.A. 27.
    GAS appeals, and we             have    jurisdiction under
 28 U.S.C. § 1295(a)(4)(A).
                           DISCUSSION
       I. INCORPORATION BY REFERENCE; CONCEPTION
     We first address GAS’s challenge to the Board’s exclu-
 sion of arguments incorporated from documents other than
 GAS’s briefing.
     Decisions related to compliance with the Board’s proce-
 dures are reviewed for an abuse of discretion. Bilstad v.
 Wakalopulos, 386 F.3d 1116, 1121 (Fed. Cir. 2004). “An
 abuse of discretion is found if the decision: (1) is clearly un-
 reasonable, arbitrary, or fanciful; (2) is based on an errone-
 ous conclusion of law; (3) rests on clearly erroneous fact
 finding; or (4) involves a record that contains no evidence
 on which the Board could rationally base its decision.” Id.
     The rule prohibiting incorporation by reference in IPR
 proceedings is set forth in 37 C.F.R. § 42.6(a)(3) (emphasis
 added):
     (3) Incorporation by reference; combined docu-
     ments. Arguments must not be incorporated by ref-
     erence from one document into another document.
     Combined motions, oppositions, replies, or other
     combined documents are not permitted.
     The prohibition against incorporation of arguments
 from other documents serves various policy goals, includ-
 ing to “minimize the chance that an argument may be
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 6              GEN. ACCESS SOLS., LTD.   v. SPRINT SPECTRUM L.P.



 overlooked” and to “eliminate[] abuses that arise from in-
 corporation and combination.” Rules of Practice for Trials
 Before the Patent Trial and Appeal Board and Judicial Re-
 view of Patent Trial and Appeal Board Decisions, 77 Fed.
 Reg. 48,617 (Aug. 14, 2012). Otherwise, the Board would
 be forced to “play archeologist with the record” and search
 for arguments that might have made outside of the parties’
 briefing. Id. (citing DeSilva v. DiLeonardi, 181 F.3d 865,
 866–67 (7th Cir. 1999)).
     We do not see any abuse of discretion in the Board’s
 enforcement of its rules. The “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, 1375–76
 (Fed. Cir. 2016). Thus, GAS had to present a case to estab-
 lish prior conception of every claim limitation. GAS’s brief-
 ing failed to meet this burden.
     GAS urges that the following paragraph from its pa-
 tent owner response “sets forth GAS’s argument that
 Mr. Struhsaker conceived of the subject matter of the pa-
 tents in suit prior to July 21, 2000”:
     With respect to the specific claims in the ‘801 [sic]
     patent, Mr. Struhsaker had completely conceived
     of the claimed subject matter by at least May 24,
     2000. (Ex. 2472, ¶ 15). As demonstrated in his Dec-
     laration, and the claim chart attached as Attach-
     ment A, Mr. Struhsaker had memorialized his
     conception in a document called the Last Mile Busi-
     ness Overview as of that date. (Ex. 2457). In Ap-
     pendix A, Mr. Struhsaker maps to the specific
     claim elements of the ‘810 patent to the material
     Exhibit 2457.
 Appellant’s Br. at 14 (citing J.A. 1281); see also J.A. 4110
 (providing an equivalent paragraph for the ’916 patent).
 But this paragraph fails to explain with any specificity how
 inventor Struhsaker had conceived of the limitations
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 recited in the various patent claims. Instead, GAS’s patent
 owner response makes only the general allegation that the
 claimed limitations can be found “in a document called the
 Last Mile Business Overview.” See id.
     To identify GAS’s substantive arguments, the Board
 was forced to turn to a declaration by Struhsaker, and fur-
 ther to delve into a twenty-nine-page claim chart attached
 as an exhibit. This exercise of “playing archaeologist with
 the record” is precisely what the rule against incorporation
 by reference was intended to prevent, 77 Fed. Reg. 48,617,
 and the Board was within its discretion in excluding the
 arguments made in the claim chart. And although GAS
 argues that excluding the claim chart arguments was an
 abuse of discretion because GAS’s briefing fell under the
 page limits, GAS’s voluntary decision to violate a proce-
 dural rule does not make the Board’s enforcement of that
 rule an abuse of discretion.
     Without the benefit of the arguments improperly incor-
 porated from the claim chart attached to Struhsaker’s dec-
 laration, GAS was left with its broad allegation that
 Struhsaker had conceived of the claimed invention by May
 24, 2000 and its conclusory citation to the entirety of the
 Last Mile Business Overview document. 2 See Appellant’s


 2 To the extent GAS argues that it presented additional ar-
 gument in its surreply that cured the conclusory assertions
 in its response, see Reply at 12–13, that argument is
 waived for failure to present it in GAS’s opening brief on
 appeal. SmithKline Beecham Corp. v. Apotex Corp.,
 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“Our law is well es-
 tablished that arguments not raised in the opening brief
 are waived.” (citing Cross Med. Prods., Inc. v. Medtronic
 Sofamor Danek, Inc., 424 F.3d 1293, 1320–21 n.3 (Fed. Cir.
 2005))). Moreover, even assuming as true that GAS “pre-
 sented additional argument directed to the [modulation
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 8              GEN. ACCESS SOLS., LTD.   v. SPRINT SPECTRUM L.P.



 Br. at 14. GAS’s assertion that the claim chart contains
 “evidence” rather than “argument” effectively concedes
 that the only arguments it offered on prior conception were
 set forth in its briefing. See, e.g., id. (“The Struhsaker Dec-
 laration, and the claim chart included as part of the Decla-
 ration, constitute evidence that supports the argument in
 GAS’s brief.”).
     We agree with the Board that the conclusory assertions
 in GAS’s patent owner response are insufficient to meet
 GAS’s burden of establishing prior conception. 3
                II. BEAM FORMING TECHNIQUE
     As to claims 8 and 16 of the ’916 patent, GAS alleges
 that the Board too broadly construed “beam forming tech-
 nique” as “a modulation configuration.” GAS urges that we
 adopt its narrower interpretation: “constructive and de-
 structive interference to illuminate specific portions or ar-
 eas of a cell or sector thereby improving link quality and
 reducing interference effects.” Appellant’s Br. at 28. We
 see no error with the Board’s rejection of GAS’s narrow con-
 struction.
     When an IPR is instituted from a petition filed before
 November 13, 2018, as here, the claims are given the
 “broadest reasonable interpretation” consistent with the


 controller] claim element in its Surreply,” Reply at 12, GAS
 would still have failed to meet its burden of establishing
 prior conception of the remaining claim limitations.
     3 Because we find that the Board did not abuse its dis-

 cretion in declining to address the improperly incorporated
 documents, we do not reach the question of whether the
 Board erred in its alternative holding that evaluated those
 materials by treating claim 1 of the ’916 patent, which re-
 cites the “optimum modulation configuration” limitation,
 as representative of claims 6, 7, 14, and 15, which do not
 recite an “optimum” modulation configuration.
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 specification. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
 2131, 2142 (2016); Changes to the Claim Construction
 Standard for Interpreting Claims in Trial Proceedings Be-
 fore    the    Patent    Trial   and    Appeal     Board,
 83 Fed. Reg. 51,340 (Oct. 11, 2018). We review claim con-
 struction de novo except for subsidiary factual findings
 based on extrinsic evidence, which we review for substan-
 tial evidence. Teva Pharm. USA, Inc. v. Sandoz, Inc., 574
 U.S. 318, 333 (2015); In re Hodges, 882 F.3d 1107, 1115
 (Fed. Cir. 2018).
     To the extent that the Board construed “beam forming
 technique,” it was in rejecting GAS’s overly narrow con-
 struction in the context of the parties’ dispute over whether
 Ahy’s use of an antenna selection parameter disclosed the
 claimed “physical beam forming technique.” We note that
 Sprint did not propose to construe “beaming forming tech-
 nique” as “a modulation configuration,” instead explaining
 that GAS’s expert, Dr. Humphrey, had contradicted GAS’s
 own claim construction position by testifying that a “phys-
 ical beam forming technique is just a modulation configu-
 ration.” J.A. 5174–75 (citing J.A. 5674 at ll. 14–17). The
 Board agreed with Sprint’s arguments that GAS’s proposed
 construction was unduly narrow and that Ahy discloses a
 “beam forming technique,” but did not expressly adopt any
 construction of “beam forming technique.” See J.A. 26 (“We
 agree with Petitioner.”).
      Here, the Board weighed claim construction testimony
 from GAS’s expert and found it unpersuasive. As the
 Board correctly noted, GAS does not rely on any intrinsic
 support from the ’916 specification, but rather supports its
 narrow claim construction only with Mr. Humphrey’s bare
 assertion that “[b]eam forming is accomplished through
 constructive and destructive interference to illuminate spe-
 cific portions or areas of a cell or sector thereby improving
 link quality and reducing interference effects.” J.A. 5099.
 Moreover, as Sprint pointed out, Mr. Humphrey also testi-
 fied to the contrary that a “physical beam forming
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 10             GEN. ACCESS SOLS., LTD.   v. SPRINT SPECTRUM L.P.



 technique” in the context of claims 8 and 16 of the ’916 pa-
 tent refers to a “modulation configuration.” J.A. 5674 at ll.
 10–17; see also J.A. 5675 ll. 18–20 (“Well, here [physical
 beam forming technique is] being defined as a modulation
 configuration.”). In view of Mr. Humphrey’s conclusory
 and inconsistent testimony, the Board fairly credited
 Sprint’s expert, Mr. Proctor, who explained that the
 “[s]election of different sets of combinations of antennas
 will result in different coverage patterns and similarly con-
 stitutes use of different ‘physical beam forming tech-
 niques.’” J.A. 27.
      In sum, we decline to adopt GAS’s narrow construction
 of “beam forming technique.” GAS has offered no intrinsic
 evidence to support such a narrow reading, and the Board’s
 weighing of the expert testimony was supported by sub-
 stantial evidence.
                         CONCLUSION
      We have considered GAS’s remaining arguments and
 find them unpersuasive. For the reasons stated above, we
 affirm the Board’s decision.
                         AFFIRMED
