Carucel Investments, LP

Patent Trials and Appeals Board

Nov 6, 2020

IPR2019-01079 (P.T.A.B. Nov. 6, 2020)

Trials@uspto.gov Paper 33
571-272-7822 Date: November 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
___________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

UNIFIED PATENTS, INC.,
Petitioner,

v.

CARUCEL INVESTMENTS, L.P.,
Patent Owner.

___________

IPR2019-01079
Patent 7,979,023 B2
____________

Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
PAUL J. KORNICZKY, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Unified Patents Inc. (“Petitioner” or “Unified”) filed a Petition
requesting inter partes review of claims 1, 11, and 16–23 (the “challenged
claims”) of U.S. Patent No. 7,979,023 B2 (Ex. 1001, the “’023 patent”).
Paper 2 (“Pet.”). Patent Owner (Carucel Investments, L.P.) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). With the Board’s
authorization, Petitioner filed a Reply (Paper 7) directed solely to
identification of the real party-in-interest.
Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
to all of the challenged claims and all grounds raised in the Petition. Paper 9
(“Institution Dec.”).
Following institution, Patent Owner filed a Response. Paper 16 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 22, “Pet. Reply”) and Patent Owner filed a Sur-reply (Paper 26, “PO
Sur-reply”).
On September 2, 2020, we held a consolidated oral hearing with
IPR2019-01103, also involving the ’023 patent, with Volkswagen Group of
America, Inc. as the petitioner, and several other related cases involving
Volkswagen Group of America and Patent Owner.1 A transcript of the
hearing is included in the record. Paper 32 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a). For the reasons discussed
below, we determine that Petitioner has demonstrated by a preponderance of

1IPR2019-01101 (Patent 7,221,904 B1), IPR2019-01102 (Patent 7,848,701
B2), and IPR2019-01105 (Patent 8,718,543 B2).
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Patent 7,979,023 B2
3
the evidence that claims 1, 11 and 16–23 of the ’023 patent are not
patentable.
B. Related Proceedings
The parties identify the following district court proceedings involving
the ’023 patent: Carucel Investments, LP v. Fiat Chrysler Automobiles US
LLC et al., 3-l8-cv-03331 (N.D. Tex.); Carucel Investments, LP v. General
Motors Company, 3-l8-cv-03332 (N.D. Tex.); Carucel Investments, LP v.
Volkswagen Group of America, Inc., 3-l8-cv-03333 (N.D. Tex.);
Carucel Investments, LP v. Mercedes-Benz USA, et al., 3:l8-cv-03334
(N.D. Tex.); Carucel Investments, LP v. Novatel Wireless, Inc. et al., 0-15-
cv-61116 (S.D. Fla.) (terminated); and Carucel Investments, LP v. Gogo,
Inc. et al., 0-14-cv-60363 (S.D. Fla.) (terminated). Pet. 1–2; Paper 4, 1.
The ’023 patent was also asserted in Carucel Investments, LP v.
Novatel Wireless, Inc., 16-cv-118 (S.D. Cal.) (“the Novatel litigation”),
resulting in a jury verdict of non-infringement. See Ex. 2106, 2–5 (Order on
Carucel’s motion for JMOL or new trial).
In addition to this Petition, the ’023 patent is challenged by different
parties in IPR2019-01103 and IPR2019-01404. Patents related to the ’023
patent are challenged in IPR2019-01101, IPR2019-01102, IPR2019-01104,
IPR2019-01105, and IPR2019-01106, among others. Paper 4, 1.
C. Real Party-in-Interest
Petitioner identifies only itself, Unified Patents Inc., as the real party-
in-interest. Pet. 1.2

2 Initially, Patent Owner challenged this identification of the real party-in-
interest by Petitioner. Prelim. Resp. 4–11. Because Patent Owner has failed
to raise this argument in its Response or during the trial, it is deemed
waived. In re Nuvasive, 842 F.3d 1376, 1380–81 (Fed. Cir. 2016) (argument
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Patent Owner identifies Carucel Investments, L.P. as the real party-in-
interest. Paper 4, 1.
D. The ’023 Patent
The ’023 patent is titled “Mobile Communication System with
Moving Base Station.” Ex. 1001, (54). According to the patent, “[a]
problem with existing mobile telephone systems is the considerable time
required in handoffs. This becomes a particular problem in urban areas
which are highly congested.” Id. at 1:56–58.
The ’023 patent addresses this problem by providing “a moving base
station which is interposed between a moving mobile telephone unit and a
fixed base station.” Id. at 2:66–3:2. The “movable base station moves with
the traffic at a rate of speed which is comparable to the speed of the traffic
and communicates with a moving mobile telephone unit via standard mobile
radio transmission.” Id. at 3:3–6. The moving base station “communicates
by radio signals with a plurality of fixed antennas spaced along the path of
travel of the mobile base station.” Id. at 3:6–9.
This is illustrated by Figure 1 of the ’023 patent, reproduced below:

raised by party in preliminary proceedings but failed to address during trial
in AIA proceeding is waived).

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Fig. 1 is a block diagram representation of a roadway structure with fixed
base stations, moving base stations, and fixed radio ports.
In Figure 1, a divided highway has mobile units 20 traveling on first
roadway 10, in one direction, and mobile units 25 traveling along second
roadway 15, in the opposite direction. Id. at 3:66–4:2. Moving base stations
30 are disposed along one side of roadway 10. The base stations are spaced
apart by a selected distance equivalent to the diameter of the cell served by
the moving base station. Id. at 4:2–6.
Moving base stations 30 may be moved by means of rail 35 or other
suitable conveying device, which may include an automotive vehicle
traveling on the roadway, in the same direction as the traffic flow on
roadway 10, as indicated by arrow 12. Id. at 4:6–10. Similarly, moving
base stations 40 are disposed along adjacent roadway 15, moving in the
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direction of the traffic as indicated by arrow 17. Id. at 4:11–13. Moving
base stations 40 are moved along rail 45. Id. at 4:13–14.
In operation, base stations 30 move in the direction of the flow of the
traffic at a rate of, for example, sixty miles per hour, which may be faster
than some traffic and slower than other traffic. Id. at 4:39–42. The moving
base stations handle telecommunications with mobile units 25, which travel
at a rate of not more than thirty miles per hour faster or slower than the
moving base stations. Id. at 4:42–45. Fixed base stations 70 accommodate
communications with mobile units traveling at speeds of less than 30 miles
per hour, including pedestrian traffic and stationary units. Id. at 4:48–51.
According to the ’023 patent, the advantage of this system is reducing
the number of handoffs by moving the base station in the same direction as
the mobile unit:
The system in accordance with the invention differs from the
prior art primarily in that the base stations 30, 40 are moving
with the traffic and communicate with the gateway office 60 via
fixed radio ports 50. Furthermore, in the examples described
herein, the various call-handling functions, including handoff,
are performed by the moving base station. Advantageously,
because of movement of the base station in the same direction
as the traveling mobile unit, the number of handoffs is greatly
reduced.
Id. at 5:10–18 (emphasis added).
Each of the moving base stations is provided with multiple antennas.
Id. at 5:20–21. Antennas 100 on moving base stations 30, 40 are used to
communicate with mobile units 20, 25, whereas antennas 101 on moving
base stations 30, 40 are used to communicate with fixed radio ports 50. Id.
at 5:26–29.
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E. Illustrative Claims
The ’023 patent has 23 claims. Ten claims (claims 1, 11, and 16–23)
are challenged in the Petition. See supra. Claims 1 and 11 are independent.
Claim 1 recites:
1. An apparatus configured to move relative to Earth, the
apparatus comprising:
a plurality of spatially separated antennas;
a receiver configured to receive mobile device signals from a
mobile device through the plurality of spatially separated
antennas; and
a transmitter configured to transmit radio frequency signals
corresponding to the mobile device signals to a base station.
Ex. 1001, 11:29–37.
Claim 11 recites:
11. An apparatus configured to move relative to Earth, the
apparatus comprising:
a plurality of spatially separated antennas; and
a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
and
a transmitter configured to transmit radio frequency signals
to a mobile device corresponding to the received fixed port
signals.
Id. at 12:8–16.
F. References and Other Evidence
The Petition relies on the following references:
1. U.S. Patent No. 5,422,934, filed May 17, 1993 (Ex. 1003,
“Massa”)
2. U.S. Patent No. 5,613,219, filed December 6, 1995 (Ex. 1004,
“Vogel”)
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Patent 7,979,023 B2
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3. EP 0482503 A2, published April 29, 1992 (Ex. 1006, “Toshiba”)
4. U.S. Patent No. 5,577,022, filed November 22, 1994 (Ex. 1005,
“Padovani”)
5. U.S. Patent No. 4,748,655, issued May 31, 1988 (Ex. 1010,
“Thrower”)
6. UK Patent Application GB 2227910 A, published August 8, 1990
(Ex. 1011, “Kaewell”)
7. U.S. Patent No. 5,267,261, issued November 30, 1993 (Ex. 1012,
“Blakeney”).
In addition, Petitioner submitted the Declaration of Dr. Vijay K.
Madisetti (Ex. 1009, “Madisetti Decl.”) and a Supplemental Declaration of
Dr. Madisetti (Ex. 1020. “Madisetti Supp. Decl.”). Patent Owner submitted
a Declaration of Mark A. Lanning (Ex. 2100, “Lanning Decl.”). Both
parties have submitted deposition transcripts for these declarants.3
G. Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § Basis/References
1, 11, 19–21 103 Massa, Vogel
16, 18 103 Massa, Vogel, Toshiba
17, 21–23 103 Massa, Vogel, Padovani
1, 11, 16, 18–20 103 Thrower, Kaewell
17, 21–23 103 Thrower, Kaewell, Blakeney

3 Ex. 1026 (“Lanning Dep.”); Ex. 2108 (“Madisetti Dep.”).
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Patent 7,979,023 B2
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Pet. 5.
II. PRELIMINARY MATTERS
A. Level of Ordinary Skill
Petitioner contends, “[a] person of ordinary skill in the art at and
before the priority date for the ’023 Patent . . . would have had a bachelor’s
degree in electrical engineering or computer engineering, or a related
subject, and two to three years of work experience in wireless
communications systems.” Petitioner further contends, “[a] lack of
experience can be remedied with additional education (e.g., a Master’s
degree), and likewise, a lack of education can be remedied with additional
work experience (e.g., 5–6 years).” Pet. 9.
Patent Owner contends: “A person of ordinary skill in the art . . . at or
near the filing date of the earliest priority application of the ‘023 Patent
would have had (i) a Bachelor of Science degree in electrical engineering or
computer engineering or related field of study; (ii) at least two years of
experience with wireless communications systems; and (iii) would also be
familiar with cellular communication technology.” PO Resp. 8. Patent
Owner further contends: “A lack of experience can be compensated with
additional education and a lack of education can be compensated with
additional work experience.” Id. (citing Lanning Decl. ¶ 49).
The formulations differ slightly in the level of work experience
necessary. Petitioner would require “at least two to three years of work
experience in wireless communications systems,” while Patent Owner would
require “at least two years of experience with wireless communications
systems.” This is not a material difference.
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Patent Owner’s formulation specifically calls for familiarity with
cellular communication technology, whereas Petitioner’s formulation is
more general, requiring a comparable level of experience with mobile
wireless communications. We regard these formulations as not materially
different, however, because familiarity with mobile wireless
communications would normally include knowledge of cellular
communication technology.
Both definitions, also, are consistent with the prior art before us and
with the level of skill reflected in the ’023 patent. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an
appropriate level of skill). As the definitions are equivalent, we adopt Patent
Owner’s more specific description, with the exception of the open-ended
language “at least.” However, we would reach the same result on the
ultimate question of obviousness of the ’023 patent under either formulation.
B. Claim Construction
An amendment to the rules changing the claim construction standard
applies here because the Petition was filed after November 13, 2018, the
effective date of the amendment. 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). Thus, for this inter
partes review, the Board applies the same claim construction standard as
that applied in federal courts. See id.
In this context, claim terms “are generally given their ordinary and
customary meaning” as understood by a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the
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disputed claim limitation, we look principally to the intrinsic evidence of
record, examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). Extrinsic evidence is “less significant than the
intrinsic record in determining ‘the legally operative meaning of claim
language.’” Phillips, 415 F.3d at 1317.
1. “configured to”
The district court in the Novatel litigation construed “configured to,”
appearing in the preamble to claims 1 and 11, as “constructed to move with
the traffic at a rate of speed which is comparable to the speed of the traffic.”
Ex. 1007, 14–16. Petitioner urges us to adopt this construction. Pet. 12.
Petitioner states: “The court’s construction was based in part on the ’023
Patent’s disclosure that, ‘[i]n accordance with this invention, a movable base
station moves with the traffic at a rate of speed which is comparable to the
speed of the traffic . . .’” Id. (citing Ex. 1001, 3:2–6).
Patent Owner initially proposed no construction for this term (Prelim.
Resp. 3), but now agrees with Petitioner’s construction and urges us to adopt
it. PO Resp. 10–12. Based on the parties’ agreement with the district
court’s construction, we apply that construction in our analysis below.
In our Institution Decision, we stated, “[a]t this stage, . . . we agree
with Petitioner’s suggestion that the preambles of claims 1 and 11 are not
limiting.” Institution Dec. 9–10. Patent Owner now contends that the
preambles of those claims are limiting. PO Resp. 11–12. Because we
determine infra that none of the patentability arguments before us depend on
the preambles, we do not express an opinion in this Final Written Decision
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on whether the preambles are limiting,
2. “fixed port”
Petitioner contends this term appearing in claim 11 should be
construed as “a stationary device at which signals can enter or exit a
communication network.” Pet. 12–13. Petitioner relies on the district
court’s claim construction order in the Novatel litigation and testimony from
Dr. Madisetti. Pet. 12–13 (citing Ex. 1007, 12; Madisetti Decl. ¶ 56).
In our Institution Decision, we did not see the need to construe the
term “fixed port.” Institution Dec. 11. Patent Owner “does not dispute this
determination.” PO Resp. 10. Petitioner has not persuaded us of the need to
construe this term for the purpose of this decision.
3. “transmit radio frequency signals to a mobile device
corresponding to the received fixed port signals”
For this term appearing in claim 11, Petitioner urges us to adopt the
district court’s construction in the Novatel litigation. Pet. 13. The district
court construed the term to mean “transmit radio frequency signals to a
mobile device, where the radio frequency signals correspond to the received
fixed port signals.” Ex. 1007, 19–20. In our Institution Decision, we did not
see the need to construe this term. Institution Dec. 11. Patent Owner does
not dispute this determination. PO Resp. 12. Petitioner has not persuaded
us of the need to construe this term for the purposes of this decision.
4. “wherein the receiver is further configured to receive fixed port
signals from a plurality of fixed ports”
Petitioner proposes that we construe this term in claim 21, referring to
the receiver of claim 11, as not requiring the signals received in claim 11 to
be the same signals received “from a plurality of ports” in claim 21.
Pet. 13–14. In our Institution Decision, we did not see the need to construe
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this term. Institution Dec. 12. Patent Owner does not dispute this
determination. PO Resp. 13. Petitioner has not persuaded us of the need to
construe this term for the purposes of this decision.
5. “mobile device”
Prior to institution, neither party advanced a construction for this term,
which now lies at the center of this controversy. Patent Owner now asks us
to construe “mobile device” as “a device that must register with and be able
to directly communicate with the cellular network.” PO Resp. 13. Patent
Owner asserts that this construction also includes the “capability to be
switched back-and-forth between either a direct connection with the fixed
base station or a connection with a moving base station.” Id. Patent Owner
argues: “A mobile device is more than just a cordless phone handset.” Id.
To support this construction, Patent Owner relies on the ’023 patent
specification: “The ’023 Patent specification teaches that a mobile device
must be capable of directly communicating with either a fixed cellular base
station or a moving base station.” Id. (citing Ex. 1001, 4:48–51). According
to Patent Owner, “the mobile unit’s capability to be switched back-and-forth
between either a direct connection with the fixed base station or a
connection with a moving base station is discussed repeatedly and
throughout the specification.” Id. (citing Ex. 1001, 10:65–11:3). Patent
Owner cites also a discussion of the mobile device in the ’023 patent
(referred to in the patent as a mobile unit) which describes registration:
When a mobile unit set is first powered up or first enters
a service area, the mobile unit must register in the manner
described earlier, by transmitting its unique address in the
new service area. The address will be received by the closest
moving base station 30 and transmitted via a fixed radio port
and the gateway switch 60 to the telephone network.
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Ex. 1001, 9:62–66 (partially quoted at PO Resp. 14–15). Patent Owner also
relies on testimony from its expert, Mr. Lanning. See PO Resp. 13–14
(citing Lanning Decl. ¶¶ 46–48, 55–57, 60–62, 65–69).
Petitioner responds that no special construction of “mobile device” is
necessary (“‘Mobile device’ requires no construction—it is a simple concept
that is clear on its face.”). Pet. Reply 3. Opposing Patent Owner’s proposal,
Petitioner asserts that “[n]ot only is this not the plain meaning of ‘mobile
device,’ but it also contradicts the specification, the surrounding language of
the claims, and related patents.” Id. Petitioner contends that Patent Owner
“admits ‘mobile device’ had a broad meaning encompassing not only
cellular phones, but other devices that permitted movement during use,
including PDAs and laptops.” Id. (citing PO Resp. 2–3).
Petitioner points out that the specification of the ’023 patent does not
support Patent Owner’s construction and concludes that “[t]he specification
never gives ‘mobile device’ a specialized meaning.” Id. at 4. Petitioner
shows that the specification “describes cell terminals as cordless phones.”
Id. at 5 (citing Ex. 1001, 2:41–52). Further, Petitioner contends that Patent
Owner’s construction “adds three unclaimed concepts that are unsupported
by the specification and the surrounding language of the claims.” Id. These
are: (1) Patent Owner “requires the device to register with the cellular
network”; (2) Patent Owner’s “requirement that the mobile device ‘directly’
communicate with the cellular network”; and (3) Patent Owner’s “implicit
requirement . . . that the mobile device can be connected to a different
moving base station when needed.” Id. at 5–7.
Patent Owner responds that “Petitioner implicitly interprets its ‘plain
and ordinary meaning’ in a manner similar to a defective broadest
reasonable interpretation analysis.” PO Sur-reply 6. Patent Owner argues
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Petitioner’s analysis “erroneously attempts to . . . broadly construe the term
‘mobile device’ in a vacuum” and “disregard the ’023 Patent specification’s
disclaimer or disavowal of the term ‘mobile device.’” Id. at 6–7.
Having reviewed and considered the record presented, including
Petitioner’s and Patent Owner’s submissions, we are not persuaded to adopt
Patent Owner’s construction of “mobile device.” As instructed by Phillips,
we first look to the words of the claims. Phillips, 415 F.2d at 1312. We find
that the language of the challenged claims does not support Patent Owner’s
construction. The challenged claims themselves are not directed to the
mobile device, but to “[a]n apparatus configured to move relative to the
earth.” Ex. 1001, 11:29, 12:8. Nor do the claims themselves specify a
device “that must register with and be able to directly communicate with the
cellular network.”
The challenged claims and the written description of the alleged
invention in the ’023 patent focus not on the mobile device, but on the
moving base station. Ex. 1001, 2:66–3:2 (“These and other problems of the
prior art are overcome in accordance with this invention by means of a
moving base station which is interposed between a moving mobile telephone
unit and a fixed base station.”). This emphasis on the moving base station as
the invention is consistent with counsel for Patent Owner’s presentation at
oral argument: “The Carucel patents were the culmination of Mr.
Gavrilovich’s life’s work when he invented a moveable base station that
significantly improved wireless communications by acting as an
intermediary between cell towers and mobile devices.” Hearing Tr. 67:15–
19.
We, therefore, find that Patent Owner’s contention that the mobile
device must be able to communicate directly with the cellular network is
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contradicted by the intrinsic record. The mobile devices in claims 1 and 11
do not communicate with a base station or fixed port directly, but only
through the intermediary “apparatus.” Pet. Reply 6. Thus, in claim 1, it is
the claimed “apparatus” (not the mobile device) that has “a receiver
configured to receive mobile device signals from a mobile device through
the plurality of spatially separated antennas” and “a transmitter configured to
transmit radio frequency signals corresponding to the mobile device signals
to a base station.” Ex. 1001, 11:32–37 (emphasis added). Similarly, in
claim 11, it is the claimed “apparatus” (not the mobile device) that has: “a
receiver configured to receive fixed port signals from a fixed port through
the plurality of spatially separated antennas;” and “a transmitter configured
to transmit radio frequency signals to a mobile device.” Ex. 1001, 12:8–16
(emphasis added).
Furthermore, the claims do not associate the signals transmitted
between the mobile device and the “apparatus” with a cellular network, or
identify the mobile device with a cellular network. As shown by our
analysis of the claim language above, the only functionality attributed to the
“mobile device” by the claims of the ’023 patent is the ability to transmit
radio signals to and receive radio signals from the claimed “apparatus”
corresponding to the moving base station.
As stated in Phillips, “the specification is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” Phillips, 415 F.2d at 1315
(internal quotes and citation omitted). We find that the ’023 patent
specification does not support Patent Owner’s narrowing construction of
“mobile device” as a phone capable of communications directly with a
cellular network. Cf. PO Resp. 7–8.
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Patent Owner also argues: “The ’023 Patent Specification and Claims
are not directed to a Cordless Phone System.” PO Resp. 5 (citing Lanning
Decl. ¶ 65). We do not see in the specification of the ’023 patent a clear
indication supporting Patent Owner’s contention that conventional cordless
non-cellular phones should be excluded. Cf. PO Resp. 13 (“A mobile device
is more than just a cordless phone handset.”). As Petitioner points out,
“[t]he specification never gives ‘mobile device’ a specialized meaning”
excluding cordless phones. Pet. Reply 4. Petitioner points out also that in
the Background section, the ’023 patent describes the goal of the patent as
encompassing “all applications” including cordless phones: “What is
desirable is an infra structure which allows the use of such terminals in all
applications, whether in the home or office as a cordless phone . . . .”
Ex. 1001, 2:46–48 (emphases added); Pet. Reply 4–5.
While the ’023 patent does refer to base stations in a “typical cellular
telephone system” as “cell site[s]” (id. at 4:63–64), it also describes the radio
interfaces between the mobile devices and the moving base stations in more
general terms. Id. at 6:48–54. Thus, the ’023 patent describes the radio
interfaces between the mobile units and both the moving and fixed base
stations as “a standard radio interface, well known in the art.” Id. at 6:48–
51. This is consistent with the patent’s stated goal of providing “an infra
structure which allows the use of . . . a cordless phone.” Id. at 2:46–48.
We find further support for our conclusion that Patent Owner’s
construction is overly limiting in the ’023 patent’s description of an
embodiment where the mobile device is actually prevented from
communicating directly with the fixed ports. Pet. Reply 6 (citing Ex. 1001,
3:32–36). In that embodiment, the power levels for the signals between the
moving base station and the mobile device are chosen to avoid direct
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communication between the mobile device and the fixed radio ports.
Ex. 1001, 3:21–36.
Patent Owner asserts that its proposed construction of “mobile
device” reflects “the plain and ordinary meaning” of the term under Phillips.
PO Resp. 13–16; PO Sur-reply 5. Patent Owner argues that “Petitioner’s
analysis erroneously attempts to . . . broadly construe the term ‘mobile
device’ in a vacuum.” PO Sur-reply 6. Patent Owner contends Petitioner’s
analysis “is premised on incorrect legal standards.” Id. at 7. Patent Owner
argues that “the ’023 Patent specification also describes the invention as a
whole and should be limited as such.” Id. at 8. Patent Owner continues:
“Specifically, the ’023 Patent relates to and describes as a whole improving
the wireless connections of mobile devices within cellular telephone systems
via a moving base station . . . .” Id.
We are not persuaded by these arguments, as they are contrary to the
claim language and the intrinsic evidence discussed supra. The challenged
claims are directed to the moving base station—“[a]n apparatus configured
to move relative to Earth”—and Patent Owner has asserted consistently that
the invention of the ’023 patent is the moving base station, not the mobile
devices. See, e.g., Hearing Tr. 67:15–19 (“The Carucel patents were the
culmination of Mr. Gavrilovich’s life’s work when he invented a moveable
base station that significantly improved wireless communications by acting
as an intermediary between cell towers and mobile devices.”); PO Resp. 2
(“The asserted claims of the ’023 Patent cover a movable base station or
apparatus configured to provide important benefits to mobile devices, such
as smartphone, tablet and laptop users.”); Id. (“Mr. Gavrilovich invented a
‘mobile base station’ that significantly improved wireless communications
by acting as an intermediary between cell towers and mobile devices.”); Ex.
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1001, 2:66–3:2 (“These and other problems of the prior art are overcome in
accordance with this invention by means of a moving base station which is
interposed between a moving mobile telephone unit and a fixed base
station.”). And while the ’023 patent may discuss cellular networks, we find
that the disclosure is not limited to cellular phones, for the reasons given
above.
Patent Owner responds that there has been a “disclaimer or
disavowal” of claim scope for the term “mobile device.” PO Sur-reply 6–7
(“Petitioner’s analysis erroneously attempts to . . . disregard the ’023 Patent
specification’s disclaimer or disavowal of the term ‘mobile device.’”). We
do not find support for such an argument. Patent Owner has failed to
demonstrate a disavowal of mobile devices that do not communicate directly
with a cellular system either in the specification or prosecution history.4 As
discussed supra, the ’023 patent claims are directed to a moving base station
communicating with the cellular network, and the specification describes an
embodiment which prevents the mobile unit from communicating with the
fixed ports. “To disavow claim scope, the specification must contain
‘expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson &
Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar v. Int’l Trade
Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)
(“Where the specification makes clear that the invention does not include a

4 Neither party here relies on the relevant prosecution history in its analysis.
However, in our Final Written Decision in IPR2019-01103, entered
concurrently with this Decision, and other related cases, we discuss the
prosecution history of related U.S. Patent 7,221,904.
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particular feature, that feature is deemed to be outside the reach of the claims
of the patent, even though the language of the claims, read without reference
to the specification, might be considered broad enough to encompass the
feature in question.”). We find that there has not been a clear disavowal of
claim scope. The references to cellular communications in the ’023 patent
cited by Patent Owner (PO Sur-reply 11–13) are merely exemplary, and do
not rise to the level of a clear and unmistakable disavowal.
In addition to asserting there has been a disavowal or disclaimer of
claim scope, Patent Owner argues that “recent Federal Circuit precedent . . .
cautions against . . . effectively requiring statements in the intrinsic record to
rise to the level of a disclaimer . . . in order to inform the meaning of the
disputed claim term.” PO Sur-reply 9. We are not persuaded that Patent
Owner’s cited authorities support that argument here. Id. at 7–10.
In Pacing Technologies, LLC v. Garmin International, Inc., 778 F.3d
1021 (Fed. Cir. 2015), cited by Patent Owner, the Federal Circuit found
evidence of “a clear and unmistakable statement of disavowal or disclaimer”
in the stated objects of the invention, including a statement that the objects
would be accomplished by the particular feature (a “repetitive motion pacing
system”) to which the Court limited the claims. 778 F.3d at 1025. Here, in
contrast, for the reasons discussed above, there is no corresponding “clear
and unmistakable statement” limiting the scope of the mobile devices to “a
device that must register with and be able to directly communicate with the
cellular network.”
We do not find Patent Owner’s other authorities to be any more
persuasive. For example, in Personalized Media Communications, LLC v.
Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020) (cited at PO Sur-reply 9), the
Federal Circuit relied on facts not present here, namely, that “[d]uring
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prosecution, the applicant repeatedly and consistently voiced its position that
encryption and decryption require a digital process in the context of the ’091
patent.” 952 F.3d at 1345. Moreover, the Court observed: “The applicant
never abandoned that position. Indeed, the applicant amended the claims—
giving rise to the claim . . . term at issue on appeal—only to clarify its
position that ‘encryption requires a digital signal.’” Id. at 1345–46. Patent
Owner does not identify in the relevant prosecution history here any such
repeated or consistent statements by Patent Owner excluding non-cellular
devices. Nor has Patent Owner identified an amendment to the claims
during prosecution that would “clarify its position” that such devices are
excluded.
Patent Owner cites Bell Atlantic Network Services, Inc. v. Covad
Communications Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001), for the
proposition that the written description “can provide guidance as to the
meaning of the claims.” PO Sur-reply 9–10. This point is not disputed. We
discuss the written description in our analysis supra, and find that it does not
support Patent Owner’s construction for the reasons given there. Bell
Atlantic does not help Patent Owner’s argument.
The same is true of Patent Owner’s discussion of On Demand
Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006).
PO Sur-reply 10. As Patent Owner’s quotation from On Demand makes
clear, it is not necessary to find an explicit disavowal “when the scope of the
invention is clearly stated in the specification, and is described as an
advantage and distinction of the invention.” 442 F.3d at 1340 (quoted at PO
Sur-reply 10). However, in our analysis, supra, of Patent Owner’s position,
we find that the scope of the invention and its advantages as described in the
’023 patent specification center on the moving base station, not the mobile
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device. The ’023 patent specification, therefore, does not favor Patent
Owner’s narrow construction of “mobile devices.” Thus, On Demand’s
exception to the normal requirement for an explicit disavowal is not
applicable here.
We are not persuaded by Patent Owner’s listing of “examples” from
the ’023 patent that discuss communications with the fixed base stations
when traveling at speeds of less than thirty miles per hour. PO
Sur-reply 8–9. Those citations do not describe the communications as
cellular communications or fixed base stations 70 as cellular sites, stating
only that their operation is “essentially the same as that of a standard fixed
base station.” Ex. 1001, 10:63–65.5 Nor are Patent Owner’s citations to the
various occurrences of the term “cellular” in the ’023 patent persuasive. Cf.
PO Sur-reply 11–13. There is no dispute that improving cellular technology
is included among the goals described in the ’023 patent. However, Patent
Owner fails to support its argument that the ’023 patent “explicitly and
exclusively relates to improving the wireless connections of mobile devices
within ‘cellular telephone systems.’” Id. at 11 (original emphasis omitted;
emphasis added). We find, based on the analysis above, that the claims and
the specification of the ’023 patent reveal a broader goal of improving
wireless connections involving non-cellular devices as well.
Nor are we persuaded by Patent Owner’s position that the
specification requires a mobile device to “register . . . with the cellular

5 Patent Owner misquotes the description in the ’023 patent of the base
station as a “standard fixed base station” by inserting “cellular” before
“fixed base station.” PO Sur-reply 9. We find no support in the description
of these fixed base stations in the ’023 patent that limits them to “cellular”
stations.
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network.” PO Sur-reply 5. While registration with a base station is
mentioned in the ’023 patent specification (see PO Sur-reply 8), the
registration process described there occurs only “[w]hen a mobile unit set is
first powered up or first enters a service area,” and involves the mobile
device transmitting its address to the moving base station, not to the fixed
base stations. Ex. 1001, 9:62–67 (“The address will be received by the
closest moving base station 30 and transmitted . . . to the telephone
network”).
Thus, we find that Patent Owner’s analysis of the ’023 patent
specification does not support its contention that the mobile device
communicates directly with a cellular system when it registers during power
up or when first entering a service area. Further, we find that to the extent
the ’023 patent discloses registration by the mobile device, it describes
registering with the moving base station and not with the fixed base stations.
Ex. 1001, 9:65–67. The actual registration with the fixed base station is
handled by the moving base station. Id.
In summary, we find that Patent Owner’s proposed construction for
“mobile device” is not supported by the claim language of the ’023 patent or
the intrinsic evidence, and therefore we do not adopt such a construction that
would limit “mobile devices” to cellular phones or other devices “that must
register with and be able to directly communicate with the cellular network,”
and which excludes conventional cordless phones.
We agree with Petitioner that no construction of “mobile device” is
necessary. Pet. Reply 3.
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C. Description of Prior Art References
Petitioner’s challenges primarily rely on Massa and Thrower. The
remaining references (Vogel, Toshiba, Padovani, Kaewell, and Blakeney)
are relied on as secondary references.
1. Massa (Exhibit 1003)
Massa is a patent titled “Cordless Range Extension Accessory
Apparatus for Radio Telephones.” Ex. 1003, (54). The patent discloses
“[a]n accessory apparatus for mobile radio telephones, particularly those
used in cellular networks, [that] permits utilization of the full
communication range capability of a vehicle-mounted cellular radio
telephone by a cordless portable handset remote from the vehicle.” Id. at
(57).
Massa describes an adapter unit located in a vehicle and
interconnected between an existing portable handset and the transceiver of a
vehicle-mounted radio telephone. Id. The adapter unit includes a down-link
transceiver operating at radio frequencies outside of the cellular frequency
band. Id. The down-link transceiver receives demodulated audio and data
signals from the resident cellular transceiver and retransmits the signals via a
low-power modulated down-link RF carrier signal to the portable remote
cordless handset. Id.
This is illustrated by Figure 2 of Massa, reproduced below:
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Figure 2 of Massa is a simplified block diagram of a mobile radio telephone
installed in a motor vehicle.
Figure 2 shows a mobile radio telephone installed in vehicle 11. Ex. 1003,
5:26–27, 5:53–57. As shown in Figure 2, a typical mobile radio telephone
includes handset 12, transceiver 13, and external antenna 15, connected to
the transceiver by coaxial radio frequency (RF) power cable 16. Id. at 5:28–
32.
As shown in Figure 2, Massa describes range extension accessory
apparatus 20 that includes interface module 21 connected to resident low-
power “link” radio transceiver 22. Id. at 5:58–61. Transceiver 22 operates
at a frequency different from those of the cellular band used by mobile or
main radio telephone transceivers. Id. at 5:64–67. Transceiver 22 is
connected to auxiliary antenna 24 by coaxial RF power cable 25. Id. at
6:3–5.
Cordless handset 26 has a keypad, speaker, microphone, and a
transceiver. Id. at (57). The transceiver receives down-link transmissions
from adapter unit transceiver 22 and transmits voice or data signals via a
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low-power up-link carrier signal to the adapter unit transceiver, which
demodulates the information signals from the up-link carrier signal and
conveys them to existing radio telephone transceiver 15 for transmission at
high power to the cellular network. Id.
2. Thrower (Exhibit 1010)
Thrower is a patent titled “Portable Telephones.” Ex. 1010, (54). The
patent discloses an overlay communication system for use in conjunction
with an existing cellular radio telecommunications network that includes a
network control and a number of base stations. Id. at 1:56–60. “The overlay
system is made up of a distributed array of gateway devices that
communicate like terminals of the cellular radio network with base stations”
of the cellular network. Id. at 1:60–62.
The gateway is “a communal multi-channel radio telephone
unit . . . that can be accessed simultaneously by a number of subscribers over
their personal portable telephones.” Id. at 4:59–63. In order to service a
large number of subscribers, this unit establishes a number of channels at
different frequencies with its associated base station. Id. at 5:4–6.
This is illustrated by Figure 2 of Thrower, reproduced below.
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Figure 2 of Thrower is a block diagram of a
multi-channel radio gateway unit.
In Figure 2, multichannel receiver/transmitter 20 communicates with various
personal telephones within the service area of unit 15. Ex. 1010, 5:44–47.
A second receiver/transmitter 26 communicates with the base station of the
cell in which the unit is located. Id. at 5:65–68.
3. Vogel (Exhibit 1004)
Vogel is a patent titled “Transceiver Having Plural Antennas and
Adjusting the Time Delay of Transmitted Signals to Match the Time Delay
of Received Signals.” Ex. 1004, (54). Vogel describes a transceiver for use
in a radio transmission system having a plurality of transmitting antennas.
Id. at (57). This is illustrated by Figure 1 of Vogel, reproduced below:
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Figure 1 of Vogel shows a radio system with a transceiver device
with transmitting and receiving antennas arranged in pairs.
In Vogel, “a signal is received via spatially separated antennas.”
Id. at 1:16–17. Vogel teaches that its “transceiver device comprising a
plurality of transmitting antennas and a plurality of receiving antennas
can . . . also be used in the mobile station.” Id. at 5:7–10.
4. Kaewell (Exhibit 1011)
Kaewell is a published UK patent application titled “Spatial Diversity
System for Mobile Telephone.” Ex. 1011, (54). The reference teaches
providing a vehicle with at least two separate antennas, a master (primary)
and a slave (diversity). The stated purpose is to overcome reception
problems of “shadowing” and “fading.” Id. (57).
5. Blakeney (Exhibit 1012)
Blakeney is a patent titled “Mobile Station Assisted Soft Handoff in a
CDMA Cellular Communications System.” Ex. 1012, (54). Blakeney
describes a “system for controlling the handoff in communications of a
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mobile station between cell base stations . . . in a code division multiple
access (CDMA) cellular communications system.” Id. at 1:16–19.
6. Padovani (Exhibit 1005) and Toshiba (Exhibit 1006)
These references will be described infra.
III. ANALYSIS OF THE CHALLENGED CLAIMS
A. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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) where in evidence, so-called “secondary
considerations,” including commercial success, long-felt but unsolved needs,
failure of others, and unexpected results. Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966) (“the Graham factors”).
Neither the Petition nor the Patent Owner Response presents evidence
on the fourth Graham factor. We, therefore, do not consider that factor in
this decision.
B. Massa Challenges
Petitioner contends that claims 1, 11, and 19–21 would have been
obvious over Massa in view of Vogel; claims 16 and 18 would have been
obvious over Massa and Vogel further in view of Toshiba; and claims 17
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and 21–23 would have been obvious over Massa and Vogel further in view
of Padovani. Pet. 5.
1. Claims 1 and 11
Petitioner’s analysis first focuses on independent claim 11. Id. at 19.
Petitioner provides an element-by-element analysis of claim 11 in relation to
Massa and Vogel at pages 19–28 of the Petition. Petitioner supports its
analysis with testimony from Dr. Madisetti. Madisetti Decl. ¶¶ 80–102.
Petitioner demonstrates that each element of claim 11 is disclosed or
suggested by Massa and Vogel.
a. An apparatus configured to move relative to Earth
Petitioner identifies apparatus 20 in Massa as the “apparatus” in the
claim 11 preamble (“[t]o the extent the preamble is limiting”). Pet. 19–20.6
Petitioner explains: “Massa discloses in Figure 2 ‘a cordless range extension
accessory apparatus 20 according to the present invention . . . operably
interconnected to a vehicle-mounted mobile radio telephone 10 of the type
shown in FIG. 1.’” Id. at 19 (quoting Ex. 1003, 5:53–57).7
Patent Owner does not challenge Petitioner’s showing that Massa
meets this limitation. We find that the preamble of claim 11 (whether or not
limiting) is met by Massa.8

6 Alternatively, Petitioner identifies the “apparatus” of the claims with “the
components of the combined Massa-Vogel system itself (i.e., Massa’s
transceiver and antenna components and Vogel’s antenna teachings).”
Pet. 20 n.5 (emphasis omitted). We do not further discuss this alternative
analysis as it is not necessary to decide this case.
7 Petitioner’s citation to 3:53–57 of Massa (Ex. 1004) at page 19 of the
Petition is incorrect. The material cited appears at 5:53–57 of Massa.
8 As discussed supra, we do not express an opinion on the question of
whether the preambles of claims 1 or 11 are limiting.
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b. a plurality of spatially separated antennas
Petitioner acknowledges that “Massa does not explicitly disclose a
plurality of spatially separated antennas.” Pet. 21. Citing testimony from
Dr. Madisetti, Petitioner relies on Vogel for this teaching: “A [person of
ordinary skill] would have recognized that using spatially separated
antennas was well-known in the art, as shown, for example, by Vogel.” Id.
(citing Madisetti Decl. ¶¶ 85–86). Petitioner shows that “Vogel describes a
‘radio system comprising at least one transceiver which transmits and
receives via a plurality of antennas, and which for reception is a so-termed
“space diversity” system wherein a signal is received via spatially separated
antennas’” Id. (quoting Ex. 1004, 1:13–17); see also Fig. 1 of Vogel,
reproduced supra). We find that for the reasons given by Petitioner, Vogel
discloses the limitation of plural spatially-separated antennas.
Patent Owner responds that “Massa with Vogel fail to disclose this
limitation because such a combination would not result in a moving receiver
that can receive signals through the plurality of spatially separated
antennas from a fixed port.” PO Resp. 40–41. Patent Owner contends
“Massa does not teach how to process multiple receive signal input paths
received from the separated antennas (i.e., multiple access techniques) [and]
Vogel does not disclose how to implement its invention on any moving
transceiver.” Id. at 41 (citing Lanning Decl. ¶¶ 135–137, 155). Elsewhere
in its opposition, Patent Owner contends “the design and circuitry details of
the transceiver (13) of the prior art vehicle-mounted radio telephone system
are not disclosed in Massa.” Id. at 17. In addition, Patent Owner asserts:
“[T]he Petition does not explain how a [person of ordinary skill] would
combine Vogel’s spatially separated antennas with transceiver and antenna
of the vehicle-mounted radio telephone system discussed in Massa,
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especially, where Massa lacks the necessary design and circuitry details for
the transceiver and antenna of the vehicle-mounted radio telephone system.”
Id. at 32. Finally, Patent Owner argues that replacing the antenna in Massa
with the spatially separated antennas in Vogel “results in an inoperable
device because Massa does not teach how to process multiple receive signal
paths received from the separated antennas.” PO Sur-reply 19.
We are not persuaded by these arguments. “The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” MCM Portfolio
LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting
In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”).
We are satisfied with Petitioner’s showings that Massa and Vogel,
together, disclose “the necessary design and circuitry details” for a person of
ordinary skill to provide Massa’s moving receiver with multiple spatially
separated antennas, a well-known technique. See Madisetti Supp. Decl. ¶ 10
(“A [person of ordinary skill] would not have required detailed
specifications regarding the circuitry of a transceiver device to implement
one in the context of Massa.”); Lanning Dep. 33:14–25 (prior to 1995 “there
were vehicles that could go fast or slow or be stopped that had spatially
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separated antennas on the vehicle with the vehicle-mounted cellular phone
systems that I’m aware of”).
Given the high level of skill in the pertinent art before us (see
Section II,A, supra), we find that such a person of ordinary skill would have
been able to combine successfully the relevant teachings of Massa with
Vogel. Madisetti Decl. ¶ 89; Madisetti Supp. Decl. ¶¶ 10–14.
We are not persuaded by Patent Owner’s argument that “the antenna
processing teachings of Vogel will not work if the spatially separated
antennas are located on the moving transceiver of Massa, as Petitioner
proposes.” PO Resp. 36 (citing Lanning Decl. ¶¶ 135–137); PO Sur-reply
19–21. As Dr. Madisetti testifies, “[t]he proposed combination does not
suggest literally taking Vogel’s antennas and physically mounting them on
Massa’s vehicles; rather, the combination proposed is made in light of a
[person of ordinary skill’s] ordinary knowledge and skill.” Madisetti Supp.
Decl. ¶ 12. Dr. Madisetti further explains, “Mr. Lanning’s testimony
regarding the efficacy of Vogel’s spatially-separated antennas on moving
devices make [sic] incorrect assumptions.” Madisetti Supp. Decl. ¶ 14.
Specifically, Dr. Madisetti testifies Mr. Lanning fails to account for “the
significantly greater speed of telecommunication signals relative to the
average moving device” and “the fact that the separated antennas on the
moving device do not move with respect to one another.” Id. We find this
testimony convincing. The ’023 patent itself acknowledges that “[v]arious
techniques for obtaining high antenna diversity are well known in the art and
antennas employing such techniques are commercially available.” Ex. 1001,
6:27–29. We also consider Mr. Lanning’s deposition testimony, quoted
supra, that spatially-separated antennas were used on vehicle-mounted
cellphone systems. Lanning Dep. 33:14–18. We agree with Dr. Madisetti
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that providing Massa with spatially separated antennas “would require only
minor modifications consistent with a [person of ordinary skill’s] knowledge
and skill.” Madisetti Supp. Decl. ¶ 14.
We find that for the reasons given above, the combination of Massa
and Vogel discloses the claim limitation “a plurality of spatially separated
antennas.”
c. a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
Petitioner identifies Massa’s “cellular transceiver” 13 with the
“receiver” recited in claim 11. Pet. 23–25. Petitioner shows: “A [person of
ordinary skill] would have understood that a ‘transceiver,’ like the one
disclosed in Massa, is a device that can both transmit and receive signals.”
Id. at 24 (citing Madisetti Decl. ¶ 93). Further, Petitioner shows that
Massa’s received signals are “fixed port signals”: “When an automobile
equipped with a ‘cellular’ radio telephone moves away from a fixed
transceiver, the power level of the signals received by both the fixed
transceiver and the mobile transceiver drops.” Id. at 24–25 (quoting
Ex. 1003, 1:20–25). Dr. Madisetti testifies that to a person of ordinary skill,
this conveys that Massa’s cellular transceiver receives fixed port signals.
Madisetti Decl. ¶ 94.
Petitioner shows that Massa’s transceiver unit is connected to an
external antenna, and Dr. Madisetti testifies that a person of ordinary skill
would have understood those signals received through the antenna would be
sent to the receiver and associated devices for processing. Pet. 25; Madisetti
Decl. ¶ 95. Petitioner relies on Vogel for the disclosure of the claimed
multiple spatially separated antennas. Pet. 26 (citing Ex. 1004, Fig. 1;
Madisetti Decl. ¶ 96).
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As discussed supra, Patent Owner asserts that combining Massa with
Vogel “would not result in a moving receiver that can receive signals
through the plurality of spatially separated antennas from a fixed port.” PO
Resp. 40–41. We are not persuaded by this argument for the reasons given
above in our discussion of the limitation “a plurality of spatially separated
antennas.” We find that for the reasons discussed above and those presented
by Petitioner, Massa and Vogel meet the “receiver” limitation of this claim.
Pet. 27–28; Madisetti Decl. ¶¶ 92–97.
d. a transmitter configured to transmit radio frequency signals to a
mobile device corresponding to the received fixed port signals.
Petitioner identifies the transmitter section of resident link
transceiver 22 in Massa with the “transmitter” in the claim. Id. at 27–28.
Petitioner shows: “Massa explains that ‘[s]ignals received by the cellular
transceiver are routed through the interface module to the resident link
transceiver, and re-transmitted or ‘down-linked’ to the portable handset
transceiver.’” Id. at 27 (quoting Ex. 1003, 4:13–17) (alterations added by
Petitioner). Petitioner shows that these are radio frequency (RF) signals. Id.
at 27–28; Ex. 1003, 5:58–67; Madisetti Decl. ¶ 101.
Patent Owner contends that Massa does not disclose the claimed
“mobile device.” PO Resp. 38–40. Referring back to its proposed
construction of “mobile device,” Patent Owner responds: “While Massa
does disclose a portable handset, Massa does not disclose a transmitter
configured to transmit radio frequency signals to a portable handset that
registers with or is capable of directly communicating with the cellular
network as required by the limitation of a ‘mobile device’ in the context of
the entire ’023 Patent.” Id. at 38–39.
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Patent Owner’s argument relies on its construction of “mobile device”
as “a device that must register with and be able to directly communicate with
the cellular network.” See supra, Section II.B.5. Because we have not
adopted Patent Owner’s claim construction for “mobile device,” we are not
persuaded by this argument.
We find that Massa’s portable handset meets the requirement of claim
11 for a mobile device for the reasons given by Petitioner and summarized
supra. See Madisetti Decl. ¶¶ 78 (citing Massa Fig. 2, annotated), 98–102;
Madisetti Supp. Decl. ¶¶ 7–8; Pet. Reply 3–7. We find that Massa meets the
“transmitter” limitation in claim 11. Pet. 27–28; Madisetti Decl. ¶¶ 98–102.
e. Massa and Vogel Disclose Claims 1 and 11
As the Petition explains, claim 1 “effectively recites the inverse” of
claim 11. Pet. 7. “[S]pecifically, it recites a receiver configured to receive
signals from a mobile device and transmitter configured to transmit radio
signals corresponding to the received signals to a base station.” Id. Thus,
Petitioner’s analysis of independent claim 1 in relation to Massa and Vogel
tracks its analysis of claim 11. Id. at 30–33; Madisetti Decl. ¶¶ 110–120.
Patent Owner’s Response does not separately address claim 1. For the
reasons given by Petitioner, we find that Massa and Vogel disclose or
suggest each element of claim 1. Pet. 30–33; Madisetti Decl. ¶¶ 110–120.
In summary, we find that Petitioner has demonstrated that each
element of claims 1 and 11 is taught or suggested by Massa and Vogel for
the reasons given by Petitioner and summarized above. As discussed supra,
we have considered Patent Owner’s challenges to these showings by
Petitioner that the elements of claim 11 are taught or suggested by Massa
and Vogel and find them unpersuasive.
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f. Rationale for Combining Massa and Vogel
Petitioner also provides a persuasive rationale for combining Massa
and Vogel. Pet. 21–22. Petitioner asserts: “Vogel describes a ‘radio system
comprising at least one transceiver which transmits and receives via a
plurality of antennas, and which for reception is a so-termed ‘space
diversity’ system wherein a signal is received via spatially separated
antennas.’” Id. at 21 (quoting Ex. 1004, 1:13–17) (emphases omitted).
Petitioner contends that Massa and Vogel “are analogous art” to the ’023
patent. Id. Petitioner points out that the ’023 patent specifically refers to
providing “high antenna diversity.” Id. (quoting Ex. 1001, 6:27–29). Also,
Petitioner contends that Vogel itself provides “express motivation to
incorporate its teachings of a plurality of spatially separated antennas” to
improve receiving quality. Id. at 21–22 (citing Ex. 1004, 1:20–21);
Madisetti Decl. ¶ 88 (“Vogel states that by a suitable combination of the
received signals the receiving quality is improved.”) (internal quotation
marks and alterations omitted).
Patent Owner disputes Petitioner’s evidence of the existence of a
motivation to combine the teachings of Massa and Vogel. PO Resp. 34–37.
Patent Owner contends that “the invention of Massa is not the prior art
vehicle-mounted radio telephone system or its components.” Id. at 34.
Patent Owner argues “a [person of ordinary skill] would not have been
motivated to combine the primary reference of Massa with Vogel because,
as previously discussed, Massa lacks the necessary design and circuitry
details for the transceiver and antenna of the vehicle-mounted radio
telephone system to even be used by [a person of ordinary skill] as a primary
reference.” Id. at 34–35.
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Relying on testimony from Mr. Lanning, Patent Owner repeats its
argument (discussed supra) that combining Massa with Vogel “would not
result in a transceiver that can receive signals from a fixed port.” Id. at 35
(citing Lanning Decl. ¶ 135). Similarly, Patent Owner argues that replacing
Massa’s antenna with the spatially-separated antennas of Vogel “results in a
device that cannot receive signals.” Id. (citing Lanning Decl. ¶¶ 135–137).
Dr. Madisetti disputes these contentions. Madisetti Supp. Decl.
¶¶ 10–12. He testifies that a person of ordinary skill “would have already
been familiar with at least the basic components of transceivers by 1995 that
would have been relevant to the cited disclosures of Massa.” Id. ¶ 10.
Further, Dr. Madisetti testifies a person of ordinary skill “would not have
required detailed specifications regarding the circuitry of a transceiver
device to implement one in the context of Massa.” Id. He also disputes the
contention that combining Vogel with Massa “would result in an inoperable
device”: “The proposed combination does not suggest literally taking
Vogel’s antennas and physically mounting them on Massa’s vehicles; rather,
the combination proposed is made in light of a [person of ordinary skill’s]
ordinary knowledge and skill.” Id. ¶ 12. Citing Vogel, he points out that
“[t]he prior art itself confirms that the use of spatially-separated antennas on
moving devices was not only known, but also desirable to improve signal
quality and to reduce fading.” Id. (citing Ex. 1004, 2:45–57).
We agree with Dr. Madisetti and find that for the reasons given by
him, we find that a person of ordinary skill would have been motivated to
combine the teachings of Massa and Vogel. Madisetti Decl. ¶¶ 86–88. We
also agree and find that a person of ordinary skill would have reasonably
expected success in combining these teachings. Pet. 22–23; Madisetti Decl.
¶ 89. As Dr. Madisetti explains: “Vogel provides (in detail) how to
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implement its invention, using multiple antennas, a receiving device with a
detection device, and a transmitting device coupled to a device which adjusts
a time delay of transmit signals.” Id. He continues: “Thus, a [person of
ordinary skill] would have been motivated to incorporate Vogel’s teachings
of spatially separated antennas in Massa’s system which uses a single
antenna to achieve the obvious benefits of improving receiving quality and
reducing interference.” Id. He also testifies: “Vogel would have informed a
[person of ordinary skill] that incorporating its teachings into a mobile
station was possible.” Id. (citing Ex. 1004, 5:7–11). He concludes: “[A
person of ordinary skill] would have found it obvious, and would have
been motivated to, combine Vogel’s teachings with Massa.” Id. ¶ 90.
KSR requires us to consider the motivation to combine in determining
obviousness. But, as the Federal Circuit has emphasized, in analyzing
obviousness, KSR assumes that the person of ordinary skill “is not an
automaton”:
KSR does not require that a combination only unite old
elements without changing their respective functions. Instead,
KSR teaches that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” And it explains that the
ordinary artisan recognizes “that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (citations
omitted). The Federal Circuit further cautioned in ClassCo that “the
rationale of KSR does not support [the] theory that a person of ordinary skill
can only perform combinations of a puzzle element A with a perfectly fitting
puzzle element B.” Id.
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We find that using spatially-separated antennas to improve
performance was well known in the art. Madisetti Decl. ¶ 86; Ex. 1001,
6:27–29. We find also that spatially-separated antennas had been used on
moving vehicles with vehicle-mounted cell phone systems. Lanning Dep.
33:14–18, 21–25. Given the high level of ordinary skill in the pertinent art
before us, we find that, consistent with Dr. Madisetti’s testimony, a person
having such ordinary skill would have easily recognized that combining
Massa and Vogel would have the advantages of improving receiving quality
identified by Petitioner. Madisetti Decl. ¶ 88 (citing Vogel, Ex. 1004, 1:20–
21).
Moreover, we find that such a highly skilled person experienced in
wireless communications systems would have been able to combine the
teaching of those references with a reasonable expectation of success. Id.
¶ 89; Madisetti Supp. Decl. ¶12. As Petitioner summarizes: “Combining the
teachings of Vogel with those of Massa would have been no more than the
combination of prior art elements (e.g., Massa’s transceiver and Vogel’s
spatially separated antennas) according to known methods (e.g., the use of
additional hardware disclosed by Vogel, such as additional antennas and
components like the detection device), and would have been obvious to a
[person of ordinary skill] at the time of the ’023 Patent.” Pet. 22 (citing
Madisetti Decl. ¶ 88).
We are not persuaded by the contrary testimony of Patent Owner’s
expert, Mr. Lanning, on this issue. Cf. Lanning Decl. ¶¶ 133–141. His
testimony mirrors the arguments in Patent Owner’s response about the
combination of Massa and Vogel resulting in an “inoperable device” and
requiring “new circuitry.” See id. ¶¶ 135–137. As discussed supra, we find
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those arguments are unpersuasive and contrary to KSR, and Mr. Lanning’s
testimony is similarly unpersuasive.
We have considered Patent Owner’s additional arguments on the
issue of combining the references and find them also unpersuasive. For
example, Patent Owner argues that the supporting testimony from
Dr. Madisetti is “conclusory” and “entitled to little or no weight.” PO Resp.
22–29. We disagree with Patent Owner’s criticism of Dr. Madisetti’s
testimony, which we find helpful on this issue and supported by the record,
including the references themselves. Madisetti Decl. ¶¶ 87–90; Madisetti
Supp. Decl. ¶¶ 10–14. For the reasons stated above, we find Petitioner’s
analysis of this challenge and the supporting testimony from Dr. Madisetti,
including his explanation of the rationale for combining the teachings of the
references, to be credible and supported by the cited evidentiary record.
Nor do we agree with Patent Owner that the Petition does not supply
“sufficient detail” on “how to combine” Massa and Vogel (and the other
cited references). PO Resp. 30–34. According to the ’023 patent, the
invention uses “well-known” equipment and functions. See, e.g., Ex. 1001,
4:28, 5:5–6, 5:23, 5:52, 5:64, 6:17, 6:28, 6:46, 6:50–51, 6:60, 9:18, 9:31,
9:60. We find Mr. Lanning’s testimony (Lanning Decl. ¶ 136) raising
various technical problems (e.g., “received time delay”) in combining the
references to be inconsistent with the admonition by the Federal Circuit that
“the rationale of KSR does not support [the] theory that a person of ordinary
skill can only perform combinations of a puzzle element A with a perfectly
fitting puzzle element B.” ClassCo, Inc., 838 F.3d at 1219.
We further find that Dr. Madisetti provides sufficient information on
how Massa and Vogel could have been combined by a person of ordinary
skill. Madisetti Decl. ¶¶ 89–90 (referring to examples in Vogel (Ex. 1004)
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and Winters (Ex. 1016)); Madisetti Supp. Decl. ¶¶ 12–14 (rebutting in detail
Mr. Lanning’s arguments regarding combining Massa and Vogel). We are
not persuaded that more detailed explanations of how to combine such
“well-known” equipment are required by KSR.
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Massa in combination with Vogel discloses or suggests
each element of claims 1 and 11, and that it would have been obvious to
combine the teachings of those references as proposed by Petitioner with a
reasonable expectation of success. Based on Petitioner’s analysis and for the
reasons explained above, we find Petitioner has shown by a preponderance
of evidence that claims 1 and 11 would have been obvious over Massa and
Vogel.
2. Claims 19–21
Claims 19–21 depend from claim 11. Petitioner challenges these
dependent claims as obvious over Massa and Vogel and provides element-
by-element analyses of those claims. Pet. 28–29; Madisetti Decl. ¶¶ 103–
109. Claims 19 calls for conveying the apparatus “by a vehicle.” Claim 20
specifies “an automotive vehicle.” Claim 21 specifies that the receiver of
claim 11 “is further configured to receive fixed port signals from a plurality
of fixed ports through the plurality of spatially separated antennas.” Ex.
1001, 12:42–49. Patent Owner does not present separate arguments for
these claims, relying on its arguments for claim 11. PO Resp. 42. Based on
Petitioner’s persuasive arguments and evidence (Pet. 28–29) and Dr.
Madisetti’s testimony (Madisetti Decl. ¶¶ 103–109), we find Petitioner has
shown by a preponderance of evidence that claims 19–21 would have been
obvious over Massa and Vogel.
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3. Claims 16–18 and 21–23
These claims depend, directly or indirectly, from claim 11.
Petitioner’s challenge to claims 16 and 18 relies on Massa, Vogel, and
Toshiba. Pet. 34–41. Toshiba (Ex. 1006) describes a mobile radio
communication system having a base station connected with a
communication network by way of a wired communication path. Ex. 1006,
(57). A mobile base device is connected with the base station by way of a
first radio channel selected from a plurality of first radio channels and a
portable device is connected with the mobile base device by way of a second
radio channel. Id. The second radio channel also is selected from a plurality
of radio channels. Id. Each of the first and second radio channels is defined
by a radio frequency and a time slot. Id.
Petitioner relies on Toshiba (in combination with Massa) to meet the
recitation in claim 16 of “a controller configured to compare the received
fixed port signals received through the spatially separated antennas and to
select a best signal.” Pet. 34–35. Petitioner relies on Toshiba also to meet
the recitation in claim 18 of “the transmitter further configured to transmit
the radio frequency signals within time slots of time division multiplex
channels.” Id. at 38–39.
Petitioner sets forth a rationale for combining the references. See,
e.g., id. at 37 (“Combining the teachings of Massa with those of Toshiba
would have involved no more than incorporating a ‘connection control
circuit’ into the [cellular mobile telephone] of Massa, and incorporating such
standard hardware components into mobile devices would have been a
common task routinely performed by [persons of ordinary skill].”) (citing
Madisetti Decl. ¶ 129).
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Petitioner’s challenge to claims 17 and 21–23 relies on a different
combination: Massa, Vogel, and Padovani. Pet. 41–52. Padovani
(Ex. 1005) describes a system “for performing a pilot signal searching
operation in anticipation of handoff in mobile station communication
between base stations.” Ex. 1005, (57). Padovani further describes that
when a mobile station is idle, the mobile station “constantly monitors the
pilot signal transmissions from each nearby base station.” Id. at 7:11–14.
“The mobile station then determines which cell it is in by comparing pilot
signal strength transmitted from these particular base stations.” Id. at 7:17–
19.
Petitioner relies on Padovani to meet the limitations added by claims
17 and 21–23. For example, for claim 17, Petitioner asserts “Padovani
explicitly discloses a controller configured to align and combine the received
radio frequency signals.” Pet. 42 (emphases omitted). For claim 21,
Petitioner asserts: “Padovani explicitly describes receiving fixed port signals
from a plurality of fixed ports as recited.” Id. at 45 (emphases omitted).
Petitioner provides a similar analysis for claims 22 and 23. Id. at 48–52.
Petitioner provides a rationale for combining Padovani with the other
references. For example, as to claim 17, Petitioner asserts: “A
[person of ordinary skill] would have recognized that Padovani explains
exactly how to implement Vogel’s teachings of receiving multiple signals,
and would have been motivated to combine the references to incorporate
Padovani’s hardware to accomplish Vogel’s superimposition.” Id. at 43
(citing Madisetti Decl. ¶ 146).
Patent Owner’s response again focuses on the motivation to combine
the references and reasonable expectation of success. See, e.g., PO Resp. 33.
Patent Owner contends that Petitioner “fails to explain how a [person of
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ordinary skill] would combine Toshiba’s ‘first connection control circuit’
with the transceiver of the vehicle-mounted radio telephone system
discussed in Massa—where Massa lacks the necessary design and circuity
details for the transceiver.” Id. (citing Lanning Decl. ¶¶ 131, 142–143).
Similarly, Patent Owner contends Petitioner “fails to explain how a [person
of ordinary skill] would combine Vogel’s ‘spatially separated antennas’ and
Padovani’s CDMA soft handoff technique with the transceiver of the
vehicle-mounted radio telephone system discussed in Massa—where Massa
lacks the necessary design and circuitry details for the transceiver.” Id.
(citing Lanning Decl. ¶¶ 131, 145–146).
These arguments are similar to those addressed supra, in connection
with combining Massa and Vogel. For the reasons stated there, we do not
find the argument that Massa “lacks the necessary design and circuitry
details” to be persuasive. See Madisetti Supp. Decl. ¶¶ 10–11 and
discussion supra. Such an argument fails to account for the relatively high
level of ordinary skill in the art and the description in the ’023 patent of
“well known” technology. See supra. We determine that Petitioner has
demonstrated, by a preponderance of the evidence, a motivation to combine
these references and a reasonable expectation of success. Pet. 43; Madisetti
Decl. ¶¶ 145–146.
As to claim 16, Patent Owner contends “the Petition fails to identify
where the element of ‘signals received through the spatially separated
antennas’ . . . is found in Petitioner’s proposed combination of Massa and
Toshiba.” PO Resp. 44. Claim 16 also requires “a controller configured . . .
to select a best signal.” Patent Owner contends: “While Massa does disclose
selecting ‘the strongest signal’, Massa does not disclose the required
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limitation of a controller selecting ‘a best signal’ in the context of the entire
’023 Patent.” Id. at 45.
We are not persuaded by either of these arguments. In Petitioner’s
challenge to claim 16, it is clear from the context that Petitioner relies on
Vogel’s disclosure of spatially-separated antennas in combination with
Massa to meet the “spatially separated antennas” limitation, which is carried
over from claim 11, from which claim 16 depends. Pet. 20; Pet. Reply
13–14. We are not persuaded by Patent Owner’s argument that the Petition
is deficient for “failing to identify” where the spatially separated antennas
are found. PO Sur-reply 21.
As to the “best signal” limitation, Dr. Madisetti testifies that “a
[person of ordinary skill] would have reasonably considered the ‘strongest’
signal to be the best signal because . . . the strongest signal would provide
the best communications as compared to weaker signals.” Madisetti Supp.
Decl. ¶ 15. He further testifies, relying on technical publications, that “[t]he
phrase, ‘best signal’ was not a term of art by 1995 that inherently required
some optimization of error rate; rather, it would have been a subjective
concept that reasonably would at least capture deciding which signal was
‘strongest.’” Id. ¶ 16. We find this testimony convincing. As the ’023
patent explains, signal strength was a “well-known” signal quality indicator.
Ex. 1001, 5:60–64. We are not persuaded by Patent Owner’s argument that
Dr. Madisetti’s opinion is “unsupported,” or by the testimony of
Mr. Lanning relying on an overly narrow reading of the term “best signal” as
requiring analysis of error rate. PO Sur-reply 25; Lanning Decl. ¶ 179. We
note that the claim itself does not specify particular metrics (such as error
rate) that must be evaluated by the claimed apparatus to select a “best
signal.”
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Claim 22 requires that “each fixed port signal transmitted from each
of the plurality of fixed ports includes common data.” Ex. 1001, 12:50–52.
Petitioner contends that the pilot signal disclosed in Padovani’s “soft
handoff” technique meets this additional “common data” limitation.
Pet. 48–51; Madisetti Decl. ¶¶ 157–163. Padovani discloses that “[t]he pilot
signal transmitted by each base station may use the same PN [pseudonoise]
code.” Ex. 1005, 2:52–56. Dr. Madisetti testifies: “The PN code, because it
is identical from each base station, corresponds to each fixed port signal
transmitted from each of the plurality of fixed ports includes common data
as recited.” Madisetti Decl. ¶ 159.
Claim 23 depends from claim 22, and further requires that “each fixed
port signal from each of the plurality of fixed ports is delayed by a different
time.” Ex. 1001, 12:54–58. Petitioner contends that Padovani meets this
limitation by disclosing that the pilot signal transmitted by each base station
in a system may use the same PN code, but with a different code phase
offset, “meaning that the PN codes transmitted by neighboring base stations
are identical but skewed in time with respect to one another.” Pet. 51
(quoting Padovani, Ex. 1005, 2:40–56); Madisetti Decl. ¶¶ 164–167.
Dr. Madisetti testifies: “Because the transmitted PN codes are identical
from each base station but skewed in time, they correspond to transmission
of each fixed port signal from each of the plurality of fixed ports is delayed
by a different time as recited.” Madisetti Decl. ¶ 165. As Dr. Madisetti
explained at his deposition: “The two base stations transferred the same
code, but they are skewed. The transmission is skewed apart with
respect to time.” Madisetti Dep. 103:2–5.
Patent Owner contends the “common data” limitation of claim 22 is
not met by Padovani. PO Resp. 48. Relying on testimony from Mr.
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Lanning, Patent Owner contends “a [person of ordinary skill] would
understand that a Pseudo Noise (PN) code does not carry any data, including
‘common data.’” PO Resp. 49 (citing Lanning Decl. ¶¶ 196–197). We are
not persuaded by this argument. The term “common data” does not appear
in the ’023 patent’s written description and is not a term of art. Madisetti
Supp. Decl. ¶ 18. Neither party advanced a special meaning for the term
during claim construction. We, therefore, agree with Dr. Madisetti, who
testifies, “[a] PN code is certainly data that is communicated, such as to
provide identification of the source.” Id. ¶ 19 (citing Falconer, Ex. 1025).
We also agree with Dr. Madisetti’s opinion that “data that is ‘common’
simply refers to data that has some common characteristic, such as being
related to the same source (e.g., based on a unique user identifier or
preamble data), or in the case of pilot signals, are based on the same PN
code.” Id. ¶ 18. We, therefore, find that Padovani discloses “common
data.” Id. ¶ 19 (“In my opinion, PN codes would be considered data, and
pilot signals derived from the same PN code would have been considered
‘common’ data.”).
Patent Owner contends the “delayed by a different time” limitation of
claim 23 is not met by Padovani. PO Resp. 51–52. Relying on Mr.
Lanning, Patent Owner contends “a [person of ordinary skill] would have
understood that the CDMA system and its associated pilot codes disclosed
by Padovani are not ‘skewed in time’ with each other.” Id. at 52 (citing
Lanning Decl. ¶¶ 205–210). According to Patent Owner, the system
disclosed by Padovani “would simply not work” if the pilot codes were
skewed. Id. Mr. Lanning testifies that “because the CDMA network
disclosed by Padovani is synchronous . . . each base station transmits the
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start of its pilot code at the same time and it is not transmitted with a delay in
time.” Lanning Decl. ¶ 206.
Petitioner disputes this analysis, pointing to the statement in Padovani
that “the PN codes transmitted by neighboring stations are identical but
skewed in time with respect to one another.” Pet. Reply 21 (citing Ex. 1005,
2:52–56). We agree with Petitioner’s analysis showing Padovani meets this
limitation. Mr. Lanning bases his testimony on a figure from a CDMA
reference book by Lee (Ex. 2112, 1113, Fig. 11.1).9 Lanning Decl. ¶ 209.
Dr. Madisetti responds that Mr. Lanning “misinterprets Lee.” Madisetti
Supp. Decl. ¶ 22. According to Dr. Madisetti, “[t]he vertical lines in Figure
11.1 of Lee are not ‘the start time and end time’ for transmitting PN
codes. . . . Rather, these lines represent the length of the PN code period, or
how long it takes for one PN code made up of multiple, offset short codes to
be sent.” Id.
We agree with Dr. Madisetti that the vertical lines in Figure 11.1 of
Lee relied on by Mr. Lanning (Ex. 2112, 1113) do not indicate the “start
time” and “end time” of base station transmissions, but rather show the
length of the PN code period and placement of the offset codes. Madisetti
Supp. Decl. ¶ 22. We also agree with Dr. Madisetti that “Lee observes that
although the base stations transmit their PN codes using precisely the same
timing, the ‘propagation delays between the different base stations and a
particular mobile cause the apparent timing of the different pilot signals
from each base station to be different.’” Id. Finally, we agree with
Dr. Madisetti that “Lee’s disclosure about the base stations synchronizing to

9 Exhibit 2112 is a corrected version of Exhibit 2110. Page numbers refer to
those appearing in the original document.
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the same clock standard does not imply that the base stations transmit at the
same time; rather, it simply indicates that they will keep their own time,
synched to the same universal clock.” Id. We find, therefore, that Mr.
Lanning’s testimony is not supported by Lee, and we agree with
Dr. Madisetti and find that Padovani meets the limitation added by claim 23.
Madisetti Decl. ¶¶ 164–166; Madisetti Supp. Decl. ¶ 21.
Patent Owner’s rebuttal to Dr. Madisetti’s analysis simply repeats
previous arguments that we find unpersuasive. PO Sur-reply 27. We do not
find those rebuttal arguments persuasive for the reasons given.
Accordingly, for the reasons given, we find that Petitioner has
demonstrated by a preponderance of the evidence that Massa and Vogel, in
combination with Toshiba, disclose or suggest each element of claims 16
and 18, and that it would have been obvious to combine the teachings of
those references as proposed by Petitioner with a reasonable expectation of
success. Similarly, we find that Petitioner has demonstrated by a
preponderance of the evidence that Massa and Vogel, in combination with
Padovani, disclose or suggest each element of claim 17 and 21–23, and that
it would have been obvious to combine the teachings of those references
with a reasonable expectation of success. Based on Petitioner’s analysis and
for the reasons explained above, we find Petitioner has shown by a
preponderance of evidence that claims 16 and 18 would have been obvious
over Massa, Vogel, and Toshiba, and claims 17 and 21–23 would have been
obvious over Massa, Vogel, and Padovani.
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C. Thrower Challenges
Petitioner’s obviousness challenges based on Thrower address the
same claims as its challenges based on Massa. Pet. 52–71.
1. Claims 1, 11, 16, and 18–20
Petitioner contends these claims would have been obvious over
Thrower in view of Kaewell. Pet. 52. Petitioner’s analysis first focuses on
claim 11. Id. at 53.
a. Claims 1 and 11
Petitioner provides an element-by-element analysis of claim 11 in
relation to Thrower and Kaewell at pages 53–58 of the Petition. Petitioner
supports its analysis with testimony from Dr. Madisetti. Madisetti Decl.
¶¶ 171–189. Petitioner demonstrates that each element of claim 11 is
disclosed or suggested by Thrower and Kaewell. For example, Petitioner
identifies the “communal radio” disclosed by Thrower as the “apparatus”
recited in the preamble of claim 11. Pet. 53. Similarly, Petitioner identifies
Thrower’s receiver/transmitter 26 and base station 7, respectively, with the
“receiver” and “fixed port” recited in claim 11. Id. at 56–57. Petitioner
identifies the transmitter section of receiver/transmitter 20 in Thrower with
the “transmitter” in the claim. Id. at 57–58. The “mobile devices” are
Thrower’s personal telephones, described as “low-cost, pocket-sized, radio
telephone[s].” Id. (citing Thrower, Ex. 1010, 6:33–38, 3:31–34). To meet
the recitation in the claim of “a plurality of spatially separated antennas,”
Petitioner relies on Thrower’s disclosure of multiple antennas and Kaewell’s
disclosures of spatially separated antennas 16 and 18. Id. at 53–55.
Petitioner also provides a persuasive rationale for combining Thrower
and Kaewell to avoid fading effects. Pet. 55–56. Petitioner asserts:
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“Kaewell expressly motivates the combination of its teachings of spatial
diversity, specifically, to obviate fading effects which occur in mobile
communications. Kaewell observes that fading occurs as a vehicle moves.
A [person of ordinary skill] would have been motivated to combine
Kaewell’s teachings of spatial diversity into the system of Thrower in which
a communal radio unit moves in a vehicle, to address any fading effects
which may occur.” Id. at 55 (citations and emphases omitted). Petitioner
sums up these contentions as follows:
Combining the teachings of the references would have
been no more than the combination of prior art elements
(Thrower’s communal unit and Kaewell’s spatially separated
antennas) according to known methods (e.g., incorporating an
additional antenna into Thrower’s system) to obtain the
predictable result of a communal unit that employed spatially
separated antennas.
Id. at 55. Petitioner supports this argument with testimony from
Dr. Madisetti. Madisetti Decl. ¶¶ 178–180. Petitioner further contends a
person of ordinary skill would have expected success in combining these
teachings. Pet. 55; Madisetti Decl. ¶ 180.
Petitioner’s analysis of claim 1 in relation to Thrower and Kaewell
tracks its analysis of claim 11. Pet. 61–64; Madisetti Decl. ¶¶ 199–209.
Petitioner also provides element-by-element analyses of dependent claims
16 and 18–20. Pet. 58–60; Madisetti Decl. ¶¶ 190–198.
Patent Owner’s response to these challenges mirrors its response to
the challenges based on Massa, discussed supra. Patent Owner contends
that Petitioner “fails to explain” how a person of ordinary skill “would
combine Kaewell’s spatial diversity with Thrower’s communal unit.” PO
Resp. 33 (citing Lanning Decl. ¶¶ 132, 147–152). Expanding on this theme,
Patent Owner presents essentially the same arguments we rejected as
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contrary to KSR in connection with the challenges based on Massa and
Vogel. For example, similar to its criticism of Massa, Patent Owner
contends “Thrower does not disclose the necessary techniques, circuitry or
basic interface points to use to even process multiple receive signal input
paths as disclosed by Kaewell.” PO Resp. 37. Another example is the
argument that “a [person of ordinary skill] would not have been motivated to
combine Thrower with Kaewell because such a combination would have
required much new circuitry—not disclosed in either Thrower or Kaewell.”
Id. at 37–38. The corresponding testimony from Mr. Lanning (Lanning
Decl. ¶¶ 147–152) mirrors his testimony on the Massa-Vogel challenge.
Dr. Madisetti testifies that a person of ordinary skill would have
combined Thrower and Kalwell “for multiple reasons.” Madisetti Decl.
¶¶ 178–180. He concludes: “Combining the teachings of the references
would have been no more than the combination of prior art elements
(Thrower’s communal unit and Kaewell’s spatially separated antennas)
according to known methods (e.g., incorporating an additional antenna into
Thrower’s system) to obtain the predictable result of a communal unit that
employed spatially separated antennas.” Id. ¶ 180. As discussed supra,
according to the ’023 patent, the invention uses “well-known” equipment
and functions. We are not persuaded that a more detailed explanation of
how the references “work together” is required. See discussion supra,
Section III.B.1.f.
For reasons discussed, we find that Patent Owner’s approach and
Mr. Lanning’s testimony are not consistent with KSR. We find, based on
Petitioner’s arguments and Dr. Madisetti’s testimony, that a person of
ordinary skill would have combined the teachings of Thrower and Kaewell
with a reasonable expectation of success. Madisetti Decl. ¶¶ 178–180.
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Patent Owner contends Thrower does not disclose the claimed
“mobile device.” PO Resp. 56–57. Patent Owner’s argument is again based
on a construction of “mobile device,” which we have rejected. See supra,
Section II.B.5. We are persuaded, and we find, that Thrower’s “low-cost,
pocket-sized, radio telephone” teaches the claimed “mobile device.”
Ex. 1010, 3:31–34. Patent Owner does not challenge Petitioner’s evidence
that the other elements of claim 11 (or parallel claim 1) are met.
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Thrower in combination with Kaewell discloses or
suggests each element of claims 1 and 11, and that it would have been
obvious to combine the teachings of those references as proposed by
Petitioner with a reasonable expectation of success. Based on Petitioner’s
analysis and for the reasons explained above, we find Petitioner has shown
by a preponderance of evidence that claims 1 and 11 would have been
obvious over Thrower and Kaewell.
b. Claims 16 and 18–20
For claims 16, 19, and 20, which depend from claim 11, Patent Owner
relies on its arguments directed to claim 11. PO Resp. 57–58. Patent Owner
does not separately address claim 18, which also depends from claim 11.
For the reasons set forth in the Petition and in Dr. Madisetti’s
supporting testimony, we find that Petitioner has demonstrated that Thrower
in combination with Kaewell discloses or suggests each element of claims
16 and 18–20, and that it would have been obvious to combine the teachings
of those references as proposed by Petitioner with a reasonable expectation
of success. Pet. 58–60; Madisetti Decl. ¶¶ 190–198. Based on Petitioner’s
analysis and for the reasons explained above, we find Petitioner has shown
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by a preponderance of evidence that claims 16 and 18–20 would have been
obvious over Thrower and Kaewell.
2. Claims 17 and 21–23
Petitioner’s challenge to these dependent claims relies on Thrower,
Kaewell, and Blakeney. Pet. 64.
Blakeney (Ex. 1012) describes a “system for controlling the handoff
in communications of a mobile station between cell base stations . . . in a
code division multiple access (CDMA) cellular communications system.”
Ex. 1012, 1:16–19. Petitioner relies on Blakeney to meet the additional
recitation in claim 17 of “a controller configured to align and combine the
received radio frequency signals.” Pet. 64. Petitioner sets forth the rationale
for combining the references as follows: “A [person of ordinary skill] would
have recognized advanced quality and reliability as an advantage, and would
have been motivated to incorporate Blakeney’s teachings to achieve at least
this advantage.” Id. at 65. Further, “[a person of ordinary skill] would have
also expected success in combining the teachings, at least because Blakeney
discloses that such a combination was possible.” Id. (citing Madisetti Decl.
¶ 214).
Petitioner relies on Blakeney also to meet the recitation in claim 21 of
“fixed port signals.” Pet. 66. Similarly, for claim 22, Petitioner relies on
Blakeney to meet the limitation “each fixed port signal transmitted from
each of the plurality of fixed ports includes common data.” Id. at 69. For
claim 23, Petitioner relies on Blakeney to meet the limitation “each of the
plurality of fixed ports is delayed by a different time and the receiver is
configured to receive and separate the fixed port signals.” Id. at 69–71.
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Petitioner sums up its rationale for combining the references as
follows:
Combining the teachings of Blakeney with those of Thrower
would have been no more than the combination of prior art
elements (e.g., Blakeney’s handoff technique and Thrower’s
mobile communication system) according to known methods
(e.g., configuring the transceivers of Thrower’s system to
transmit pilot signals) and would have been obvious to a
[person of ordinary skill] at the time of the ’023 Patent.
Pet. 68. Petitioner supports its analysis with testimony from Dr. Madisetti.
Madisetti Decl. ¶¶ 210–228.
Patent Owner’s response again focuses on the motivation to combine
the references and reasonable expectation of success, and repeats, almost
identically, its arguments directed to combining Massa and Vogel with
Padovani. PO Resp. 28, 34. For example, Patent Owner contends the
Petition “fails to explain how a [person of ordinary skill] would combine
Blakeney’s CDMA soft handoff technique with Thrower’s communal unit
incorporating Kaewell’s spatial diversity.” Id. at 34 (citing Lanning Decl.
¶ 132, 147–152). Patent Owner’s reasoning is similar to that which we have
found contrary to KSR and not persuasive when applied to Padovani. For
the reasons already given, we are not persuaded by those similar arguments
directed to Blakeney.
For its challenge to the application of the references to these
dependent claims, Patent Owner relies mainly on its arguments directed to
claim 11, especially the lack of a “mobile device” in the references based on
Patent Owner’s construction of that term which we have rejected. PO Resp.
58–59. For the reasons previously given, we are persuaded that Thrower’s
portable telephone is a “mobile device.”
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For claim 22, Patent Owner contends the added “common data”
limitation is not met by Blakeney. Id. at 59. And for claim 23, Patent
Owner contends the added “delayed by a different time” limitation is not
met by Blakeney. Id. at 60–61.
Similar to its contentions regarding Padovani, Petitioner relies on
Blakeney’s disclosure of a pilot code transmitted by each base station having
the same PN code to meet the “common data” limitation. Pet. 69 (citing
Madisetti Decl. ¶¶ 221–223). Similarly, Petitioner relies on Blakeney’s
description of pilot signals with the same PN codes and different code phase
offsets transmitted with a delay in time to meet the “delayed by a different
time” limitation. Id. at 70–71 (citing Blakeney, Ex. 1012, 6:17–20,
20:39–41, Fig. 5; Madisetti Decl. ¶ 225–226).
Patent Owner’s response to claim 22 relies on the same overly narrow
meaning of “data” presented in connection with Padovani. PO Resp. 59.
For the reasons given, we are not persuaded by that argument. Rather, we
find that Blakeney discloses the additional “common data” limitation of
claim 22. Madisetti Decl. ¶¶ 221–223; Madisetti Supp. Decl. ¶¶ 18–20.
Similarly, for claim 23, Patent Owner relies on its previous arguments
directed to Padovani based on Mr. Lanning’s testimony citing the Lee
reference book. PO Resp. 60 (citing Lanning Decl. ¶¶ 238–243); PO Sur-
reply 27. For the reasons previously given, we find that testimony not
persuasive. Based on Petitioner’s persuasive contentions and evidence and
Dr. Madisetti’s testimony, we find that Blakeney meets the “delayed by a
different time” limitation added by this claim. Madisetti Decl. ¶¶ 224–228;
Madisetti Supp. Decl. ¶¶ 21–23.
For the reasons set forth above, in the Petition, and in Dr. Madisetti’s
supporting testimony, we find that Petitioner has demonstrated that Thrower
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in combination with Kaewell and Blakeney discloses or suggests each
element of claims 17 and 21–23, and that it would have been obvious to
combine the teachings of those references as proposed by Petitioner with a
reasonable expectation of success. Based on Petitioner’s analysis and for the
reasons explained above, we find Petitioner has shown by a preponderance
of evidence that claims 17 and 21–23 would have been obvious over
Thrower, Karwell, and Blakeney.
IV. CONSTITUTIONAL CHALLENGE
Patent Owner contends that “adjudication of the ’023 patent violates
the U.S. Constitution” because “the current structure of the Board violates
the Appointments Clause of Article II.” PO Resp. 61–62.
In Arthrex v. Smith & Nephew, 941 F.3d 1320, 1338 (Fed. Cir. 2019),
cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206
(Oct. 13, 2020), the Federal Circuit determined that the current structure of
the Board does not violate Article II as of the date of that precedential
decision. See also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764
(Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the
APJs were constitutionally appointed as of the implementation of the
severance, inter partes review decisions going forward were no longer
rendered by unconstitutional panels.”). Furthermore, in Arthrex, the Federal
Circuit found “no constitutional infirmity in the institution decision as the
statute clearly bestows such authority on the Director pursuant to 35 U.S.C.
§ 314.” 941 F.3d at 1340.
Therefore, we disagree with Patent Owner that this Final Written
Decision and our Institution Decision are “invalid.” PO Resp. 62.
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V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 11 and
16–23 of the ’023 patent are not patentable.
A summary of our conclusions is set forth in the table below.

VI. ORDER
Upon consideration of the record before us, it is:
ORDERED that claims 1, 11, and 16–23 of the ’023 patent are not
patentable;
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 11, 19–
21

103 Massa, Vogel

1, 11, 19–21
16, 18 103 Massa, Vogel,
Toshiba

16, 18
17, 21–23 103 Massa, Vogel,
Padovani

17, 21–23
1, 11, 16,
18–20

103 Thrower, Kaewell

1, 11, 16,
18–20

17, 21–23

103 Thrower, Kaewell,
Blakeney

17, 21–23
Overall
Outcome
1, 11, 16–23

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FURTHER ORDERED that because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Raghav Bajaj
David L. McCombs
HAYNES AND BOONE, LLP
Raghav.bajaj.ipr@haynesboone.com
David.mccombs.ipr@haynesboone.com
Roshan Mansinghani
Jonathan Stroud
UNIFIED PATENTS INC.
roshan@unifiedpatents.com
jonathan@unifiedpatents.com

FOR PATENT OWNER:
Charles D. Gavrilovich, Jr.
GAVRILOVICH, DODD & LINDSEY, LLP
chuck@gdllawfirm.com

Sanford E. Warren, Jr.
R. Scott Rhoades
WARREN RHOADES LLP
swarren@wriplaw.com
srhoades@wriplaw.com

Elvin Smith
LAW OFFICES OF ELVIN E. SMITH III PLLC
esmith@eeslaw.com