Carucel Investments, LP

Patent Trials and Appeals Board

Mar 1, 2021

IPR2019-01441 (P.T.A.B. Mar. 1, 2021)

Trials@uspto.gov Paper: 33
571-272-7822 Date: March 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MERCEDES-BENZ USA, LLC,
Petitioner,
v.
CARUCEL INVESTMENTS, L.P.,
Patent Owner.

IPR2019-01441
Patent 8,718,543 B2
(Consolidated with IPR2019-01644)

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
Mercedes-Benz USA, LLC (“Petitioner” or “Mercedes-Benz”) filed a
Petition requesting inter partes review of claims 10, 12, 13, 18–21, 23, 25,
26, 44, 45, and 49–55 of U.S. Patent No. 8,718,543 B2 (Ex. 1001, the “’543
patent”). Paper 2 (“Pet.”). Carucel Investments, L.P. (“Patent Owner”) filed
a Preliminary Response. Paper 6 (“Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
to all of the claims challenged and all grounds raised in the Petition. Paper 8
(“Institution Dec.”).
Two months after filing the Petition, Mercedes-Benz filed a separate
petition challenging claims 34 and 66 of the ’543 patent. IPR2019-01644,
Paper 1 (“IPR1644 Pet.”). With that petition, Mercedes-Benz filed a motion
(“Joinder Motion”) seeking to join IPR2019-01644 with this proceeding.
IPR1644, Paper 3. As explained by Mercedes-Benz, a second petition was
necessitated by Patent Owner’s assertion of claims in the district court
infringement action involving the ’543 patent that were not being asserted
when the Petition here was filed. IPR1644 Pet. 65.
We instituted inter partes review of claims 34 and 66. IPR1644,
Paper 9. However, prior to our Institution Decision in IPR1644, the Federal
Circuit decided Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
1321 (Fed. Cir. 2020), prohibiting same-party joinder in IPRs. We,
therefore, denied the Joinder Motion, advised the parties that we would
deem the Joinder Motion as a request for consolidation, and consolidated
IPR2019-01644 with this case. IPR1644, Paper 9, 36.
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Following institution, Patent Owner filed a Response. Paper 14 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 23, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 29, “PO
Sur-reply”).
On December 2, 2020, we held a consolidated oral hearing with
several related cases involving Patent Owner. 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, issued pursuant to 35 U.S.C. § 318(a). For the reasons we
discuss below, we determine that Petitioner has proven by a preponderance
of the evidence that claims 10, 12, 13, 18–21, 23, 25, 26, 34, 44, 45, 49–55,
and 66 (the “challenged claims”) of the ’543 patent are unpatentable.
B. Related Proceedings
The parties identify the following pending district court proceedings
involving the ’543 patent: Carucel Investments, LP v. Fiat Chrysler
Automobiles US LLC, et al., 3:18-cv-03331 (N.D. Tex.); Carucel
Investments, LP v. General Motors Company, 3:18-cv-03332 (N.D. Tex.);
Carucel Investments, LP v. Volkswagen Group of America, Inc., 3:18-cv-
03333 (N.D. Tex.); Carucel Investments, LP v. Mercedes-Benz USA, et al.,
3:18-cv-03334 (N.D. Tex.). Paper 4, 1; Pet. 74.
In addition to this Petition, the ’543 patent was also challenged by a
different party (Volkswagen Group of America, Inc.) in IPR2019-01105 and
IPR2019-01106. Pet. 73–74; Paper 4, 1.
Patents related to the ’543 patent are challenged in IPR2019-01101,
IPR2019-01102, IPR2019-01103, IPR2019-01104, IPR2019-01079,
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IPR2019-01298, IPR2019-01404, IPR2019-01440, and IPR2019-01442.
Pet. 73–74; Paper 4, 1–2.
C. Real Parties-in-Interest
Petitioner identifies “Daimler AG, Daimler North America
Corporation, Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
International, Inc.” as the real parties-in-interest. Pet. 72–73. Patent Owner
identifies Carucel Investments, L.P. as the real party-in-interest. Paper 4, 1.
D. The ’543 Patent
The ’543 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 1:60–62.
The ’543 patent addresses this problem by providing “a moving base
station which is interposed between a moving mobile telephone unit and a
fixed base station.” Ex. 1001, 3:4–6. 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 3:7–10. The movable 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 3:10–13.
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This is illustrated by Figure 1 of the ’543 patent, reproduced below.

Fig. 1 is a block diagram representation of a roadway structure with fixed
base stations, moving base stations, and fixed radio ports. Id. at 3:46–48.
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 4:2–4. Moving base stations 30
are disposed along one side of roadway 10. Id. at 4:5–6. 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 4:6–8.
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 4:8–12. Similarly, moving
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base stations 40 are disposed along adjacent roadway 15, moving in the
direction of the traffic as indicated by arrow 17. Id. at 4:13–15. Moving
base stations 40 are moved along rail 45. Id. at 4:15–16.
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 4:41–44. 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 4:44–47. Fixed base stations 70 accommodate
communications with mobile units traveling at speeds of less than thirty
miles per hour, including pedestrian traffic and stationary units. Id. at 4:50–
53.
According to the ’543 patent, the advantage of this system is reducing
the number of handoffs:
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 5:12–21 (emphasis added).
Each of the moving base stations is provided with multiple antennas.
Id. at 5:22–23. Antennas 100 on moving base stations 30, 40 are used to
communicate with mobile units 20, 25, whereas antennas 101 on moving
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base stations 30, 40 are used to communicate with fixed radio ports 50. Id.
at 5:28–31.
E. Illustrative Claims
The ’543 patent has sixty-seven claims. Twenty-one claims (10, 12,
13, 18–21, 23, 25, 26, 34, 44, 45, 49–55, and 66) are collectively challenged
in this consolidated case. See supra. Of the challenged claims, six claims
(10, 21, 34, 44, 52, and 66) are independent.
Claim 10 recites1:
10. An apparatus comprising:
[10a] a plurality of spatially separated antennas;
[10b] a receiver configured to receive, through the
plurality of spatially separated antennas, a plurality of cellular
signals from a plurality of base station interface circuits; and
[10c] a transmitter configured to transmit a mobile device
radio frequency signal to a mobile device moving relative to
Earth while the apparatus is moving relative to the plurality of
base station radio interface circuits and relative to Earth, the
mobile device radio frequency signal including data extracted
from the cellular signals.
Ex. 1001, 12:8–19 (reference numbers in brackets added).
Claim 34 recites:
34. An apparatus comprising:
[34a] a plurality of spatially separated antennas;
[34b] a first radio interface circuit configured to receive,
through the plurality of spatially separated antennas, a first
plurality of code division multiple access (CDMA) cellular
signals transmitted from a plurality of base station radio
interface circuits and configured to transmit, at a cellular

1 Reference numbers assigned by Petitioner have been added in brackets to
claims 19, 34, and 66.
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transmission power level, a second plurality of CDMA cellular
signals to the plurality of base station radio interface circuits;
and
[34c] a second radio interface circuit configured to
transmit a first mobile device signal including first data
extracted from the first plurality of CDMA cellular signals, the
second radio interface circuit configured to transmit the first
mobile device signal to a mobile device and configured to
receive a second mobile device signal transmitted from the
mobile device at a mobile device transmission power level less
than the cellular transmission power level,
[34d] the second plurality of CDMA cellular signals
including second data extracted from the second mobile device
signal,
[34e] the mobile device moving relative to Earth while
the apparatus is moving relative to the base station radio
interface circuits, and
[34f] the mobile device moving relative to Earth while
the apparatus is moving in the same direction that the mobile
device is moving.
Ex. 1001, 14:46–15:6.
Claim 66 recites:
66. An apparatus comprising:
[66a] a plurality of spatially separated antennas;
[66b] a first radio interface circuit configured to receive,
through the plurality of spatially separated antennas, a first
plurality of code division multiple access (CDMA) cellular
signals transmitted from a plurality of base station radio
interface circuits and configured to transmit, at a cellular
transmission power level, a second plurality of CDMA cellular
signals to the plurality of base station radio interface circuits;
and
[66c] a second radio interface circuit configured to
transmit a first mobile device signal including first data
extracted from each CDMA signal of the first plurality of
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CDMA cellular signals, the second radio interface configured to
transmit the first mobile device signal to a mobile device and
configured to receive a second mobile device signal transmitted
from the mobile device at a mobile device transmission power
level less than the cellular transmission power level, each
CDMA signal of the second plurality of CDMA cellular signals
including second data extracted from the second mobile device
signal,
[66d] the mobile device moving relative to Earth while
the apparatus is on a vehicle moving relative to the base station
radio interface circuits, and
[66e] the vehicle moving in the same direction that the
mobile device is moving.
Id. at 18:42–67.
F. References and Other Evidence
The Petition relies on the following references:
1. U.S. Patent No. 5,276,686, issued January 4, 1994 (Ex. 1003,
“Ito”);
2. U.S. Patent No. 5,101,501, issued March 31, 1992 (Ex. 1004,
“Gilhousen501”);
3. U.S. Patent No. 5,519,761, filed July 8, 1994 (Ex. 1005,
“Gilhousen761”);
4. U.S. Patent No. 5,652,765, filed May 22, 1995 (Ex. 1031,
“Adachi”).
Pet. 12–21.
In addition, in IPR2019-01441, Petitioner submitted a Declaration of
Jeffrey Fischer (Ex. 1008, “Fischer Decl.”) with the Petition and a further
Declaration of Mr. Fischer (Ex. 1106, “Fischer Reply Decl.”) with its Reply.
Patent Owner submitted the Declaration of Mark R. Lanning (Ex. 2100,
“Lanning Decl.”) with its Patent Owner Response. Also, in IPR2019-01644,
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Petitioner submitted a Declaration of Mr. Fischer (IPR1644, Ex. 1008,
“Fischer II Decl.”) with its petition. Both parties have submitted deposition
transcripts for these declarants.2
G. Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
following grounds.
Claims Challenged Statutory Basis 35 U.S.C. References
10, 12, 13, 18, 20, 21,
23, 25, 26, 44, 45, 49,
51–55
§ 103 Gilhousen761, Gilhousen501, Adachi
10, 12, 13, 18, 19, 20,
21, 23, 25, 26, 44, 45,
49–55
§ 103 Ito, Gilhousen501, Adachi
34, 66 § 103 Gilhousen761, Gilhousen501, Adachi
34, 66 § 103 Ito, Gilhousen501, Adachi
Pet. 12; IPR1644 Pet. 9.
II. PRELIMINARY MATTERS
A. Level of Ordinary Skill
Petitioner contends: “One of ordinary skill in the art would have at
least a Bachelor’s degree in Electrical Engineering, Computer Science, or an
equivalent area of study, and at least three years of graduate study or
professional experience with wireless and/or cellular communications or
similar experience.” Pet. 10 (citing Fischer Decl. ¶¶ 31–32).3

2 Ex. 1101 (“Lanning I Dep.”); Ex. 1102 (“Lanning II Dep.”); Ex. 2108-1
(“Fischer I Dep.”); Ex. 2108-2 (“Fischer II Dep.”).
3 In IPR2019-01644, Petitioner’s formulation is similar. IPR1644 Pet. 7.
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Patent Owner contends that a person of ordinary skill in the art “at or
near the filing date of the earliest priority application of the ’543 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. 8–9. Further,
Patent Owner contends “[a] lack of experience can be compensated with
additional education and a lack of education can be compensated with
additional work experience.” Id. at 9 (citing Lanning Decl. ¶ 60).
The formulations differ slightly, in that 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 (three years versus two years) with mobile wireless
communications.
We regard these formulations as not materially different, because
familiarity with mobile wireless communications would normally include
knowledge of cellular communication technology. Furthermore, we do not
regard the one-year difference in experience levels as significant. Both
formulations, also, are consistent with the prior art before us and with the
level of skill reflected in the ’543 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 formulations are not materially different, 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 patentability of the challenged ’543 patent claims under
either formulation.
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B. Claim Construction
We interpret claim terms using “the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” 37 C.F.R. § 42.100(b) (2019). 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) (citations
omitted) (en banc). “In determining the meaning of the 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 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 862 (Fed. Cir. 2004)).
Petitioner cites a Markman order “regarding the ’543 patent and its
family” issued by the district court in Carucel Investments, L.P. v. Novatel
Wireless, Inc., No. 3-16-cv-00118, Dkt. 131 (S.D. Cal. Sept. 19, 2016)
(“Novatel Litigation”). Pet. 10. Petitioner refers us to the district court’s
construction for three terms: “base station,” “base station [radio] interface
circuit,” and “configured to.” Id. at 10–11 (alteration in original).
As to the term “configured to,” Petitioner states: “Petitioner proposes
that this term be applied in this Petition consistent with [Patent Owner]’s
Complaints—that the claimed movable base station is ‘configured to move
relative to Earth’ when a vehicle includes a movable base station.” Pet. 11.
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Petitioner contends: “All other terms are sufficiently clear, should be given
their plain and ordinary meaning as understood by a person of ordinary skill
in the art . . . at the time of the alleged invention, and do not require
construction.” Id.
Patent Owner responds with three proposed constructions, “base
station [radio] interface circuit,” “mobile device,” and “configured to.” PO
Resp. 10–14 (alteration in original).
1. “base station [radio] interface circuit”
The district court in the Novatel Litigation construed this phrase as “a
[radio transceiver] circuit in a base station that can transmit and receive
cellular signals.” Pet. 10. Patent Owner urges us to adopt the district court’s
construction as the plain and ordinary meaning. PO Resp. 10. Petitioner
responds that no construction is required. Pet. Reply 7. We do not see the
need to construe this term for the purpose of resolving a controversy, and
therefore, we do not adopt Patent Owner’s proposed construction. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
2. “configured to”
The district court construed this term as “constructed to move with the
traffic at a rate of speed which is comparable to the speed of the traffic.”
Pet. 10. Petitioner proposes that this term be construed “consistent with
[Patent Owner’s] Complaints” in district court, as requiring “that the claimed
movable base station is ‘configured to move relative to Earth’ when a
vehicle includes a movable base station.” Id. at 11. Patent Owner contends
that no construction is necessary because “[t]he term ‘configured to’ is not
used in the preamble of any asserted claim.” PO Resp. 14.
We agree with Patent Owner that no construction is necessary.
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3. “mobile device/mobile unit”4
Patent Owner contends that mobile units are “also known as cell
phones or mobile phones.” PO Resp. 7. Patent Owner asks us construe
“mobile device” as “a device that must register with and be able to directly
communicate with the cellular network.” Id. at 10–11. Patent Owner
contends that this is “the plain and ordinary meaning of the term.” Id. at 11.
Patent Owner explains: “A mobile device is more than just a cordless phone
handset.” Id. Patent Owner asserts that a “mobile unit” 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’s proposed construction relies mainly on the ’543 patent
specification: “The ’543 Patent specification teaches that a mobile unit must
be capable of directly communicating with either a fixed cellular base station
or a moving base station.” PO Resp. 11 (citing Ex. 1001, 4:50–53). Also,
“[t]he ’543 Patent specification teaches that a mobile device must be capable
of registering with a cellular network so it is able to receive calls coming
from the cellular network.” Id. at 12. Furthermore, 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. at 11–12 (citing Ex. 1001, 11:1–14). Patent Owner cites
also the discussion in the ’543 patent that describes registration by the
mobile unit:

4 The parties agree that the term “mobile unit” in the ’543 patent has the
same meaning as “mobile device.” Hearing Tr. 22:18–23, 88:14–16.
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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.
Ex. 1001, 9:65–10:3 (partially quoted at PO Resp. 12). Patent Owner relies
on testimony from its expert, Mr. Lanning. See PO Resp. 11–12 (citing
Lanning Decl. ¶¶ 59, 67, 68, 71, 76–80).
Petitioner opposes Patent Owner’s proposed construction of mobile
device. Pet. Reply 2–7. Petitioner contends that Patent Owner’s proposed
definition “does not reflect the term’s ordinary meaning.” Id. at 2.
Petitioner asserts that Patent Owner’s proposed construction is “flatly
inconsistent” with a construction Patent Owner proposed in the Novatel
Litigation. Id. Petitioner describes this previous “inconsistent” construction
advanced by Patent Owner in district court as a “non-cellular construction”:
“[Patent Owner] should not be permitted to propose a broad construction to
capture infringing devices in litigation, then make an about-face in an IPR to
avoid the prior art.” Id. at 2–3. Petitioner asserts also that the construction
proposed here by Patent Owner should be rejected because it “contradicts
the claims, the specification and the prosecution history.” Id. at 3.
Petitioner contends that “[n]one of the claims require the ‘mobile device’ to
register, and none require it to communicate directly with a cellular
network.” Id.
Finally, Petitioner concludes its discussion of “mobile device” with
the proposal “that this term is sufficiently clear on its face that construction
is not necessary.” Id. at 7.
Having reviewed and considered the record presented, including
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Petitioner’s and Patent Owner’s submissions, we are not persuaded to adopt
Patent Owner’s construction of “mobile device.” Our reasoning follows.
As instructed by Phillips, we first look to the words of the claims.
Phillips, 415 F.3d at 1312. We find that the language of the challenged
claims does not support Patent Owner’s construction. As Petitioner points
out, the challenged claims themselves do not require the mobile device to
register or communicate directly with a cellular network. Pet. Reply 3. In
fact, the claims are not directed to the mobile device. The ’543 patent
claims the mobile base station, not the mobile units. Hearing Tr. 52:21–
53:5.
Patent Owner’s Response confirms that Patent Owner regards the
mobile base station, and not the mobile device, as the invention: “Most
importantly to the issues presented here, Mr. Gavrilovich invented a ‘mobile
base station’ that significantly improved wireless communications by acting
as an intermediary between cell towers and mobile units.” PO Resp. 2. And
this identification by Patent Owner of the mobile base station as the
invention is consistent with the Summary of the Invention in the ’543 patent
itself, which states: “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.” Ex. 1001, 3:18–21.
As Petitioner shows, in the challenged claims of the ’543 patent, it is
the moving base station, not the mobile device or mobile unit, that
communicates directly with the fixed ports associated with the network. Pet.
Reply 3. This important aspect of the ’543 patent claims was explored with
Patent Owner’s counsel at the oral argument:
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[PATENT OWNER’S COUNSEL]: The purpose of the
invention is to allow all five different mobile devices to be
connected through a moving base station so that there’s only one
hand-off. If you did that at the mobile phone level, that wouldn't
be accomplishing the same purpose. . . .
[THE BOARD]: -- the mobile device doesn’t have to be
a cellular device in order to do that as long as the base station can
communicate with the cellular network; isn’t that correct? I
mean it’s actually -- the base station in your claims, it’s the base
station that’s communicating with the cellular network not the
mobile device.
[PATENT OWNER’S COUNSEL:]: Right.
Hearing Tr. 53:20–54:6 (emphasis added).
As Patent Owner acknowledges, the mobile base station in the
’543 patent acts as “an intermediary” between the mobile devices and the
network. PO Resp. 3. The challenged claims describe the communications
passing between the moving base station (the recited “apparatus” in the
claim) and the fixed ports of the network and between the moving base
station and the mobile devices. Pet. Reply 3–4.
Thus, for example, independent claim 10 recites that the claimed
“apparatus” (the mobile base station) has “a receiver configured to receive
. . . a plurality of cellular signals from a plurality of base station interface
circuits,” and “a transmitter configured to transmit a mobile device radio
frequency signal to a mobile device.” Ex. 1001, 12:10–17 (emphasis added).
Claim 10 does not require the mobile device to have any functionality to
communicate directly with a cellular network, bypassing the claimed
moving base “apparatus.”
Claim 21 similarly recites that the claimed “apparatus” (mobile base
station) has “a first receiver configured to receive . . . a cellular signal
transmitted from a base station radio interface circuit” and “a second
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transmitter configured to transmit . . . another cellular signal to the base
station radio interface circuit.” Id. at 12:59–61, 13:3–5 (emphasis added).
Independent claims 34, 44, 52, and 66 likewise focus on the moving base
station “apparatus” and have similar limitations. Ex. 1001, 14:45 (claim 34),
15:60 (claim 44), 16:32 (claim 52), 18:42 (claim 66). Those claims likewise
do not refer to signals passing directly between the mobile units and fixed
ports.
Furthermore, the challenged claims do not require the signals
transmitted between the mobile device and the moving base station to be
cellular signals, or identify the recited mobile device as a device that
communicates with a cellular network. Nor do they require registration of
the mobile device with the cellular network. Pet. Reply 3. Based on the
foregoing, we find that the challenged claims of the ’543 patent do not
require a mobile device that must register with or is capable of
communicating directly with a cellular network.
Moreover, we find that the ’543 patent specification does not support
Patent Owner’s construction of “mobile device.” Cf. PO Resp. 11–13; PO
Sur-reply 6–10. 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.3d at
1315 (internal quotes and citation omitted).
First, we do not see in the specification of the ’543 patent a clear
indication supporting Patent Owner’s contention that conventional non-
cellular cordless phones should be excluded. Cf. PO Resp. 11 (“A mobile
device is more than just a cordless phone handset.”). In the Background
section, the ’543 patent describes the goal of the patent as encompassing “all
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applications” including cordless phones: “What is desirable is an infra
structure which allows use of such terminals in all applications, whether in
the home or office as a cordless phone . . . .” Ex. 1001, 2:51–53 (emphasis
added); Fischer Reply Decl. ¶ 7.
While the ’543 patent does refer to the fixed base stations as “cell
site[s]” (Ex. 1001, 4:65–66), it also describes the radio interfaces between
the mobile devices and the base stations in more general terms. Pet. Reply
4; Ex. 1001, 6:48–54. Thus, the ’543 patent describes the radio interface
between the mobile units and both the moving and fixed base stations as “a
standard radio interface, well known in the art.” Ex. 1001, 6:52–55. This
generic description in the ’543 patent of these radio interfaces as a “standard
interface” is broader than a “cellular interface,” and is consistent with the
patent’s stated goal of providing “an infra structure which allows use of . . .
a cordless phone.” Pet. Reply 4–5 (citing Ex. 1001, 2:51–55); Fischer Reply
Decl. ¶¶ 7–8. Elsewhere, the ’543 patent states this interface “may be the
standard [cellular] air interface standard,” confirming that a cellular interface
is not a requirement for the mobile units. Ex. 1001, 7:8–10 (emphasis
added).5
We find further support for our conclusion that Patent Owner’s
construction is too limiting in the ’543 patent’s description of an
embodiment where the mobile unit is prevented from communicating
directly with the fixed ports. Ex. 1001, 3:24–38. In this embodiment, the
power levels for the signals between the moving base station and the mobile
unit are chosen to avoid direct communication between the mobile device

5 Patent Owner relies on this statement to prove that this interface must be
cellular. See infra.
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and the fixed radio ports. Id. at 3:27–38. This embodiment is consistent
with the claim language, which we find describes the mobile base station,
not the mobile units, communicating with the cellular network. See
discussion supra.
Phillips instructs us that the prosecution history may also be relevant
in construing the claims. 415 F.3d at 1317; see Pet. Reply 5 (discussing
prosecution history). The ’543 patent is a continuation of U.S. Patent No.
7,221,904 (via a chain of continuations), and shares a common specification6
and similar claims with the ’904 patent. Ex. 1001, 1:6–12. During
prosecution of the ’904 patent, in an appeal brief to the Board, the applicant
did not limit mobile units to cellular devices, but instead told the Board that
radios and telephones were included: “The present invention is directed to
methods and devices for providing communication services to moving
mobile units such as telephones, radio modems, or other types of radios.”
Ex. 1107, 289 (emphasis added). We agree with Petitioner and find that this
prosecution history describing the mobile units as “telephones” and “radios”
contradicts Patent Owner’s construction limiting such devices to “a device
that must register with and be able to directly communicate with the cellular
network.” Pet. Reply 5.
Petitioner also cites an October 4, 2004, Office Action in which the
Examiner found that the claim term “mobile unit” read on a reference
(Yokoi) disclosing a cordless phone. Id. (citing Ex. 1107, 328). Petitioner

6 Although the specifications are not identical, the minor differences
between the specification of the ’904 patent and the specification of the
’543 patent are not pertinent to this discussion.
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notes that Patent Owner’s response did not challenge this finding by the
Examiner. Id. (citing Ex. 1107, 338 et seq.).
Patent Owner responds that its proposed construction is “[c]orrect,”
and that Petitioner “attempts to . . . broadly construe the term ‘mobile
device’ in a vacuum.” PO Sur-reply 1–2. Patent Owner contends
Petitioner’s analysis “is flawed for several reasons.” Id. at 2. Patent Owner
further argues that “the ’543 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. at 3 (footnote
omitted).
We are not persuaded by these arguments limiting “mobile unit” to
cellular devices as they are contrary to the claim language, the specification,
and the other intrinsic evidence discussed above. In the claims, it is the
mobile base station that communicates with the cellular network, not the
mobile units. See discussion supra. As explained there, the challenged
claims focus on the mobile base station; they do not describe the mobile
units as cellular devices, which according to the prosecution history, can be
radios and telephones. See discussion above. While the ’543 patent may
discuss cellular networks, we find the disclosure and the claims do not limit
the claimed “mobile device” to a cellular phone, for the reasons given above.
Patent Owner asserts that “[t]he purpose of the invention is only
achieved within a cellular infrastructure.” PO Sur-reply 2. Patent Owner
argues that “the ‘543 Patent explicitly and exclusively relates to improving
the wireless connections of mobile devices within cellular telephone
systems” and cites numerous references in the patent to cellular
communications. Id. at 4–5 (emphasis and internal quotation marks
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omitted). Only one of the citations provided by Patent Owner refers to the
communications interface between the mobile unit and the moving base
station. Id. at 5 (citing Ex. 1001, 7:8–10). That one reference refers to a
CDMA (“Code Division Multiple Access”)-based cellular standard (IS-95),
which it indicates “may” be the interface between the mobile unit and the
moveable base. Ex. 1001, 7:9. This description in the specification, making
use of a cellular standard optional, does not support Patent Owner’s
argument that the patent “explicitly and exclusively relates to improving the
wireless connections of mobile devices within cellular telephone systems.”
The other quotes from the specification cited by Patent Owner are
merely general references to cellular systems and do not support Patent
Owner’s argument. The ’543 patent specification, in fact, supports
Petitioner’s argument that communications between the mobile unit and the
mobile base station are not required to follow cellular protocols. Thus, as
discussed supra, the ’543 patent states the interface between the mobile units
and the mobile base stations “is a standard radio interface.” Ex. 1001, 6:52–
55. And as just discussed, the patent explains that this interface “may”
follow the cellular protocol IS-95, indicating that it is not required it to do
so. Id. at 7:8–10; cf. PO Sur-reply 4.
Moreover, this argument focusing on the “cellular infrastructure” does
not address the fact that the challenged claims are directed to the mobile
base station. See discussion supra. The fact that in some alternative
embodiments, the mobile unit may be able to communicate with the cellular
network, does not erase the fact that the challenged claims and the stated
objectives of the ’543 patent, i.e., to provide a mobile base station as an
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intermediary between the mobile units and the cellular network, do not
require direct communication.
Patent Owner relies on “Federal Circuit precedent [that] forbids an
overly broad interpretation of the claims.” PO Sur-reply 2–3 (citing Pacing
Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015)). In
Pacing Technologies, 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 unit to “a device that must
register with and be able to directly communicate with the cellular network.”
Pacing Technologies, therefore, does not support Patent Owner’ argument.
“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 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.”). As discussed above, the ’543 patent claims are directed to the
mobile base station communicating with the cellular network, and the
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specification describes an embodiment which prevents the mobile unit from
communicating with the fixed ports. Ex. 1001, 3:24–38; see also discussion
supra. We find that there was no “disavowal or disclaimer” of mobile units
that do not communicate directly with a cellular system.
Patent Owner argues further that “it is well established that ‘when the
scope of the invention is clearly stated in the specification, and is described
as the advantage and distinction of the invention, it is not necessary to
disavow explicitly a different scope.’” PO Sur-reply 4 (quoting On Demand
Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1340 (Fed. Cir. 2006)).
Patent Owner explains: “The Federal Circuit’s analysis in On Demand is
similar to the Patent Owner’s claim construction.” Id. We disagree. 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 the advantage and distinction
of the invention.” 442 F.3d at 1340 (quoted at PO Sur-reply 8). However,
in our analysis above of Patent Owner’s position, we find that the scope of
the invention and its advantages as described in the ’543 patent center on the
mobile base station, not the mobile device. The ’543 patent specification,
therefore, does not favor Patent Owner’s narrow construction of “mobile
device.” 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 explanation that “the
movable base station addressed the handoff problems and data bandwidth
constraints of conventional consumer cellular networks in 1995.” Id. at 7
(footnote omitted). There is no dispute that improving cellular technology is
included among the goals described in the ’543 patent. But Patent Owner
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acknowledges that the claims require that the movable base station, not the
mobile device, be able to communicate directly with the cellular network:
However, the claims of the ’543 Patent require the apparatus or
movable base station to communicate directly with the cellular
network since it is directed towards improving the wireless
connections of mobile devices within cellular telephone
systems via a movable base station that is interposed between
the mobile devices and the base stations of a cellular network.
PO Sur-reply 7; see also discussion supra. Patent Owner therefore fails to
support its argument that the ’543 patent “explicitly and exclusively relates
to improving the wireless connections of mobile devices within ‘cellular
telephone systems.’” PO Sur-reply 4 (emphasis omitted). We find, based on
the analysis above, that the claims, specification, and prosecution history of
the ’543 patent reveal a broader goal of also improving wireless
communications involving non-cellular devices, such as radios and
telephones.
Nor are we persuaded by Patent Owner’s suggestion that the patent
specification requires the mobile unit to “register . . . with the cellular
network.” PO Resp.10–11. Such a registration requirement is not supported
by the claims or prosecution history.
We have note that the challenged claims do not call for registration.
Registration of a mobile unit with a base station is mentioned in the ’543
patent specification (see PO Resp. 12, PO Sur-reply 3), but 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 the fixed base
stations. Ex. 1001, 9:65–10:5 (“The address will be received by the closest
moving base station 30 and transmitted . . . to the telephone network”). We
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find that in this description, it is the moving base station, rather than the
mobile unit, that handles the registration process with the fixed base station,
as well as subsequent hand-offs. And the transmission of an address by the
mobile unit to the moving base station during start-up uses a generic
“standard radio interface” described in the specification. Ex. 1001, 6:52–55.
However, even if the specification were to include an embodiment
describing registration by the mobile device, that would not alter the fact that
the claims are directed to a mobile base station that communicates directly
with the cellular network and a mobile device that communicates directly
with the mobile base station through a “standard radio interface,” but not
directly with that cellular network. Thus, the patentability of the claimed
apparatus (the mobile base station) does not turn on alleged ability of the
mobile device to communicate directly with the cellular network, or any
other network or device for that matter.
In summary, having considered all the arguments and evidence
presented on this issue, we find that Patent Owner’s proposed construction
for “mobile device” is not supported by the claim language of the ’543
patent or the other intrinsic evidence, and, therefore, we do not adopt a
construction that would limit “mobile device” to cellular phones or other
devices “that must register with and be able to directly communicate with
the cellular network,” and that would exclude conventional cordless phones.
We agree, therefore, with Petitioner’s reasoning that no construction
of “mobile device” is necessary. Pet. 11; Pet. Reply 7.
C. Description of Prior Art References
Because our Decision relies on Ito, Gilhousen501, and Adachi, we
provide the following description of those references.
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1. Ito (Exhibit 1003)
Ito is a patent titled “Mobile Radio Communication System Having
Mobile Base and Portable Devices as a Mobile Station.” Ex. 1003, (54). Ito
relates to a cellular-type automobile telephone system that has been known
as a mobile radio communication system. Id. at 1:15–16.
As described in Ito, in known cellular mobile radio telephone systems,
the mobile stations are connected by a radio channel to a base station for the
radio communication zone where it is currently located. Id. at 1:22–24. The
mobile stations are further connected to a wire telephone network by way of
the base station and a control station. Id. at 1:24–26.
The automobile telephone main unit and the handset assembly are
connected by a signal cord. The cradle and the handset are connected by a
curled cord. Id. at 1:51–54. According to Ito, “[w]ith such an arrangement,
the curled cord can constitutes [sic] an annoying obstacle when the driver
drives and speaks into the telephone transmitter simultaneously. Moreover,
the handset cannot be moved away beyond a limit posed by the curled wire
. . . .” Id. at 1:55–59.
Thus, Ito describes a mobile radio communication system that
wirelessly connects a mobile station, or a mobile base device, and a portable
device by a radio channel, in order to eliminate the necessity of wiring the
mobile base device and portable telephone device together, increasing the
maneuverability of the telephone handset. Id. at 2:5–12.
This is illustrated by Figure 6 of Ito, reproduced below.
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Figure 6 of Ito depicts a mobile radio
communication system. Id. at 5:16–18.
In Figure 6 of Ito, mobile base device MSS is wirelessly connected
simultaneously with two portable devices PSS1 and PSS2. Ex. 1003, 12:52–
56. Base station BSS2 and mobile base device MSS communicate with each
other by way of radio frequencies fT1 and fR1.7 Id. at 12:57–63. Mobile base
device MSS and portable devices PSS1 and PSS2 communicate with each
other by way of radio frequencies fTA and fRA. Id.
As described by Ito, referring to Figure 3 (not shown), mobile base
device MSS has two transmitter-receiver units. Id. at 7:9–12. The first
transmitter-receiver unit is used for radio communication with base station
BSS by way of a first radio channel. The second transmitter-receiver unit is
used for radio communication with its portable devices PSS by way of a
second radio channel. Id. at 7:12–17.
Further, Ito describes that high speed fading phenomena causes errors
in signals. Id. at 16:59–60. The rate of errors in signals due to the high

7 Figure 6 of Ito mislabels fT1 as fr1 and BSS2 as BSS. See Ex. 1003, 12:57–
63.
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speed fading phenomena is increased due to the distance of a signal’s
communication path. See id. at 16:56–61. In particular, Ito describes that
the communication path between the mobile base device MSS and the
portable device PSS is shorter and, therefore, has a smaller rate of errors,
than the communication path between the mobile base device MSS and the
base station BSS. Id.
The embodiment described in Ito makes use of TDMA (Time
Division Multiple Access) and FDMA (Frequency Division Multiple
Access) techniques for communications between the base station BSS and
mobile base device MSS and between the mobile base device and the
portable device PSS. Id. at 5:47–50.
2. Gilhousen501 (Ex. 1004)
Gilhousen501 is a patent titled “Method and System for Providing a
Soft Handoff in Communications in a CDMA Cellular Telephone System.”
Ex. 1004, (54). Gilhousen501 describes a “soft” handoff scheme employed
for a CDMA cellular telephone system in which a new cell-site modem is
assigned to a mobile unit while the old cell-site continues to service the call.
Id. at 3:9–12. When the mobile unit is located in the transition region
between the two cell-sites, the call can be switched back and forth between
cell-sites as signal strength dictates. Id. at 3:12–15. When mobile unit
communications are firmly established with the new cell-site, e.g., the
mobile unit is well within the new cell, the old cell-site discontinues
servicing the call. Id. at 3:19–22. Gilhousen501 describes this “soft”
handoff as a “make-before-break switching function,” in contrast to previous
cellular telephone systems which used a “break-before-make switching
function.” Id. at 3:24–28.
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Figure 1 of Gilhousen501, reproduced below, depicts a schematic
overview of an exemplary CDMA cellular telephone system. Id. at 7:1–3.

Figure 1 of Gilhousen501 depicts a
CDMA cellular telephone system.

Gilhousen501 explains that in a CDMA cellular telephone system, the
same frequency band is used for all cells. Id. at 2:58–59. Gilhousen501
further describes that:
In the CDMA cellular telephone system, each cell site
transmits a “pilot carrier” signal. This pilot signal is used by the
mobile units to obtain initial system synchronization and to
provide robust time, frequency and phase tracking of the cell-site
transmitted signals.
Each cell-site also transmits a “setup” channel comprised
of spread spectrum modulated information, such as cell-site
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identification, system timing, mobile paging information and
various other control signals.
Id. at 3:45–53. When the mobile unit identifies the appropriate setup code
for a given cell-site, system information is received and processed. Id. at
4:10–12. The mobile unit further monitors the setup channel for control
messages, such as messages indicating that a call is waiting for transfer to
the mobile unit. Id. at 4:12–15.
3. Adachi (Exhibit 1031)
Adachi is a patent titled “Receiver and Repeater for Spread Spectrum
Communications.” Ex. 1031, (54). Adachi discloses a “repeater improving
the effect of a RAKE reception.” Id. at Abstract. Figure 2 of Adachi is
reproduced below.

Figure 2 is a block diagram showing an embodiment of a
spread-spectrum communication repeater. Ex. 1031, 5:51–53.
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Base station 10 carries out CDMA communications with mobile stations 16
and 17. Id. at 6:5–7. Repeater 20 has two antennas 21, 22 for the base
station and two antennas 28, 29 for the mobile stations 16. Id. at 6:13–16.
Signals from base station 10 are received by repeater 20 by antennas
21 and 22. Id. at 6:16–18. The signals are combined, amplified, and sent to
mobile stations 16 via antenna 28. Id. at 6:26–30. Antenna 31 of the mobile
station 16 receives the signal from repeater 20. Id. at 6:35–37. In the
reverse direction, signals from the mobile station 16 are received at the
repeater’s antennas 28 and 29, and are combined, amplified, and
retransmitted to base station 16. Id. at 6:49–67.
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 Petitioner nor the
Patent Owner presents evidence on the fourth Graham factor. We therefore
do not consider that factor in this Decision.
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B. Challenge to Claims 10, 12, 13, 18–21, 23, 25, 26, 44, 45,
and 49–55 based on Ito, Gilhousen501, and Adachi
Petitioner contends these claims would have been obvious over the
combination of Ito, Gilhousen501, and Adachi. Pet. 47–72. Petitioner
supports this assertion with testimony from its expert, Mr. Fischer. Fischer
Decl. ¶¶ 152–210.
Petitioner asserts that a person of ordinary skill would have been
motivated to combine these references with a reasonable expectation of
success. Pet. 47–55; Fischer Decl. ¶¶ 152–170. Petitioner contends a person
of ordinary skill “would have been motivated to modify Ito’s FDMA-based
system to use the CDMA ‘soft-handoff’ techniques disclosed in
Gilhousen501.” Pet. 47. Petitioner presents testimony from Mr. Fischer that
a person of ordinary skill “would have readily understood that CDMA offers
significant advantages over FDMA, e.g., improving the quality of a call
connection and reducing dropped calls.” Id. (citing Fisher Decl. ¶ 152).
Petitioner asserts also that a person of ordinary skill “would have been
further motivated to modify the Ito-Gilhousen501 combination to use the
plurality of spatially separated antennas for a CDMA system described in
Adachi, for example, because using a plurality of antennas mitigates fading
and undesirable noise and improves transmission power requirements.” Id.
at 47–48 (citing Fischer Decl. ¶ 152).
Petitioner argues that in making the Ito-Gilhousen501 combination, a
person of ordinary skill would have had a reasonable expectation of success.
Pet. 53–54. Again relying on Mr. Fischer, Petitioner contends that
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“[i]ncorporating the functionality of Gilhousen501 into Ito would have been
a routine modification.” Id. at 54 (citing Fischer Decl. ¶ 165).
Similarly, Petitioner demonstrates that there would have been a
motivation to combine Adachi’s spatially separated antennas and
Gilshosen501’s “soft handoff” circuitry in Ito’s system with a reasonable
expectation of success. Pet. 54–55; Fischer Decl. ¶¶ 167–170.
1. Independent Claim 10
Petitioner presents an element-by-element analysis of claim 10 in
relation to Ito, Gilhousen501, and Adachi. Pet. 56–61. Petitioner supports
this analysis with testimony from Mr. Fischer. Fischer Decl. ¶¶ 171–181.
As we discuss, Petitioner demonstrates that each element of claim 10 is
disclosed or suggested by Ito, Gilhousen501, and Adachi.
a. Preamble, Element 10a (“plurality of . . . antennas”)
Petitioner identifies mobile base MSS in Ito as the “apparatus” recited
in the preamble of claim 10. Pet. 56 (citing Ex. 1003, Figs. 1, 3). Similarly,
Petitioner identifies the “plurality of spatially separated antennas” (element
10a) recited in the claim with Adachi’s multiple antennas. Id. (citing Fischer
Decl. ¶ 172). Patent Owner does not challenge this analysis.
b. Element 10b (“receiver”)
Petitioner relies on the combination of Ito, Gilhousen501, and Adachi
as disclosing the limitation (element 10b) of “a receiver configured to
receive, through the plurality of spatially separated antennas, a plurality of
cellular signals from a plurality of base station interface circuits.” Pet. 56–
58. Petitioner refers to annotated Figure 3 of Ito, following:
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Annotated Figure 3 of Ito is a block diagram
of a mobile base device. Ex. 1003, 3:10–11; Pet. 57.
Figure 3 shows the structure of Ito’s MSS. Ex. 1003, 7:9–12. Using this
figure, Petitioner identifies the claimed receivers and transmitters
communicating with the base station BSS and the portable device PSS by
color: “Each transmitter-receiver unit includes a transmission system
(yellow) and a reception system (orange) that comprise various components
related to speech encoding, signal modulation, and power amplification.”
Pet. 57 (citing Fischer Decl. ¶ 174).
Petitioner explains further that “[i]n the modified system of Ito with
the CDMA system of Gilhousen501 and the plurality of antennas from
Adachi’s repeater, . . . signals from Gilhousen501’s base station are received
through the plurality of spatially separated antennas of Adachi.” Pet. 57
(citing Fischer Decl. ¶ 176).
Petitioner argues that a person of ordinary skill “would have been
motivated to implement Adachi’s spatially separated antennas to Ito’s first
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transmitter-receiver unit for the same reasons as with respect to the second
transmitter-receiver unit: to reduce the effects of fading and promote high-
quality communications.” Id. at 58 (citing Ex. 1031, 5:29-45, 10:66-11:2;
Fischer Decl. ¶ 176). Patent Owner’s challenge to Petitioner’s analysis of
this element and the motivation to combine these references will be
discussed infra.
c. Element 10c (“transmitter”)
Petitioner relies on Ito’s MSS apparatus to meet the limitation
(element 10c) of “a transmitter configured to transmit a mobile device radio
frequency signal to a mobile device moving relative to Earth while the
apparatus is moving relative to the plurality of base station radio interface
circuits and relative to Earth, the mobile device radio frequency signal
including data extracted from the cellular signals.” Pet. 58 (citing Fischer
Decl. ¶ 177). Referring again to annotated Figure 3 of Ito, Petitioner
explains: “The second transmitter-receiver unit 80 wirelessly communicates
with portable device PSS (mobile device). Ito transmits a received call from
the base station BSS to the mobile user PSS via transmitter-receiver 80.” Id.
at 59 (citations omitted); Fischer Decl. ¶ 178. Petitioner explains further,
“Gilhousen501 teaches ‘data extracted from the cellular signals’ are sent to
the mobile device.” Pet. 61 (citing Fischer Decl. ¶ 181).
d. Discussion
As noted, Patent Owner does not challenge Petitioner’s analysis of the
preamble and claim element 10a. We find that for the reasons given by
Petitioner, Ito, Gilhousen501, and Adachi disclose these elements.
As to “receiver” element 10b, however, Patent Owner contends
“Gilhousen501 does not disclose any apparatus (moving base station) of any
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type, let alone . . . an apparatus that comprises ‘a receiver configured to
receive . . . a plurality of cellular signals from a plurality of base station
interface circuits’, as required by Claim 10.” PO Resp. 54 (citing Lanning
Decl. ¶ 233) (second alteration in original). Patent Owner makes a similar
argument for Adachi: “Likewise, Adachi does not disclose any apparatus
(i.e., a moving base station) of any type.” Id. at 55. We are not persuaded
by these arguments. Petitioner relies on Ito’s MSS to meet the requirement
of the claims for a moving base station. See discussion supra. Petitioner
relies on Gilhousen501 for its disclosure of “data extracted from the cellular
signals.” Pet. 60. Petitioner relies on Adachi for its teaching of multiple
antennas. Id. at 56. Thus, Patent Owner’s argument that Gilhousen501 and
Adachi fail to disclose a moving base station does not address Petitioner’s
contentions, which also rely on Ito’s MSS. We find that for the reasons
given by Petitioner and summarized above, claim element 10b is disclosed
by Ito, Gilhousen501, and Adachi.
For “transmitter” claim element 10c, Patent Owner contends that Ito,
Gilhousen501, and Adachi fail to disclose a mobile device. PO Resp. 55–
58. This argument is based on Patent Owner’s construction of mobile device
as requiring registration and direct communication with the cellular network.
Id. at 55 (“While Ito does disclose a portable device (PSS), this portable
device does not register with or directly communicate with the cellular
network as required for a ‘mobile device’ in the context of the entire
’543 Patent.” ). For reasons discussed supra, Section II.B.3, we do not
accept Patent Owner’s construction of mobile device because it is not
supported by the language of the claims or other intrinsic evidence before us.
Nor are we persuaded by Patent Owner’s argument that cordless telephones
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such as Ito’s are excluded from the scope of the claims. See supra. Because
we have not adopted Patent Owner’s claim construction, we are not
persuaded by these arguments.
Patent Owner argues that its proposed requirement that “a mobile
device must register with the cellular network in order to obtain the benefits
of the ’543 Patent” “does not preclude a mobile device—such as a cell
phone—from using a second type of radio interface that is not a standard
cellular interface to communicate with the moving base station.” PO Sur-
reply 9. This argument does not support Patent Owner’s position because
the only communication interface with the “mobile device” recited in claim
10 is “a transmitter configured to transmit a mobile device radio frequency
signal to a mobile device.” Ex. 1001, 12:14–15 (emphasis added). Thus,
based on Patent Owner’s arguments, claim 10 encompasses Ito’s radio
interface between transmitter-receiver unit 80 and portable device PSS. See
Ex. 1003, 7:9–17 (“[T]he second transmitter-receiver unit 80 is used for
radio communication with its portable device PSS by way of a second radio
channel.”).
We find, therefore, that Ito’s portable device PSS meets the
requirement of claim 10 for a mobile unit, for the reasons given by Petitioner
and summarized supra. See Pet. 56; Fischer Decl. ¶¶ 178–181.
Still referring to element 10c, Patent Owner contends Petitioner fails
to show the references disclose a “mobile device radio frequency signal
including data extracted from the cellular signals.” PO Resp. 58–60. Patent
Owner asserts: “Gilhousen501 only discloses a direct communication
between its single mobile unit (18) and one or more cell-sites (i.e., fixed
base stations) (12, 14, and 16).” Id. at 60. Patent Owner argues, similarly:
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“Likewise, Adachi only discloses a stationary repeater that is used as a
‘signal booster’ to boost weak spread spectrum (CDMA) signals between a
base station and one or more mobile stations (i.e., mobile devices).” Id. at
61 (citing Lanning Decl. ¶ 250).
We are not persuaded by these arguments because they are not
responsive to Petitioner’s contentions. Petitioner relies on Ito (not
Gilhousen501) for the disclosure of a mobile base station (MSS) that that
communicates directly with mobile devices (PSS). See Pet. 56–57; Fischer
Decl. ¶¶ 179–180. Patent Owner’s arguments based on Gilhousen501,
alone, or Adachi, alone, are not responsive to Petitioner’s contentions based
on the combination of those references with Ito.
e. Motivation to Combine
Patent Owner contends that the Petitions “are fatally deficient.” PO
Resp. 19–25. According to Patent Owner: “A proper obviousness
combination requires the Petitioner to ‘explain how specific references could
be combined.’” Id. at 19 (citing ActiveVideo Networks, Inc. v. Verizon
Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012)).
Specifically, as to Ito and Gilhousen501, Patent Owner contends the
Petition fails to explain or address several questions, including “how a
[person of ordinary skill] would combine Gilhousen501’s CDMA
modulation techniques, CDMA signal processing, and CDMA processor
with that of Ito’s FDMA/TDMA system” or “how to combine Adachi’s
spatially separated antennas—designed for a CDMA system—with that of
Ito’s FDMA/TDMA system.” PO Resp. 20–21 (emphasis and footnotes
omitted); see also id. at 38–42. According to Patent Owner, Petitioner fails
also to show “how a [person of ordinary skill] would combine
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Gilhousen501’s CDMA modulation techniques with the pre-existing base
stations (BSS) of Ito, especially, where Ito lacks the necessary design and
circuitry details for these pre-existing base stations.” Id. at 23 (emphasis
omitted); see also id. at 33–35.
Patent Owner also contends “Ito’s FDMA/TDMA system is not
compatible with CDMA systems.” PO Resp. 21; PO Sur-reply 20–22.
Patent Owner asserts, “Ito explicitly teaches away from utilizing CDMA
techniques.” PO Resp. 33. And Patent Owner states that “Ito’s
FDMA/TDMA system is not capable of utilizing CDMA modulation
techniques or even transmitting CDMA signals without replacing Ito’s
current FDMA/TDMA circuitry with entirely new CDMA circuitry.” Id. at
33–34. Mr. Lanning testifies that “these compatibility issues would prohibit
Ito’s mobile base stations (MSS) from receiving CDMA signals and further
prohibit Ito’s preexisting base stations (BSS) from transmitting CDMA
signals, as Petitioner proposes.” Lanning Decl. ¶ 165. We are not
persuaded by these arguments. Our reasoning follows.
Patent Owner cites KSR as requiring the Board to consider the
motivation to combine in determining obviousness. PO Sur-reply 17–18.
But the Federal Circuit has emphasized that 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.”
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ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (citations
omitted, alteration in original)). The Federal Circuit has 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.
We disagree with Patent Owner’s assertion that Petitioner has failed to
demonstrate a motivation to combine the teachings of Ito and Gilhousen501
with a reasonable expectation of success. We find that Petitioner has
provided persuasive evidence of such a rationale and expectation. Pet. 47–
54; Fischer Decl. ¶¶ 152–166; see discussion supra. Mr. Lanning testifies
that CDMA was a “breakthrough technology.” Lanning Decl. ¶ 138
(heading). Given the high level of ordinary skill in the pertinent art before
us, we find that a person having such ordinary skill (an experienced wireless
communications systems engineer “familiar with cellular communication
technology”) would have readily recognized that combining Ito with
Gilhousen501’s teachings of CDMA technology would have had the
advantages identified by Petitioner and summarized supra. See also Pet. 47–
54; Fischer Decl. ¶¶ 152–166.
Moreover, we find that such a highly skilled person would have been
able to combine the teaching of those references using known technology,
with a reasonable expectation of success. Fischer Decl. ¶ 164 (“Starting
with Ito, a [person of ordinary skill] familiar with wireless technology such
as CDMA would have naturally sought to implement Ito using CDMA,
which allows the improvement of Gilhousen501’s soft handoff, instead of
Ito’s FDMA, and to do so would have required only the application of
ordinary skill.” ). Mr. Fischer continues: “When designing the system
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described in Ito, a [person of ordinary skill] would have naturally
implemented known and commercially available radio communication
components with the mobile base station and base station in the Ito system.”
Id.
Moreover, this conclusion is further supported by Mr. Lanning’s
testimony that the hardware and software necessary to convert a base station,
such as in Ito, to CDMA was available from Motorola during the relevant
time period. Pet. Reply 20; Lanning I Dep. 42:23–43:22. We find this
modification would have been a substitution of known techniques of
communications, using available hardware and software, with a reasonable
expectation of success. Fischer Decl. ¶¶ 164–166
We have considered Patent Owner’s arguments and do not find them
persuasive. As Petitioner points out, Patent Owner’s incompatibility
argument is flawed because it assumes the bodily incorporation of
“unmodified CDMA components from Gilhousen501 into Ito’s unmodified
system.” Pet. Reply 18. We agree that Patent Owner’s approach is flawed.
“[T]he 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.”); In re Nievelt, 482 F.2d 965,
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968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
We are not persuaded by the testimony of Patent Owner’s expert, Mr.
Lanning, on this issue. Cf. Lanning Decl. ¶¶ 159–179. His testimony
mirrors arguments in Patent Owner’s Response about the combination of Ito
and Gilhousen501 resulting in “incompatible systems,” and requiring
additional “design and circuitry details.” See id. ¶¶ 122, 163, 168. As
discussed supra, we find that those arguments are unpersuasive and contrary
to KSR, and Mr. Lanning’s testimony is similarly unpersuasive.
We have considered Patent Owner’s additional arguments and find
them no more persuasive. For example, Patent Owner argues repeatedly that
Petitioner’s rationale for combining Ito and Gilhousen501 and other
references relied on by Petitioner, and the supporting testimony from Mr.
Fischer, are “conclusory.” PO Resp. 2, 20, 22; PO Sur-reply 15. We
disagree. We find that Petitioner’s explanation of the rationale for
combining the teachings of the references and Mr. Fischer’s supporting
testimony, summarized supra, are persuasive for the reasons given above.
Nor do we agree with Patent Owner’s argument that the Petition is
“fatally deficient” because it does not explain “in sufficient detail” how to
combine Ito and Gilhousen501 (and other references). PO Resp. 23–25.
According to the ’543 patent, the invention uses “well-known” equipment
and functions. See, e.g., Ex. 1001, 4:30, 5:7–8; 5:23, 5:55, 5:67, 6:15, 6:21,
6:32, 6:50, 6:54–55, 6:64; 7:37; 9:21, 9:34, 9:63. CDMA was a well-known
technique at the time of the alleged invention. Fischer Decl. ¶ 156 (citing
Ex. 1026, 50 (stating that CDMA was “[c]ommercially introduced in
1995”)). We are persuaded that a more detailed explanation of how to
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combine such well-known equipment and techniques is not required. See
Fischer Decl. ¶ 164 (“Starting with Ito, a [person of ordinary skill] familiar
with wireless technology such as CDMA would have naturally sought to
implement Ito using CDMA, . . . and to do so would have required only the
application of ordinary skill.”). Mr. Fischer provided additional details at
his deposition. Fischer I Dep. 89:11–91:17.8 Moreover, Mr. Lanning’s
testimony establishes that the necessary hardware and software for the
transition were available from Motorola. Lanning I Dep. 42:23–43:22; see
discussion supra.
Nor do we agree that “Ito explicitly teaches away from utilizing
CDMA techniques.” PO Resp. 33. A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The mere fact that Ito chose an
alternative technology (FDMA) is not sufficient to teach away from
substituting CDMA. See id.
We find, therefore, that for these reasons, Petitioner has demonstrated
by a preponderance of the evidence, including expert testimony and the
references themselves, a motivation to combine the teachings of Ito and
Gilhousen501, with a reasonable expectation of success.
Following the same approach, Patent Owner argues that a person of
ordinary skill would not have been motivated to combine Adachi’s teaching
of plural antennas with Ito and Gilhousen501. PO Resp. 35–37. Patent

8 Citations are to the original deposition pages.
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Owner’s arguments track those already addressed in connection with
combining Ito and Gilhousen501. Thus, Patent Owner argues that
“compatibility issues” would arise with Ito’s FDMA/TDMA system because
Adachi’s spatially separated antennas were designed for a CDMA system.
Id. at 35–36. And Patent Owner argues that a person of ordinary skill would
not have been motivated to “mix and match” Adachi’s teachings with Ito’s
mobile base station. Id. With respect to combining Adachi with
Gilhousen501, Patent Owner contends “this combination would have
required much new circuitry.” Id. at 36.
For the reasons discussed, these arguments overstate the extent of the
alleged technical problems and overlook the relatively high level of skill in
this art. As Mr. Fischer testifies persuasively, “[a person of ordinary skill]
familiar with diversity techniques in wireless communications would have
naturally sought to implement Adachi into the Ito-Gilhousen501
combination since the well-known benefits of antenna diversity would have
enhanced Ito-Gilhousen501 system’s ability to maintain high-quality
connections between the mobile devices and base stations.” Fischer Decl.
¶ 170; see also id. ¶¶ 98–99 (discussing advantageous use of Adachi’s
antenna diversity to “mitigate multipath fading effects”).
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Ito in combination with Gilhousen501 and Adachi
discloses or suggests each element of claim10, and further, 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
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has shown by a preponderance of evidence that claim 10 would have been
obvious in light of Ito, Gilhousen501, and Adachi.
2. Independent Claims 21, 44, and 52
Petitioner’s analysis of claim 21 incorporates its analysis of claim 10.
Pet. 64–67; Fischer Decl. ¶¶ 192–201. For the elements of the “second
receiver” recited in claim 21, but not claim 10, Petitioner relies on Figure 3
of Ito. Pet. 65. Referring to Figure 3 of Ito, Petitioner asserts: “Each
transmitter-receiver unit includes a ‘transmission system’ (yellow) and a
‘reception system’ (orange) that comprise various components related to
speech encoding, signal modulation, and power amplification.” Id. at 65–66.
Similarly, for the “second transmitter” recited in the claim, Petitioner relies
on Figure 3 and the disclosure of a transmitter-receiver unit in Ito. Id. at 66–
67.
Petitioner’s analyses of independent claims 44 and 52 in relation to
Ito, Gilhousen501, and Adachi also rely on its analysis of claim 10. Pet.
71–72; Fischer Decl. ¶¶ 207–209.
Patent Owner’s response on claim 21 states that for the first
transmitter limitation, the Petition refers back to a prior discussion of
“Gilhousen761,” which Patent Owner points out is not cited as a reference
for this ground. PO Resp. 64. Petitioner responds that “[t]his is a
typographical error; the Petition should have referred to Ito.” Reply 30.
From the context, is clear that Petitioner was referring to Ito, not
Gilhousen761.9 Patent Owner’s argument is, therefore, unavailing.

9 Petitioner relies on its analysis of claim element 10c, which refers to Ito
(not Gilhousen761) as disclosing the transmitter limitation. Pet. 65.
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Patent Owner asserts that claims 44 and 52 include limitations similar
to those addressed for claims 10 and 21. PO Resp. 66. Thus, Patent Owner
does not present additional arguments for claims 44 and 52, referring
specifically to its arguments directed to claim elements 10b and 10c,
discussed supra. Id. at 66–68.
Accordingly, for the reasons given in connection with claim 10 and
those summarized above, we find that Petitioner has demonstrated that Ito in
combination with Gilhousen501 and Adachi discloses or suggests each
element of claims 21, 44, and 52. Based on Petitioner’s analysis, and for the
reasons explained above, we find Petitioner has shown by a preponderance
of evidence that claims 21, 44, and 52 would have been obvious in light of
Ito, Gilhousen501, and Adachi.
3. Dependent claims 12, 13, 18, 19, 20, 45, 49, 50, and 51
Claims 12, 13, 18, 19, and 20 depend from claim 10 and add various
features. For example, claim 12 states that “each cellular signal includes the
data.” Ex. 1001, 12:25–26. Petitioner contends this additional feature is
disclosed by Gilhousen501. Pet. 61 (citing Fischer Decl. ¶ 182). Claim 19
recites that the transmitter is “further configured to transmit the mobile
device radio frequency signal within time slots of time-division multiplex
channels.” Id. at 62. Petitioner explains that Ito discloses this limitation. Id.
Specifically, the Petition provides the following explanation: “In the
proposed combination, Gilhousen501’s CDMA functionality replaces Ito’s
FDMA functionality, leaving its TDMA functionality intact.” Id. at 63
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(emphasis added). Petitioner supports this assertion with testimony from
Mr. Fischer. Fischer Decl. ¶ 189.
Similarly, Petitioner contends that the limitations added by claims 13,
18, and 20 are disclosed by the combination of Ito, Gilhousen501, and
Adachi, or by Ito or Gilhousen501 alone. Id. at 61–63. Petitioner contends
claims 45, 49, 50, and 51 contain limitations similar to claims 13, 18, 19,
and 20, and therefore relies on the same prior art disclosures for those
claims. Pet. 71 (citing Fischer Decl. ¶ 208).
For claims 12, 13, 18, and 20, Patent Owner relies on its previous
arguments addressed to claim 10, from which these claims depend. PO
Resp. 61–62. For the additional limitation in claim 13 (“wherein the
plurality of cellular signals is a plurality of code division multiple access
(CDMA) signals”), Petitioner relies on “the combination of Ito,
Gilhousen501, and Adachi.” Pet. 61. As Petitioner explains, “in the
modified system of Ito with the CDMA system of Gilhousen501 and the
plurality of antennas from Adachi’s repeater, signals from Gilhousen501’s
base station are received through the plurality of spatially separated antennas
of Adachi.” Id. (citing Fischer Decl. ¶ 184).
Relying on testimony from Mr. Lanning, Patent Owner asserts that
this limitation is not met. PO Resp. 62–64 (citing Lanning Decl. ¶ 253).
Patent Owner asserts: “Gilhousen501 does not disclose or imply any
moving base station that comprises either a receiver to receive CDMA
signals transmitted from a fixed base station or a transmitter to transmit
CDMA signals to be received by a fixed base station, as required by Claim
13.” Id. at 63. Further, Patent Owner asserts: “Gilhousen501 only discloses
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direct communication between its single mobile unit 18 and one or more
cell-sites . . . .” Id. at 63–64.
We are not persuaded by this argument. As noted supra, Petitioner
relies on Ito’s disclosure of mobile base station MSS communicating with a
cellular base station. Pet. 58–60. Patent Owner’s argument in unavailing
because it addresses references individually and fails to address the
combination of references including Ito.
For claims 45, 49, and 51, Patent Owner relies on its arguments
addressed to claim 44, from which these claims depend. PO Resp. 68. For
the additional limitation in claim 45 (“wherein the plurality of cellular
signals is a plurality of code division multiple access (CDMA) signals”),
Patent Owner relies on arguments directed to claim 13, which included the
same limitation. Id. at 69. We have addressed this argument supra in
connection with claim 13 and find it unpersuasive for the reasons given
there. Patent Owner does not separately address claim 50.
Accordingly, for the reasons given in connection with claims 10 and
44, and those summarized above, we find that Petitioner has demonstrated
that Ito in combination with Gilhousen501 and Adachi discloses or suggests
each element of dependent claims 12, 13, 18, 19, 20, 45, 49, 50, and 51.
Based on Petitioner’s analysis, and for the reasons explained above, we find
Petitioner has shown by a preponderance of evidence that claims 12, 13, 18,
19, 20, 45, 49, 50, and 51 would have been obvious in light of Ito,
Gilhousen501, and Adachi.
4. Dependent Claims 23, 25, 26, 53, and 55
Claims 23, 25, and 26 depend from claim 21 and add various features.
For example, claim 23 states that “the second transmitter is further
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configured to transmit the another cellular signal at a cellular transmission
power level higher than a mobile device transmission power level at which
the another mobile device signal is transmitted.” Petitioner demonstrates
that this additional feature is disclosed by Ito. Pet. 68 (citing Fischer Decl.
¶ 202). Similarly, Petitioner shows that the limitations added by claims 25
and 26 are disclosed by Gilhousen501, alone or with Adachi. Id. at 70–71.
Petitioner explains that claims 53 and 55 contain limitations similar to
claims 23 and 25, and therefore relies on the same prior art disclosures for
those claims. Id. at 71–72 (citing Fischer Decl. ¶ 208).
Patent Owner’s response to claims 23 and 25 relies on its response to
claim 21. PO Resp. 65. For the additional CDMA limitation recited in
claim 25, like that in claim 13, Patent Owner relies on its response to claim
13. Id. at 66. We find these arguments unpersuasive for the reasons given
in connection with claims 21 and 13.
Similarly, Patent Owner’s response to claims 53 and 55 relies on its
response to claim 52, which in turn relies on the response to claims 10 and
21. PO Resp. 69. For the additional CDMA limitation recited in claim 25,
which is like that in claim 13, Patent Owner relies on its response to claim
13. Id. at 70. We find these arguments unpersuasive for the reasons given
in connection with claims 10, 13, and 21. Patent Owner does not separately
address claim 26.
Accordingly, for the reasons given in connection with claims 10 and
13, and those summarized above, we find that Petitioner has demonstrated
that Ito in combination with Gilhousen501 and Adachi discloses or suggests
each element of dependent claims 23, 25, 26, 53, and 55. Based on
Petitioner’s analysis, and for the reasons explained above, we find Petitioner
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has shown by a preponderance of evidence that claims 23, 25, 26, 53, and 55
would have been obvious in light of Ito, Gilhousen501, and Adachi.
5. Dependent Claim 54
This claim depends from claim 52, and recites that “the second
transmitter is further configured to transmit the another cellular signal
through at least two of the plurality of spatially separated antennas.”
Petitioner asserts that Adachi discloses this limitation. Pet. 72 (citing
Fischer Decl. ¶ 210). For support, Petitioner refers back to its analysis of
how Adachi teaches this subject matter in the ground based on
Gilhousen761, Gilhousen501, and Adachi. See Pet 45–48; Fischer Decl.
¶¶ 146–151. Citing Adachi’s disclosure of using multiple transmitting and
multiple receiving antennas, Mr. Fischer testifies that a person of ordinary
skill in the art would have been motivated to use “all four antennas from
Adachi’s Embodiment 1 . . . as transmit-receive antennas to obtain the
benefits of the multiple transmitting antennas.” Fischer Decl. ¶¶ 147–148
(citing Ex. 1031, 7:24–29).
Patent Owner does not separately address claim 54. We are persuaded
by Petitioner’s showing that Adachi teaches this feature. Based on
Petitioner’s analysis, summarized above, we find Petitioner has shown by a
preponderance of evidence that claim 54 would have been obvious in light
of Ito, Gilhousen501, and Adachi.
C. Challenge to Claims 34 and 66
based on Ito, Gilhousen501, and Adachi
In IPR2019-01644, Petitioner contends these claims would have been
obvious over Ito, Gilhousen501, and Adachi. IPR1644 Pet. 9, 42. Petitioner
provides an element-by-element analysis for each of the challenged claims
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in relation to Ito, Gilhousen501, and Adachi. Id. at 50–59. Mr. Fisher
testifies that each limitation of claims 34 and 66 is disclosed by the
combination of these references. Fischer II Decl. ¶¶ 151–174.
Petitioner shows that the preamble (“apparatus”) is met by Ito’s MSS.
Pet. 51; Fischer II Decl. ¶ 152. Petitioner contends that the first limitation of
claim 34 (element 34a) is met by Adachi’s spatially separated antennas. Pet.
51; Fischer II Decl. ¶ 152. The preamble and first limitation are not disputed
by Patent Owner. Cf. PO Resp. 76.
The second limitation of claim 34 (element 34b) has several sub-
elements. Petitioner shows that the “first radio interface circuit” is met by
Ito’s mobile base device MSS, in which signals are received through
Adachi’s plurality of spatially separated antennas. IPR1644 Pet. 52 (citing
Fischer II Decl. ¶ 155). Petitioner shows that the “first plurality of code
division multiple access (CDMA) cellular signals transmitted from a
plurality of base station radio interface circuits” is met by the modification
of Ito’s MSS “to include the CDMA capabilities of Gilhousen501.” Id. at 53
(citing Fischer II Decl. ¶ 157). Petitioner shows that the element
“configured to transmit, at a cellular transmission power level, a second
plurality of CDMA cellular signals” is met by Ito’s transmitter-receiver unit.
Id. (citing Fischer II Decl. ¶ 158). According to Petitioner, the MSS of Ito
would be “modified to include the processing functionality of
Gilhousen501.” Id. (citing Fischer II Decl. ¶ 159).
Patent Owner’s response repeats arguments previously addressed. Cf.
PO Resp. 76–79. Specifically, Patent Owner refers back to the argument
that “Gilhousen501 does not disclose any apparatus (moving base station) of
any type, let alone let alone an apparatus that comprises ‘a first radio
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interface circuit configured to receive . . . a first plurality of code division
multiple access (CDMA) cellular signals transmitted from a plurality of base
station radio interface circuits.’” Id. at 76 (citing Section X.C.1 of its
Response). We discuss this argument in Section III.B.1.d, supra. We are
not persuaded by this argument because it does not respond to Petitioner’s
contentions based on Ito’s disclosure of moving base station MSS in
combination with Gilhousen501 and Adachi.
Patent Owner also repeats the arguments that Ito, Gilhousen501, and
Adachi do not disclose a mobile device. PO Resp. 77–79. We address these
arguments, including the contention based on a claim construction we have
rejected, supra, in connection with our discussion of claim 10 in Section
III.B.1.d.
Petitioner identifies the third limitation (element 34c) of claim 34 (“a
second radio interface circuit configured to transmit a first mobile device
signal”) with Ito’s transmitter-receiver unit and Adachi’s antennas. Pet. 54–
55 (citing Fischer II Decl. ¶¶ 161–162). Petitioner shows the remaining
parts of this limitation are met by Gilhousen501 alone, Gilhousen501 and
Adachi, or Ito, Gilhousen501, and Adachi. IPR1644 Pet. 55–57; Fischer II
Decl. ¶¶ 163–167.
Petitioner identifies the fourth limitation (element 34d) of this claim
(“the second plurality of CDMA cellular signals including second data
extracted from the second mobile device signal”) with register circuit 51 in
Ito, which “temporarily stores digital speech signals sent from the reception
system of the second transmitter-receiver unit.” IPR1644 Pet. 58 (quoting
Ex. 1003, 7:25–28).
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Petitioner identifies the fifth limitation (element 34e) and final
limitation (element 34f) with Ito’s MSS and PSS, which “move with a car—
relative to the Earth and the fixed base station.” Pet. 58 (citing Fischer II
Decl. ¶¶ 169–172). Patent Owner does not separately address these
contentions.
Petitioner asserts: “Claim 66 is substantively the same as claim 34.”
IPR1644 Pet. 58. Thus, Petitioner’s analysis of claim 66 “relies on the same
disclosures and reasoning” as its analysis of claim 34 in light of Ito,
Gilhousen501, and Adachi. Id. (citing Fischer II Decl. ¶ 172).
Petitioner acknowledges two differences between claims 34 and 66.
Id. at 59. Petitioner asserts both are met by Ito. Id. (citing Fischer II Decl.
¶¶ 173–174). Patent Owner does not separately address Patent Owner’s
analysis of claim 66
We are persuaded by Petitioner’s showing and find that the claim
elements of claims 34 and 66 are disclosed by the teachings of Ito,
Gilhousen501 and Adachi, and further, that Petitioner has presented a
sufficient rationale (summarized supra) for combining those teachings with
a reasonable expectation of success. IPR1644 Pet. 58–59. Based on
Petitioner’s analysis, summarized above, we find Petitioner has shown by a
preponderance of evidence that claims 34 and 66 would have been obvious
in light of Ito, Gilhousen501, and Adachi.
D. Summary and Conclusion
After consideration of the record including Petitioner’s and Patent
Owner’s arguments and evidence, we determine that for the reasons given,
Petitioner has proven by a preponderance of the evidence that claims 10, 12,
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13, 18–21, 23, 25, 26, 34, 44, 45, 49–55, and 66 of the ’543 patent would
have been obvious over Ito, Gilhousen501, and Adachi.
E. Other Grounds
As noted above in Section I.G, Petitioner presents additional
challenges to claims 10, 12, 13, 18, 20, 21, 23, 25, 26, 34, 44, 45, 49, 51–55,
and 66 of the ’543 patent. Because we determine that those claims are not
patentable in light of Ito, Gilhousen501, and Adachi, for the reasons
discussed above, we do not separately assess the patentability of those
claims based on the remaining grounds in this proceeding. 35 U.S.C.
§ 318(a) (2018) (“If an inter partes review is instituted and not dismissed
under this chapter, the Patent Trial and Appeal Board shall issue a final
written decision with respect to the patentability of any patent claim
challenged by the petitioner and any new claim added under section
316(d).”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding that an administrative agency is at liberty to reach a decision based
on a single dispositive issue).
IV. CONSTITUTIONAL CHALLENGE
Patent Owner contends that “adjudication of the ’543 patent violates
the U.S. Constitution.” PO Resp. 79.
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
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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 adjudication
“violates the U.S. Constitution.” PO Resp. 79.
V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 10, 12, 13, 18–
21, 23, 25, 26, 34, 44, 45, 49–55, and 66 of the ’543 patent are not
patentable.
A summary of our conclusions is set forth in the table below.

10 Because we determine that all of the challenged claims are unpatentable
on these grounds, we decline to address the remaining grounds in the
Petitions.
Claims
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
10, 12, 13, 18–
21, 23, 25, 26,
44, 45, 49–55
103(a) Ito, Gilhousen501,
Adachi10
10, 12, 13,
18–21, 23, 25,
26, 44, 45,
49–55

10, 12, 13, 18,
20, 21, 23, 25,
26, 44, 45, 49,
51–55
103(a) Gilhousen761,
Gilhousen501,
Adachi

34, 66 103(a) Ito, Gilhousen501,
Adachi10

34, 66
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34, 66 102(a) Gilhousen761,
Gilhousen501,
Adachi

Overall
Outcome
10, 12, 13,
18–21, 23, 25,
26, 34, 44, 45,
49–55, 66

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For PETITIONER:
Jim Glass
John McKee
Sean Gloth
QUINN EMANUEL URQUHART & SULLIVAN, LLP
jimglass@quinnemanuel.com
johnmckee@quinnemanuel.com
seangloth@quinnemanuel.com

For PATENT OWNER:

Charles Gavrilovich
GAVRILOVICH, DODD & LINDSEY, LLP
chuck@gdllawfirm.com

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