Carucel Investments, LP

Patent Trials and Appeals Board

Jan 6, 2021

IPR2019-01079 (P.T.A.B. Jan. 6, 2021)

Trials@uspto.gov Paper 36
571-272-7822 Entered: January 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
___________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

UNIFIED PATENTS, INC.,
Petitioner,

v.

CARUCEL INVESTMENTS, L.P.,
Patent Owner.

___________

IPR2019-01079
Patent 7,979,023 B2
____________

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

GIANNETTI, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 C.F.R. § 42.71(d)

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Patent 7,979,023 B2
2
I. INTRODUCTION
Patent Owner Carucel Investments, L.P. requests reconsideration of
our Final Written Decision (Paper 33, “Final Dec.”) regarding claims 1, 11,
and 16–23 of U.S. Patent No. 7,979,023 B2 (Ex. 1001, the “’023 patent”).
Paper 34 (“Req. Reh’g”). Patent Owner’s grounds for seeking rehearing are
that the Final Written Decision “misapprehends and overlooks (1) the proper
scope of the term ‘mobile device’ . . . and (2) under the proper construction
of ‘mobile device’ that each of Petitioner’s prior art references do not
disclose the limitation of ‘mobile device’ as required by the Challenged
Claims of the ’023 Patent.” Req. Reh’g 1.
For the reasons that follow, Patent Owner’s request for rehearing is
denied.
II. BACKGROUND
Unified Patents Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 1, 11, and 16–23 (the “challenged claims”) of the
’023 patent. Paper 2 (“Pet.”). Under 35 U.S.C. § 314, we instituted this
inter partes review as to all of the challenged claims and all grounds raised
in the Petition. Paper 9.
Following institution, Patent Owner filed a Response. Paper 16 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 22, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 26, “PO
Sur-reply”).
In our Final Written Decision, we determined Petitioner has shown by
a preponderance of the evidence that all challenged claims of the ’023 patent
are unpatentable. Final Dec. 2–3.

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III. ANALYSIS
A. Applicable Legal Standard
The standard for a request for rehearing of a Final Written Decision is
set forth in 37 C.F.R. § 42.71(d), which provides in relevant part:
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
A rehearing request is not an opportunity for the requesting party to reargue
its case or merely to express disagreement with the Final Written Decision.
Nor is it an opportunity for the moving party to present new arguments that
were not in its original submissions.
B. The ’023 Patent
According to the ’023 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.”
Ex. 1001, 1:56–58.
The ’023 patent addresses this problem by providing “a moving base
station which is interposed between a moving mobile telephone unit and a
fixed base station.” Id. at 2:66–3:2. According to the ’023 patent, the
advantage of this system is reducing the number of handoffs by moving the
base station in the same direction as the mobile unit. Id. at 5:10–18.
C. Illustrative Claim
Claim 1 is directed to a moving base station or “apparatus,” which it
describes as follows:
1. An apparatus configured to move relative to Earth, the
apparatus comprising:
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a plurality of spatially separated antennas;
a receiver configured to receive mobile device signals from a
mobile device through the plurality of spatially separated
antennas; and
a transmitter configured to transmit radio frequency signals
corresponding to the mobile device signals to a base station.
Ex. 1001, 11:29–37.
Patent Owner agrees that the “apparatus” recited in challenged claims
is the moving base station. Paper 32, 96:22–97:3.
D. Patent Owner’s Contentions
The Rehearing Request focuses exclusively on the proper construction
of the term “mobile device,” a term that appears in all of the challenged
claims. Req. Reh’g 1. Patent Owner requests that the “plain and ordinary
meaning” of the term “mobile device” be applied, which is, according to
Patent Owner: “a device that must register with and be able to directly
communicate with the cellular network.” PO Resp. 13; Req. Reh’g 2.
According to Patent Owner, our Final Written Decision “misapprehends and
overlooks the proper scope of the term ‘mobile device’ by improperly
disregarding at least Patent Owner’s proposed construction of ‘mobile
device’ and the ’023 Patent’s explicit support for this proposed
construction.” Req. Reh’g 2–3 (footnote omitted).
As discussed more below, in the Final Written Decision, we provided
a detailed analysis of Patent Owner’s arguments and rejected Patent Owner’s
proposed limitations for “mobile device,” determining that the ordinary
meaning should apply and no further construction was necessary. Final Dec.
13–23.
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Patent 7,979,023 B2
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E. The Final Written Decision
Our analysis of “mobile device” in the Final Written Decision was
guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). Final Dec. 10–11. We observed that 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.” Id. at 10
(quoting Phillips, 415 F.3d at 1312–13). We said that “[i]n 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.” Id. at 11 (citing
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006)). We cautioned that extrinsic evidence is “less significant
than the intrinsic record in determining ‘the legally operative meaning of
claim language.’” Id. (citing Phillips, 415 F.3d at 1317).
In summary, for the reasons that follow, we are not persuaded that our
analysis of “mobile device” under Phillips was incorrect, or that we
overlooked or misapprehended Patent Owner’s arguments or evidence in
that analysis.
1. The Claim Language Does Not
Support Patent Owner’s Proposed Claim Construction
After reviewing the parties’ contentions (Final Dec. 13–15), we began
our analysis of “mobile device” with the language of the claims, as
instructed by Phillips, 415 F.2d at 1312. Final Dec. 15. Analyzing the
challenged claims, we found that the language of the claims does not support
Patent Owner’s construction. Final Dec. 15–16. We observed that the
challenged claims themselves are not directed to the mobile device, but to
the mobile base station, described in the claims as “[a]n apparatus
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configured to move relative to the Earth.” Id. at 15 (citing Ex. 1001, 11:29,
12:8). We observed that the claims do not specify a mobile device “that
must register with and be able to directly communicate with the cellular
network.” Id.
We found that Patent Owner’s contention that the mobile device must
be able to communicate directly with the cellular network was contradicted
by the claims. Final Dec. 15–16. In the claims, the mobile device does not
communicate with a fixed base station or fixed port directly, but only
through the intermediary moving base station. Id. at 16 (quoting language in
claims 1 and 11).
Furthermore, we found that the challenged claims do not associate the
signals transmitted between the mobile device and the mobile base station
with a cellular network, or identify the mobile device with a cellular
network. Final Dec. 16. As shown by our analysis of the claim language,
the only functionality related to the “mobile device” in the claims of the ’023
patent is the ability of the apparatus (the moving base station) to transmit
radio signals to and receive radio signals from the “mobile device.” Id.
In reaching these conclusions, we focused on the language of the
claims, as Phillips requires. In contrast, Patent Owner’s responses to the
Petition avoided any discussion of the claim language. Instead, Patent
Owner asserted that “Petitioner’s analysis erroneously attempts to . . .
broadly construe the term ‘mobile device’ in a vacuum” and “disregard the
’023 Patent specification’s disclaimer or disavowal of the term ‘mobile
device.’” PO Sur-reply 6–7.
The pattern of Patent Owner downplaying the claim language is
repeated in the Rehearing Request. Req. Reh’g 12–14. Thus, Patent
Owner’s brief discussion of the claims in the Rehearing Request focuses on
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describing what Patent Owner presents as the “scope and advantages” of the
alleged invention of the ’023 patent, untethered to the language of the
claims. Req. Reh’g 12–14. The only substantive discussion of claim
language in the Rehearing Request is Patent Owner’s concession that “the
claims of the ’023 Patent require the apparatus/movable base station to
communicate directly with the cellular network (and not the ‘mobile
device’).” Id. at 13 (emphasis added).
We are not persuaded that, when we concluded that the language of
the challenged claims does not support Patent Owner’s construction of
“mobile device,” we overlooked or misapprehended Patent Owner’s
arguments or evidence.
2. The Specification Does Not
Support Patent Owner’s Proposed Claim Construction
After reviewing Patent Owner’s arguments in the Final Written
Decision, we found that the ’023 patent specification does not support Patent
Owner’s narrow construction of “mobile device” as a phone capable of
communications directly with a cellular network. Final Dec. 16–18.
Patent Owner devotes most of its Rehearing Request to arguments
challenging this conclusion based on the ’023 patent specification. Req.
Reh’g 3–12. Patent Owner presents four main arguments. The first is that
the Board erred in finding that the specification of the ’023 patent “does not
require a ‘mobile device’ to register with the cellular network.” Id. at 3 (the
“registration” requirement). Second, Patent Owner contends the Board erred
in finding that the ’023 patent specification “does not teach that a ‘mobile
device’ must be capable of directly communicating with a cellular network
via a fixed base station.” Id. at 4–5 (the “direct communication”
requirement). Third, Patent Owner asserts “[t]he Board erred in finding that
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8
the ’023 Patent does not exclusively relate to improving the wireless
connections of mobile devices within ‘cellular telephone systems.’” Id. at
7–8 (alterations and internal quotation marks omitted) (the “exclusively
cellular” requirement). Fourth, Patent Owner argues the Board erred in
finding that “the ’023 Patent improv[es] wireless connections involving non-
cellular devices, such as radios and telephones.” Id. at 10 (alteration in
original) (the “no non-cellular improvement” requirement).
The common thread in all these arguments is that they are based on
statements culled from the specification, and not on language in the claims.
Patent Owner’s Rehearing Request is fundamentally flawed because it is
premised entirely on what the ’023 patent allegedly teaches, and not what
the patent claims. Even then, the Rehearing Request fails because Patent
Owner’s arguments based on the patent specification were thoroughly
considered and addressed in detail in our Final Written decision. Final
Dec. 13–23. Patent Owner fails to point out with particularity anything that
was overlooked or misapprehended in this analysis, as required by 37 C.F.R.
§ 42.71(d). Instead, Patent Owner merely expresses its disagreement with
the Board’s conclusions, and proceeds to reargue points and evidence
already considered and rejected in the Final Written Decision. This
approach is not proper in a rehearing request.
a. Patent Owner’s “Registration Requirement” Arguments
Were Not Misapprehended or Overlooked
Patent Owner’s Response to the Petition asked us to construe “mobile
device” as a device that must “register with . . . the cellular network.” PO
Resp. 13. Patent Owner’s Rehearing Request makes the same argument.
Req. Reh’g 3–4.
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Patent 7,979,023 B2
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To support this construction, Patent Owner’s Response to the Petition
relied on the ’023 patent specification: “The ’023 Patent specification
teaches that a mobile device must be capable of directly communicating with
either a fixed cellular base station or a moving base station.” PO Resp. 13
(citing Ex. 1001, 4:48–51). According to Patent Owner, “the mobile unit’s
capability to be switched back-and-forth between either a direct connection
with the fixed base station or a connection with a moving base station is
discussed repeatedly and throughout the specification.” Id. (citing Ex. 1001,
10:65–11:3). Patent Owner cited a portion of the ’023 patent that describes
registration by the mobile device (referred to in the patent as a “mobile
unit”):
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, 9:62–66 (partially quoted at PO Resp. 14–15). Patent Owner also
relied on testimony from its expert, Mr. Lanning. See PO Resp. 13–14
(citing Lanning Decl. ¶¶ 46–48, 55–57, 60–62, 65–69).
Patent Owner’s Rehearing Request relies on the same argument, even
using the same quotation from the patent specification and also citing
testimony from Mr. Lanning. Req. Reh’g 3.
We considered this argument and Mr. Lanning’s testimony and
addressed them in our Final Written Decision (at pp. 22–23). We were not
persuaded by Patent Owner’s position that the specification requires a
mobile device to “register . . . with the cellular network.” Final Dec. 22–23
(quoting PO Sur-reply 5). While we found that registration with a base
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station is mentioned in the ’023 patent specification (see PO Sur-reply 8), we
also found that the registration process described there occurs only “[w]hen
a mobile unit set is first powered up or first enters a service area,” and
involves the mobile device “transmitting its address to the moving base
station, not to the fixed base stations.” Final Dec. 23 (citing Ex. 1001, 9:62–
67 (“The address will be received by the closest moving base station 30 and
transmitted . . . to the telephone network”)).
We also addressed Petitioner’s reliance on authorities such as Bell
Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262
F.3d 1258 (Fed. Cir. 2001), for the proposition that the written description
“can provide guidance as to the meaning of the claims.” Final Dec. 21; cf.
Req. Reh’g 3 n.4. We remarked that this point is not disputed. Final
Dec. 21. But we found that Bell Atlantic is of no help to Patent Owner
because, unlike in Bell Atlantic, the written description of the ’023 patent
does not support Patent Owner’s construction. Id.
We also addressed On Demand Machine Corp. v. Ingram Industries,
Inc., 442 F.3d 1331 (Fed. Cir. 2006), in our Final Written Decision. Final
Dec. 21–22; cf. Req. Reh’g 14 n.27. We concluded that 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.” Final Dec. 21 (quoting On Demand, 442 F.3d at 1340).
However, we found that the scope of the invention and its advantages as
described in the ’023 patent specification center on the moving base station,
not the mobile device, and concluded that On Demand’s exception to the
normal requirement for an explicit disavowal of claim scope is not
applicable here. Id.
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Patent 7,979,023 B2
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Thus, after considering the arguments and evidence presented, we
concluded that Patent Owner’s analysis of the ’023 patent specification does
not support its contention that the mobile device must register with the fixed
base station. Final Dec. 23. Further, we found that to the extent the ’023
patent discloses registration by the mobile device, it describes registering
with the moving base station and not with the fixed base stations. Id. (citing
Ex. 1001, 9:65–67). The actual registration with the fixed base station is
handled by the moving base station. Id.
We are not persuaded by Patent Owner’s Rehearing Request, which
largely rehashes the arguments we considered and rejected in our Final
Written Decision, that we misapprehended or misconstrued Patent Owner’s
arguments in reaching that conclusion.
b. Patent Owner’s “Direct Communication” Arguments
Were Not Misapprehended or Overlooked
In our Final Written Decision, we found that Patent Owner’s
contention that the mobile device must be able to communicate directly with
the cellular network was “contradicted by the intrinsic record.” Final
Dec. 15–16. We focused on the language of the claims and found that the
recited mobile devices do not communicate with a fixed port directly. Final
Dec. 16 (quoting independent claims 1 and 11). Thus, we found in claim 1
that it is the mobile base station (not the mobile device) that has “a receiver
configured to receive mobile device signals from a mobile device through
the plurality of spatially separated antennas” and “a transmitter configured to
transmit radio frequency signals corresponding to the mobile device signals
to a base station.” Id. (citing Ex. 1001, 11:32–37) (emphasis added).
Similarly, in claim 11, we found that it is the mobile base station (not the
mobile device) that has: “a receiver configured to receive fixed port signals
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from a fixed port through the plurality of spatially separated antennas;” and
“a transmitter configured to transmit radio frequency signals to a mobile
device.” Id. (citing Ex. 1001, 12:8–16) (emphasis added). Patent Owner’s
Rehearing Request, as it must, acknowledges that “the claims of the ’023
Patent require the apparatus/movable base station to communicate directly
with the cellular network (and not the ‘mobile device’).” Req. Reh’g 13.
Furthermore, we found that the claims do not associate the signals
transmitted between the mobile device and the mobile base station with a
cellular network, or identify the mobile device with a cellular network.
Final Dec. 16. As shown by our analysis of the claim language above, the
only functionality related to the “mobile device” in the claims of the ’023
patent is the ability of the apparatus (the moving base station) to transmit
radio signals to and receive radio signals from the “mobile device.” Id.
Finally, we relied on an embodiment described in the patent where the
mobile device is prevented from communicating directly with the fixed
ports. Id. at 17–18 (citing Ex. 1001, 3:32–36). We concluded that “Patent
Owner’s analysis of the ’023 patent specification does not support its
contention that the mobile device communicates directly with a cellular
system.” Id. at 23.
Patent Owner’s Rehearing Request asserts the record does not support
this conclusion. Req. Reh’g 5–8. Patent Owner cites portions from the
specification that were previously considered and discussed in the Final
Written Decision. Final Dec. 22. There, we concluded that Patent Owner’s
listing of “examples” from the ’023 patent that discuss communications with
the fixed base stations when traveling at speeds of less than thirty miles per
hour do not describe the communications as cellular communications or the
fixed base stations as cellular sites, stating only that their operation is
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“essentially the same as that of a standard fixed base station.” Id. (citing
Ex. 1001, 10:63–65).1
More importantly, even if these disclosures in the ’023 patent
specification were limited to cellular communications when the mobile
device is directly communicating with a fixed base station, as Patent Owner
contends, that direct communication is not what is claimed. Rather, the
challenged claims are directed to an “apparatus” (a moving base station) that
Patent Owner describes as “an intermediary between cell towers and mobile
devices.” PO Resp. 2 (citing Ex. 2102, 12). As noted above, and as Patent
Owner acknowledges in its Rehearing Request, “the claims of the ’023
Patent require the apparatus/movable base station to communicate directly
with the cellular network (and not the ‘mobile device’).” Req. Reh’g 13.
Thus, the focus must be on the claimed “apparatus” and its radio interface to
the mobile device, and not on some general discussions of cellular systems.
We are not persuaded by the Rehearing Request that we
misapprehended or overlooked Patent Owner’s arguments or evidence in
reaching our conclusion that the claims do not require a mobile unit that
communicates directly with the cellular network. Instead, Patent Owner’s
arguments and evidence were fully considered and rejected.
c. Patent Owner’s “Exclusively Cellular” Arguments
Were Not Misapprehended or Overlooked
In our Final Written Decision, we stated that “[t]here is no dispute that
improving cellular technology is included among the goals described in the
’023 patent.” Final Dec. 22. However, we found that Patent Owner failed to

1 We noted that Patent Owner misquoted the description of the base station
as a “standard fixed base station” by inserting “cellular” before “fixed base
station.” Final Dec. 22 n.5 (citing PO Sur-reply 9).
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support its more limiting argument that the ’023 patent “explicitly and
exclusively relates to improving the wireless connections of mobile devices
within ‘cellular telephone systems.’” Id. (citing PO Sur-reply 11 (original
emphasis omitted)). We found that the specification of the ’023 patent
reveals a broader goal of improving wireless connections involving non-
cellular devices as well. Id.
We observed further (Final Dec. 17) that while the ’023 patent does
refer to base stations in a “typical cellular telephone system” as “cell site[s]”
(Ex. 1001, 4:63–64), it also describes the radio interfaces between the
mobile devices and the moving base stations in more general terms. Id. at
6:48–54. Thus, the ’023 patent describes the radio interface between the
mobile units and both the moving and fixed base stations not as a cellular
interface, but as “a standard radio interface, well known in the art.” Id. at
6:48–51. This is consistent with the patent’s stated goal of providing “an
infra structure which allows use of . . . a cordless phone.” Id. at 2:46–48.
Patent Owner argues in the Rehearing Request that the Board erred in
finding that the ’023 patent does not “exclusively relate[] to improving the
wireless connections of mobile devices within ‘cellular telephone systems,’”
and cites several passages in the patent referring to cellular communications.
Req. Reh’g 7–8. Patent Owner made a similar argument previously, relying
on some of the same references, which we addressed in the Final Written
Decision. Final Dec. 22. We did not find these references to cellular
systems to be persuasive support for Patent Owner’s limiting argument that
the ’023 patent “explicitly and exclusively relates to improving the wireless
connections of mobile devices within ‘cellular telephone systems.’” Id.
One passage cited by Patent Owner refers to a CDMA-based cellular
standard (IS-95), indicating that it “may” be the interface between the
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mobile unit and the moveable base station. Req. Reh’g 9 (citing Ex. 1001,
7:4–6). By making use of a cellular standard optional for the base station-
mobile device interface, this description in the patent does not support Patent
Owner’s argument that the patent is “exclusively” related to improving the
wireless connections of mobile devices within cellular telephone systems.
Id. at 7.
The other cited quotes are general references to cellular systems. We
found after a lengthy discussion of Patent Owner’s contentions in the Final
Written Decision that such general references in the specification do not rise
to the level of a clear and unmistakable disavowal of claim scope. Final
Dec. 19–22. The specification, in fact, supports the Board’s conclusion that
communications between the mobile unit and the moving base station are
not required to follow cellular protocols. Thus, as noted, the ’023 patent
states the interface between the mobile units and the moving base stations
“is a standard radio interface.” Ex. 1001, 6:48–51. And as discussed infra,
the patent explains that this interface “may” (not “must”) follow the cellular
protocol IS-95, indicating that it is not “exclusively” required to do so. Id. at
7:4–6; cf. PO Sur-reply 9.
d. Patent Owner’s “No Non-Cellular Improvements” Arguments
Were Not Misapprehended or Overlooked
Patent Owner asserts in its Rehearing Request that “[t]he Board erred
in finding that the ’023 Patent ‘improv[es] wireless connections involving
non-cellular devices, such as radios and telephones.’” Req. Reh’g 10
(alteration in original). Patent Owner argues this error is the result of the
Board’s “relying on a misapprehension of various excerpts within the ’023
Patent specification.” Id. This is a variation on Patent Owner’s “exclusively
cellular” argument, infra, and is contrary to Patent Owner’s earlier position
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in this proceeding. See PO Resp. 2 (“The asserted claims of the ’023 Patent
cover a movable base station or apparatus configured to provide important
benefits to mobile devices, such as smartphone, tablet and laptop users.”)
In our Final Written Decision, after considering Patent Owner’s
arguments, we did not see in the specification of the ’023 patent a clear
indication supporting Patent Owner’s contention that conventional non-
cellular devices such as cordless non-cellular phones should be excluded
from “mobile devices.” Final Dec. 17. We cited Petitioner’s observation
that “[t]he specification never gives ‘mobile device’ a specialized meaning”
that would exclude cordless phones, and in fact “describes cell terminals as
cordless phones.” Id. at 14 (quoting Pet. Reply 4). We observed that in the
Background section, the ’023 patent describes the goal of the patent as
encompassing “all applications” including cordless phones: “What is
desirable is an infra structure which allows [the] use of such terminals in all
applications, whether in the home or office as a cordless phone . . . .” Id. at
17 (quoting Ex. 1001, 2:46–48 (emphases added in original)).
We also found that the ’023 patent describes the radio interfaces
between the mobile devices and the moving base stations in generic terms,
as a “standard radio interface, well known in the art,” and not limited to
cellular interfaces. Final Dec. 17 (citing Ex. 1001, 6:48–54). We found that
this is consistent with the patent’s stated goal of providing “an infra structure
which allows the use of . . . a cordless phone.” Id. (citing Ex. 1001, 2:46–
48.) We found further support in the ’023 patent’s description of an
embodiment where the mobile device is actually prevented from
communicating directly with the cellular network through the fixed ports.
Final Dec. 17 (citing Ex. 1001, 3:21–36); see also Section III.E.2.b, supra.
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We did not find support for a “disclaimer or disavowal” of claim
scope for the term “mobile device.” Final Dec. 19 (citing PO Sur-reply 6–
7). As discussed supra, the ’023 patent claims are directed to a moving base
station communicating with the cellular network, and the specification
describes an embodiment which prevents the mobile unit from
communicating with the fixed ports. “To disavow claim scope, the
specification must contain ‘expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.’” Retractable Techs., Inc. v.
Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting
Epistar Corp. 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). We found that the references to cellular
communications in the ’023 patent, such as those cited in the Rehearing
Request at pages 8–9, do not support the “no non-cellular improvements”
argument, and do not rise to the level of a clear and unmistakable disavowal.
Final Dec. 22. As discussed supra, there is no dispute that improving
cellular technology is included among the goals described in the ’023 patent.
Having reviewed the evidence, we found, based on the detailed analysis
above, that the claims and the specification of the ’023 patent reveal a
broader goal of improving wireless connections involving non-cellular
devices as well. Id.
We are not persuaded by Patent Owner’s characterization of our
detailed analysis of the ’023 patent specification in the Final Written
Decision as “misplaced” and “misapprehend[ing]” the specification. Req.
Reh’g 10. Patent Owner’s explanations of the specification do not persuade
us that we have erred by not excluding non-cellular mobile devices such as
radios and telephones. Id. at 11. For example, we are not persuaded by
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Patent Owner’s explanation that the reference to cordless phones in the
specification really means mobile devices “like a cordless phone,” except
that they are cellular. Id. Apart from being contrary to its earlier position in
this proceeding, Patent Owner does not provide any evidentiary support for
its argument that “a cellular system is the only system that can facilitate
communication to the same mobile device in all of the exemplary
applications set forth in the ’023 Patent specification.” Id.
Even further, whether or not Patent Owner had provided evidentiary
support for that statement, it is undisputed that the claims do not cover direct
communication between the mobile device and the cellular network. Rather,
as Patent Owner acknowledges, “the claims of the ’023 Patent require the
apparatus/movable base station to communicate directly with the cellular
network (and not the ‘mobile device’).” Id. at 13.
Similarly, Patent Owner’s assertion that the “standard radio interface”
between the moving base station and the mobile device uses the cellular
IS-95 standard (id. at 11) ignores the use of the word “may,” making use of
the cellular standard optional. See Ex. 1001, 7:4–6; see also discussion
supra.
Finally, we are not persuaded that the embodiment of the ’023 patent
where communication between the mobile device and the cellular network is
prevented (see Final Dec. 17–18 and discussion supra) should not be
considered in our analysis. Req. Reh’g 12. The Federal Circuit has
observed that “there is a strong presumption against a claim construction that
excludes a disclosed embodiment.” Nobel Biocare Servs. AG v Instradent
USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018).
We are not persuaded that we misapprehended or overlooked these
arguments in our Final Written Decision.
IPR2019-01079
Patent 7,979,023 B2
19
3. The ’904 Patent Prosecution History Does Not
Support Patent Owner’s Proposed Claim Construction
Phillips requires us also to consider the relevant prosecution history in
construing the claims. 415 F.2d at 1317. Petitioner here did not advance an
argument based on prosecution history. However, in our Final Written
Decision in IPR2019-01103 (“IPR1103”), we determined that the
prosecution history of related U.S. Patent 7,221,904 is relevant to the
construction of “mobile device” in the ’023 patent, and we considered it in
our Final Written Decision there. IPR1103 Paper 28, 16–17. We discuss the
prosecution history here because the Rehearing Request asserts “the Board
erred on its reliance on its Final Written Decision in IPR2019-01103—
finding that according to the prosecution history [of the related ’904 Patent,
the term ‘mobile device’] can be conventional radios and telephones.” Req.
Reh’g 14 (emphasis and internal quotation marks omitted) (alterations in
original).
We observed in IPR2019-01103 that during prosecution of the ’904
patent, in an appeal brief to the Board, the applicant argued to the Board that
non-cellular radios and telephones are 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.” IPR1103 Paper 28, 16 (quoting IPR1103 Ex. 1023, 181). We
found that this prosecution history of the ’904 patent describing the mobile
devices as “telephones” and “radios” does not support Patent Owner’s
construction restricting such devices to “a device that must register with and
be able to directly communicate with the cellular network.” Id. at 16–17.
Patent Owner’s Rehearing Request asserts this conclusion “is not
supported by the record,” and cites as an example the fact that “the
IPR2019-01079
Patent 7,979,023 B2
20
prosecution history of the ’904 Patent does not even use the term
‘conventional’ in the ‘summary of the invention,’” and “the appellant only
described a brief summary of the invention, and not a definition for the term
‘mobile device.’” Req. Reh’g 14–15. We are not persuaded by these
arguments that our consideration of the prosecution history was an error.
Patent Owner has relied on statements in the specification that do not
constitute lexicographic definitions of “mobile device.” In any event, the
Federal Circuit has warned against disregarding such statements in the
prosecution history: “The public notice function of a patent and its
prosecution history requires that a patentee be held to what he declares
during the prosecution of his patent.” Springs Window Fashions LP v. Novo
Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
We are not persuaded by Patent Owner that we have misapprehended
or overlooked anything in our analysis of the relevant prosecution history.
IV. CONCLUSION
We have considered Patent Owner’s arguments seeking rehearing of
our rejection of Patent Owner’s proposed construction of term “mobile
device,” which resulted from analyzing the claims, specification, and
prosecution history of the ’023 patent in accordance with Phillips. We are
not persuaded that we have misapprehended or overlooked anything in our
analysis. Patent Owner has not identified with specificity the matters it
believes the Board misapprehended or overlooked, but instead has used its
Rehearing Request as an opportunity to re-argue issues decided in favor of
Petitioner.
Because we deny Patent Owner’s Rehearing Request, we further
determine that Patent Owner’s argument that “each of petitioner’s grounds
fail[s]” (Req. Reh’g 15) is without merit.
IPR2019-01079
Patent 7,979,023 B2
21
V. ORDER
In view of the foregoing, it is:
ORDERED THAT Patent Owner’s Request for Rehearing of the
Board’s Final Written Decision is denied.

IPR2019-01079
Patent 7,979,023 B2
22
FOR PETITIONER:

Michelle A. Callaghan
Roshan Mansinghani
UNIFIED PATENTS INC.
michelle@unifiedpatents.com
roshan@unifiedpatents.com

Raghav Bajaj
David L. McCombs
HAYNES AND BOONE, LLP
Raghav.bajaj.ipr@haynesboone.com
David.mccombs.ipr@haynesboone.com

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

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

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