Carucel Investments, LP

Patent Trials and Appeals Board

Nov 6, 2020

IPR2019-01102 (P.T.A.B. Nov. 6, 2020)

Trials@uspto.gov Paper 28
571-272-7822 Entered: November 6, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,

v.

CARUCEL INVESTMENTS, L.P.,
Patent Owner.
____________

IPR2019-01102
Patent 7,848,701 B2
____________

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

KORNICZKY, Administrative Patent Judge.

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

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I. INTRODUCTION
Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition for
an inter partes review of claims 10, 15–18, 31, and 33–35 of U.S. Patent No.
7,848,701 B2 (Ex. 1001, “the ’701 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 challenged claims and all grounds raised in the
Petition. Paper 7 (“Institution Dec.”).
Following institution, Patent Owner filed a Response. Paper 12 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 19, “Pet. Reply”) and Patent Owner filed a Sur-reply (Paper 23, “PO
Sur-reply”).
On September 2, 2020, we held a consolidated oral hearing with
several related cases involving Petitioner and Patent Owner: IPR2019-
01079 (Patent 7,979,023 B2), IPR2019-01103 (Patent 7,979,023 B2),
IPR2019-01101 (Patent 7,221,904 B1), and IPR2019-01105 (Patent
8,718,543 B2). A transcript of the hearing is included in the record. Paper
27 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a).
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by
a preponderance of the evidence. See 35 U.S.C. § 316(e) (2016); 37 C.F.R.
§ 42.1(d). For the reasons below, we determine that Petitioner has
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demonstrated by a preponderance of the evidence that claims 10, 15–18, 31,
and 33–35 of the ’701 patent are unpatentable.

II. BACKGROUND
A. Related Proceedings
According to Petitioner and Patent Owner, the ’701 patent (as well as
other patents) is involved in these district court litigations:
(1) Carucel Investments LP v. Fiat Chrysler Automobiles US LLC et
al., Case No. 3-18-cv-03331 (N.D. Tex., filed Dec. 18, 2018),
(2) Carucel Investments LP v. General Motors Company, Case No. 3-
18-cv-03332 (N.D. Tex., filed Dec. 18, 2018 ),
(3) Carucel Investments LP v. Volkswagen Group of America Inc.,
Case No. 3-18-cv-03333 (N.D. Tex,. filed Dec. 18, 2018 ), and
(4) Carucel Investments LP v. Mercedes-Benz USA LLC et al., Case
No. 3-18-cv-03334 (N.D. Tex., filed Dec. 18, 2018). Pet. 3; Prelim. Resp. 3.
The parties also state that the ’701 patent is related to certain patents
involved in inter partes reviews:
(1) U.S. Patent No. 7,221,904: IPR2019-01298, -01101, -01573,
01635;
(2) U.S. Patent No. 7,979,023: IPR2019-01079, -01103, -01404;
(3) U.S. Patent No. 8,463,177: IPR2019-01104, -01440; and
(4) U.S. Patent No. 8,718,543: IPR2019-01105, -01106, -01441. See
Pet. 3; Paper 4, 1.
B. Real Parties-in-Interest
Petitioner identifies itself as the real party in interest. Pet. 3. Patent
Owner identifies itself as the real party in interest. Paper 4, 1.
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C. The ʼ701 Patent (Ex. 1001)
The title of the ʼ701 patent is “Mobile Communication System with
Moving Base Station.” Ex. 1001, code (54). The ’701 patent relates to
mobile telephone systems and states that a “problem with existing mobile
telephone systems is the considerable time required in handoffs,” which is
the process by which a mobile unit is transferred from one cell site to
another as it moves through a network. Id. at 1:35–43, 1:54–55. According
to the ’701 patent, in urban areas, the number of cells is increased and cell
size is decreased to accommodate more users. Id. at 1:55–65. The ’701
patent states that a drawback of reducing cell size is that mobile units cross
cell boundaries more often, requiring more handoffs. Id. at 1:65–2:2.
To address this purported problem, the ’701 patent proposes a mobile
communication system that employs moving base stations which move in
the direction of traffic along a roadway. Id. at 2:65–3:5. The moving base
stations are interposed between mobile units and fixed base stations. Id.
The ’701 patent states that, “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 5:14–16.
D. Illustrative Claim
As mentioned above, the challenged claims are claims 10, 15–18, 31,
and 33–35. Claims 10 and 31 are the independent claims among the
challenged claims and are reproduced below:
10. A movable base station configured to move relative to
Earth, the movable base station comprising:
a plurality of spatially separated antennas;
a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
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a controller configured to align and combine the received
fixed port signals; and
a transmitter configured to transmit radio frequency
signals to a mobile device corresponding to the received fixed
port signals.
Ex. 1001, 11:54–64.
31. A movable base station configured to move relative to
Earth, the movable base station comprising:
a plurality of spatially separated antennas;
a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
and
a transmitter configured to transmit radio frequency
signals to a mobile device corresponding to the received fixed
port signals, the radio frequency signals transmitted within
time slots of time-division multiplex channels.
Ex. 1001, 13:13–22.
E. References and Other Evidence
Petitioner relies on the following references:
Reference Description Date Exhibit
Ito US 5,276,686 Issued Jan. 4, 1994 Ex. 1005
Gardner US 5,504,786 Issued April 2, 1996 Ex. 1006
Gilhousen390 US 5,109,390 Issued April 28, 1992 Ex. 1007
Gilhousen865 US 5,559,865 Issued Sept. 24, 1996 Ex. 1009

Petitioner also relies on testimony from Scott A. Denning (Ex. 1003,
“Denning Decl.”) and a Reply Declaration of Mr. Denning (Ex. 1034,
“Denning Reply Decl.”).
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Patent Owner has submitted a Declaration of Mark R. Lanning (Ex.
2100, “Lanning Decl.”).
Both parties have submitted deposition transcripts for these
declarants.1
F. Grounds Asserted
Petitioner challenges the patentability of the ʼ701 patent claims on the
following grounds:
Claims Challenged 35 U.S.C. § References/Basis
10, 15–18, 31, 33–35 103(a) Ito, Gardner
10, 15–18, 31, 33–35 103(a) Gilhousen865, Gilhousen390
Pet. 6.
III. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art would have
had “a B.S. degree in Computer Science, Electrical Engineering, or an
equivalent field, as well as at least 2–3 years of academic or industry
experience in mobile wireless communications, or comparable industry
experience.” Pet. 16 (citing Denning Decl. ¶¶ 29–30).
Patent Owner contends a person of ordinary skill in the art “at or near
the filing date of the earliest priority application of the ’701 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 (citing

1 Exs. 1039 (“Lanning I Dep.”), 1040 (“Lanning II Dep.”), 1041(“Lanning
III Dep.”), 1042 (“Lanning IV Dep.”), 2108 (“Denning Dep.”).
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Lanning Decl. ¶ 46). Further, Patent Owner contends that “[a] lack of
experience can be compensated with additional education and a lack of
education can be compensated with additional work experience.” Id.
The parties’ formulations differ slightly. Patent Owner’s formulation
specifically calls for familiarity with cellular communication technology
whereas Petitioner’s formulation more generally requires a comparable level
of experience with mobile wireless communications. We regard these
formulations as essentially the same because familiarity with mobile
wireless communications would normally include knowledge of cellular
communication technology. Both definitions also are consistent with the
prior art before us and the level of skill reflected in the ’701 patent. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself
may reflect an appropriate level of skill). As the definitions are equivalent,
we adopt Patent Owner’s more specific description, with the exception of
the open-ended language “at least.” However, we would reach the same
result on the ultimate question of obviousness of the ’701 patent under either
formulation.
B. Claim Construction
In an inter partes review based on a petition filed on or after
November 13, 2018, the Board applies the same claim construction standard
as that applied in federal courts. See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37
C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019). In this context, we “constru[e] the claim in accordance
with the ordinary and customary meaning of such claim as understood by
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one of ordinary skill in the art and the prosecution history pertaining to the
patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d
1303, 1312–13 (Fed. Cir. 2005). “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. Any special definitions for claim
terms must be set forth in the specification with reasonable clarity,
deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994).
Before institution, neither party proposed any claim constructions for
our consideration. Petitioner initially contended that “all claim terms should
receive their plain and ordinary meaning, in the context of the ’701 patent
specification, under the Phillips standard.” Pet. 17–18. In the Preliminary
Response, Patent Owner stated that the Board “need not construe any claim
term in a particular manner in order to arrive at the conclusion that the
Petition is procedurally and substantively deficient.” Prelim. Resp. 3. In our
Institution Decision, we did not see the need to construe any terms.
Institution Dec. 6–7.
Post-institution, both parties now propose constructions for certain
terms appearing in the challenged claims. Patent Owner now seeks
construction of the following terms: (1) “fixed port,” (2) “configured to,” (3)
“transmit radio frequency signals to a mobile device corresponding to the
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received fixed port signals,” (4) “mobile device,” and (5) “automotive
vehicle.” PO Resp. 10–17. Several of these terms were construed by the
district court in the Novatel litigation. See Ex. 2105 (Carucel Investments
L.P. v. Novatel Wireless, Inc. et al., Case No. 3:16-cv-0118-H-KSC (S.D.
Cal.), Dkt. 131 (Claim Construction Order), 20 (Sept. 19, 2016)). Petitioner
responds that “none of these terms require construction.” Pet. Reply 3.
1. “fixed port”
The district court construed “fixed port” as “a stationary device at
which signals can enter and exit a communication network.” Ex. 2105, 12.
Patent Owner urges us to adopt the district court’s construction. PO Resp.
10. Petitioner contends there is no need to provide a construction for this
term to resolve a controversy. Pet. Reply 3–4 (citing Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with
Petitioner that no construction of this term is necessary.
2. “configured to”
In the Novatel litigation, the district court construed “configured to”
as “constructed to move with the traffic at a rate of speed which is
comparable to the speed of the traffic.” Ex. 2105, 16. Patent Owner
contends that the preamble is limiting and urges us to adopt this
construction. PO Resp. 10–12. Petitioner states that this construction “is
consistent with the district court’s order” and does not dispute this
construction. Pet. Reply 4. However, Petitioner disagrees with what it
terms an “even narrower construction” of this term, implied by Patent
Owner’s arguments. Id. This dispute centers around the meaning of
“traffic,” a term that does not appear in the claim but does appear in the
district court’s construction of “configured to.” Patent Owner relies on this
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proposed further limitation to the district court’s construction in discussing
the prior art Gilhousen865 patent, where Patent Owner states: “An airplane
does not move with traffic as it is not bound to predetermined roads.” PO
Resp. 48; see also PO Sur-reply 24–25.
Based on the parties’ agreement with the district court’s construction,
we apply that construction in our analysis below. Furthermore, we discuss
the “narrower implied construction” of the term “traffic” advanced by Patent
Owner in the analysis below of Gilhousen865.
3. “transmit radio frequency signals to a mobile device corresponding to
the received fixed port signals”
Patent Owner asserts that this phrase means “transmit radio frequency
signals to a mobile device, where the radio frequency signals correspond to
the received fixed port signals.” PO Resp. 13. Petitioner responds that an
express construction of this term is not necessary to resolve a controversy.
Pet. Reply 3–4. We agree with Petitioner that no construction of this term is
necessary.
4. “mobile device”
Before our Institution Decision, neither party advanced a construction
for “mobile device,” which now lies at the center of this controversy.
Post-institution, Patent Owner argues: “A mobile device is more than just a
cordless phone handset.” PO Resp. 13. Thus, Patent Owner would have us
construe “mobile device” narrowly, as “a device that must register with and
be able to directly communicate with the cellular network.” Id. Patent
Owner asserts that this 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. at 13–14.
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To support this construction, Patent Owner relies on the ’701 patent
Specification: “The ’701 Patent specification teaches that a mobile device
must be capable of directly communicating with either a fixed cellular base
station or a moving base station.” Id. at 13 (citing Ex. 1001, 4:46–49).
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 13–14 (citing Ex. 1001, 10:52–57,
11:3–11). Patent Owner also cites the discussion of the mobile device in the
’701 patent (called a “mobile unit”) which describes registration:
When a mobile unit set is first powered up or first enters a
service area, the mobile unit must register in the manner
described earlier, by transmitting its unique address in the
new service area. The address will be received by the closest
moving base station 30 and transmitted via a fixed radio port
and the gateway switch 60 to the telephone network.
Ex. 1001, 9:49–56 (partially quoted at PO Resp. 14–15). Patent Owner also
relies on testimony from its expert, Mr. Lanning. See PO Resp. 13–14
(citing Lanning Decl. ¶¶ 44, 52–59, 62–66).
Petitioner responds that no special construction of “mobile device” is
necessary and opposes Patent Owner’s construction on a number of grounds.
Pet. Reply 4–9. In summary, Petitioner asserts that Patent Owner’s
argument for a special construction is inconsistent with Patent Owner’s
position in the Novatel litigation. Id. at 5; Ex. 2105, 20 (“In its opening
claim construction brief, [Patent Owner] states that it no longer requests
construction of the term ‘mobile unit.’”). Further, Petitioner points out that
the challenged claims are directed to a “mobile base station,” not to a
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“mobile device” which is “merely ancillary” to the claimed mobile based
station and is not a “positively recited element.” Pet. Reply 6.
Petitioner also contends that Patent Owner’s construction is
inconsistent with the intrinsic record. Id. at 7–9. Petitioner shows that the
claims themselves do not require that the mobile device perform registration
or communicate directly with a cellular network. Id. at 7–8. Also, Petitioner
shows that the ’701 patent discloses that “the mobile unit does not receive
communications from the fixed port but only from the movable base
station,” and describes “eliminating any direct communication from the
mobile unit to the fixed radio port.” Id. at 7 (quoting Ex. 1001, 3:28–35)
(citing Ex. 1001, 4:46–52). Finally, Petitioner points to Patent Owner’s
statements describing the “mobile unit” during prosecution of a closely
related patent (U.S. Patent No. 7,221,904) that contradict Patent Owner’s
narrow construction here. Id. at 8 (citing Ex. 1023, 1812 (“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.”)).
Having reviewed and considered the record presented, including
Petitioner’s and Patent Owner’s submissions, we are not persuaded to adopt
Patent Owner’s construction of “mobile device.” We first look to the words
of the claims. Phillips, 415 F.2d at 1312. We find that the language of the
challenged claims does not support Patent Owner’s construction. As
Petitioner points out, the challenged claims themselves are not directed to
the mobile device. Pet. Reply 6–7. Also, the claims themselves do not

2 Although Petitioner cites page 108 of Exhibit 1023, the material Petitioner
quotes appears on page 181 of the exhibit.
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specify a device “that must register with and be able to directly
communicate with the cellular network.” The challenged claims and the
Specification of the ’701 patent focus on the mobile base station, not the
mobile device. Denning Reply Decl. ¶ 21; Lanning I Dep. 164:6–7 (“None
of the claims are in regard to the mobile device.”). Patent Owner’s expert,
Mr. Lanning, describes the moving base station (not the mobile device) as “a
new invention.” Lanning I Dep. 62:6–8. The Summary of the Invention in
the ’701 patent begins: “These and other problems of the prior art are
overcome in accordance with this invention by means of a moving base
station.” Ex. 1001, 2:65–67. This emphasis on the moving base station as
the invention is consistent with counsel for Patent Owner’s presentation at
oral argument: “The Carucel patents were the culmination of Mr.
Gavrilovich’s life’s work when he invented a moveable base station that
significantly improved wireless communications by acting as an
intermediary between cell towers and mobile devices.” Hearing Tr. 67:15–
19.
We find that Patent Owner’s contention that the mobile unit must be
able to communicate directly with the cellular network is not supported by
the intrinsic record. In the challenged claims, it is the mobile base station
that communicates directly with the fixed ports, not the mobile device. Pet.
Reply 7–8. As Petitioner shows, we find that the challenged claims describe
only communications passing between the moving base station and the fixed
port and between the moving base station and the mobile device. Id.;
Denning Reply Decl. ¶ 23. Thus, claim 10 recites that the movable base
station has: “a receiver configured to receive fixed port signals from a fixed
port through the plurality of spatially separated antennas;” and “a transmitter
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configured to transmit radio frequency signals to a mobile device.” Ex.
1001, 11:54–64 (emphasis added). The challenged claims, therefore, do not
require the mobile device to communicate directly with a cellular network.
Id.
Furthermore, the claims do not associate the signals transmitted by the
mobile device to the moving base station with a cellular network, or identify
the recited mobile unit with a cellular network. Denning Reply Decl. ¶ 23.
As Mr. Denning testifies: “The only functionality attributed to the ‘mobile
device’ by the independent claims of the ’701 patent are the abilities to
transmit and receive radio signals from/to the claimed ‘mobile bas station.’”
Id. ¶ 21 (emphases omitted).
Moreover, we find that the ’701 patent Specification does not support
Patent Owner’s narrowing construction of “mobile device” as a phone
capable of communications directly with a cellular network. Cf. PO Resp.
7–8. As stated in Phillips, “the specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” Phillips, 415 F.2d at 1315
(internal quotes and citation omitted).
First, the Specification of the ’701 patent does not provide a clear
indication supporting Patent Owner’s contention that conventional cordless
non-cellular phones should be excluded. Cf. PO Resp. 13 (“A mobile device
is more than just a cordless handset.”). In the Background section, the ’701
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 of
office as a cordless phone . . . .” Ex. 1001, 2:45–47 (emphases added).
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While the ’701 patent does refer to the base stations as “cell site[s]” (id. at
4:61–62), it also describes the radio interfaces between the mobile devices
and the base stations in more general terms. Id. at 6:37–67. Thus, the ’701
patent describes the radio interfaces between the mobile units and both the
moving and fixed base stations as “a standard radio interface, well known in
the art.” Id. at 6:37–38. This is consistent with the stated goal of providing
“an infra structure which allows the use of . . . a cordless phone.” Id. at
2:45–47.
Moreover, further support for our conclusion that Patent Owner’s
construction is too limiting is found in the ’701 patent’s description of an
embodiment where the mobile device is prevented from communicating
directly with the fixed ports. Pet. Reply 7–8 (citing Ex. 1001, 3:28–35). In
this embodiment, the power levels for the signals between the moving base
station and the mobile device are chosen to avoid direct communication
between the mobile device and the fixed radio ports. Ex. 1001, 3:28–35.
We also consider the prosecution history of the ’701 patent and its
related applications in construing the claims. Phillips, 415 F.2d at 1317.
Here, the prosecution history of related U.S. Patent 7,221,904 (the subject of
co-pending IPR2019-01101) is relevant. Pet. Reply 8.
The ’701 patent is a continuation of the ’904 patent, and shares a
common specification and similar clams with the ’904 patent. During
prosecution of the ’904 patent, in an appeal brief to the Board of Patent
Appeals and Interferences, Patent Owner did not limit the invention to
cellular devices, but 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
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modems, or other types of radios.” Ex. 1023, 181 (emphasis added). We
find that this prosecution history of the ’904 patent describing the mobile
devices as “telephones” and “radios” does not support Patent Owner’s
construction limiting such devices to “a device that must register with and be
able to directly communicate with the cellular network.”
Patent Owner asserts that its proposed construction reflects “the plain
and ordinary meaning” of the term “mobile device” under Phillips. PO
Resp. 13; PO Sur-reply 1–2. Patent Owner argues that Petitioner is
“construing the meaning of ‘mobile device’ in the abstract.” PO Sur-reply 1.
Patent Owner contends Petitioner’s analysis “is premised on incorrect legal
standards.” Id. at 2. Patent Owner argues that “the ’701 Patent specification
also describes the invention as a whole and should be limited as such.” Id.
Patent Owner continues: “Specifically, the ’701 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 2–
3.
Patent Owner’s arguments are not persuasive because they are
contrary to the claim language and the intrinsic evidence discussed above.
The challenged claims are directed to the “moveable base station,” and
Patent Owner has asserted that the invention of the ’701 patent is the moving
base station, not the mobile devices, which according to the prosecution
history can be conventional radios and telephones. See Hearing Tr. 67:15–
19; see also PO Resp. 2 (“The asserted claims of the ’701 Patent cover a
movable base station configured to provide important benefits to mobile
devices, such as smartphone, tablet and laptop users.”), 3 (discussing “Mr.
Gavrilovich’s inventive movable base station”), 5 (Mr. Gavrilovich’s “vision
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led to the patented invention of a movable base station or apparatus
interposed between mobile devices and a cellular network.”). While the
’701 patent may discuss cellular networks, we find that, for the reasons
above, the disclosure is not limited to cellular phones.
Patent Owner does not explicitly argue that there has been a
disavowal or disclaimer of claim scope, and there is no support for such an
argument. Patent Owner fails to demonstrate a disavowal of mobile units
that do not communicate directly with a cellular system either in the
Specification or prosecution history. As discussed above, the ’701 patent
claims are directed to the mobile 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); 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.”). The
references to cellular communications in the ’701 patent cited by Patent
Owner (PO Sur-reply 5–6) are merely exemplary, and do not rise to the level
of a clear and unmistakable disavowal.
Rather than asserting there has been a disavowal or disclaimer of
claim scope, Patent Owner argues “recent Federal Circuit precedent . . .
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cautions against . . . effectively requiring statements in the intrinsic record to
rise to the level of a disclaimer in order to inform the meaning of the
disputed claim term.” PO Sur-reply 4. We are not persuaded that Patent
Owner’s cited authorities support that argument here. Id. at 4–6.
In Pacing Technologies, LLC v. Garmin International, Inc., 778 F.3d
1021 (Fed. Cir. 2015), cited by Patent Owner (PO Sur-reply 2), the Federal
Circuit found evidence of “a clear and unmistakable statement of disavowal
or disclaimer” in the stated objects of the invention, including a statement
that the objects would be accomplished by the particular feature (a
“repetitive motion pacing system”) to which the Court limited the claims.
778 F.3d at 1025. Here, in contrast, for the reasons discussed above, there is
no corresponding “clear and unmistakable statement” limiting the scope of
the mobile devices to “a device that must register with and be able to
directly communicate with the cellular network.”
We do not find Patent Owner’s other authorities to be any more
persuasive. For example, in Personalized Media Communications, LLC v.
Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020), cited by Patent Owner (PO Sur-
reply 4), the Federal Circuit relied on facts not present here, namely, that
“[d]uring prosecution, the applicant repeatedly and consistently voiced its
position that encryption and decryption require a digital process in the
context of the ’091 patent.” 952 F.3d at 1345. Moreover, the Court
observed: “The applicant never abandoned that position. Indeed, the
applicant amended the claims—giving rise to the claim term at issue on
appeal—only to clarify its position that “encryption requires a digital
signal.” Id. at 1345–46. As discussed above, the relevant prosecution
history here does not include any such repeated or consistent statements by
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Patent Owner excluding non-cellular devices; in fact, the prosecution of a
related patent includes a statement that radios and telephones are within the
scope of the invention. Ex. 1023, 181. Nor has Patent Owner identified an
amendment to the claims during prosecution that would “clarify its position”
that such devices are excluded.
Patent Owner cites Bell Atlantic Network Services, Inc. v. Covad
Communications Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001), for the
proposition that the written description “can provide guidance as to the
meaning of the claims.” PO Sur-reply 4. This point is not in dispute. We
discuss the written description in our analysis above, and find that it does not
support Patent Owner’s construction for the reasons given there. Bell
Atlantic does not help Patent Owner’s argument.
The same is true of Patent Owner’s discussion of On Demand
Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006).
See PO Sur-reply 4–5. As Patent Owner’s quotation from On Demand
makes clear, it is not necessary to find an explicit disavowal “when the
scope of the invention is clearly stated in the specification, and is described
as an advantage and distinction of the invention.” 442 F.3d at 1340 (quoted
at PO Sur-reply 4–5). However, in our analysis above, we find that the
scope of the invention and its advantages as described in the ’701 patent
specification center on the mobile base station, not the mobile device. The
’701 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 listing of “examples” from
the ’701 patent that discuss communications with the fixed base stations
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when traveling at lower speeds of less than thirty miles per hour. PO Sur-
reply 3–4. Those citations do not describe the communications as cellular
communications or fixed base stations 70 as cell sites, stating only that their
operation is “essentially the same as that of a standard cellular fixed base
station.” Ex. 1001, 10:50–52. Nor are Patent Owner’s citations to the
various occurrences of the term “cellular” in the ’701 patent persuasive. Cf.
PO Sur-reply 5–6. There is no dispute that improving cellular technology is
one of the goals described in the ’701 patent. However, Patent Owner fails
to support its argument that the ’701 patent “explicitly and exclusively
relates to improving the wireless connections of mobile devices within
‘cellular telephone systems.’” Id. at 5 (original emphasis omitted; emphasis
added). We find, based on the analysis above, that the claims, the
Specification, and the prosecution history of the ’701 patent reveal a broader
goal of also improving wireless connections involving non-cellular devices,
such as radios and telephones.
In addition, we are not persuaded by Patent Owner’s suggestion that
the Specification requires the mobile device to “register . . . with the cellular
network.” PO Sur-reply 1 n.1. Such a registration requirement is not in the
claims or prosecution history. Registration with a base station is mentioned
in the ’701 patent Specification (see 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, 9:52–54 (“The address will be received by the closest
moving base station 30 and transmitted . . . to the telephone network”).
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As discussed above, such transmissions between the mobile unit and
the moving base station use a “standard radio interface.”
Thus, we find that Patent Owner’s analysis of the ’701 patent
Specification does not support its theory that the mobile device
communicates directly with a cellular system when it registers during power
up or when first entering a service area. Further, we find that, to the extent
the ’701 patent discloses registration by the mobile device, it describes
registering with the moving base station and not with the fixed base station.
Ex. 1001, 9:49–56. The actual registration with the fixed base station is
handled by the mobile base station. Id.
In summary, we find that Patent Owner’s proposed construction for
“mobile device” is not supported by the claim language of the ’701 patent or
the intrinsic evidence, and, therefore, we do not adopt a construction that
would limit “mobile devices” to cellular phones or other devices “that must
register with and be able to directly communicate with the cellular network,”
and which excludes conventional cordless phones.
We agree with Petitioner that no construction of “mobile device” is
necessary. Pet. Reply 3, 5–6.
5. “automotive vehicle”
Patent Owner construes the term “automotive vehicle,” which appears
in dependent claim 18, as an automobile. PO Resp. 16 (citing Lanning Decl.
¶ 44). Patent Owner relies on the description in the Specification of an
automotive vehicle as an alternative means of moving base stations 30. Id.
(citing Ex. 1001, 4:5–9).
Petitioner contends that no construction of this term is needed, but if a
construction is necessary, Petitioner construes “automotive vehicle” as “a
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vehicle moving by means of its own power.” Pet. Reply 9 (citing Denning
Decl. ¶ 182).
As will be apparent from our analysis below, our decision does not
depend on the construction of “automotive vehicle.” Therefore, we do not
see the need to construe this term to resolve a controversy.
C. Legal Standard
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented 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 based on 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 ordinary skill in the art; and (4) when in the record, objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Neither the Petition nor the Patent Owner Response presents evidence on the
fourth Graham factor. We, therefore, do not consider that factor in this
decision.
Even if prior art references disclose all of the limitations in a claim
when combined, there must be evidence to explain why a person of ordinary
skill in the art would have combined the references to arrive at the claimed
invention. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
1366–67 (Fed. Cir. 2012) (citing Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 (Fed. Cir. 2008) (holding that post-KSR “some kind of
motivation must be shown from some source, so that the [trier of fact] can
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understand why a person of ordinary skill would have thought of either
combining two or more references or modifying one to achieve the patented
[invention]”)). A precise teaching directed to the specific subject matter of a
challenged claim is not necessary to establish obviousness. KSR, 550 U.S. at
418. Rather, “any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” Id. at 420. Accordingly,
Petitioner must show that “a skilled artisan would have been motivated to
combine the teachings of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a reasonable
expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829
F.3d 1364, 1381 (Fed. Cir. 2016) (internal quotations and citations omitted).
D. Obviousness over Ito and Gardner
Petitioner asserts that claims 10, 15–18, 31, and 33–35 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the combined
teachings of Ito and Gardner. Pet. 26–51. We first describe the prior art that
Petitioner seeks to combine to show that these challenged claims would have
been obvious and then turn to the merits of the combination.
1. Overview of Ito (Ex. 1005)
Ito is a patent titled “Mobile Radio Communication System Having
Mobile Base and Portable Devices as a Mobile Station,” and issued on
January 4, 1994. Ex. 1005, codes (54), (45). Petitioner contends Ito is prior
art under 35 U.S.C. § 102(b). Pet. 5.
According to Ito, cellular mobile radio telephone systems have mobile
stations that are connected by a radio channel to a base station for the radio
communication zone where the mobile stations are currently located. Ex.
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1005, 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. In an automobile, the automobile telephone main unit and a
handset assembly are connected by a signal cord, and the cradle and the
handset are connected by a curled cord. Id. at 1:51–54. Ito explains that
“[w]ith such an arrangement, the curled cord can constitute[] 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.
To address these issues, 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 and
increasing the maneuverability of the telephone handset. Id. at 2:5–12.
This is illustrated by Figure 6 of Ito, reproduced below.

Figure 6 of Ito depicts a mobile radio communication system.
In Figure 6 of Ito, mobile base device MSS is wirelessly connected
simultaneously with two portable devices PSS1 and PSS2. Ex. 1005, 12:52–
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56. Base station BSS and mobile base device MSS communicate with each
other by way of radio frequencies fT1 and fR1.
3 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, Figure 3 (not shown) illustrates mobile base
device MSS, which has two transmitter-receiver units. Ex. 1005, 7:9–12.
The first transmitter-receiver unit is used for radio communication with base
station BSS by way of a first radio channel. Id. at 7:12–17. The second
transmitter-receiver unit is used for radio communication with its portable
devices PSS by way of a second radio channel. Id.
2. Overview of Gardner (Ex. 1006)
Gardner is a patent titled “Open Loop Phase Estimation Methods and
Apparatus for Coherent Combining of Signals Using Spatially Diverse
Antennas in Mobile Channels.” Ex. 1006, code (54). Petitioner asserts that,
because Gardner was filed on October 5, 1993, which is before the earliest
effective filing date of the ’701 patent, it is prior art under 35 U.S.C.
§ 102(e). Pet. 6.
Gardner describes a receiver for use in cellular communications.
Ex. 1006, 2:17–19. The receiver is configured to receive spatially diverse
signals and to properly align and combine the received signals. Id. at 1:65–
2:4. The receiver includes two spatially diverse antennas. Id. at 2:23–24.
After demodulation and conversion, the received signals are processed by
the receiver for alignment and combining. Id. at 2:64–3:10. Specifically,
after the signals are converted to digital form, phase difference detection is

3 As Petitioner points out (Pet. 20 n.5), Figure 6 of Ito mislabels fT1 as fr1.
See Ex. 1005, 12:57–63.
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performed in order to detect “a good estimate of the actual phase difference
between the two signals.” Id. at 2:64–67. Then, the phase difference is used
to phase align the two digitized signal vectors by shifting the phase of the
vector. Id. at 3:1–7. Once aligned, the signals can be combined. Id. at 3:7–
10.
3. Analysis of Asserted Obviousness of Claims 10, 15–18, 31, and 33–35
In support of Petitioner’s contention that claims 10, 15–18, 31, and
33–35 would have been obvious over the combined teachings of Ito and
Gardner, Petitioner provides an element-by-element analysis showing where
each element of the challenged claims is in Ito or Gardner. Pet. 26–51.
Petitioner supports its analysis with testimony from Mr. Denning. See
Denning Decl. ¶¶ 105–154; Denning Reply Decl. ¶¶ 32–47. Patent Owner,
relying on the testimony of Mr. Lanning, argues that Petitioner does not
show that the challenged claims are unpatentable. See, e.g., PO Resp. 30–
47; PO Sur-reply 11–24. For the reasons set forth below, we determine that
Petitioner has proven by a preponderance of the evidence that claims 10, 15–
18, 31, and 33–35 are obvious over the combined teachings of Ito and
Gardner.
Independent Claim 10
(i) A “movable base station configured to move relative to Earth”
Petitioner asserts that, to the extent the preamble is limiting, Ito’s
mobile base device MSS is the “movable base station” recited in the
preamble of claim 10). Pet. 29 (citing Ex. 1005, 12:52–53; Denning Decl.
¶ 113).
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Patent Owner does not challenge Petitioner’s showing that Ito teaches
this subject matter. We find that the preamble of claim 10 (whether or not
limiting) is met by Ito.4
(ii) “a plurality of spatially separated antennas”
Petitioner asserts that “a plurality of spatially separated antennas” is
taught by Gardner’s disclosure that “[o]ne of the most useful techniques for
improving receiver performance in the mobile (Rayleigh) channel is to use
spatial diversity” and that this “spatial diversity is achieved by ‘us[ing] two
(or more) antennas spaced far enough apart’ so as to reduce the effects of
fading on the received signal.” Pet. 30 (quoting Ex. 1006, 1:15–20).
Petitioner further asserts that “Gardner explains that, during operation,
multiple ‘RF signals [are] received on the two antennas’ in order to improve
receiver performance and combat fading issues.” Id. (quoting Ex. 1006,
2:24–30) (citing Ex. 1006, 1:15–24). Patent Owner does not challenge
Petitioner’s showing that Gardner teaches this limitation. We find that
Gardner discloses this limitation.
(iii) “a receiver configured to receive fixed port signals from a fixed port
through the plurality of spatially separated antennas” and “a
transmitter configured to transmit radio frequency signals to a mobile
device corresponding to the received fixed port signals”
Petitioner identifies Ito’s transmitter-receivers 50 and 80 as the
“receiver” and “transmitter” recited in claim 10. Pet. 31–34, 36–37;
Denning Decl. ¶¶ 117–120, 124–125. As discussed above, Petitioner shows
that Gardner discloses a plurality of spatially separated antennas. Pet. 33
(citing Ex. 1006, 1:10–20).

4 We do not decide whether the preamble of claim 10 is limiting.
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Petitioner’s analysis refers to annotated Figure 1 of Ito, reproduced
below:

Figure 1 of Ito (annotated) shows an automobile telephone system.
Pet. 31–32. Petitioner shows that Figure 1 of Ito and the accompanying
written description disclose that Ito’s mobile base device MSS “facilitates
communication between a stationary base station BSS2 (fixed port) and a
portable device PSS located within the vehicle” and “‘receive[s] a signal
from the base station BSS2’ (receive [a] fixed port signal[] from a fixed
port) via the first transmitter-receiver 50 and ‘forward[s] it to the portable
device PSS2’ via the second transmitter-receiver 80.” Id. (citing Ex. 1005,
5:62–65) (quoting Ex. 1005, 13:15–18).
Petitioner also shows that Ito discloses “mobile base device MSS [i.e.
movable base station] ‘receive[s] a signal from the base station BSS2 [i.e.,
fixed port] and forward[s] it to the portable device PSS2 [i.e., mobile
device],’” and that a person of ordinary skill in the art would have
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understood that “the signal transmitted to the portable device PSS
corresponds to those received from the base station BSS2.” Pet. 36–37
(quoting Ex. 1005, 13:15–18) (citing Denning Decl. ¶ 124). According to
Petitioner, “Ito further explains that this forwarding process is performed for
multiple signals” and “that the portable device PSS receives multiple signals
and that the BSS transmits multiple signals.” Id. at 37 (citing Denning Decl.
¶ 124; Ex. 1005, 6:41–46, 8:62–64). Petitioner contends that because Ito
discloses forwarding a signal received from a base station to the portable
device, it would have been obvious to a person of ordinary skill in the art
that the multiple received signals are forwarded in the same manner. Id.
(citing Denning Decl. ¶ 124).
In response to Petitioner’s contentions, Patent Owner refers to its
proposed claim construction and argues that Ito does not disclose a “mobile
device” as recited in claim 10. PO Resp. 41–43. Patent Owner states that
“Ito does not disclose any ability of its portable devices to register or directly
communicate with a cellular network.” Id. at 42 (citing Lanning Decl.
¶¶ 130–132). Patent Owner asserts Ito’s “portable device is similar to a
cordless phone system,” and, therefore, is excluded under Patent Owner’s
construction of “mobile device.” Id. at 43. Patent Owner’s argument relies
on its proposed construction of “mobile device” as “a device that must
register with and be able to directly communicate with the cellular network.”
Id. Because we have not adopted Patent Owner’s claim construction for
“mobile device” (see Section III.B.4), Patent Owner’s argument is not
persuasive.
For the reasons given by Petitioner and summarized above, we find
that Ito’s portable device PSS meets the requirement of a mobile device as
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recited in claim 10. See Denning Decl. ¶ 124–125; Denning Reply Decl.
¶ 32 (citing Ito’s Fig 6; Ex. 1005, 11:65–12:1). We also find that Ito
discloses a “receiver” and “transmitter” as recited in claim 10.
(iv) “a controller configured to align and combine the received fixed port
signals”
For the claimed aligning the received fixed port signals, Petitioner
asserts Gardner discloses “detecting a phase difference of the signals
received from the two spatially diverse antennas,” and using this phase
difference “‘to phase align, as shown in block 8, the two digitized signal
vectors . . . by shifting the phase’ of the antenna 0 signal to be inphase with
the antenna 1 signal.” Pet. 35 (citing Ex. 1006, 2:64–67) (quoting Ex. 1006,
3:1–7).
For the claimed combining the received fixed port signals, Petitioner
asserts Gardner discloses, once the signals have been properly aligned,
“‘combining of the samples as shown in block 10, in the preferred
embodiment by adding’ the two aligned signals.” Id. (quoting Ex. 1006,
3:7–10). Finally, Petitioner asserts Gardner discloses that “a processor
(controller) performs the aligning and combining functions,” thereby
teaching the claimed “controller.” Id. at 36 (citing Ex. 1006, 2:53–63).
Patent Owner does not challenge Petitioner’s showing that Gardner
meets this limitation. We find that this limitation is met by Gardner.
(v) Rationale for Combining Ito and Gardner
Petitioner provides a rationale for combining Ito and Gardner. See,
e.g., Pet. 26–28. In response to Petitioner’s rationale for combining Ito and
Gardner, Patent Owner makes several arguments alleging Petitioner has not
provided sufficient reasoning to support the combination of Ito and Gardner.
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PO Resp. 30–38. We have considered Patent Owner’s arguments and find
them unpersuasive. Below, we first address Petitioner’s rationale and then
Patent Owner’s responsive arguments.
Petitioner asserts that Ito’s first receiver-transmitter 50 (base station
side) and second receiver-transmitter 80 (portable device side) each include
only a single antenna, and, thus, are not configured to receive spatially
diverse signals. Id. at 26. According to Petitioner, Ito also discloses that
signals transmitted to a moving device often have higher error rates due to
“high speed fading phenomena” but does not specifically describe how such
errors can be reduced. Id. (citing Ex. 1005, 16:49–61; Denning Decl. ¶ 106).
Petitioner explains that a person of ordinary skill in the art “would have
looked to the prior art, such as Gardner, for determining how to combat the
deleterious effects of fading on signals transmitted to a moving device.” Id.
(citing Denning Decl. ¶ 106). Petitioner also explains that “Gardner
emphasizes the importance of employing spatially diverse antennas in the
receiver to reduce the effects of fading on received signals” and contends
that based on the teachings of Gardner, a person of ordinary skill in the art
“would have been motivated to modify Ito so as to incorporate spatially
diverse antennas.” Id. at 26–27 (citing Ex. 1006, 1:15–24; Denning Decl.
¶ 108).
Petitioner further asserts that a person of ordinary skill in the art
would have recognized Gardner’s spatially diverse receiver to be modular
and that modifying Ito with Gardner would have required minimal
modifications. Pet. 27 (citing Denning Decl. ¶ 108). According to
Petitioner, a person of ordinary skill in the art “could have combined the
system of Ito with the teachings of Gardner by known methods, and the
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results of the combination would have been predictable (e.g., by replacing
Ito’s antenna with Gardner’s spatially separated antennas),” and “the
proposed combination of Ito and Gardner would involve nothing more than
incorporating a well-known concept (i.e., Gardner’s signal diversity) into a
well-known system (i.e., Ito’s radio communication system).” Id. at 28
(citing Denning Decl. ¶ 110).
In response to Petitioner’s contentions, Patent Owner presents several
arguments that a person of ordinary skill in the art would not have been
motivated to combine the teachings of Ito and Gardner. PO Resp. 36–38.
First, Patent Owner argues that “such a combination would not result in an
automobile telephone unit that can receive signals from a fixed port.” Id. at
37. Patent Owner contends that such a combination would yield “an
inoperable device”:
If a [person of ordinary skill] were to simply replace the single
antenna of the automobile telephone unit of Ito with the
spatially separated antennas of Gardner, as Petitioner
proposes, this would result in an inoperable device, because it
would be unable to correctly receive or process any signals
from the spatially separated antennas.
Id. We disagree with Patent Owner’s assertion that a motivation to combine
Ito and Gardner is lacking. We find that Petitioner’s rationale, as
summarized above, is persuasive. Pet. 26–28; Denning Decl. ¶¶ 105–110.
Patent Owner cites KSR International Co. v. Teleflex Inc., 550 U.S.
398 (2007), as requiring the Board to consider the motivation to combine in
determining obviousness. PO Resp. 36. But, as the Federal Circuit has
emphasized in analyzing obviousness, the person of ordinary skill “is not an
automaton”:
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KSR does not require that a combination only unite old
elements without changing their respective functions. Instead,
KSR teaches that “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” And it explains that
the ordinary artisan recognizes “that familiar items may have
obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle.”
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (citations
omitted). The Federal Circuit further cautioned 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.
Given the high level of skill in the pertinent art before us (see above
§ III.A)), we find that such a person of ordinary skill would have easily
recognized that combining Ito and Gardner would have the advantages
identified by Petitioner. Denning Decl. ¶¶ 105–110. Moreover, such a
highly skilled person would have been able to combine the teaching of those
references with a reasonable expectation of success. Id. As Petitioner
summarizes: “Further, as evident from the above discussion, a [person of
ordinary skill in the art] could have combined the system of Ito with the
teachings of Gardner by known methods, and the results of the combination
would have been predictable to a [person of ordinary skill].” Pet. 28 (citing
Denning Decl. ¶ 110).
Second, Patent Owner argues that combining Ito and Gardner “would
have required much new circuitry –– not disclosed in either Ito or Gardner.”
PO Resp. 37 (citing Lanning Decl. ¶ 114). Patent Owner’s argument is not
persuasive.
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“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284,
1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA
1981)); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.”) and In re Nievelt, 482 F.2d
965, 968 (CCPA 1973) (“Combining the teachings of references does not
involve an ability to combine their specific structures.”). We are satisfied
with Mr. Denning’s description of how a person of ordinary skill would have
approached making the combination of these known techniques. See
Denning Decl. ¶¶ 105–110. We are not persuaded by Mr. Lanning’s
testimony on this issue. Cf. Lanning Decl. ¶¶ 86–87, 114–115. His
testimony mirrors arguments in Patent Owner’s response about the
combination of Ito and Gardner resulting in an “inoperable device” and
requiring “new circuitry.” See id. As discussed above, we find these
arguments are unpersuasive and contrary to KSR, and Mr. Lanning’s
testimony is similarly unpersuasive.
Third, Patent Owner argues that the supporting testimony from Mr.
Denning is “unsupported and conclusory” and “entitled to little or no weight
because Mr. Denning’s Declaration is a near-verbatim copy of the
conclusory statements set forth in the Petition.” PO Resp. 22–29. We
disagree with Patent Owner’s criticism of Mr. Denning’s testimony, which
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we find helpful on this issue, particularly his example of how Ito and
Gardner could be combined. See, e.g., Denning Decl. ¶¶ 105–110. For the
reasons stated above, we find Petitioner’s analysis of this challenge and the
supporting testimony from Mr. Denning, including his explanation of the
rationale for combining the teachings of the references, to be credible and
supported by the cited evidentiary record.
Fourth, Patent Owner argues that the Petition does not supply
“sufficient detail” on “how to combine” Ito and Gardner (and the other
references). PO Resp. 31–35; PO Sur-reply 11–12. Petitioner and Mr.
Denning, however, provide a detailed analysis explaining what teachings of
Gardner would have been combined with the system of Ito. See generally
Pet. 26–28; Denning Decl. ¶¶ 92–154. Mr. Denning’s testimony also
demonstrates that all of the technology for practicing the alleged invention
of the ’701 patent was well-known. Denning Decl. ¶¶ 39–85. According to
the ’701 patent, the invention uses “well-known” equipment and functions.
See, e.g., Ex. 1001, 4:26, 5:3–4, 5:20, 5:47, 5:64, 6:10, 6:21, 6:36, 6:39,
6:48, 6:60, 9:5, 9:18, 9:47. Mr. Denning provides an example of how Ito
and Gardner could have been combined. Denning Decl. ¶¶ 105–106.
We find Mr. Lanning’s testimony raising various technical problems
in combining the references to be inconsistent with the Federal Circuit’s
admonition that “the rationale of KSR does not support [the] theory that a
person of ordinary skill can only perform combinations of a puzzle element
A with a perfectly fitting puzzle element B.” ClassCo, 838 F.3d at 1219.
We are not persuaded that more detailed explanations of how to combine
such “well-known” equipment are required by KSR.
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Fifth, Patent Owner argues that, because Petitioner’s proposed
combination of Ito and Gardner “would result in an inoperable device,”
these references “teach away from the combination.” PO Sur-reply 12
(citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir.
2001)). In McGinley, the Court of Appeals for the Federal Circuit stated
that, “[i]f references taken in combination would produce a ‘seemingly
inoperative device,’ we have held that such references teach away from the
combination and thus cannot serve as predicates for a prima facie case of
obviousness.” 262 F.3d at 1354. But as discussed above, we are persuaded
by Petitioner’s contentions and evidence as to how Ito and Gardner would
have and could have been combined, and, therefore, we do not agree with
Patent Owner’s suggestion that the resulting combination yields an
inoperative device. Moreover, McGinley was more recently distinguished in
In re Urbanski, 809 F.3d 1237 (Fed. Cir. 2016). In Urbanski, as here, the
motivation to combine the references (Wong and Gross) comes from the
references themselves. Urbanski, 809 F.3d at 1243–44 (“Here, the cited
references do not teach away from the claimed method. . . . Wong thus
provides the motivation to modify the Gross process and suggests the
desirability of such modification.”) We are, therefore, persuaded by
Petitioner’s evidence that a person of ordinary skill would have combined
the teachings of Ito and Gardner, and we are not persuaded by Patent
Owner’s argument based on McGinley.
For the reasons above, we determine that Petitioner has shown by a
preponderance of the evidence that a person of ordinary skill in the art would
have been motivated to combine the teachings of Ito and Gardner with a
reasonable expectation of success. As Petitioner points out, Ito itself refers
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to errors caused by the “high speed fading phenomena” in the path between
the base station and the mobile device. Pet. 26; Ex. 1005, 16:49–61; see
also Denning Decl. ¶ 106. Moreover, Gardner discloses that spatial
diversity is “[o]ne of the most useful techniques for improving receiver
performance.” Ex. 1006, 1:14–16. Furthermore, Gardner discloses that to
reduce the effects of fading “use two (or more) antennas spaced far enough
apart.” Id. at 1:16–17.
Claims 15–18, 31, and 33–35
Petitioner also provides a detailed analysis explaining where the
combination of Ito and Gardner teaches or suggests the limitations in claims
15–18, which depend from independent claim 10, and claims 31 and 33–35.
Pet. 38–51; Denning Decl. ¶¶ 126–154. Patent Owner’s response refers
back to its contentions directed to claim 10. PO Resp. 30–38, 41–44. For
the reasons discussed above in connection with claim 10, Patent Owner’s
arguments are not persuasive.
Claim 15
In addition to its arguments directed to claim 10, which are discussed
above, Patent Owner also provides additional arguments regarding claim 15.
PO Resp. 44–47.
Claim 15, which depends from claim 10, requires a further element of
“a controller configured to compare the received fixed port signals received
through the spatially separated antennas and to select a best signal.” Ex.
1001, 12:14–17 (emphasis added). Petitioner shows that Gardner meets this
“best signal” limitation: “Gardner discloses that, while there are many well-
known ways to make use of the signals received from the multiple antennas,
‘the simplest of these is to just choose [sic] the antenna that provides the
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strongest signal.’” Pet. 38 (quoting Ex. 1006, 1:25–27). Petitioner relies on
Gardner also to show the “compare” and “select” steps in this claim. Id. at
38–39.
Patent Owner argues that Petitioner “incorrectly equates” Gardner’s
selection of the “strongest signal” with the claimed “best signal.” PO Resp.
44; see id. at 44–47. Patent Owner contends the ’701 patent “provides that
‘a best signal’ is more than just the strongest signal,” and “[a]t a minimum,
‘best signal’ includes an analysis of the error rate in addition to the signal
strength when viewed in the entire context of the ’701 Patent.” Id. at 46
(citing Ex. 1001, 10:57–62; Lanning Decl. ¶¶ 136–137).
Petitioner responds that the portion of the ’701 patent cited by Patent
Owner does not support Patent Owner’s position because it “does not relate
to the claimed limitation, but rather to functions carried out by a mobile
device determining whether to handoff.” Pet. Reply 16 (emphasis omitted);
Denning Reply Decl. ¶¶ 41–43. We agree with Petitioner. The passage
relied on by Patent Owner describes the mobile unit’s operation in
monitoring the signal from the base stations: “Each mobile unit monitors
pilot signals from fixed and moving base stations and synchronizes to the
base station providing the best signal.” Ex. 1001, 10:65–67. The claim,
however, is directed to functionality of a controller in the moveable base
station. Nor does the claim specify particular metrics (such as error rate)
that must be evaluated by the claimed apparatus to select a “best signal.”
In addition, Mr. Denning testifies that Gardner discloses “well known
schemes” for analyzing signals from two antennas, including one in which
received signals are “weighted with gains proportional to their signal voltage
to noise power ratios.” Denning Reply Decl. ¶¶ 45–46 (citing Ex. 1006,
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1:32–34) (emphasis omitted). Mr. Denning testifies that a person of
ordinary skill “would have understood there is a 1-to-1 mapping between
signal-to-noise ratio and error rate for a given modulation and coding.” Id.
¶ 45. Mr. Denning’s testimony is supported by his citations to several
background references, including Exhibits 1042, 1047, and 1044. Id. ¶¶ 40–
47. In addition, Mr. Denning testifies that Gardner discloses “analyzing
signals using coherent demodulation schemes, which analyze symbol errors
of the signal.” Id. ¶ 46 (citing Ex. 1006, 1:28–41).
We are not persuaded by Patent Owner’s argument that Mr.
Denning’s testimony is “unsupported.” PO Sur-reply 24. We find, for the
reasons summarized above, that Mr. Denning’s testimony is credible and
supported by the record.
We are not persuaded by Mr. Lanning’s testimony that “the strongest
signal may not be the best signal received by the mobile phone, . . . because
the strongest received signal may not be coming from the correct cellular
network operator or the strongest signal may have some type of distortion
that would cause errors in the data being received.” Lanning Decl. ¶ 137.
We agree with Mr. Denning that claim 15 “requires selecting a best signal
among signals received from a single fixed port. Thus, all signals analyzed
are from the same fixed port, including the best received signal that is
selected.” Denning Reply Decl. ¶ 47. We also agree that Gardner discloses
analysis of the received signals for distortion. Id. (citing Ex. 1006, 2:31–38).
For the reasons above, we determine that Petitioner has proven by a
preponderance of the evidence that the “best signal” limitation in claim 15 is
disclosed by Ito and Gardner (see Pet. 36–37; Pet. Reply 14–16; Denning
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Decl. ¶ 121; Denning Reply Decl. ¶¶ 40–47), and that claim 15 would have
been obvious over Ito and Gardner.
Summary of Claims 10, 15–18, 31, and 33–35
For the reasons presented in the Petition and those discussed above,
we determine that Petitioner has proven by a preponderance of the evidence,
supported by expert testimony and by the references themselves, that the
combination of Ito and Gardner teaches or suggests each element of claims
10, 15–18, 31, and 33–35 and that a person of ordinary skill in the art would
have had reason to combine the teachings of Ito and Gardner in the manner
asserted with a reasonable expectation of success. Thus, these claims are
unpatentable as being obvious over Ito and Gardner.

E. Obviousness over Gilhousen865 and Gilhousen390
Petitioner asserts that claims 10, 15–18, 31, and 33–35 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Gilhousen865 and Gilhousen390. Pet. 51–70. We first describe the prior art
that Petitioner seeks to combine to show that these claims would have been
obvious and then turn to the merits of the combination.
1. Overview of Gilhousen865 (Ex. 1009)
Gilhousen865 is a patent titled “Airborne Radiotelephone
Communication System.” Ex. 1009, code (54). Petitioner asserts that,
because Gilhousen865 was filed on July 8, 1994, which is before the earliest
effective filing date of the ’701 patent, it is prior art under 35 U.S.C.
§ 102(e). Pet. 6.
Gilhousen865 is directed to an airborne communication system that
allows radiotelephones on a plane to communicate with a ground-based
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cellular system. Ex. 1009, code (57). Figure 1 of Gilhousen865 is
reproduced below.

Figure 1 of Gilhousen865, reproduced above, depicts an airborne
communication system having ground-based subsystem 105 and airborne-
based subsystem 125. Id. at 2:9–12. As shown in Figure 1, ground-based
subsystem 105 has base station 120 coupled to antenna 150 and to mobile
switching center 115, which in turn is coupled to public switched telephone
network (PSTN) 110. Id. at 2:21–33.
Figure 2 of Gilhousen865 is reproduced below.
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Figure 2 of Gilhousen865, reproduced above, depicts an airborne-based
subsystem having radiotelephones 205, signal repeater 210, and antenna 215
mounted on the outside of the aircraft. Ex. 1009, 2:45–52. Repeater 210
receives signals from radiotelephones 205 within the aircraft and relays them
to antenna 215, which relays the signals to the base station on the ground.
Id. at 2:53–57. Gilhousen865 discloses that signal repeater 210 may be
replaced by an airborne base station that “has the same functionality of its
ground-based counterpart but on a much smaller scale since it does not have
to handle the thousands of radiotelephones of the ground-based station.” Id.
at 3:3–10.
2. Overview of Gilhousen390 (Ex. 1007)
Gilhousen390 is a patent titled “Diversity Receiver in a CDMA
Cellular Telephone System.” Ex. 1007, code (54). Petitioner asserts that,
because Gilhousen390 issued on April 28, 1992, more than three years
before the earliest effective filing date of the ’701 patent, it is prior art under
35 U.S.C. § 102(b). Pet. 6.
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Gilhousen390 discloses techniques for receiving the strongest signals
from multiple sites in a cellular system. Ex. 1007, 4:27–34. One technique
disclosed in Gilhousen390 involves using two receivers to demodulate
signals on the two strongest paths and using information from both signals in
a “diversity combining operation,” which results in improved resistance to
multipath fading. Ex. 1007, 8:11–21. Gilhousen390 also discloses a mobile
unit having multiple digital data receivers to enable diversity reception.
Ex. 1007, 12:35–40, Fig. 2.
3. Analysis of Obviousness of Claims 10, 15–18, 31, and 33–35
In support of Petitioner’s contention that claims 10, 15–18, 31, and
33–35 are unpatentable as obvious over the combined teachings of
Gilhousen865 and Gilhousen390, Petitioner provides an element-by-element
analysis showing where each element of the challenged claims is in
Gilhousen865 and Gilhousen390. Pet. 51–70. Petitioner supports its
analysis with testimony from Mr. Denning. See Denning Decl. ¶¶ 155–200;
Denning Reply Decl. ¶¶ 48–67. Patent Owner, relying on the testimony of
Mr. Lanning, argues that Petitioner does not show that the challenged claims
are unpatentable. See, e.g., PO Resp. 30–36, 38–41, 47–52; PO Sur-reply
11–15, 24–27. For the reasons set forth below, we determine that Petitioner
has shown that claims 10, 15–18, 31, and 33–35 are obvious over the
combined teachings of Gilhousen865 and Gilhousen390.
Independent Claim 10
(i) “movable base station configured to move relative to Earth”
Petitioner identifies Gilhousen865’s repeater 210 as the “movable
base station” recited in the preamble of claim 10. Pet. 55. Petitioner shows
that the repeater “functions both to provide outgoing calls from the
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radiotelephone to the ground base station, and incoming calls originating
from the ground subsystem to the airborne radiotelephone.” Id. (citing
Ex. 1009, 2:56–63). Also, “[b]ecause the repeater is installed in an airplane,
it would have been obvious to a [person of ordinary skill in the art] that the
repeater is ‘configured to move relative to Earth.’” Id. (emphasis omitted).
Relying on the construction of “configured to” as “constructed to
move with the traffic at a rate of speed which is comparable to the speed of
the traffic,” Patent Owner contends this preamble limitation is not met: “An
airplane does not move with traffic as it is not bound to predetermined
roads.” PO Resp. 48 (citing Lanning Decl. ¶ 141). Petitioner responds that
the term “traffic” should not be confined to “predetermined roads.” Pet.
Reply 17.
As discussed in Section III.B.2 above, we apply the proposed
construction of “configured to” in the preamble as “constructed to move
with the traffic at a rate of speed which is comparable to the speed of the
traffic.” However, as noted, Patent Owner would require the “traffic” in the
district court’s construction to be “bound to predetermined roads.” PO Resp.
48. We see no proper basis in the language of the claims, the Specification
of the ’701 patent, or its prosecution history to limit the claims to require
“predetermined roads.” The ’701 patent’s references to “pedestrian traffic”
(Ex. 1001, 2:40–43, 3:15–19, 4:46–49) further persuade us that Patent
Owner’s proposed narrowing of the term “traffic” as requiring
“predetermined roads” is contrary to the intrinsic record. We, therefore, find
that the preamble (whether or not limiting) is met by Gilhousen865’s
disclosure of a repeater in an airplane, which moves at speed comparable to
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air traffic. See Denning Reply Decl. ¶ 52 (citing Ex. 1036, 611, a dictionary
definition of “traffic” that includes air traffic).
(ii) “a plurality of spatially separated antennas”
Petitioner asserts that the recited “plurality of spatially separated
antennas” is taught by Gilhousen390’s two separate antennas for space
diversity reception. Pet. 56 (citing Ex. 1007, 14:37–39; Denning Decl.
¶ 167). Patent Owner does not dispute this limitation. We find that this
element is met by Gilhousen390.
(iii) “a receiver configured to receive fixed port signals from a fixed
port through the plurality of spatially separated antennas” and “a
transmitter configured to transmit radio frequency signals to a
mobile device corresponding to the received fixed port signals”
Petitioner identifies Gilhousen865’s repeater 210 as the “receiver” and
“transmitter” recited in claim 10. Pet. 57–58, 60. This relationship is
illustrated by Figure 1 of Gilhousen865, reproduced below as annotated by
Petitioner:

Figure 1 of Gilhousen865 (annotated) shows
an airborne radio telephone system.
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Pet. 58. Petitioner shows that repeater 210 in the aircraft includes a receiver
that facilitates communication between a radiotelephone in the aircraft and a
ground-based base station (fixed port), in part by receiving signals (fixed
port signals) from the ground-based base station. Id. at 57–59. Petitioner
also shows that the repeater includes a transmitter that sends signals from the
ground-based stations received by the external antenna of the airborne
system to the radiotelephones. Id. at 60 (quoting Ex. 1009, 3:55–57; citing
Denning Decl. ¶ 172).
Referring back to its proposed claim construction, Patent Owner
contends, “[w]hile Gilhousen865 does disclose radiotelephones,
Gilhousen865 does not disclose a transmitter configured to transmit radio
frequency signals to a radiotelephone that registers with or is capable of
directly communicating with the cellular network as required by the
limitation of a ‘mobile device.’” PO Resp. 49; see also discussion at Section
III.B.4 above. Because we have not adopted Patent Owner’s claim
construction for “mobile device,” Patent Owner’s arguments are not
persuasive.
We also find that, contrary to Patent Owner’s arguments (PO Resp.
49–50), there is no the additional requirement that the mobile device must be
“capable of being switched back-and-forth between either a direct
connection with the fixed base station or a connection with a moving base
station.” Id. at 50. We see no support for this additional requirement in the
language of the claims, the Specification, or the prosecution history of the
’701 patent. Consequently, we do not credit Patent Owner’s argument that
Gilhousen865 does not have this capability. Id.
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Petitioner argues that even under Patent Owner’s construction of
“mobile device,” Gilhousen865 meets this limitation. Pet. Reply 18–20;
Denning Reply Decl. ¶¶ 55–60. We agree with Petitioner and find that this
limitation would be met even if we had adopted Patent Owner’s construction
for “mobile device.” Gilhousen865 explicitly teaches that the
radiotelephones register with a base station in a cellular network. Ex. 1009,
3:57–59 (“This enables the radiotelephones to search for the strongest pilot
signal of the next cell and register with that base station.”), cited in Pet.
Reply 19. Moreover, Gilhousen865 describes that the radiotelephones
operate using the industry standard for cellular networks. Ex. 1009, 2:65–
3:2; Denning Reply Decl. ¶ 60. We find that such phones would be capable
of direct communication with the cellular network. Id.
For the reasons given by Petitioner and summarized above, we find
that Gilhousen865’s radiotelephone teaches a “mobile device” as claimed
and that repeater 210 meets the “receiver” and “transmitter” requirements of
claim 10. See, e.g., Denning Decl. ¶¶ 168–169, 172–173; Denning Reply
Decl. ¶¶ 55–60.
(iv) “a controller configured to align and combine the received
fixed port signals”
Petitioner identifies Gilhousen390’s diversity combiner 104, which
“adjusts the timing of the two streams of received signals into alignment,” as
the recited “controller.” Id. at 59 (citing Ex. 1007, 13:22–25) (emphasis
removed). Patent Owner does not dispute this limitation. We find that this
element is met by Gilhousen390.
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(v) Rationale for Combining Gilhousen865 and Gilhousen390
Petitioner, relying on Mr. Denning’s testimony, provides a rationale
for combining Gilhousen865 and Gilhousen390. See, e.g., Pet. 51–55. In
response to Petitioner’s rationale for combining Gilhousen865 and
Gilhousen390, Patent Owner makes several arguments alleging Petitioner
has not provided sufficient reasoning to support the combination of
Gilhousen865 and Gilhousen390. PO Resp. 30–35, 38–41. We have
considered Patent Owner’s arguments and find them unpersuasive. Below,
we first address Petitioner’s rationale and then Patent Owner’s responsive
arguments.
Petitioner provides evidence of a rationale to combine the references:
“Deleterious effects on wirelessly-transmitted signals, such as fading,
interference, and other degradations to signal quality were well-known at the
time of the ’701 patent.” Pet. 52 (citing Denning Decl. ¶ 158). Thus, a
person of ordinary skill “would have been motivated to look to the prior art,
such as Gilhousen390, for methods of reducing the negative effects on
signals during wireless transmission.” Id. at 53. Petitioner continues: “In
order to counter the negative effects of fading, Gilhousen390 describes
employing various configurations to achieve signal diversity at the receiver.”
Id. Petitioner further asserts: “Based on the teachings of Gilhousen390, a
[person of ordinary skill in the art] would have been motivated to modify
Gilhousen865’s system with any one or more of the signal diversity
configurations of Gilhousen390 at least for the purpose of reducing the
errors caused by well-known deleterious effects on wirelessly-transmitted
signals.” Id. at 54 (citing Denning Decl. ¶ 161). Relying on testimony from
Mr. Denning, Petitioner further asserts “[m]odifying Gilhousen865 in this
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manner would have required minimal modifications.” Id. at 54 (citing
Denning Decl. ¶ 161).
Patent Owner makes several arguments challenging Petitioner’s
motivation to combine Gilhousen865 and Gilhousen390 and reasonable
expectation of success. PO Resp. 30–35, 38–41. First, Patent Owner
contends that “Gilhousen390’s CDMA signal diversity configurations will
not work if employed on Gilhousen865’s high speed airborne repeater.” Id.
at 38–39. According to Patent Owner, “Gilhousen390’s CDMA signal
diversity configuration cannot increase the power of Gilhousen865’s
airborne repeater fast enough to compensate for the transmitted signal fading
that is occurring on the connection with the base station due to the high
speed of Gilhousen865’s airborne repeater.” Id. at 39; see also id. at 41
(discussing speed of a commercial jet). As a result, “with this combination,
any calls in progress will be dropped because handovers cannot occur.” Id.
Petitioner responds that “Gilhousen865’s communication system is a
CDMA communication system,” and, consequently, the system “would have
considered the power control and other features of CDMA systems to
operate in its preferred embodiment––on a plane.” Pet. Reply 23–24.
Petitioner also responds that Patent Owner’s presumed rate of speed for an
aircraft is “exaggerated,” using the Cessna 152 airplane as an example. Id.
at 24.
We do not need to reach the question of whether the proposed
combination would work on the Cessna 152 (which Patent Owner contends
went out of production in 1985). PO Sur-reply 14. The flaw in Patent
Owner’s argument is the same as that discussed above with respect to the
Ito/Gardner combination; namely, Patent Owner assumes that the person of
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ordinary skill (a highly trained and experienced engineer) would not be able
to resolve the technical issues hypothesized by Patent Owner’s expert, Mr.
Lanning. As stated previously, we find Mr. Lanning’s testimony on this
issue is out of step with the Supreme Court’s admonition in KSR that the
person of ordinary skill is a person of “ordinary creativity,” not “an
automaton.” KSR, 550 U.S. at 421; ClassCo, 838 F.3d at 1219 (stating “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.’”). For this reason, we credit Mr. Denning’s testimony that a person
of ordinary skill would have been motivated to combine the teachings of
Gilhousen865 and Gilhousen890 with a reasonable expectation of success.
See Denning Decl. ¶¶ 155–162; Denning Reply Decl. ¶¶ 64–67.
Second, Patent Owner argues that Petitioner’s rationale for combining
Gilhousen865 and Gilhousen390 and the supporting testimony from Mr.
Denning are “conclusory.” PO Resp. 32 (asserting the Petition merely
contains “conclusory assurances that a person of ordinary skill could
combine Petitioner’s prior art references, but the Petition never actually
articulates how the POSITA could do so.”). We disagree with Patent
Owner’s criticism of Mr. Denning and credit Mr. Denning’s testimony. See
Denning Decl. ¶¶ 155–162; Denning Reply Decl. ¶¶ 64–67. As previously
discussed, we find that Petitioner’s explanation of the rationale for
combining the teachings of the cited references and Mr. Denning’s
testimony are supported by the record and are not conclusory.
Third, Patent Owner argues that the Petition does not supply
“sufficient detail how to combine” Gilhousen390 and Gilhousen865, or
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sufficiently demonstrate “a reasonable expectation of success.” PO Resp.
31–35. We find that Petitioner provides a sufficiently detailed explanation
of how the references could have been combined. As discussed with respect
to Patent Owner’s arguments regarding the Ito/Gardner combination, the
’701 patent states that the invention uses “well-known” equipment and
functions. See Denning Decl. ¶ 162 (“[T]he proposed combination of
Gilhousen865 and Gilhousen390 would involve nothing more than
incorporating well-known concepts (i.e., Gilhousen390’s diversity
techniques) into a well-known system (i.e., Gilhousen865 radio
communication system).”). As the Federal Circuit stated in Rothman v.
Target Corp., 556 F.3d 1310, 1319 (Fed. Cir. 2009): “[T]his invention falls
into a very predictable field. In the predictable arts, a trial record may more
readily show a motivation to combine known elements to yield a predictable
result, thus rendering a claimed invention obvious.”
We find that Petitioner has demonstrated by a preponderance of the
evidence that a person of ordinary skill would have combined Gilhousen390
and Gilhousen865 with a reasonable expectation of success. We conclude
that, for the reasons discussed, Petitioner has demonstrated that claim 10
would have been obvious over those references.
Claims 15–18, 31, and 33–35
Petitioner also provides a detailed analysis explaining where the
combination of Gilhousen865 and Gilhousen390 teaches or suggests the
limitations in claims 15–18, which depend from independent claim 10, and
claims 31 and 33–35. Pet. 60–70; Denning Decl. ¶¶ 174–200. Patent Owner
does not address claims 15–17, 31, 33, and 34 separately from claim 10. PO
Resp. 30–35, 38–41, 47–50. We find, for the reasons given by Petitioner
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and those discussed above for claim 10, that Gilhousen865 and
Gilhousen390 disclose each of the limitations in these claims.
Claims 18 and 35
Claim 18 depends directly from claim 17 and indirectly from claim
10, and claims 17 and 18 recite how the “moveable base station” is
“conveyed.” In particular, claim 17 recites that “the movable base station is
conveyed by a vehicle,” and claim 18 recites that “the vehicle is an
automotive vehicle.” Ex. 1001, 12:22–25. Claim 35 depends from claims
31 and 34 and recites subject matter similar to claim 18. Ex. 1001, 13:33–
34. Petitioner asserts that Gilhousen865’s repeater, the claimed “mobile
base station,” is mounted on an airplane, which is an “automotive vehicle.”
Pet. 63 (citing Ex. 1009, 2:45–49; Ex. 1003 ¶ 182); see also Pet. Reply 20–
22. In addition to its arguments directed to claim 10, which are discussed
above, Patent Owner also argues that Petitioner has not shown that
Gilhousen865’s airplane is an “automotive vehicle.” PO Resp. 51–52.
Patent Owner’s arguments are not persuasive. While we agree with
Petitioner and find that an airplane is a “vehicle” as recited in claim 17,
whether an airplane is an “automotive vehicle” is another issue. However,
we need not resolve that issue because we agree with Petitioner that
Gilhousen865 suggests that the teachings of that reference would be
applicable to an automobile-based system. Pet. Reply 18 (citing Ex. 1009,
2:37–42). Petitioner supports this with testimony from Mr. Denning.
Denning Reply Decl. ¶ 54 (“[A person of ordinary skill] would have found it
obvious to apply Gilhousen’s teachings to an automobile-based system for
use on ‘predetermined roads.’”). We find Mr. Denning’s testimony credible,
especially in light of the high level of ordinary skill in the relevant art, which
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encompasses all wireless communications systems, without regard to where
they are located, and the discussion in Gilhousen865 of the similarity
between the disclosed airborne system and ground-based radiotelephone
systems. Ex. 1009, 3:11–13. We conclude that, for the reasons given,
Petitioner has demonstrated by a preponderance of the evidence that claims
18 and 35 would have been obvious over Gilhousen865 and Gilhousen390.
Summary of Claims 10, 15–18, 31, and 33–35
For the reasons presented in the Petition and those discussed above,
we determine that Petitioner has proven by a preponderance of the evidence,
supported by expert testimony and by the references themselves, that the
combination of Gilhousen865 and Gilhousen390 teaches or suggests each
element of claim 10, 15–18, 31, and 33–35 and that a person of ordinary
skill in the art would have had reason to combine the teachings of
Gilhousen865 and Gilhousen390 in the manner asserted. Thus, these claims
are unpatentable as being obvious over Gilhousen865 and Gilhousen390.
F. Constitutional Challenge
Patent Owner contends that “adjudication of the ’701 patent violates
the U.S. Constitution” because “the current structure of the Board violates
the Appointments Clause of Article II.” PO Resp. 52–53.
In Arthrex v. Smith & Nephew, 941 F.3d 1320, 1338 (Fed. Cir. 2019),
the Federal Circuit determined that the current structure of the Board does
not violate Article II as of the date of that precedential decision. See also
Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020)
(Moore, J., concurring in denial of rehearing) (“Because the APJs were
constitutionally appointed as of the implementation of the severance, inter
partes review decisions going forward were no longer rendered by
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unconstitutional panels.”). Furthermore, in Arthrex the Federal Circuit
found “no constitutional infirmity in the institution decision as the statute
clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.”
941 F.3d at 1340.
Therefore, we disagree with Patent Owner that this Final Written
Decision and our Institution Decision are “invalid.” PO Resp. 53.
IV. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 10, 15–18, 31,
and 33–35 of the ’701 patent are unpatentable.
A summary of our conclusions is set forth in the table below.

V. ORDER
It is, therefore,
ORDERED that inter partes review of claims 10, 15–18, 31, and 33–
35 of the ’701 patent are not patentable;
FURTHER ORDERED that because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims 35 U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
10, 15–18,
31, 33–35
103(a) Ito, Gardner 10, 15–18, 31,
33–35

10, 15–18,
31, 33–35
103(a) Gilhousen865,
Gilhousen390
10, 15–18, 31,
33–35

Overall
Outcome
10, 15–18, 31,
33–35

IPR2019-01102
Patent 7,848,701 B2

55

PETITIONER:
Ryan Richardson
Michael Specht
Lauren Schleh
Daniel Yonan
STERNE KESSLER GOLDSTEIN & FOX
rrichardson-ptab@sternekessler.com
mspecht-ptab@sternekessler.com
lschleh-ptab@sternekessler.com
dyonan-ptab@sternekessler.com

PATENT OWNER:

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

Charles Gavrilovich
Elvin Smith
chuck@gdllawfirm.com
esmith@eeslaw.com