Carucel Investments, LP

Patent Trials and Appeals Board

Nov 20, 2020

IPR2019-01105 (P.T.A.B. Nov. 20, 2020)

Trials@uspto.gov Paper: 27
571-272-7822 Entered: November 20, 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.

IPR2019-01105
Patent 8,718,543 B2

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

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

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I. INTRODUCTION
A. Background
Volkswagen Group of America, Inc. (“Petitioner” or “Volkswagen”)
filed a Petition requesting inter partes review of claims 10, 12, 13, 18–21,
23, 25, 26, 44, 45, and 49–55 (the “challenged claims”) of U.S. Patent
No. 8,718,543 B2 (Ex. 1001, “the ’543 patent”). Paper 2 (“Pet.”). Carucel
Investments, L.P. (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). With our authorization, Petitioner filed a reply addressing
the issue of multiple petitions raised in the Preliminary Response. Paper 7.
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 8
(“Institution Dec.”).
Following institution, Patent Owner filed a Response. Paper 16 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 19, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 22, “PO
Sur-reply”).
On September 2, 2020, we held a consolidated oral hearing with
several related cases involving Patent Owner.1 A transcript of the hearing is
included in the record. Paper 26 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a). For the reasons we discuss
below, we determine that Petitioner has demonstrated by a preponderance of
the evidence that claims 10, 12, 13, 18–21, 23, 25, 26, 44, 45, and 49–55 of
the ’543 patent are not patentable.

1IPR2019-01079 (Patent 7,979,023 B2), IPR2019-01101 (Patent 7,221,904
B1), IPR2019-01102 (Patent 7,848,701 B2), and IPR2019-01103 (Patent
7,979,023 B2).
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B. Related Proceedings
The parties identify the following pending district court proceedings
involving the ’543 patent: Carucel Investments, LP v. Fiat Chrysler
Automobiles US LLC et al., 3:18-cv-03331 (N.D. Tex.); Carucel
Investments, LP v. General Motors Company, 3:18-cv-03332 (N.D. Tex.);
Carucel Investments, LP v. Volkswagen Group of America, Inc., 3:18-cv-
03333 (N.D. Tex.); and Carucel Investments, LP v. Mercedes-Benz USA, et
al., 3:18-cv-03334 (N.D. Tex.). Pet. 4; Paper 4, 1.
The ’543 patent was also asserted in Carucel Investments, LP v.
Novatel Wireless, Inc., 16-cv-118 (S.D. Cal.) (“the Novatel litigation”),
resulting in a jury verdict of non-infringement. See Ex. 2106, 2–5 (Order on
Carucel’s motion for JMOL or new trial).
In addition to this Petition, the ’543 patent was challenged by the
same Petitioner in IPR2019-01106 (institution denied) and by a different
party in IPR2019-01441 and IPR2019-01644. Patents related to the ’543
patent are challenged in IPR2019-01101, IPR2019-01102, IPR2019-01103,
IPR2019-01104, and IPR2019-01079. Paper 4, 1.
C. Real Party-in-Interest
Petitioner identifies itself, Volkswagen Group of America, Inc., as the
real party-in-interest. Pet. 2. Patent Owner identifies Carucel Investments,
L.P. as the real party-in-interest. Paper 4, 1.
D. The ’543 Patent
The ’543 patent is titled “Mobile Communication System with
Moving Base Station.” Ex. 1001, (54). According to the patent, “[a]
problem with existing mobile telephone systems is the considerable time
required in handoffs. This becomes a particular problem in urban areas
which are highly congested.” Id. at 1:60–62.
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The ’543 patent addresses this problem by providing “a moving base
station which is interposed between a moving mobile telephone unit and a
fixed base station.” Id. at 3:4–6. The “movable base station moves with the
traffic at a rate of speed which is comparable to the speed of the traffic and
communicates with a moving mobile telephone unit via standard mobile
radio transmission.” Id. at 3:7–10. The movable base station
“communicates by radio signals with a plurality of fixed antennas spaced
along the path of travel of the mobile base station.” Id. at 3:10–13.
This is illustrated by Figure 1 of the ’543 patent, reproduced below.

Fig. 1 is a block diagram representation of a roadway structure with fixed
base stations, moving base stations, and fixed radio ports. Id. at 3:46–48.
In Figure 1, a divided highway has mobile units 20 traveling on first
roadway 10, in one direction, and mobile units 25 traveling along second
roadway 15, in the opposite direction. Id. at 4:1–4. Moving base stations 30
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are disposed along one side of roadway 10. Id. at 4:5–6. The base stations
are spaced apart by a selected distance equivalent to the diameter of the cell
served by the moving base station. Id. at 4:6–8.
Moving base stations 30 may be moved by means of rail 35, or other
suitable conveying device, which may include an automotive vehicle
traveling on the roadway, in the same direction as the traffic flow on
roadway 10, as indicated by arrow 12. Id. at 4:8–12. Similarly, moving
base stations 40 are disposed along adjacent roadway 15, moving in the
direction of the traffic as indicated by arrow 17. Id. at 4:13–15. Moving
base stations 40 are moved along rail 45. Id. at 4:15–16.
In operation, base stations 30 move in the direction of the flow of the
traffic at a rate of, for example, 60 miles per hour, which may be faster than
some traffic and slower than other traffic. Id. at 4:41–44. The moving base
stations handle telecommunications with mobile units 25, which travel at a
rate of not more than 30 miles per hour faster or slower than the moving
base stations. Id. at 4:44–47. Fixed base stations 70 accommodate
communications with mobile units traveling at speeds of less than 30 miles
per hour, including pedestrian traffic and stationary units. Id. at 4:50–53.
According to the ’543 patent, the advantage of this system is reducing
the number of handoffs by moving the base station in the same direction as
the mobile unit:
The system in accordance with the invention differs from the
prior art primarily in that the base stations 30, 40 are moving
with the traffic and communicate with the gateway office 60 via
fixed radio ports 50. Furthermore, in the examples described
herein, the various call-handling functions, including handoff,
are performed by the moving base station. Advantageously,
because of movement of the base station in the same direction
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as the traveling mobile unit, the number of handoffs is greatly
reduced.
Id. at 5:12–21 (emphasis added).
Each of the moving base stations is provided with multiple antennas.
Id. at 5:22–23. Antennas 100 on moving base stations 30, 40 are used to
communicate with mobile units 20, 25, whereas antennas 101 on moving
base stations 30, 40 are used to communicate with fixed radio ports 50. Id.
at 5:28–31.
E. Illustrative Claim
The ’543 patent has 67 claims. Nineteen claims (claims 10, 12, 13,
18–21, 23, 25, 26, 44, 45, and 49–55) are challenged in the Petition. See
supra. Of the challenged claims, four claims (10, 21, 44, and 52) are
independent. Claim 10 recites:
10. An apparatus comprising:
a plurality of spatially separated antennas;
a receiver configured to receive, through the plurality of spatially
separated antennas, a plurality of cellular signals from a plurality
of base station interface circuits; and
a transmitter configured to transmit a mobile device radio
frequency signal to a mobile device moving relative to Earth
while the apparatus is moving relative to the plurality of base
station radio interface circuits and relative to Earth, the mobile
device radio frequency signal including data extracted from the
cellular signals.
Id. at 12:8–19.
F. References and Other Evidence
The Petition relies on the following references:
1. U.S. Patent No. 5,276,686, issued January 4, 1994 (Ex. 1004,
“Ito”)
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2. U.S. Patent No. 4,675,863, issued June 23, 1987 (Ex. 1005,
“Paneth”)
3. U.S. Patent No. 5,109,390, issued April 28, 1992 (Ex. 1006,
“Gilhousen390”)
4. U.S. Patent No. 5,504,786, filed October 5, 1993 (Ex. 1007,
“Gardner”)
5. U.S. Patent No. 5,566,209, filed February 10, 1994 (Ex. 1008,
“Forssén”). Pet. 5–7.
In addition, Petitioner submitted a Declaration of Zhi Ding, Ph.D.
(Ex. 1002, “Ding Decl.”) and a Reply Declaration of Dr. Ding. (Ex. 1026,
“Ding Reply Decl.”). Patent Owner submitted a Declaration of Mark A.
Lanning (Ex. 2100, “Lanning Decl.”). Both parties have submitted
deposition transcripts for these declarants.2
G. Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
following grounds.
Claim(s) Challenged 35 U.S.C. § References
10, 12, 19–21, 23, 26,
44, 50–53
103(a) Ito, Paneth
13, 25, 45, 55

103(a) Ito, Paneth, Gilhousen390
18, 49

103(a) Ito, Paneth, Gardner
54

103(a) Ito, Paneth, Forssén
Pet. 7.

2 Ex. 1029 (“Lanning I Dep.”); Ex. 1030 (“Lanning II Dep.”); Ex. 1031
(“Lanning III Dep.”); Ex. 1032 (“Lanning IV Dep.”); Ex. 2108 (“Ding
Dep.”).
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II. PRELIMINARY MATTERS
A. Level of Ordinary Skill
Petitioner contends: “A person of ordinary skill in the art . . . at the
time of the claimed invention 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. 15 (citing Ding
Decl. ¶¶ 30–32).
Patent Owner contends a person of ordinary skill in the art “at or near
the filing date of the earliest priority application of the ’543 Patent would
have had (i) a Bachelor of Science degree in electrical engineering or
computer engineering or related field of study; (ii) at least two years of
experience with wireless communications systems; and (iii) would also be
familiar with cellular communication technology.” PO Resp. 8. Further,
Patent Owner contends “[a] lack of experience can be compensated with
additional education and a lack of education can be compensated with
additional work experience. Id. (citing Lanning Decl. ¶ 54).
The formulations differ slightly, in that Patent Owner’s formulation
specifically calls for familiarity with cellular communication technology,
whereas Petitioner’s formulation is more general, requiring a comparable
level of experience with mobile wireless communications.
We regard these formulations as not materially different, however,
because familiarity with mobile wireless communications would normally
include knowledge of cellular communication technology. Both definitions,
also, are consistent with the prior art before us and with the level of skill
reflected in the ’543 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). As
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the definitions are not materially different, we adopt Patent Owner’s more
specific description, with the exception of the open-ended language “at
least.” However, we would reach the same result on the ultimate question of
obviousness of the ’543 patent under either formulation.
B. Claim Construction
An amendment to the rules changing the claim construction standard
applies here because the Petition was filed after November 13, 2018, the
effective date of the amendment. See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent
Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (now codified
at 37 C.F.R. § 42.100(b) (2019)). Thus, for this inter partes review, the
Board applies the same claim construction standard as that applied in federal
courts. See id.
In this context, claim terms “are generally given their ordinary and
customary meaning” as understood by a person of ordinary skill in the art in
question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (citations omitted) (en banc). “In determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
than the intrinsic record in determining ‘the legally operative meaning of
claim language.’” Phillips, 415 F.3d at 1317.
Initially, neither party proposed any claim constructions for our
consideration. Pre-institution, Petitioner contended: “all claim terms should
receive their plain and ordinary meaning, in the context of the ’543 patent
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specification, under the Phillips standard.” Pet. 16–17. 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. 4. In our
Institution Decision, we did not see the need to construe any terms.
Institution Dec. 8–9.
Post-institution, Patent Owner now seeks construction of the
following terms appearing in the challenged claims: “base station [radio]
interface circuit” and “mobile device.” PO Resp. 10–13. Petitioner
responds that “these terms do not require construction.” Pet. Reply 3.
Petitioner “specifically disagrees” with Patent Owner’s proposed
construction of “mobile device.” Id. at 4.
1. “base station [radio] interface circuit”
Patent Owner asserts that the district court in the Novatel litigation
construed this term as “a [radio transceiver] circuit in a base station that can
transmit and receive cellular signals.” PO Resp. 10 (alteration in original).
Patent Owner urges us to adopt this construction. Id.
Petitioner responds that express construction of this term is
unnecessary “to resolve a controversy.” Pet. Reply 3 (“[Patent Owner] does
not rely on its proposed construction for this term to rebut any positions
taken by [Petitioner].” (citing Ding Reply Decl. ¶¶ 8–9)). Patent Owner
does not rebut this contention in its Sur-reply.
We agree that this term does not require construction to resolve a
controversy, and therefore, we do not adopt Patent Owner’s proposed
construction. Pet. Reply 3 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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2. “mobile device”
Prior to institution, neither party advanced a construction for this term,
which now lies at the center of this controversy. Patent Owner now asks us
to construe “mobile device” as “a device that must register with and be able
to directly communicate with the cellular network.” PO Resp. 10. Patent
Owner asserts that this construction also includes the “capability to be
switched back-and-forth between either a direct connection with the fixed
base station or a connection with a moving base station.” Id. at 11. Patent
Owner also argues: “A mobile device is more than just a cordless phone
handset.” Id.
To support this construction, Patent Owner relies on the ’543 patent
specification: “The ’543 Patent specification teaches that a mobile device
must be capable of directly communicating with either a fixed cellular base
station or a moving base station.” Id. (citing Ex. 1001, 4:50–53). According
to Patent Owner, “the mobile device’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, 11:1–6). Patent Owner
cites also the discussion of the mobile device in the ’543 patent (referred to
in the patent as a mobile unit) which describes registration:
When a mobile unit set is first powered up or first enters
a service area, the mobile unit must register in the manner
described earlier, by transmitting its unique address in the new
service area. The address will be received by the closest
moving base station 30 and transmitted via a fixed radio port
and the gateway switch 60 to the telephone network.
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Ex. 1001, 9:65–10:3 (partially quoted at PO Resp. 12). Patent Owner also
relies on testimony from its expert, Mr. Lanning. See PO Resp. 10–13
(citing Lanning Decl. ¶¶ 53, 60–64, 65, 70–74).
Petitioner responds that no special construction of “mobile device” is
necessary and opposes Patent Owner’s “overly narrow” construction on a
number of grounds. Pet. Reply 3–8. 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, Claim
Construction Order, 20 (“In its opening claim construction brief, [Carucel]
states that it no longer requests construction of the term ‘mobile unit.’”).
Further, Petitioner points out that the challenged claims are directed to the
mobile base station, and not to the mobile device, an element that is “merely
ancillary” to what is claimed and is not a “positively recited element.” Pet.
Reply at 5–6.
Petitioner contends also that Patent Owner’s construction is “wholly
inconsistent with the intrinsic record.” Id. at 6. Petitioner shows that the
claims themselves do not require the mobile device to perform registration
or communicate directly with a cellular network. Id. at 6–7. Also, Petitioner
shows that Patent Owner overlooks a portion of the specification of the ’543
patent disclosing that “the mobile unit does not receive communications
from the fixed port but only from the movable base station,” and describing
“eliminating any direct communication from the mobile unit to the fixed
radio port.” Id. at 7 (quoting Ex. 1001, 3:24–38, 4:50–56). Finally,
Petitioner points to statements describing “mobile units” made by the
applicant 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. 1025, 289).
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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.” Our reasoning follows.
As instructed by Phillips, we first look to the words of the claims.
Phillips, 415 F.3d at 1312. We find that the language of the challenged
claims does not support Patent Owner’s construction. For reasons discussed
by Petitioner, we find that the challenged claims themselves are not directed
to the mobile device. Pet. Reply 5–6; Ding Reply Decl. ¶¶ 12–14. The
challenged claims in the ’543 patent focus on the moving base station, not
the mobile devices. Ding Reply Decl. ¶ 13–14. 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. 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. In addition, the claims themselves do not specify a mobile device “that
must register with and be able to directly communicate with the cellular
network,” as required by Patent Owner’s construction.
We find, therefore, that Patent Owner’s contention that the mobile
unit must be able to communicate directly with the cellular network is not
supported by the claim language. In the challenged claims, it is the moving
base station (the “apparatus”) that communicates directly with the fixed
ports, not the mobile device. Pet. Reply 6–7; Ding Reply Decl. ¶ 15. Thus,
for example, claim 10 recites that the mobile base station has: “a receiver
configured to receive . . . a plurality of cellular signals from a plurality of
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base station interface circuits” and “a transmitter configured to transmit a
mobile device radio frequency signal to a mobile device.” Ex. 1001, 12:10–
15 (emphasis added); Ding Reply Decl. ¶ 14. Claim 10 does not recite any
“specific functionality” for the mobile device, or describe how the mobile
device receives or processes the radio signals received from the moving base
station. Id. Claim 10 does not require the mobile device to have any
functionality to communicate directly with a cellular network, bypassing the
claimed moving base “apparatus.” Id. Likewise, the other challenged
independent claims focus on describing the moving base “apparatus,” not the
mobile device. Ex. 1001, 12:57 (claim 21), 15:60 (claim 44), 16:32 (claim
52); see also discussion supra. The challenged claims, therefore, do not
require the mobile device to communicate directly with a cellular network.
Ding Reply Decl. ¶ 15. As Dr. Ding testifies: “The mobile device recited in
the claims receives and transmits signals from and to the claimed
‘apparatus.’ The apparatus then receives and transmits its signals from and
to a fixed base station . . . .” 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. Nor do the claims require
any “registration process” with a cellular network. Ding Reply Decl. ¶ 15.
Moreover, we find that the ’543 patent specification does not support
Patent Owner’s narrowing construction of “mobile device” as a phone
capable of communications directly with a cellular network. Ding Reply
Decl. ¶¶ 16–18; cf. PO Resp. 7–8, 12–13. 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
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disputed term.” Phillips, 415 F.3d at 1315 (internal quotation marks and
citation omitted).
First, we do not see in the specification of the ’543 patent a clear
indication supporting Patent Owner’s contention that conventional cordless
non-cellular phones should be excluded. Cf. PO Resp. 11 (“A mobile device
is more than just a cordless handset.”). In the Background section, the ’543
patent describes the goal of the patent as encompassing “all applications”
including cordless phones: “What is desirable is an infra structure which
allows the use of such terminals in all applications, whether in the home or
office as a cordless phone . . . .” Ex. 1001, 2:51–53 (emphasis added).
While the ’543 patent does refer to the base stations as “cell site[s]” (id. at
4:65–66), it also describes the radio interfaces between the mobile devices
and the fixed base stations in more general terms. Id. at 6:48–54. Thus, the
’543 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 6:54–55. This description is consistent with the
patent’s stated goal of providing “an infra structure which allows [the] use of
. . . a cordless phone.” Id. at 2:51–53.
Moreover, we find further support for our conclusion that Patent
Owner’s construction is too limiting in the ’543 patent’s description of an
embodiment where the mobile device is prevented from communicating
directly with the fixed ports. Pet. Reply 7 (citing Ex. 1001, 3:24–38). In
that embodiment, the power levels for the signals passing 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, 3:27–38.
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Phillips instructs us that the prosecution history may be relevant in
construing the claims. 415 F.3d 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 ’543 patent is a continuation of the ’904 patent
(via a chain of continuations) and shares a common specification3 and
similar claims with the ’904 patent. During prosecution of the ’904 patent,
in an appeal brief to the Board, the applicant did not limit the invention to
cellular devices but told the Board that 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.” Ex. 1025, 289 (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.” Pet. Reply 8; Ding
Reply Decl. ¶ 19–20.
Patent Owner asserts that its proposed construction reflects “the plain
and ordinary meaning” of the term “mobile device” under Phillips. PO
Resp. 10–13; PO Sur-reply 1–8. 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 ’543 Patent specification
also describes the invention as a whole and should be limited as such.” Id.
Patent Owner continues: “Specifically, the ’543 Patent relates to and

3 Although the specifications are not identical, the minor differences
between the specification of the ’904 patent and the specification of the ’543
patent are not pertinent to this discussion.
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describes as a whole improving the wireless connections of mobile devices
within cellular telephone systems via a moving base station.” Id. at 2–3.
We are not persuaded by these arguments, as they are contrary to the
claim language and the intrinsic evidence, discussed supra. The challenged
claims are focused on describing the moving base station, not the mobile
devices. Pet. Reply 5–6; Ding Reply Decl. ¶ 12. Patent Owner has asserted
that the invention of the ’543 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
discussion infra. While the ’543 patent may discuss cellular networks, we
find that the disclosure does not limit the recited “mobile device” to cellular
phones, for the reasons given above.
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. “To disavow claim scope, the specification must contain
‘expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson &
Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar v. Int’l Trade
Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)
(“Where the specification makes clear that the invention does not include a
particular feature, that feature is deemed to be outside the reach of the claims
of the patent, even though the language of the claims, read without reference
to the specification, might be considered broad enough to encompass the
feature in question.”).
Patent Owner cannot demonstrate a disavowal of mobile units that do
not communicate directly with a cellular system, either in the specification
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or prosecution history. As discussed supra, the ’543 patent claims are
directed to the mobile base station communicating with the cellular network,
and the specification describes an embodiment that prevents the mobile unit
from communicating with the fixed ports. The references to cellular
communications in the ’543 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 . . .
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, 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 device to “a
device that must register with and be able to directly communicate with the
cellular network.”
We do not find Patent Owner’s other authorities to be any more
persuasive. For example, in Personalized Media Communications, LLC v.
Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020) (cited at PO Sur-reply 4), the
Federal Circuit relied on facts not present here, namely, “[d]uring
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prosecution, the applicant repeatedly and consistently voiced its position that
encryption and decryption require a digital process in the context of the ’091
patent.” 952 F.3d at 1345. Moreover, the Court observed: “The applicant
never abandoned that position. Indeed, the applicant amended the claims—
giving rise to the claim term at issue on appeal—only to clarify its position
that ‘encryption requires a digital signal.’” Id. at 1345–46. As discussed
supra, the relevant prosecution history here does not include any such
repeated or consistent statements by Patent Owner excluding non-cellular
devices; in fact, the prosecution history of a closely related patent includes a
statement that radios and telephones are within the scope of the invention.
Ex. 1025, 289. 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 supra, and find that it does not
support Patent Owner’s construction for the reasons given there. Bell
Atlantic does not help Patent Owner’s argument.
The same is true of Patent Owner’s discussion of On Demand
Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006).
Id. As Patent Owner’s quotation from On Demand makes clear, it is not
necessary to find an explicit disavowal “when the scope of the invention is
clearly stated in the specification, and is described as the advantage and
distinction of the invention.” 442 F.3d at 1340 (quoted at PO Sur-reply 4).
However, in our analysis, supra, of Patent Owner’s position, we find that the
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scope of the invention and its advantages as described in the ’543 patent
specification center on the moving base station, not the mobile device. The
’543 patent specification, therefore, does not favor Patent Owner’s narrow
construction of “mobile device.” Thus, On Demand’s exception to the
normal requirement for an explicit disavowal is not applicable here.
We are not persuaded by Patent Owner’s listing of “examples” from
the ’543 patent that discuss communications with the fixed base stations
when traveling at speeds of less than thirty miles per hour. PO Sur-reply 3–
4. Those citations do not describe the communications as cellular
communications or the fixed base stations 70 as cellular sites, stating only
that their operation is “essentially the same as that of a standard fixed base
station.” Ex. 1001, 10:66–11:1.4
Nor are Patent Owner’s other citations to the various occurrences of
the term “cellular” in the ’543 patent persuasive. Cf. PO Sur-reply 5–6.
There is no dispute that improving cellular technology is included among the
goals described in the ’543 patent. However, Patent Owner fails to support
its argument that the ’543 patent “explicitly and exclusively relates to
improving the wireless connections of mobile devices within ‘cellular
telephone systems.’” Id. at 5 (original emphasis omitted; emphasis added).
We find, based on the analysis above, that the ’543 patent’s claims and
specification, and the prosecution history of a closely related patent reveal a

4 Patent Owner misquotes the ’543 patent’s description of the base station as
a “standard fixed base station” by inserting “cellular” before “fixed base
station.” PO Sur-reply 3. We find no support in the description of these
fixed base stations in the ’543 patent that limits them to “cellular” stations.

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broader goal of also improving wireless communications involving non-
cellular devices, such as radios and telephones.
Nor are we persuaded by Patent Owner’s suggestion that the
specification requires the mobile device to “be capable of registering with a
cellular network.” PO Resp. 12–13. Such a registration requirement is not
found in the claims or prosecution history. Registration with a base station
is mentioned in the ’543 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 to the fixed
base stations. Ex. 1001, 10:1–10:3 (“The address will be received by the
closest moving base station 30 and transmitted . . . to the telephone
network”). As discussed supra, 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 ’543 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 ’543 patent discloses registration by the mobile device, it describes
registering with the moving base station and not with the fixed base station.
Ex. 1001, 9:65–10:3. 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 ’543 patent or
the other intrinsic evidence, and therefore, we do not adopt a construction
that would limit “mobile devices” to cellular phones or other devices “that
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must register with and be able to directly communicate with the cellular
network,” and that would exclude conventional cordless phones.
We agree with Petitioner that no construction of “mobile device” is
necessary. Pet. 16; Pet. Reply 5.
C. Description of Prior Art References
Petitioner’s challenge primarily relies on Ito and Paneth. See Pet 7.
The remaining references (Gilhousen390, Gardner, and Forssén) are relied
on as additional secondary references to address certain limitations in
dependent claims. Id.
1. Ito (Exhibit 1004)
Ito is a patent titled “Mobile Radio Communication System Having
Mobile Base and Portable Devices as a Mobile Station.” Ex. 1004, (54). As
described in Ito, in known cellular mobile radio telephone systems, a mobile
station is connected by a radio channel to a base station for the radio
communication zone where it is currently located. Id. at 1:22–24. The
mobile stations are further connected to a wire telephone network by way of
the base station and a control station. Id. at 1:24–26. The automobile
telephone main unit and the handset assembly are connected by a signal
cord. The cradle and the handset are connected by a curled cord. Id. at
1:51–54. According to Ito, “[w]ith such an arrangement, the curled cord can
constitutes [sic] an annoying obstacle when the driver drives and speaks into
the telephone transmitter simultaneously. Moreover, the handset cannot be
moved away beyond a limit posed by the curled wire . . . .” Id. at 1:55–59.
To overcome these perceived problems, 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
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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. Id. at 5:16–18.
In Figure 6 of Ito, mobile base device MSS is wirelessly connected,
simultaneously, with two portable devices, PSS1 and PSS2. Ex. 1004,
12:52–56. Base station BSS and mobile base device MSS communicate
with each other by way of radio frequencies fT1 and fR1.5 Id. at 12:57–63.
Mobile base device MSS and portable devices PSS1 and PSS2 communicate
with each other by way of radio frequencies fTA and fRA. Id.
As described by Ito, referring to Figure 3 (not shown), mobile base
device MSS has two transmitter-receiver units. Id. at 7:9–12. The first
transmitter-receiver unit is used for radio communication with base station
BSS by way of a first radio channel. The second transmitter-receiver unit is
used for radio communication with its portable devices PSS by way of a
second radio channel. Id. at 7:12–17.

5 At Petitioner points out (Pet. 19 n.5), Figure 6 of Ito mislabels fT1 as fr1.
See Ex. 1004, 12:57–63.
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Further, Ito describes that high speed fading phenomena cause errors
in signals. Id. at 16:59–60. The rate of errors in signals due to the high
speed fading phenomena is increased due to the distance of a signal’s
communication path. See id. at 16:56–61. In particular, Ito describes that
the communication path between the mobile base device MSS and the
portable device PSS is shorter and, therefore, has a smaller rate of errors
than the communication path between the mobile base device MSS and the
base station BSS. Id. at 16:56–61.
2. Paneth (Ex. 1005)
Paneth is a patent titled “Subscriber RF Telephone System for
Providing Multiple Speech and/or Data Signals Simultaneously Over Either
a Single or a Plurality of RF Channels.” Ex. 1005, (54). Paneth describes a
wireless transmission system between a base station and a plurality of fixed
or moving subscriber stations. Id. at 1:16–20, 1:28–29. Paneth further
describes that a communications connection “can be ‘lost’ due to fading or
channel interference.” Id. at 26:53–54. Addressing that issue, Paneth’s
system uses a plurality of antennas selectively spaced from each other,
which achieves spatial diversity and thereby provides relatively high signal
reception despite signal fading. Id. at 1:33–36, 71:64–66. Thus, Paneth
states, in the Summary of the Invention section: “The system is provided
with spatial diversity by using a plurality of antennas selectively spaced
from each other to provide relatively high signal reception despite signal
fading.” Id. at 1:33–36.
Paneth’s Figures 2 and 3, respectively, illustrate a base station and a
subscriber station, each having a plurality of receiving antennas, and are
reproduced below.
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Figure 2 of Paneth depicts a base station and Figure 3 of
Paneth depicts a subscriber station. Id. at 3:64–68.
In Figure 2 of Paneth, a base station includes three receiver antennas
34a–34c placed an appropriate distance from each other in order to provide
spatially diverse signals. Id. at 10:12–15. Similarly, in Figure 3 of Paneth, a
subscriber station includes three separate antennas 32a–32c connected to
corresponding receiving (RX) units 31a–31c. Id. at 10:9–11. To operate
with diversity reception, the respective receiving antennas of the base station
and the subscriber station are separated by a distance great enough to ensure
that the fading characteristics of the signals received will be uncorrelated.
Id. at 72:10–14. As discussed above, diversity reception is used to reduce
the probability of experiencing signal fading. Id. at 71:64–66.
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3. Gilhousen390 (Exhibit 1006)
Gilhousen390 is a patent titled “Diversity Receiving in a CDMA
Cellular Telephone System.” Ex. 1006, (54). As described in
Gilhousen390, code division multiple access (CDMA) is a modulation
technique that facilitates cellular communications for a large number of
system users. Id. at 1:14–17. In particular, in Gilhousen390, mobile
telephone transceivers can communicate with terrestrial base stations or
satellite repeaters using CDMA. Id. at 1:31–37.
4. Gardner (Exhibit 1007)
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. 1007, (54). As described in Gardner, in
cellular communications, to achieve spatial diversity using two or more
antennas, signals from two antennas must be aligned in phase. Id. at 1:10–
19, 1:32–37. Gardner discloses a technique to align the phases of two
signals by detecting the phase difference between the signals. Id. at 2:64–
3:1.
5. Forssén (Exhibit 1008)
Forssén is a patent titled “Transceiver Algorithms of Antenna
Arrays.” Ex. 1008, (54). Forssén describes a transmitter and receiver set-up
for cellular communications using antenna arrays. Id. at 1:6–10. In
particular, Forssén discloses a transmitter that contains data splitters for
splitting data to be transmitted into a number of parallel data streams. Id. at
5:64–6:1. Resulting signals are then transmitted using the transmitter’s
antenna array. Id. at 6:16–20.
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III. ANALYSIS OF THE CHALLENGED CLAIMS
A. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called “secondary
considerations” may be found, including commercial success, long-felt but
unsolved needs, failure of others, and unexpected results. Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966) (“the Graham factors”).
Neither the Petition nor the Patent Owner Response presents evidence
on the fourth Graham factor. We, therefore, do not consider that factor in
this decision.
B. Ito and Paneth Challenges to Claims 10, 12, 19–21, 23, 26, 44,
and 50–53
Petitioner contends that claims 10, 12, 19–21, 23, 26, 44, and 50–53
would have been obvious over Ito in view of Paneth. Pet. 28. Petitioner’s
analysis first focuses on independent claim 10. Id. at 33.
1. Independent Claim 10
Petitioner’s element-by-element analysis of claim 10 in relation to Ito
and Paneth appears at pages 33–51 of the Petition. Petitioner supports its
analysis with testimony from Dr. Ding. Ding Decl. ¶¶ 113–137. Petitioner
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demonstrates that each element of claim 10 is disclosed or suggested by Ito
and Paneth.
a. An apparatus comprising:
Petitioner identifies mobile base device MSS in Ito as the “apparatus”
recited in the claim 10 preamble. Pet. 33; Ding Decl. ¶ 113–114. As Dr.
Ding testifies: “Similar to the mobile base station described in the
specification of the ’543 patent, Ito’s mobile base unit MSS is positioned
between a fixed base station and a portable communication device.” Ding
Decl. ¶ 114.
Patent Owner does not challenge Petitioner’s showing that Ito teaches
the preamble. We find that the preamble of claim 10 (whether or not
limiting) is taught by Ito.6
b. a plurality of spatially separated antennas
Petitioner relies on both Ito and Paneth to meet the recitation in the
claim of “a plurality of spatially separated antennas.” Pet. 34–38; Ding
Decl. ¶¶ 114–117. Petitioner explains that “[w]hile Ito describes the use of a
plurality of antennas that are physically separated, Ito does not explicitly
describe receiving signals through the plurality of antennas.” Pet. 34.
Petitioner relies on Paneth to provide this disclosure. Id. at 35–38.
Dr. Ding testifies that “Paneth describes a plurality of spatially
separated antennas capable of receiving and transmitting communication
signals. Paneth utilizes the well-known concepts of spatially separated
antennas.” Ding Decl. ¶ 117. Dr. Ding provides a detailed description of

6 We do not need to decide whether the preambles of claims 10, 21, 44, or 52
are limiting as we find that the references disclose the claimed “apparatus.”
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Paneth’s use of spatially separated antennas to receive signals and the
processing of those signals. Id. ¶¶ 116–117
Patent Owner does not challenge Petitioner’s showing that Ito and
Paneth disclose this limitation. For the reasons presented by Petitioner and
summarized supra, we find that the “spatially separate antennas” limitation
of claim 10 is met by Ito and Paneth. As we discuss infra, however, Patent
Owner challenges the motivation to combine Ito and Paneth in the manner
described by Petitioner.
c. a receiver configured to receive, through the plurality of
spatially separated antennas, a plurality of cellular signals from a
plurality of base station interface circuits; and

d. a transmitter configured to transmit a mobile device radio
frequency signal to a mobile device moving relative to Earth while the
apparatus is moving relative to the plurality of base station radio interface
circuits and relative to Earth, the mobile device radio frequency signal
including data extracted from the cellular signals.

Petitioner identifies Ito’s transmitter-receivers 50 and 80, respectively,
with the “receiver” and “transmitter” limitations recited in claim 10.
Pet. 38–39, 47–48.
Petitioner identifies Ito’s “first transmitter-receiver unit 50” with the
“receiver” in claim 10. Id. at 38–39 (citing Ex. 1004, 7:55–56. Fig. 3); Ding
Decl. ¶¶ 124–131. Petitioner explains that in Ito the first transmitter-
receiver is “for radio communication with the base station BSS [to which] it
belongs by way of a first radio channel.” Pet. 39–40 (quoting Ex. 1004,
7:12–17); Ding Decl. ¶ 123. Petitioner explains that in Ito, “the receiver of
its mobile base unit MSS operates in the context of a plurality of cellular
signals received from a plurality of base stations.” Pet. 40 (citing Ex. 1004,
1:15–20); Ding Decl. ¶ 124. Petitioner describes in detail the operation of
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the receiver, referring to Figure 1 of Ito, reproduced supra. Pet. 39–42; Ding
Decl. ¶¶ 123–124.
Petitioner acknowledges that “[w]hile Ito describes a receiver
configured to receive a plurality of cellular signals, Ito does not explicitly
describe the signals as being received through a plurality of spatially
separated antennas.” Pet. 41. As discussed supra, Petitioner relies on
Paneth for this teaching. Id. at 41–44; Ding Decl. ¶¶ 125–126.
Petitioner identifies Ito’s “second transmitter-receiver unit 80” with
the “transmitter” in claim 10. Pet. 47–48 (citing Ex. 1004, 7:9–17, Fig. 3);
Ding Decl. ¶¶ 132–137. Petitioner explains that this unit transmits and
forwards “the data extracted from the signal received from the base station
BSS to the portable device PSS.” Pet. 49 (citing Ex. 1004, 13:15–18); Ding
Decl. ¶ 135. In addition, Petitioner shows that mobile base device MSS and
portable device PSS device both move “relative to Earth” and “relative to
the plurality of base station radio interface circuits.” Pet. 50. Referring to
Figure 1, Petitioner explains that base stations BSS are fixed, while mobile
base devices MSS and portable devices PSS are located in an automobile
that moves relative to the different base stations BSS. Id. at 51 (citing
Ex. 1004, 12:11–24); Ding Decl. ¶¶ 136–137.
Referring back to its proposed claim construction, Patent Owner
contends that the “mobile device” limitation is not met by Ito. PO Resp. 36–
39. Patent Owner states: “While Ito does disclose a portable device (PSS),
Ito does not disclose a transmitter configured to transmit radio frequency
signals to a portable device that registers with or is capable of directly
communicating with the cellular network as required by the limitation of a
‘mobile device’ in the context of the entire ’543 Patent.” Id. at 36–37.
Patent Owner contends that Ito “does not disclose any ability of its portable
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device to register or directly communicate with a cellular network.” Id. at
37 (citing Lanning Decl. ¶¶ 148–149). Patent Owner further 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 37–
38.
Patent Owner’s arguments rely on its proposed construction of
“mobile device” as “a device that must register with and be able to directly
communicate with the cellular network.” See supra, Section II.B.2.
Because we have not adopted Patent Owner’s construction for “mobile
device,” we are not persuaded by those arguments.
We find that Ito’s portable device PSS meets the requirement of
claim 10 for a mobile device for the reasons given by Petitioner and
summarized supra. See Ding Decl. ¶ 133 (citing Ito’s Fig 6, reproduced
supra); Ding Reply Decl. ¶¶ 21–36. We further find that for the reasons
given, Ito and Paneth teach these limitations of claim 10. Pet. 38–51; Ding
Decl. ¶¶ 121–137. We find that Ito with Paneth meets the “receiver” and
“transmitter” limitations of claim 10 for the reasons given.
e. Ito and Paneth Disclose Claim 10
We find, therefore, that Petitioner has demonstrated that each element
of claim 10 is taught or suggested by Ito and Paneth for the reasons given by
Petitioner and summarized above. We find that Petitioner’s showings are
supported by the disclosures in Ito and Paneth, by the Petition, and by the
testimony of Petitioner’s expert, Dr. Ding. Ding Decl. ¶¶ 113–137; Ding
Reply Decl. ¶¶ 21–36.
As discussed supra, we have considered Patent Owner’s challenges to
Petitioner’s evidence that the elements of claim 10 are taught or suggested
by Ito and Paneth (PO Resp. 36–39), and find them unpersuasive.
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f. Rationale for Combining Ito and Paneth
Petitioner provides a persuasive rationale for combining Ito and
Paneth. Pet. 29–32. Petitioner explains that “Ito discloses a specific need
for reducing the effects of fading—e.g., disclosing that signals transmitted to
a moving device often have higher error rates due to ‘high speed fading
phenomena.’” Id. at 29 (citing Ex. 1004, 16:49–61). Petitioner further
explains that a person of ordinary skill “would have looked to the prior art,
such as Paneth, to determine how to combat the deleterious effects of fading
incumbent on signals transmitted to a moving device.” Id. (citing Ding
Decl. ¶ 106). Petitioner asserts that “Paneth explains that its ‘system is
provided with spatial diversity by using a plurality of antennas selectively
spaced from each other to provide relatively high signal reception despite
signal fading.’” Id. (citing Ex. 1005, 1:33–36). Thus, Petitioner asserts:
“[A person of ordinary skill] would have been motivated to combine the
plurality of spatially separated antennas described in Paneth with the mobile
base device described in Ito to aid in maintaining communications and to
allow for diversity in the reception of signals.” Id. at 30 (citing Ding Decl.
¶ 108).
Petitioner further asserts that Ito and Paneth “address the same
problem—improving the performance of wireless communication systems”
and that “a [person of ordinary skill] would have understood that
implementing Paneth’s plurality of spatially separated antennas with the
mobile base unit described in Ito would be merely combining known
elements to yield predictable results.” Id. at 30–31 (citing Ding Decl.
¶¶ 109–110).
Petitioner supports these assertions with testimony from Dr. Ding.
Ding Decl. ¶¶ 106–112. Dr. Ding testifies: “[I]n view of Ito’s disclosed
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goal of reducing the effects of fading . . . a [person of ordinary skill] would
have looked to the prior art, such as Paneth, for determining how to combat
the deleterious effects of fading incumbent on signals transmitted to a
moving device.” Id. ¶ 106. He testifies further that “a [person of ordinary
skill] would have been motivated to combine the plurality of spatially
separated antennas described in Paneth with the mobile base device
described in Ito to aid in maintaining communications and to allow for
diversity in the reception of signals.” Id. ¶ 108. He testifies further that “[a
person of ordinary skill] would have understood that combining the plurality
of spatially separated antennas described in Paneth with the mobile base
device MSS described in Ito would result in a simple substitution using
antennas 34 from Paneth with antenna 58 described in Ito.” Id. ¶ 111.
Dr. Ding provides an example of making the combination, using
Figure 3 from Ito and Figure 2 from Paneth. Id. ¶ 110; Ding Reply Decl.
¶ 42. Further, Dr. Ding testifies “the conventional signal processing
circuitry described in Paneth could also be combined with the mobile base
device MSS or the mobile base device MSS circuitry could be configured to
support communication through the plurality of spatially separated
antennas.” Ding Decl. ¶ 111.
Patent Owner disputes Petitioner’s evidence of a motivation to
combine the teachings of Ito and Paneth. PO Resp. 31–32. Patent Owner
contends “such a combination would not result in a mobile base unit that can
receive signals from a base station interface unit.” Id. Patent Owner
contends that such a combination “would result 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 Paneth, as Petitioner proposes,
this would result in an inoperable device, because it would be
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unable to correctly receive or process any signals from the
spatially separated antennas.
Id. at 31.
Patent Owner cites KSR, 550 U.S. at 418, as requiring the Board to
consider the motivation to combine in determining obviousness. PO Resp.
29. But, as the Federal Circuit has emphasized, in analyzing obviousness,
KSR assumes that the person of ordinary skill “is not an automaton”:
KSR does not require that a combination only unite old
elements without changing their respective functions. Instead,
KSR teaches that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” And it explains that the
ordinary artisan recognizes “that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”
ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (citations
omitted). The Federal Circuit further cautioned, in ClassCo, that “the
rationale of KSR does not support [the] theory that a person of ordinary skill
can only perform combinations of a puzzle element A with a perfectly fitting
puzzle element B.” Id.
We disagree with Patent Owner’s assertion that a motivation to
combine Ito and Paneth is lacking. We find that Petitioner has provided
persuasive evidence of such a rationale. Pet. 29–32; Ding Decl. ¶¶ 106–112;
Ding Reply Decl. ¶¶ 37–48; see discussion supra. Given the high level of
ordinary skill in the pertinent art before us, we find that a person having such
ordinary skill (an experienced wireless communications systems engineer
“familiar with cellular communication technology”) would have readily
recognized that combining Ito and Paneth would have the advantages
identified by Petitioner. Pet 29–32; Ding Decl. ¶¶ 106–109. Moreover, we
find that such a highly skilled person would have been able to combine the
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teaching of those references with a reasonable expectation of success. Ding
Decl. ¶¶ 110–112. As Dr. Ding testifies, “a [person of ordinary skill] would
have been motivated to combine and could have easily implemented
Paneth’s plurality of spatially separated antennas with Ito’s mobile base
device MSS.” Id. ¶ 112; Ding Reply Decl. ¶ 44. He further testifies “the
proposed combination of Ito and Paneth would involve nothing more than
incorporating a well-known concept (i.e., Paneth’s spatial diversity by using
a plurality of antennas) into a well-known system (i.e., Ito’s radio
communication system).” Ding. Decl. ¶ 112. And he provides an example
of such a combination. Id. ¶ 110.
We find, therefore, that for these reasons, Petitioner has demonstrated
by a preponderance of the evidence, including expert testimony and the
references themselves, a motivation to combine the teachings of Ito and
Paneth with a reasonable expectation of success.
We are not persuaded by Patent Owner’s argument that combining Ito
and Paneth “would have required much new circuitry—not disclosed in
either Ito or Paneth.” PO Resp. 32. Nor are we persuaded by Mr. Lanning’s
testimony that Dr. Ding’s example of how the teachings of Ito and Paneth
might be combined “would not work because the circuitry of Ito does not
support the control or the processing of multiple signals that are being
received from multiple antennas.” Lanning Decl. ¶ 128.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284,
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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 Dr. Ding’s description of how a person of ordinary skill would have
approached making the combination of these known techniques of using
spatially separated antennas. See Ding Decl. ¶¶ 110–112. As Dr. Ding
points out in his testimony, “Ito and Paneth overlap and use common
circuitry—such as receivers and modems . . . to process signals received
from antennas.” Ding Decl. ¶ 112. And the ’543 patent itself states:
“Various techniques for obtaining high antenna diversity are well known in
the art and antennas employing such techniques are commercially
available.” Ex. 1001, 6:31–33.
We are not persuaded by the testimony of Patent Owner’s expert, Mr.
Lanning, on this issue. Cf. Lanning Decl. ¶¶ 124–131. His testimony
mirrors arguments in Patent Owner’s response about the combination of Ito
and Paneth resulting in an “inoperable device” and requiring “new
circuitry.” See id. ¶¶ 124, 128. As discussed supra, we find that those
arguments are unpersuasive and contrary to KSR, and Mr. Lanning’s
testimony is similarly unpersuasive.
We have considered Patent Owner’s additional arguments on the issue
of combining the references and find them also unpersuasive. For example,
Patent Owner argues that the supporting testimony from Dr. Ding is
“conclusory” and “entitled to little or no weight.” PO Resp. 18–21. We
disagree with Patent Owner’s criticism of Dr. Ding’s testimony, which we
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find helpful on this issue, particularly his example of how Ito and Paneth
could be combined. Ding Decl. ¶¶ 110–111. For the reasons stated above,
we find Petitioner’s analysis of this challenge and the supporting testimony
from Dr. Ding, including his explanation of the rationale for combining the
teachings of the references, to be credible and supported by the cited
evidentiary record.
Nor do we agree with Patent Owner that the Petition does not supply
“sufficient detail” on “how to combine” Ito and Paneth (and the other
references). PO Resp. 22–27. According to the ’543 patent, the invention
uses “well-known” equipment and functions. See, e.g., Ex. 1001, 4:30, 5:7–
8, 5:25, 5:55, 5:67, 6:21, 6:32, 6:50, 6:55, 6:64, 9:21–22, 9:34, 9:63. We
find Mr. Lanning’s testimony raising various technical problems in
combining circuitry from a fixed base station into a movable base station
(Lanning Decl. ¶¶ 125–130) to be inconsistent with the admonition by the
Federal Circuit that “[t]he rationale of KSR does not support [the] theory that
a person of ordinary skill can only perform combinations of a puzzle
element A with a perfectly fitting puzzle element B.” ClassCo, Inc., 838
F.3d at 1219. In contrast, Dr. Ding provides an example of how Ito and
Paneth could have been combined. Ding Decl. ¶¶ 110–111; Ding Reply
Decl. ¶ 42. We are not persuaded that a more detailed explanation of how to
combine such “well-known” equipment is required by KSR.
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Ito in combination with Paneth discloses or suggests each
element of claim 10, and further, that it would have been obvious to combine
the teachings of those references as proposed by Petitioner with a reasonable
expectation of success. Based on Petitioner’s analysis and for the reasons
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explained above, we find Petitioner has shown by a preponderance of
evidence that claim 10 would have been obvious in light of Ito and Paneth.
2. Independent Claims 21, 44, and 52
Petitioner’s obviousness analysis of claim 21 in light of Ito and Paneth
incorporates (with minor additions) its analysis of claim 10. Pet. 51–65.
Petitioner shows that each limitation of those claims is met by Ito and
Paneth. Petitioner relies on its analysis of claim 10 and also shows that the
limitations “first receiver” and “second transmitter,” recited in claim 21 are
met by Ito’s first transmitter/receiver 50. Id. at 52–53, 58–61. For the
elements “first transmitter” and “second receiver” recited in claim 21,
Petitioner identifies Ito’s second transmitter/receiver unit 80. Id. at 53–57.
For the “plurality of spatially separated antennas” recited in the claim,
Petitioner relies upon Paneth. Id. at 62–65. Dr. Ding provides testimony
supporting this analysis. Ding Decl. ¶¶ 138–154. Petitioner provides also a
persuasive rationale for combining Ito and Paneth, similar to that presented
for claim 10, supra. Pet. 64–65. Dr. Ding provides supporting testimony.
Ding Decl. ¶¶ 155–156.
Petitioner’s analysis of claim 44 in relation to Ito and Paneth also
relies on its analysis of claim 10. Pet. 65–66; Ding Decl. ¶ 157. Similarly,
Petitioner’s analysis of claim 52 relies on its analysis of claim 21, which in
turn relies on claim 10. Pet. 66–67; Ding Decl. ¶ 158,
Patent Owner responds to Petitioner’s analysis of claim 21 by
referring back to its contentions directed to claim 10, specifically, the
asserted failure of Ito and Paneth to disclose a “mobile device.” PO
Resp. 39–40. For the reasons given in our analysis of claim 10, supra, we
are not persuaded by that argument. Similarly, Patent Owner’s response to
claims 44 and 53 refers back to its response to claim 10. PO Resp. 40–42.
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For the reasons given above in connection with claim 10, we are not
persuaded by those arguments.
Thus, for the reasons given by Petitioner and those summarized supra,
we determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 21, 44, and 52 would have been obvious in light of Ito
and Paneth.
3. Dependent Claims 12, 19, 20, 23, 26, 50, 51, and 53
Petitioner’s analysis of dependent claims 12, 19, 20, 23, 26, 50, 51,
and 53 in relation to Ito and Paneth appears at pages 67–75 of the Petition.
Petitioner shows that each element of these claims is taught by Ito and
Paneth. Dr. Ding provides supporting testimony. Ding Decl. ¶¶ 159–162
(claim 12), 163–167 (claims 19 and 50), 168–169 (claims 20 and 51), 170–
173 (claims 23 and 53), and 174–175 (claim 26).
Each of these claims depends from one of independent claims 10, 21,
44, or 52.7 Patent Owner’s response to these challenges relies on its
arguments directed to the independent claims from which the claims depend.
PO Resp. 39 (claims 12, 20), 40 (claim 23), 41 (claim 51), 42 (claim 53).8
Patent Owner relies on the argument that the “mobile device” limitation
appearing in the independent claims from which these claims depend is not
met. Id. This argument is based on Patent Owner’s proposed construction
of “mobile device,” which we did not adopt. See Section II.B.2, supra. We
have previously considered those arguments and are not persuaded by them

7 Claims 12, 19, and 20 depend from claim 10; claims 23 and 26 depend
from claim 21; claims 50 and 51 depend from claim 44; and claim 53
depends from claim 52.
8 Patent Owner does not separately respond for dependent claims 19, 26, or
50.
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for the reasons given in our analysis of the corresponding independent
claims. See supra, Sections III.B.1, III.B.2.
We determine that based on Petitioner’s analysis, supported by Dr.
Ding’s testimony, Petitioner has demonstrated by a preponderance of the
evidence that claims 12, 19, 20, 23, 26, 50, 51, and 53 would have been
obvious in light of Ito and Paneth.
C. Ito, Paneth, and Gilhousen390 Challenges to Claims 13, 25, 45,
and 55
These claims depend directly from one of independent claims 10, 21,
44, or 52.9 Petitioner’s challenges to claims 13, 25, 45, and 55 rely on Ito,
Paneth, and Gilhousen390. Pet. 75–77; Ding Decl. ¶¶ 176–181.
These claims each add the limitation that the recited cellular signals
are code division multiple access (CDMA) signals. Petitioner relies on
Gilhousen390 to supply the teaching of the CDMA communications recited
in the claims. Pet. 75. Petitioner contends: “[A person of ordinary skill]
would have been motivated to incorporate the CDMA communication
protocol into the mobile base device MSS [of Ito] to aid in increasing
spectral efficiency.” Id. at 76 (citing Ding Decl. ¶ 180). Dr. Ding testifies
that “a [person of ordinary skill] would have known about the CDMA
protocol as early as 1988.” Ding Decl. ¶ 178. According to Petitioner,
Gilhousen390 explains that “CDMA has significant advantages” over other
communications techniques such as TDMA (time division multiple access)
and FDMA (frequency division multiple access). Pet. 76 (citing Ex. 1006,
1:17–22).

9 Claim 13 depends from claim 10; claim 25 depends from claim 21; claim
45 depends from claim 44; and claim 55 depends from claim 52.
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Patent Owner responds by referring back to its argument directed to
the asserted lack of a “mobile device” in Ito and Paneth. PO Resp. 42–43.
We are not persuaded by this argument for the reasons discussed previously.
In addition, Patent Owner argues that Petitioner has failed to meet other
limitations of these claims. Id. at 43–46. Specifically, Patent Owner asserts
that “the Petition fails to identify where the element of a transmitter
configured to transmit a mobile device radio frequency signal to a mobile
device moving relative to Earth” is found in the combined teachings of Ito,
Paneth, and Gilhousen390. Id. at 43. Patent Owner contends that
Petitioner’s reliance on Gilhousen390 has “nothing to do with the element of
a transmitter configured to transmit a mobile device radio frequency signal
to a mobile device moving relative to Earth.” Id. at 42–43.
We are not persuaded by Patent Owner’s argument. The Petition
relies on Ito and Paneth (not Gilhousen390) for the disclosure of the
transmitter and receiver limitations of these claims: “While Ito and Paneth
describe all of the elements of the independent claims, the combination of Ito
and Paneth does not explicitly describe the use of code division multiple
access (CDMA) signals.” Pet. 75 (emphasis added). For example, in
Petitioner’s analysis of claim 10, Petitioner identifies “second transmitter-
receiver unit 80” in Ito’s MSS as the recited “transmitter.” Pet. 47–48; Ding
Decl. ¶ 144. The Petition goes on to explain that Ito’s portable devices PSS
and mobile base devices MSS are located in an automobile and, therefore,
move in the same direction relative to the Earth. Pet. 51 (citing Ding Decl.
¶ 137).
We, therefore, see no merit in Patent Owner’s argument that the
Petition has failed to identify where the Petition discloses the element of a
transmitter configured to transmit a mobile device radio frequency signal to
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a mobile device moving relative to Earth. PO Resp. 43. Patent Owner fails
to explain persuasively how Petitioner’s analysis of this limitation is
deficient.
Further, Patent Owner argues that the combination of references does
not disclose the “plurality” of CDMA signals recited in the claims:
“Gilhousen390 does not disclose or imply any apparatus (i.e., a moving base
station) that comprises either a receiver to receive CDMA signals
transmitted from a fixed base station or a transmitter to transmit CDMA
signals to be received by a fixed base station, as required by Claims 13, 25,
45, and 55.” PO Resp. 44–46. We are not persuaded by this argument.
Petitioner relies on Gilhousen390 for its teaching of a CDMA cellular
telephone system. Pet. 75. The Petition identifies Ito’s mobile base device
MSS as the claimed moving base station “apparatus.” See, e.g., Pet. 33
(“Ito’s mobile base unit MSS teaches the claimed ‘apparatus’ based on
functionality and circuitry.”).
Further, Gilhousen390 explains that it was well-known for terrestrial
base stations (“cell sites”) using CDMA as a “multiple access technique” to
communicate with “a large number of mobile telephone system users each
having a transceiver.” Ex. 1006, 1:31–37; Ding Decl. ¶ 179. Petitioner
asserts that “[a person of ordinary skill] would have been motivated to
incorporate the CDMA communication protocol into the mobile device MSS
to aid in increasing spectral efficiency.” Id. at 76; see also Ding Decl.
¶¶ 176–181; Ding Reply Decl. ¶ 49. Dr. Ding describes in detail the
signaling taking place between the MSS (corresponding to the moving base
station) and the PSS (corresponding to the mobile device) in Ito. Ding
Reply Decl. ¶¶ 22–23. We find that the claim limitations calling for a
“plurality” of CDMA signals are met by this combination of Ito, Paneth, and
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Gilhousen390. Patent Owner fails to explain persuasively how Petitioner’s
analysis of this limitation is deficient.
We are not persuaded by Mr. Lanning’s analysis of this limitation.
Lanning Decl. ¶¶ 174–176. He faults Ito and Paneth for not disclosing
CDMA signals and Gilhousen390 for not disclosing a moving base station
sending and receiving CDMA signals. Id. ¶ 175. This analysis is not
persuasive because it focuses on the references individually, rather than the
combination. See Ding Reply Decl. ¶¶ 50–53. Where, as here, obviousness
is based on a combinations of reference, one cannot show nonobviousness
by attacking references individually. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Patent Owner also challenges the motivation to combine Ito and
Paneth with Gilhousen390. PO Resp. 33–35. According to Patent Owner,
“Ito’s FDMA/TDMA system is not capable of utilizing CDMA modulation
techniques or even transmitting CDMA signals without replacing Ito’s
current FDMA/TDMA circuitry with entirely new CDMA circuitry.” Id.
at 33. Petitioner responds that “a [person of ordinary skill] would have been
motivated to incorporate the well-known CDMA techniques described in
Gilhousen390 and would have easily formed this combination via a simple
programming of the communication circuitry already disclosed in Ito and
Paneth.” Pet. Reply 20.
We are not persuaded by Patent Owner’s argument. It is not disputed
that CDMA was, at the relevant time, a widely used technology with
significant “well-known” benefits. Ding Reply Decl. ¶ 49; Ding Decl.
¶¶ 176–181. Dr. Ding testifies that these “well-known benefits” would have
motivated a person of ordinary skill “to use CDMA with existing FDMA or
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TDMA systems, such as the one described in Ito.” Ding Reply Decl. ¶ 57.
Dr. Ding testifies that the “perceived differences” cited by Mr. Lanning
“would not have prevented a [person of ordinary skill] from combining
FDMA or TDMA with CDMA,” in light of CDMA’s well-known benefits.
Id. ¶¶ 54– 55.
Dr. Ding explains also how combining Ito with the CDMA
technology in Gilhousen390 could be accomplished:
This combination would have included modifying Ito’s base
station BSS using Gilhousen390’s teachings to communicate
using CDMA signals. Ito’s MSS would then receive these
CDMA signals. In this manner both the MSS and BSS are
modified to use CDMA in order to perform CDMA
communications via the communication link between the
systems.
Ding Reply Decl. ¶ 53 (citations omitted). Dr. Ding provides examples in
the technical literature describing the combination of TDMA, FDMA, and
CDMA. Id. ¶¶ 59–60. He disagrees with the assertion that “significant
changes” would be required to combine Gilhousen390 with Ito and Paneth.
Id. ¶ 61 (citing Lanning Decl. ¶¶ 137–139).
Patent Owner responds that Dr. Ding “does not address how to
combine the pre-existing base stations of Ito (which utilize FDMA/TDMA
modulation techniques and transmit FDMA/TDMA signals) with
Petitioner’s secondary prior art references (Paneth and Gilhousen390) in
order to convert Ito’s pre-existing base stations to utilize CDMA modulation
techniques and to transmit CDMA signals.” PO Sur-reply 16. We disagree
with this argument, as it is contrary to KSR, for reasons previously
discussed. As KSR teaches, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. We are more
persuaded by Dr. Ding’s argument that a person of ordinary skill (an
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experienced wireless communications systems engineer “familiar with
cellular communication technology”) would have been able to make the
necessary modifications. Ding Reply Decl. ¶ 55. We, therefore, find that a
person of ordinary skill would have been motivated to combine the teachings
of Ito and Paneth with the well-known CDMA technology of Gilhousen390
with a reasonable expectation of success. Ding Decl. 176–181; Ding Reply
Decl. ¶¶ 49–61.
D. Ito, Paneth, and Gardner Challenges to Claims 18 and 49
Petitioner’s challenge to claims 18 and 49 relies on Ito, Paneth, and
Gardner. Pet. 77–81; Ding Decl. ¶¶ 182–188. These two claims are similar
to each other and depend directly from independent claims 10 and 44,
respectively. Petitioner relies on Gardner to meet the added recitation in the
claims of “a controller configured to align and combine the plurality of
cellular signals.” Pet. 78–80. Petitioner argues: “It was well-known by the
earliest priority date of the ’543 patent, however, to use a controller to align
and combine a plurality of received cellular signals to aid in signal
reception.” Id. at 77 (citing Ding Decl. ¶ 183). Petitioner shows that
“Gardner describes a receiver for use in cellular communications using ‘two
(or more) antennas spaced far enough apart so that the characteristics of the
fading encountered by the desired signal are independent for each of the two
receiver paths.’” Id. at 78 (citing Gardner, Ex. 1007, 1:10–12, 2:15–20).
Referring to Figure 1 of Gardner, Petitioner explains: “To address the
alignment problem, Gardner describes a receiver configured to receive
spatially diverse signals, and to properly align and combine the received
signals.” Id. at 79. Petitioner asserts: “A [person of ordinary skill] would
have been motivated to implement the aligning and combining described in
Gardner with the mobile base device MSS and the plurality of spatially
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separated antennas described in Ito and Paneth respectively to reconcile
received signals . . . through the antennas to improve signal reception
processing.” Id. at 80 (citing Ding Decl. ¶ 187).
Patent Owner responds by referring back to its argument directed to
the asserted lack of disclosure of a “mobile device” in the “transmitter”
limitation. PO Resp. 47–49. We are not persuaded by this argument for
reasons discussed previously.
More specifically, for claim 18, Patent Owner asserts that “the
Petition has failed to show that the combination of Ito and Paneth with
Gardner discloses or renders obvious the limitation of ‘a transmitter
configured to transmit a mobile device radio frequency signal to a mobile
device moving relative to Earth while the apparatus is moving relative to the
plurality of base station radio interface circuits and relative to Earth.’” PO
Resp. 48. Patent Owner makes the same argument for claim 49. Id. at 48–
49.
This is a repetition of an argument we addressed in connection with
Petitioner’s challenge to claims 13, 25, 45, and 55, based on Ito, Paneth, and
Gilhousen390, supra. Petitioner relies on Ito and Paneth, not Gardner, for
this teaching of a transmitter. See Pet. 77 (“While Ito and Paneth describe
all of the elements of the independent claims . . . .”). For the reasons given
there, we are persuaded that Petitioner has demonstrated where the
“transmitter” limitation is met. Specifically, we find that Ito combined with
Paneth meets this limitation for the reasons given. Pet. 77; Ding Decl.
¶ 183.
Patent Owner also challenges the motivation to combine Ito and
Paneth with Gardner. PO Resp. 35. According to Patent Owner, “Gardner
does not provide any guidance on how its device can be used for the
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different types of cellular networks (i.e., CDMA, FDMA or TDMA).” Id.
(citing Lanning Decl. ¶ 142). Patent Owner continues: “[T]he Gardner
invention has different requirements and produces side-effects (interference)
to other signals that needs to be carefully considered before they are
implemented in any of these different types of cellular networks.” Id.
We are not persuaded by these arguments of alleged lack of
compatibility of Gardner with Ito and Paneth. For reasons previously stated,
we find that a person of ordinary skill would have been motivated to provide
Ito’s communications system with a plurality of antennas and CDMA
technology and would have done so with a reasonable expectation of
success. See supra. As Dr. Ding testifies, “[i]t was well-known by the
earliest priority date of the ’543 patent . . . to use a controller to align and
combine a plurality of received cellular signals to aid in signal reception.”
Ding Decl. ¶ 183. Dr. Ding explains that Paneth describes the alignment of
signals at a subscriber station. Id. ¶ 184. He goes on to explain how
Gardner addresses the problem of aligning the received spatially diverse
signals. Id. ¶¶ 185–186. He testifies that a person of ordinary skill “would
have been motivated to implement the aligning and combining described in
Gardner with the mobile base device MSS and the plurality of spatially
separated antennas described in Ito and Paneth respectively to reconcile
received signals.” Id. ¶ 187. He explains that a person of ordinary skill
“could have easily implemented the aligning and combining techniques
described in Gardner with Ito and Paneth.” Id. ¶ 188. He explains that to
process the signals from the antennas, a person of ordinary skill “would have
use[d] first [the] transmitter-receiver unit 50 and control circuit 71 as
described in Ito.” Id. He testifies: “[A person of ordinary skill] could have
easily programmed the first transmitter-receiver unit 50 [of Ito] to align and
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combine the signals received from Paneth’s spatially separated antennas in
the manner described in Gardner.” Id. We find this testimony by Dr. Ding
to be credible and consistent with the high level of skill in this art.
We are not persuaded by Mr. Lanning’s testimony that Gardner does
not provide “any guidance or design considerations for using its invention
with a CDMA, FDMA or FDMA/TDMA type system.” Lanning Decl.
¶ 142. As discussed supra, the test for obviousness does not depend on the
bodily incorporation of references. Mr. Lanning concedes that it would not
be “impossible” to combine Gardner’s teachings with CDMA, TDMA, or
FDMA technology. Lanning IV Dep. 272:18–273:2 (“[A] person of
ordinary skill in the art would read Gardner, think that Gardner was
interesting, but then have to look for other references in order to understand
how the frequency modulated functionality of Gardner could fit into one of
these cellular networks.”). We are more persuaded by Dr. Ding’s response
that “[e]ven if [a person of ordinary skill] might have reviewed additional
references for extra information . . . this would not have prevented the
combination of Gardner with Ito and Paneth.” Ding Reply Decl. ¶ 64. See
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in considering
the disclosure of a reference, it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom”). For an
obviousness analysis, prior art references must be “considered together with
the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559,
562 (CCPA 1978)).
We find that Petitioner has demonstrated by a preponderance of the
evidence that a person of ordinary skill would have combined the teachings
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of Ito, Paneth, and Gardner with a reasonable expectation of success. We
conclude that for the reasons discussed, Petitioner has demonstrated that
claims 18 and 49 would have been obvious in light of those references.
E. Ito, Paneth, and Forssén Challenge to Claim 54
This claim depends directly from independent claim 52. Petitioner’s
challenge to claim 52 relies on Ito, Paneth, and Forssén. Pet. 81–86; Ding
Decl. ¶¶ 189–194. Petitioner relies on Forssén to disclose the limitation in
claim 54 of “wherein the second transmitter is further configured to transmit
the another cellular signal through at least two of the plurality of spatially
separated antennas.” Pet. 81–84; Ding Decl. ¶¶ 190–191. Dr. Ding testifies:
“A [person of ordinary skill] would have been motivated to combine Forssén
with Ito and Paneth to aid Ito’s mobile base device MSS in transmitting a
cellular signal to the base station BSS.” Ding Decl. ¶ 194. Further, he
explains: “[A person of ordinary skill] would have been motivated to use at
least two of the antennas to achieve improved directionality when
communicating with a base station BSS due to the highly directional nature
of the antennas when using a plurality of spatially separated antennas.” Id.
According to Petitioner, “a [person of ordinary skill] would have been able
to easily use at least two antennas [in Forssén] to perform the transmit
function, especially in view of Paneth’s explanation that ‘receive antennas’
can be easily switched to operate as a ‘transmit antenna’ using an ‘RF
antenna switch function.’” Pet. 85 (citing Ex. 1005, 72:10–14, 9:58–68);
Ding Decl. ¶ 194.
Patent Owner does not respond separately to this challenge to
claim 54, either in its Patent Owner Response or Sur-reply.
We determine, based on Petitioner’s analysis, supported by Dr. Ding’s
testimony, that Petitioner has demonstrated, by a preponderance of the
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evidence, claim 54 would have been obvious in light of Ito, Paneth, and
Forssén.
IV. CONSTITUTIONAL CHALLENGE
Patent Owner contends that “adjudication of the ’543 patent violates
the U.S. Constitution” because “the current structure of the Board violates
the Appointments Clause of Article II.” PO Resp. 49–50.
In Arthrex v. Smith & Nephew, 941 F.3d 1320, 1338 (Fed. Cir. 2019),
cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206
(Oct. 13, 2020), the Federal Circuit determined that the current structure of
the Board does not violate Article II as of the date of that precedential
decision. See also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764
(Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the
APJs were constitutionally appointed as of the implementation of the
severance, inter partes review decisions going forward were no longer
rendered by unconstitutional panels.”). Furthermore, in Arthrex, the Federal
Circuit found “no constitutional infirmity in the institution decision as the
statute clearly bestows such authority on the Director pursuant to 35 U.S.C.
§ 314.” 941 F.3d at 1340.
Therefore, we disagree with Patent Owner that this Final Written
Decision and our Institution Decision are “invalid.” PO Resp. 50.
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V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 10, 12, 13, 18–
21, 23, 25, 26, 44, 45, and 49–55 of the ’543 patent are not patentable.
A summary of our conclusions is set forth in the table below.

VI. ORDER
Upon consideration of the record before us, it is:
ORDERED that claims 10, 12, 13, 18–21, 23, 25, 26, 44, 45, and 49–
55 of the ’543 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.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
10, 12, 19–
21, 23, 26,
44, 50–53

103(a) Ito, Paneth 10, 12, 19–21,
23, 26, 44,
50–53

13, 25, 45, 55 103(a) Ito, Paneth,
Gilhousen390

13, 25, 45, 55
18, 49 103(a) Ito, Paneth,
Gardner

18, 49
54

103(a) Ito, Paneth,
Forssén

54
Overall
Outcome
10, 12, 13,
18–21, 23, 25,
26, 44, 45,
49–55

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FOR PETITIONER:
Ryan Richardson
Michael Specht
Tim Tang
Daniel Yonan
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
rrichardson-ptab@sternekessler.com
mspecht-ptab@sternekessler.com
ttang-ptab@sternekessler.com
dyonan-ptab@sternekessler.com

FOR PATENT OWNER:

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

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

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