Carucel Investments, LP

Patent Trials and Appeals Board

Jan 6, 2021

IPR2019-01103 (P.T.A.B. Jan. 6, 2021)

Trials@uspto.gov Paper 30
571-272-7822 Entered: January 6, 2021

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.

___________

IPR2019-01103
Patent 7,979,023 B2
____________

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

GIANNETTI, Administrative Patent Judge.

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

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Patent 7,979,023 B2
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I. INTRODUCTION
Patent Owner Carucel Investments, L.P. requests reconsideration of
our Final Written Decision (Paper 28, “Final Dec.”) regarding claims 11 and
16–23 of U.S. Patent No. 7,979,023 B2 (Ex. 1001, the “’023 patent”). Paper
29 (“Req. Reh’g”). Patent Owner’s grounds for seeking rehearing are that
the Final Written Decision “misapprehends and overlooks (1) the proper
scope of the term ‘mobile device’ . . . and (2) under the proper construction
of ‘mobile device’ that each of Petitioner’s prior art references do not
disclose the limitation of ‘mobile device’ as required by the Challenged
Claims of the ’023 Patent.” Req. Reh’g 1.
For the reasons that follow, Patent Owner’s request for rehearing is
denied.
II. BACKGROUND
Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
requesting inter partes review of claims 11 and 16–23 (the “challenged
claims”) of the ’023 patent. Paper 2 (“Pet.”). Under 35 U.S.C. § 314, we
instituted this inter partes review as to all of the challenged claims and all
grounds raised in the Petition. Paper 7.
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”).
In our Final Written Decision, we determined Petitioner has shown by
a preponderance of the evidence that all challenged claims of the ’023 patent
are unpatentable. Final Dec. 2.

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III. ANALYSIS
A. Applicable Legal Standard
The standard for a request for rehearing of a Final Written Decision is
set forth in 37 C.F.R. § 42.71(d), which provides in relevant part:
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
A rehearing request is not an opportunity for the requesting party to reargue
its case or merely to express disagreement with the Final Written Decision.
Nor is it an opportunity for the moving party to present new arguments that
were not in its original submissions.
B. The ’023 Patent
According to the ’023 patent, “[a] problem with existing mobile
telephone systems is the considerable time required in handoffs. This
becomes a particular problem in urban areas which are highly congested.”
Ex. 1001, 1:56–58.
The ’023 patent addresses this problem by providing “a moving base
station which is interposed between a moving mobile telephone unit and a
fixed base station.” Id. at 2:66–3:2. According to the ’023 patent, the
advantage of this system is reducing the number of handoffs by moving the
base station in the same direction as the mobile unit. Id. at 5:10–18.
C. Illustrative Claim
Claim 11 is directed to a moving base station or “apparatus,” which it
describes as follows:
11. An apparatus configured to move relative to Earth, the
apparatus comprising:
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a plurality of spatially separated antennas; and
a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
and
a transmitter configured to transmit radio frequency signals
to a mobile device corresponding to the received fixed port
signals.
Ex. 1001, 12:8–16.
Patent Owner agrees that the “apparatus” recited in challenged claims
is the moving base station. Paper 27, 96:22–97:3.
D. Patent Owner’s Contentions
The Rehearing Request focuses exclusively on the proper construction
of “mobile device,” a term that appears in all of the challenged claims. Req.
Reh’g 1. Patent Owner requests that the “plain and ordinary meaning” of
the term “mobile device” be applied, which is, according to Patent Owner:
“a device that must register with and be able to directly communicate with
the cellular network.” PO Resp. 13; Req. Reh’g 2. According to Patent
Owner, our Final Written Decision “misapprehends and overlooks the
proper scope of the term ‘mobile device’ by improperly disregarding at least
Patent Owner’s proposed construction of ‘mobile device’ and the ’023
Patent’s explicit support for this proposed construction.” Req. Reh’g 2–3
(footnote omitted).
As discussed more below, in the Final Written Decision, we provided
a detailed analysis of Patent Owner’s arguments and rejected Patent Owner’s
proposed limitations for “mobile device,” determining that the ordinary
meaning should apply and no further construction was necessary. Final
Dec. 11–22.
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E. The Final Written Decision
Our analysis of “mobile device” in the Final Written Decision was
guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). Final Dec. 9–10. We observed that claim terms “‘are generally
given their ordinary and customary meaning’ as understood by a person of
ordinary skill in the art in question at the time of the invention.” Id. at 9
(quoting Phillips, 415 F.3d at 1312–13). We said that “[i]n determining the
meaning of the disputed claim limitation, we look principally to the intrinsic
evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” Id. (citing DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed.
Cir. 2006)). We cautioned that extrinsic evidence is “less significant than
the intrinsic record in determining ‘the legally operative meaning of claim
language.’” Id. (citing Phillips, 415 F.3d at 1317).
In summary, for the reasons that follow, we are not persuaded that our
analysis of “mobile device” under Phillips was incorrect, or that we
overlooked or misapprehended Patent Owner’s arguments or evidence in
that analysis.
1. The Claim Language Does Not
Support Patent Owner’s Proposed Claim Construction
After reviewing the parties’ contentions (Final Dec. 11–13), we began
our analysis of “mobile device” with the language of the claims, as
instructed by Phillips, 415 F.2d at 1312. Final Dec. 13. Analyzing the
challenged claims, we found that the language of the claims does not support
Patent Owner’s construction. Final Dec. 13–15. We observed that the
challenged claims themselves are not directed to the mobile device. Id.
at 13. Instead, the claims are directed to the mobile base station, described
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in the claims as “[a]n apparatus configured to move relative to the Earth.”
Id. at 14 (citing testimony from Patent Owner’s expert, Mr. Lanning,
Ex. 1039, 164:6–7 (“None of the claims are in regard to the mobile
device.”)). We observed further that the claims do not specify a mobile
device “that must register with and be able to directly communicate with the
cellular network.” Id. at 13–14.
We found that Patent Owner’s contention that the mobile device must
be able to communicate directly with the cellular network is contrary to the
claims. Final Dec. 14–15. In the claims, the mobile device does not
communicate with a fixed base station or fixed port directly, but only
through the intermediary moving base station. Id. at 14 (quoting language in
claim 11).
Furthermore, we found that the challenged claims do not associate the
signals transmitted between the mobile device and the mobile base station
with a cellular network, or identify the mobile device with a cellular
network. Final Dec. 15. As shown by our analysis of the claim language,
the only functionality related to the “mobile device” in the claims of the ’023
patent is the ability of the apparatus (the moving base station) to transmit
radio signals to and receive radio signals from the “mobile device.” Id.
In reaching these conclusions, we focused on the language of the
claims, as Phillips requires. In contrast, Patent Owner’s responses to the
Petition avoided any discussion of the claim language. Instead, Patent
Owner asserted that “Petitioner’s analysis attempts to . . . broadly construe
the term ‘mobile device’ in a vacuum” and “disregard the ’023 Patent
specification’s criteria for the term ‘mobile device.’” PO Sur-reply 1–2.
The pattern of Patent Owner downplaying the claim language is
repeated in the Rehearing Request. Req. Reh’g 12–14. Thus, Patent
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Owner’s brief discussion of the claims in the Rehearing Request focuses on
describing what Patent Owner presents as the “scope and . . . advantages” of
the alleged invention of the ’023 patent, untethered to the language of the
claims. Req. Reh’g 12–14. The only substantive discussion of claim
language in the Rehearing Request is Patent Owner’s concession that “the
claims of the ’023 Patent require the apparatus/movable base station to
communicate directly with the cellular network (and not the ‘mobile
device’).” Id. at 13 (emphasis added).
We are not persuaded that, when we concluded that the language of
the challenged claims does not support Patent Owner’s construction of
“mobile device,” we overlooked or misapprehended Patent Owner’s
arguments or evidence.
2. The Specification Does Not
Support Patent Owner’s Proposed Claim Construction
After reviewing Patent Owner’s arguments, we found that the ’023
patent specification does not support Patent Owner’s narrow construction of
“mobile device” as a phone capable of communications directly with a
cellular network. Final Dec. 15–21.
Patent Owner devotes most of its Rehearing Request to arguments
challenging this conclusion based on the ’023 patent specification. Req.
Reh’g 3–12. Patent Owner presents four main arguments. The first is that
the Board erred in finding that the specification of the ’023 patent “does not
require a ‘mobile device’ to register with the cellular network.” Id. at 3 (the
“registration” requirement). Second, Patent Owner contends the Board erred
in finding that the ’023 patent specification “does not teach that a ‘mobile
device’ must be capable of directly communicating with a cellular network
via a fixed base station.” Id. at 5 (the “direct communication” requirement).
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Third, Patent Owner asserts “[t]he Board erred in finding that the ’023
Patent does not exclusively relate to improving the wireless connections of
mobile devices within ‘cellular telephone systems.’” Id. at 7–8 (alterations
and internal quotation marks omitted) (the “exclusively cellular”
requirement). Fourth, Patent Owner argues the Board erred in finding that
the ’023 patent “improv[es] wireless connections involving non-cellular
devices, such as radios and telephones.” Id. at 10 (alteration in original) (the
“no non-cellular improvement” requirement).
The common thread in all these arguments is that they are based on
statements culled from the specification, and not on language in the claims.
Patent Owner’s Rehearing Request is fundamentally flawed because it is
premised entirely on what the ’023 patent allegedly teaches, and not what
the patent claims. Even then, the Rehearing Request fails because Patent
Owner’s arguments based on the patent specification were thoroughly
considered and addressed in detail in our Final Written decision. Final
Dec. 15–22. Patent Owner fails to point out with particularity anything that
was overlooked or misapprehended in this analysis, as required by 37 C.F.R.
§ 42.71(d). Instead, Patent Owner merely expresses its disagreement with
the Board’s conclusions, and proceeds to reargue points and evidence
already considered and rejected in the Final Written Decision. This
approach is not proper in a rehearing request.
a. Patent Owner’s “Registration Requirement” Arguments
Were Not Misapprehended or Overlooked
Patent Owner’s Response to the Petition asked us to construe “mobile
device” as a device that must “register with . . . the cellular network.” PO
Resp. 14. Patent Owner’s Rehearing Request makes the same argument.
Req. Reh’g 3–4.
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To support this construction, Patent Owner’s Response to the Petition
relied on the ’023 patent specification: “The ’023 Patent specification
teaches that a mobile device must be capable of directly communicating with
either a fixed cellular base station or a moving base station.” PO Resp. 13
(citing Ex. 1001, 4:48–51). According to Patent Owner, “the mobile unit’s
capability to be switched back-and-forth between either a direct connection
with the fixed base station or a connection with a moving base station is
discussed repeatedly and throughout the specification.” Id. (citing Ex. 1001,
10:65–11:3). Patent Owner cited a portion of the ’023 patent that describes
registration by the mobile device (referred to in the patent as a “mobile
unit”):
When a mobile unit set is first powered up or first enters
a service area, the mobile unit must register in the manner
described earlier, by transmitting its unique address in the new
service area. The address will be received by the closest
moving base station 30 and transmitted via a fixed radio port
and the gateway switch 60 to the telephone network.
Ex. 1001, 9:62–66 (partially quoted at PO Resp. 14). Patent Owner also
relied on testimony from its expert, Mr. Lanning. See PO Resp. 13–14
(citing Lanning Decl. ¶¶ 46–48, 55–57, 60–62, 65–69).
Patent Owner’s Rehearing Request relies on the same arguments, even
using the same quotation from the patent specification and also citing
testimony from Mr. Lanning. Req. Reh’g 3.
We considered this argument and Mr. Lanning’s testimony and
addressed them in our Final Written Decision (at pp. 21–22). We were not
persuaded by Patent Owner’s position that the specification requires a
mobile device to “be capable of registering with a cellular network.” Final
Dec. 21 (quoting PO Resp. 14–16). While we found that registration with a
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base station is mentioned in the ’023 patent specification (see PO Sur-reply
3), we also found that the registration process described there occurs only
“[w]hen a mobile unit set is first powered up or first enters a service area,”
and involves the mobile device “transmitting its address to the moving base
station, not the fixed base stations.” Final Dec. 21 (citing Ex. 1001, 9:62–67
(“The address will be received by the closest moving base station 30 and
transmitted . . . to the telephone network”)).
We also addressed Petitioner’s reliance on authorities such as Bell
Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262
F.3d 1258 (Fed. Cir. 2001), for the proposition that the written description
“can provide guidance as to the meaning of the claims.” Final Dec. 19–20;
cf. Req. Reh’g 3 n.4. We remarked that this point is not disputed. Final
Dec. 21. But we found that Bell Atlantic is of no help to Patent Owner
because, unlike in Bell Atlantic, the written description of the ’023 patent
does not support Patent Owner’s construction. Id. at 20.
We also addressed On Demand Machine Corp. v. Ingram Industries,
Inc., 442 F.3d 1331 (Fed. Cir. 2006), in our Final Written Decision. Final
Dec. 20–21; cf. Req. Reh’g 14 n.25. We concluded that as Patent Owner’s
quotation from On Demand makes clear, it is not necessary to find an
explicit disavowal “when the scope of the invention is clearly stated in the
specification, and is described as [the] advantage and distinction of the
invention.” Final Dec. 20 (quoting On Demand, 442 F.3d at 1340).
However, we found that the scope of the invention and its advantages as
described in the ’023 patent specification center on the moving base station,
not the mobile device, and concluded that On Demand’s exception to the
normal requirement for an explicit disavowal of claim scope is not
applicable here. Id.
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Patent 7,979,023 B2
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Thus, after considering the arguments and evidence presented, we
concluded that Patent Owner’s analysis of the ’023 patent specification does
not support its contention that the mobile device must register with the fixed
base station. Final Dec. 21. Further, we found that to the extent the ’023
patent discloses registration by the mobile device, it describes registering
with the moving base station and not with the fixed base stations. Id. at 21–
22 (citing Ex. 1001, 9:65–67). The actual registration with the fixed base
station is handled by the moving base station. Id. at 22.
We are not persuaded by Patent Owner’s Rehearing Request, which
largely rehashes the arguments we considered and rejected in our Final
Written Decision, that we misapprehended or misconstrued Patent Owner’s
arguments in reaching that conclusion.
b. Patent Owner’s “Direct Communication” Arguments
Were Not Misapprehended or Overlooked
In our Final Written Decision, we found that Patent Owner’s
contention that the mobile device must be able to communicate directly with
the cellular network was “not supported by the intrinsic record.” Final
Dec. 14. We focused on the language of the claims and found that the
recited mobile device does not communicate with the fixed port directly. Id.
(quoting independent claim 11). Thus, we found in the challenged claims it
is the mobile base station (not the mobile device) that has “a receiver
configured to receive fixed port signals from a fixed port through the
plurality of spatially separated antennas” and “a transmitter configured to
transmit radio frequency signals corresponding to a mobile device.” Id.
(citing Ex. 1001, 12:8–16) (emphasis added). Patent Owner’s Rehearing
Request, as it must, acknowledges that “the claims of the ’023 Patent require
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the apparatus/movable base station to communicate directly with the cellular
network (and not the ‘mobile device’).” Req. Reh’g 13.
Furthermore, we found that the claims do not associate the signals
transmitted between the mobile device and the mobile base station with a
cellular network, or identify the mobile device with a cellular network.
Final Dec. 15. As shown by our analysis of the claim language above, the
only functionality related to the “mobile device” in the claims of the ’023
patent is the ability of the apparatus (the moving base station) to transmit
radio signals to and receive radio signals from the “mobile device.” Id.
Finally, we relied on an embodiment described in the patent where the
mobile device is prevented from communicating directly with the fixed
ports. Id. at 16 (citing Ex. 1001, 3:21–36). We concluded that “Patent
Owner’s analysis of the ’023 patent specification does not support its theory
that the mobile device communicates directly with a cellular system.” Id.
at 21.
Patent Owner’s Rehearing Request asserts the record does not support
this conclusion. Req. Reh’g 4–7. Patent Owner cites portions from the
specification that were previously considered and discussed in the Final
Written Decision. Final Dec. 20. There, we concluded that Patent Owner’s
listing of “examples” from the ’023 patent that discuss communications with
the fixed base stations when traveling at speeds of less than thirty miles per
hour do not describe the communications as cellular communications or the
fixed base stations as cellular sites, stating only that their operation is
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“essentially the same as that of a standard fixed base station.” Id. (citing
Ex. 1001, 10:63–65).1
More importantly, however, even if these disclosures in the ’023
patent specification were limited to cellular communications when the
mobile device is directly communicating with a fixed base station, as Patent
Owner contends, that direct communication is not what is claimed. Rather,
there is no dispute that the challenged claims are directed to an “apparatus”
(a mobile base station) that Patent Owner describes as “an intermediary
between cell towers and mobile devices.” PO Resp. 2 (citing Ex. 2102, 12).
As noted above, and as Patent Owner acknowledges in its Rehearing
Request, “the claims of the ’023 Patent require the apparatus/movable base
station to communicate directly with the cellular network (and not the
‘mobile device’).” Req. Reh’g 13. Thus, the focus should be on the claimed
“apparatus” and its radio interface to the mobile device, and not on some
general discussions of cellular networks.
We are not persuaded by the Rehearing Request that we
misapprehended or overlooked Patent Owner’s arguments or evidence in
reaching our conclusion that the claims do not require a mobile unit that
communicates directly with the cellular network. Instead, Patent Owner’s
arguments and evidence were fully considered and rejected.
c. Patent Owner’s “Exclusively Cellular” Arguments
Were Not Misapprehended or Overlooked
In our Final Written Decision, we stated that “[t]here is no dispute that
improving cellular technology is included among the goals described in the

1 We noted that Patent Owner misquoted the description of the base station
as a “standard fixed base station” by inserting “cellular” before “fixed base
station.” Final Dec. 20 n.6 (citing PO Sur-reply 9).
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’023 patent.” Final Dec. 20–21. However, we found that Patent Owner
failed to support its more limiting argument that the ’023 patent “explicitly
and exclusively relates to improving the wireless connections of mobile
devices within ‘cellular telephone systems.’” Id. at 21 (citing PO Sur-reply
5 (original emphasis omitted)). We found that the specification of the ’023
patent reveals a broader goal of improving wireless connections involving
non-cellular devices as well. Id.
We observed further (Final Dec. 15) that while the ’023 patent does
refer to base stations in a “typical cellular telephone system” as “cell site[s]”
(Ex. 1001, 4:63–64), it also describes the radio interfaces between the
mobile devices and the moving base stations in more general terms. Id. at
6:48–54. Thus, the ’023 patent describes the radio interface between the
mobile units and both the moving and fixed base stations not as a cellular
interface, but as “a standard radio interface, well known in the art.” Id. at
6:48–51. This is consistent with the patent’s stated goal of providing “an
infra structure which allows use of . . . a cordless phone.” Id. at 2:46–48.
Patent Owner argues in the Rehearing Request that the Board erred in
finding that the ’023 patent does not “exclusively relate[] to improving the
wireless connections of mobile devices within ‘cellular telephone systems,’”
and cites several passages in the patent referring to cellular communications.
Req. Reh’g 7–8. Patent Owner made a similar argument previously, relying
on some of the same references, which we addressed in the Final Written
Decision. Final Dec. 20–21. We did not find these references to cellular
systems to be persuasive support for Patent Owner’s limiting argument that
the ’023 patent “explicitly and exclusively relates to improving the wireless
connections of mobile devices within ‘cellular telephone systems.’” Id. at
21.
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One passage cited by Patent Owner refers to a CDMA-based cellular
standard (IS-95), indicating that it “may” be the interface between the
mobile unit and the moveable base station. Req. 9 Reh’g (citing Ex. 1001,
7:4–6). By making use of a cellular standard optional for the base station-
mobile device interface, this description in the patent does not support Patent
Owner’s argument that the patent is “exclusively” related to improving the
wireless connections of mobile devices within cellular telephone systems.
Id. at 7.
The other cited quotes are general references to cellular systems. We
found after a lengthy discussion of Patent Owner’s contentions in the Final
Written Decision that such general references in the specification do not rise
to the level of a clear and unmistakable disavowal of claim scope. Final
Dec. 17–21. The specification, in fact, supports the Board’s conclusion that
communications between the mobile unit and the moving base station are
not required to follow cellular protocols. Thus, as noted, the ’023 patent
states the interface between the mobile units and the moving base stations
“is a standard radio interface.” Ex. 1001, 6:48–51. And as discussed infra,
the patent explains that this interface “may” (not “must”) follow the cellular
protocol IS-95, indicating that it is not “exclusively” required to do so. Id. at
7:4–6; cf. Req. Reh’g 9.
d. Patent Owner’s “No Non-Cellular Improvements” Arguments
Were Not Misapprehended or Overlooked
Patent Owner asserts in its Rehearing Request that “[t]he Board erred
in finding that the ’023 Patent ‘improv[es] wireless connections involving
non-cellular devices, such as radios and telephones.’” Req. Reh’g 10
(alteration in original). Patent Owner argues this error is the result of the
Board’s “relying on a misapprehension of various excerpts within the ’023
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Patent specification.” Id. This is a variation on Patent Owner’s “exclusively
cellular” argument, infra, and is contrary to Patent Owner’s earlier position
in this proceeding. See PO Resp. 2 (“The asserted claims of the ’023 Patent
cover a movable base station or apparatus configured to provide important
benefits to mobile devices, such as smartphone, tablet and laptop users.”).
In our Final Written Decision, after considering Patent Owner’s
arguments, we did not see in the specification of the ’023 patent a clear
indication supporting Patent Owner’s contention that conventional non-
cellular devices such as cordless non-cellular phones should be excluded
from “mobile devices.” Final Dec. 15. We observed that in the Background
section, the ’023 patent describes the goal of the patent as encompassing “all
applications” including cordless phones: “What is desirable is an infra
structure which allows [the] use of such terminals in all applications,
whether in the home or office as a cordless phone . . . .” Id. (quoting
Ex. 1001, 2:46–48 (emphases added in original)).
We also found that the ’023 patent describes the radio interfaces
between the mobile devices and the moving base stations in generic terms,
as a “standard radio interface, well known in the art,” and not limited to
cellular interfaces. Final Dec. 15–16 (citing Ex. 1001, 6:48–54). We found
that this is consistent with the patent’s stated goal of providing “an infra
structure which allows the use of . . . a cordless phone.” Id. at 16 (citing Ex.
1001, 2:46–48.) We found further support in the ’023 patent’s description of
an embodiment where the mobile device is actually prevented from
communicating directly with the cellular network through the fixed ports.
Id. (citing Ex. 1001, 3:21–36); see also Section III.E.2.b, supra.
We did not find support for a “disavowal or disclaimer” of claim
scope for the term “mobile device.” Final Dec. 17–18. As discussed supra,
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the ’023 patent claims are directed to a moving base station communicating
with the cellular network, and the specification describes an embodiment
which prevents the mobile unit from communicating with the fixed ports.
“To disavow claim scope, the specification must contain ‘expressions of
manifest exclusion or restriction, representing a clear disavowal of claim
scope.’” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n,
566 F.3d 1321, 1335 (Fed. Cir. 2009)); SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
We found that the references to cellular communications in the ’023
patent, such as those cited in the Rehearing Request at pages 8–10, do not
support the “no non-cellular improvements” argument, and do not rise to the
level of a clear and unmistakable disavowal. Final Dec. 18. As discussed
supra, there is no dispute that improving cellular technology is included
among the goals described in the ’023 patent. Having reviewed the
evidence, we found, based on the detailed analysis above, that the claims and
the specification of the ’023 patent reveal a broader goal of improving
wireless connections involving non-cellular devices as well. Id.
We are not persuaded by Patent Owner’s characterization of our
detailed analysis of the ’023 patent specification in the Final Written
Decision as “misplaced” and “misapprehend[ing]” the ’023 specification.
Req. Reh’g 10. Patent Owner’s explanations of the specification do not
persuade us that we have erred by not excluding non-cellular mobile devices
such as radios and telephones. Id. at 10–11. For example, we are not
persuaded by Patent Owner’s explanation that the reference to cordless
phones in the specification really means mobile devices “like a cordless
phone,” except that they are cellular. Id. at 11. Apart from being contrary to
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its earlier position in this proceeding, Patent Owner does not provide any
evidentiary support for its argument that “a cellular system is the only
system that can facilitate communication to the same mobile device in all of
the exemplary applications set forth in the ’023 Patent specification.” Id.
Even further, whether or not Patent Owner had provided evidentiary
support for that statement, it is undisputed that the claims do not cover direct
communication between the mobile device and the cellular network. Rather,
as Patent Owner acknowledges, “the claims of the ’023 Patent require the
apparatus/movable base station to communicate directly with the cellular
network (and not the ‘mobile device’).” Id. at 13 (emphasis added).
Similarly, Patent Owner’s assertion that the “standard radio interface”
between the moving base station and the mobile device uses the cellular
IS-95 standard (id. at 11) ignores the use of the word “may,” making use of
the cellular standard optional. See Ex. 1001, 7:4–6; see also discussion
supra.
Finally, we are not persuaded that the embodiment of the ’023 patent
where communication between the mobile device and the cellular network is
prevented (see Final Dec. 16 and discussion supra) should not be considered
in our analysis. Req. Reh’g 12. The Federal Circuit has observed that “there
is a strong presumption against a claim construction that excludes a
disclosed embodiment.” Nobel Biocare Servs. AG v Instradent USA, Inc.,
903 F.3d 1365, 1381 (Fed. Cir. 2018).
We are not persuaded that we misapprehended or overlooked these
arguments in our Final Written Decision.
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3. The ’904 Patent Prosecution History Does Not
Support Patent Owner’s Proposed Claim Construction
Phillips requires us also to consider the relevant prosecution history in
construing the claims. 415 F.2d at 1317. Here, we determined that the
prosecution history of related U.S. Patent 7,221,904 is relevant, and we
considered it in our Final Written Decision. Final Dec. 16–17.
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. 1023, 181 (emphasis added). We found that this prosecution
history of the ’904 patent describing the mobile devices as “telephones” and
“radios” does not support Patent Owner’s construction limiting such devices
to “a device that must register with and be able to directly communicate with
the cellular network.” Final Dec. 16–17.
Patent Owner’s Rehearing Request asserts this conclusion “is not
supported by the record,” and cites as an example the fact that “the
prosecution history of the ’904 Patent does not even use the term
‘conventional’ in the ‘summary of the invention,’” and “the appellant only
described a brief summary of the invention, and not a definition for the term
‘mobile device.’” Req. Reh’g 14–15. We are not persuaded by these
arguments that our consideration of the prosecution history was an error.
Patent Owner has relied on statements in the specification that do not
constitute lexicographic definitions of “mobile device.” In any event, the
Federal Circuit has warned against disregarding such statements in the
prosecution history: “The public notice function of a patent and its
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Patent 7,979,023 B2
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prosecution history requires that a patentee be held to what he declares
during the prosecution of his patent.” Springs Window Fashions LP v. Novo
Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
We are not persuaded by Patent Owner that we have misapprehended
or overlooked anything in our analysis of the relevant prosecution history.
IV. CONCLUSION
We have considered Patent Owner’s arguments seeking rehearing of
our rejection of Patent Owner’s proposed construction of term “mobile
device,” which resulted from analyzing the claims, specification, and
prosecution history of the ’023 patent in accordance with Phillips. We are
not persuaded that we have misapprehended or overlooked anything in our
analysis. Patent Owner has not identified with specificity the matters it
believes the Board misapprehended or overlooked, but instead has used its
Rehearing Request as an opportunity to re-argue issues decided in favor of
Petitioner.
Because we deny Patent Owner’s Rehearing Request, we further
determine that Patent Owner’s argument that “each of petitioner’s grounds
fail[s]” (Req. Reh’g 15) is without merit. Furthermore, even if we were to
adopt Patent Owner’s construction for “mobile device,” the challenged
claims would still be unpatentable because we found that Gilhousen865
teaches a “mobile device” under Patent Owner’s construction. Final Dec.
48.
V. ORDER
In view of the foregoing, it is:
ORDERED THAT Patent Owner’s Request for Rehearing of the
Board’s Final Written Decision is denied.

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FOR PETITIONER:
Ryan C. Richardson
Michael D. Specht
Lauren C. Schleh
Daniel E. Yonan
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
rrichardson-ptab@sternekessler.com
mspecht-ptab@sternekessler.com
lschleh-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 D. Gavrilovich, Jr.
GAVRILOVICH, DODD & LINDSEY, LLP
chuck@gdllawfirm.com

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