Carucel Investments, LPDownload PDFPatent Trials and Appeals BoardJan 6, 2021IPR2019-01103 (P.T.A.B. Jan. 6, 2021) Copy Citation 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) IPR2019-01103 Patent 7,979,023 B2 2 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. IPR2019-01103 Patent 7,979,023 B2 3 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: IPR2019-01103 Patent 7,979,023 B2 4 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. IPR2019-01103 Patent 7,979,023 B2 5 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 IPR2019-01103 Patent 7,979,023 B2 6 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 IPR2019-01103 Patent 7,979,023 B2 7 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). IPR2019-01103 Patent 7,979,023 B2 8 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. IPR2019-01103 Patent 7,979,023 B2 9 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 IPR2019-01103 Patent 7,979,023 B2 10 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. IPR2019-01103 Patent 7,979,023 B2 11 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 IPR2019-01103 Patent 7,979,023 B2 12 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 IPR2019-01103 Patent 7,979,023 B2 13 “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). IPR2019-01103 Patent 7,979,023 B2 14 ’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. IPR2019-01103 Patent 7,979,023 B2 15 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 IPR2019-01103 Patent 7,979,023 B2 16 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, IPR2019-01103 Patent 7,979,023 B2 17 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 IPR2019-01103 Patent 7,979,023 B2 18 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. IPR2019-01103 Patent 7,979,023 B2 19 3. The ’904 Patent Prosecution History Does Not Support Patent Owner’s Proposed Claim Construction Phillips requires us also to consider the relevant prosecution history in construing the claims. 415 F.2d at 1317. 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 IPR2019-01103 Patent 7,979,023 B2 20 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. IPR2019-01103 Patent 7,979,023 B2 21 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 Copy with citationCopy as parenthetical citation