Carucel Investments, LP

Patent Trials and Appeals Board

Nov 6, 2020

IPR2019-01103 (P.T.A.B. Nov. 6, 2020)

Trials@uspto.gov Paper 28
571-272-7822 Date: November 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________________

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,

v.

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

IPR2019-01103
Patent 7,979,023 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)

IPR2019-01103
Patent 7,979,023 B2
2
I. INTRODUCTION
A. Background
Volkswagen Group of America, Inc. (“Petitioner” or “Volkswagen”)
filed a Petition requesting inter partes review of claims 11 and 16–23 (the
“challenged claims”) of U.S. Patent No. 7,979,023 B2 (Ex. 1001, the “’023
patent”). Paper 2 (“Pet.”). Patent Owner (Carucel Investments, L.P.) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
to all of the challenged claims and all grounds raised in the Petition. Paper 7
(“Institution Dec.”).
Following institution, Patent Owner filed a Response. Paper 12 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 19, “Pet. Reply”) and Patent Owner filed a Sur-reply (Paper 23, “PO
Sur-reply”).
On September 2, 2020, we held a consolidated oral hearing with
IPR2019-01079, also involving the ’023 patent, and several related cases
involving Petitioner and Patent Owner.1 A transcript of the hearing is
included in the record. Paper 27 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a). For the reasons below, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 11 and 16–23 of the ’023 patent are not patentable.

1IPR2019-01101 (Patent 7,221,904 B1), IPR2019-01102 (Patent 7,848,701
B2), and IPR2019-01105 (Patent 8,718,543 B2).
IPR2019-01103
Patent 7,979,023 B2
3
B. Related Proceedings
The parties identify the following district court proceedings involving
the ’023 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. 3; Paper 4, 1.
The ’023 patent was 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).
C. Real Party-in-Interest
Petitioner identifies itself, Volkswagen Group of America, Inc., as the
only real party-in-interest. Pet. 3. Patent Owner identifies Carucel
Investments, L.P., as the real party-in-interest. Paper 4, 1.
D. The ’023 Patent
The ’023 patent is titled “Mobile Communication System with
Moving Base Stations.” 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 1:56–58.
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. The “movable base station moves with
the traffic at a rate of speed which is comparable to the speed of the traffic
IPR2019-01103
Patent 7,979,023 B2
4
and communicates with a moving mobile telephone unit via standard mobile
radio transmission.” Id. at 3:3–6. The moving 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 3:6–9.
This is illustrated by Figure 1 of the ’023 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.
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 3:66–4:2. Moving base stations
30 are disposed along one side of roadway 10. 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 4:2–6.
IPR2019-01103
Patent 7,979,023 B2
5
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 4:6–10. 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 4:11–13. Moving
base stations 40 are moved along rail 45. Id. at 4:13–14.
In operation, base stations 30 move in the direction of the flow of the
traffic at a rate of, for example, sixty miles per hour, which may be faster
than some traffic and slower than other traffic. Id. at 4:39–42. The moving
base stations handle telecommunications with mobile units 25, which travel
at a rate of not more than thirty miles per hour faster or slower than the
moving base stations. Id. at 4:42–45. Fixed base stations 70 accommodate
communications with mobile units traveling at speeds of less than thirty
miles per hour, including pedestrian traffic and stationary units. Id. at 4:48–
51.
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:
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
as the traveling mobile unit, the number of handoffs is greatly
reduced.
Id. at 5:10–18 (emphasis added).
IPR2019-01103
Patent 7,979,023 B2
6
Each of the moving base stations is provided with multiple antennas.
Id. at 5:20–21. 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 5:26–29.
E. Illustrative Claims
The ’023 patent has twenty-three claims. Nine claims (claims 11 and
16–23) are challenged in the Petition. See supra. Of the challenged claims,
claim 11 is independent. Claim 11 recites:
11. An apparatus configured to move relative to Earth, the
apparatus comprising:
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.
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. 1005,
“Ito”)
2. U.S. Patent No. 5,504,786, filed October 5, 1993 (Ex. 1006,
“Gardner”)
3. U.S. Patent No. 5,109,390, issued April 28, 1992 (Ex. 1007,
“Gilhousen390”)
4. U.S. Patent No. 4,001,692, issued January 4, 1977 (Ex. 1008,
“Fenwick”)
IPR2019-01103
Patent 7,979,023 B2
7
5. U.S. Patent No. 5,559,865, filed July 8, 1994 (Ex. 1009,
“Gilhousen865”)
Pet. 5–7.
In addition, Petitioner has submitted a Declaration of Scott A.
Denning (Ex. 1003, “Denning Decl.”) and a Reply Declaration of Mr.
Denning (Ex. 1034, “Denning Reply Decl.”). Patent Owner has 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/Basis
11, 16–21 103 Ito, Gardner
22 103 Ito, Gardner, Gilhousen390
23 103 Ito, Gardner, Gilhousen390,
Fenwick3
11, 16–22 103 Gilhousen865, Gilhousen390
23 103 Gilhousen865, Gilhousen390,
Fenwick
Pet. 7.

2 Ex. 1039 (“Lanning I Dep.”), Ex. 1040 (“Lanning II Dep.”),
Ex. 1041(“Lanning III Dep.”), Ex. 1042 (“Lanning IV Dep.”), Ex. 2108
(“Denning Dep.”).
3 Although the table on page 7 of the Petition identifies only Ito, Gardner,
and Fenwick in this ground, the detailed analysis of the ground at pages 47–
51 of the Petition includes Gilhousen390.
IPR2019-01103
Patent 7,979,023 B2
8
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. 16.
Patent Owner contends a person of ordinary skill in the art “at or near
the filing date of the earliest priority application of the ’023 Patent would
have had (i) a Bachelor of Science degree in electrical engineering or
computer engineering or related field of study; (ii) at least two years of
experience with wireless communications systems; and (iii) would also be
familiar with cellular communication technology.” PO Resp. 8 (citing
Lanning Decl. ¶ 49). 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.
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 ’023 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). As
IPR2019-01103
Patent 7,979,023 B2
9
the definitions are equivalent, we adopt Patent Owner’s more specific
description, with the exception of the open-ended language “at least.”
However, we would reach the same result on the ultimate question of
obviousness of the ’023 patent under either formulation.
B. Claim Construction
The Board applies the same claim construction standard as that
applied in federal courts. See Changes to the Claim Construction Standard
for Interpreting Claims in Trial Proceedings Before the Patent Trial and
Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018). 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 ’023 patent
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. 3. In our
IPR2019-01103
Patent 7,979,023 B2
10
Institution Decision, we did not see the need to construe any terms.
Institution Dec. 9.
Post-institution, both parties have proposed claim constructions for
our consideration. Thus, Patent Owner now seeks construction of the
following terms appearing in the challenged claims: “fixed port,”
“configured to,” “transmit radio frequency signals to a mobile device
corresponding to the received fixed port signals,” “mobile device,” and
“automotive vehicle.” PO Resp. 10–17. Several of these terms were
construed by the district court in the Novatel litigation. See Ex. 2105 (claim
construction order). Petitioner has responded to these constructions. Pet.
Reply 2–10.
1. “fixed port”
For this term, Patent Owner proposes that we adopt the district court’s
construction of “a stationary device at which signals can enter and exit a
communication network.” PO Resp. 10. Petitioner contends there is no
need to provide a construction for this term to resolve a controversy. Pet.
Reply 3 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999)). We agree with Petitioner that no construction of this
term is necessary.
2. “configured to”
The district court in the Novatel litigation construed “configured to,”
appearing in the preamble to claim 11, as “constructed to move with the
traffic at a rate of speed which is comparable to the speed of the traffic.” Ex.
2105, 14–16. Patent Owner contends that the preamble is limiting and urges
us to adopt this construction. PO Resp. 10–12. Petitioner states that this
construction “is consistent with the district court’s order” and does not
dispute this construction. Pet. Reply 3. However, Petitioner disagrees with
IPR2019-01103
Patent 7,979,023 B2
11
what it terms an “even narrower construction” of this term, implied by
Patent Owner’s arguments. Id. at 4. That dispute centers around the
meaning of “traffic,” a term that does not appear in the claim but does
appear in the district court’s construction of “configured to.” Patent Owner
relies on this proposed further limitation to the district court’s construction
in discussing the prior art Gilhousen865 patent, where Patent Owner states:
“An airplane does not move with traffic as it is not bound to predetermined
roads.” PO Resp. 52; see also PO Sur-reply 23.
Based on the parties’ agreement with the district court’s construction,
we apply that construction in our analysis below.4 Furthermore, we address
the “narrower implied construction” of the term “traffic” advanced by Patent
Owner in the analysis of Gilhousen865 that follows infra.
3. “transmit radio frequency signals to a mobile device corresponding to
the received fixed port signals”
For this phrase, Patent Owner proposes the following construction:
“transmit radio frequency signals to a mobile device, where the radio
frequency signals correspond to the received fixed port signals.” PO Resp.
12–13. Petitioner responds that an express construction of this term is not
necessary to resolve a controversy. Pet. Reply 3. We agree with Petitioner
and, therefore, do not provide an express construction.
4. “mobile device”
Prior to our Institution Decision, neither party advanced a construction
for this term, which now lies at the center of this controversy. Post-
institution, Patent Owner argues: “A mobile device is more than just a

4 We do not express an opinion on the question of whether the preamble is
limiting, as that is not necessary to resolve a controversy.
IPR2019-01103
Patent 7,979,023 B2
12
cordless phone handset.” PO Resp. 13. Thus, Patent Owner would have us
construe “mobile device” narrowly, as “a device that must register with and
be able to directly communicate with the cellular network.” Id. Patent
Owner asserts that this includes also 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.
To support this construction, Patent Owner relies 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.” Id. (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 cites also the discussion of the mobile device in the ’023 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.
Ex. 1001, 9:62–66 (partially quoted at PO Resp. 14–15). Patent Owner also
relies on testimony from its expert, Mr. Lanning. See PO Resp. 13 (citing
Lanning Decl. ¶¶ 46–48).
Petitioner responds that no special construction of “mobile device” is
necessary and opposes Patent Owner’s construction on a number of grounds.
Pet. Reply 4–8. Petitioner asserts that Patent Owner’s argument for a special
IPR2019-01103
Patent 7,979,023 B2
13
construction is inconsistent with Patent Owner’s position in the Novatel
litigation. Id. at 5; Ex. 2105, 20 (“In its opening claim construction brief,
[Carucel] states that it no longer requests construction of the term ‘mobile
unit.’”). Petitioner points out that the challenged claims are directed to the
mobile base station, and not to the mobile device, an element which 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
inconsistent with the intrinsic record. Id. at 6–8. Petitioner shows that the
claims themselves do not require that the mobile device perform registration
or communicate directly with a cellular network. Id. at 6–7. Petitioner
shows that the specification of the ’023 patent discloses that “the mobile unit
does not receive communications from the fixed port but only from the
movable base station,” and describes “eliminating any direct communication
from the mobile unit to the fixed radio port.” Id. at 7 (quoting Ex. 1001,
3:21–36) (citing Ex. 1001, 4:48–54). Finally, Petitioner points to statements
describing “mobile unit” 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. (citing Ex. 1023, 181).
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.” As instructed by Phillips,
we first look to the words of the claims. Phillips, 415 F.2d at 1312. We find
that the language of the challenged claims does not support Patent Owner’s
construction. As Petitioner points out, the challenged claims themselves are
not directed to the mobile device. Pet. Reply 5–6. Nor do the claims
themselves specify a device “that must register with and be able to directly
IPR2019-01103
Patent 7,979,023 B2
14
communicate with the cellular network.” The challenged claims and written
description of the alleged invention in the ’023 patent focus on the mobile
base station, not the mobile devices. Denning Reply Decl. ¶ 21; Lanning I
Dep. 164:6–7 (“None of the claims are in regard to the mobile device.”).
Patent Owner’s expert, Mr. Lanning, describes the moving base station (not
the mobile device) as “a new invention.” Lanning I Dep. 62:6–8 (“It was a
new invention, specifically the part of ’023 for the moving base station.”).
This emphasis on the moving base station as the invention is consistent with
counsel for Patent Owner’s presentation at oral argument: “The Carucel
patents were the culmination of Mr. Gavrilovich’s life’s work when he
invented a moveable base station that significantly improved wireless
communications by acting as an intermediary between cell towers and
mobile devices.” Hearing Tr. 67:15–19.
We, therefore, find that Patent Owner’s contention that the mobile
unit must be able to communicate directly with the cellular network is not
supported by the intrinsic record. In the challenged claims, it is the mobile
base station that communicates directly with the fixed ports, not the mobile
device. Pet. Reply 6–7. We agree with Petitioner that the challenged claims
describe only communications passing between the moving base station (the
“apparatus”) and the fixed port and between the moving base station and the
mobile device. Id.; Denning Reply Decl. ¶ 23. Thus, claim 11 recites that
the mobile base station has: “a receiver configured to receive fixed port
signals from a fixed port through the plurality of spatially separated
antennas;” and “a transmitter configured to transmit radio frequency signals
to a mobile device.” Ex. 1001, 12:8–16 (emphasis added). The challenged
claims, therefore, do not require the mobile device to communicate directly
with a cellular network. Id.
IPR2019-01103
Patent 7,979,023 B2
15
Furthermore, the claims do not associate the signals transmitted by the
mobile device to the moving base station with a cellular network, or identify
the recited mobile unit with a cellular network. Denning Reply Decl. ¶ 23.
As Mr. Denning testifies: “The only functionality attributed to the ‘mobile
device’ by the independent claims of the ’023 patent are the abilities to
transmit and receive radio signals from/to the claimed ‘apparatus.’” Id. ¶ 21
(emphases omitted).
Moreover, we find that the ’023 patent specification does not support
Patent Owner’s narrowing construction of “mobile device” as a phone
capable of communications directly with a cellular network. Cf. PO Resp.
7–8. As stated in Phillips, “the specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.” Phillips, 415 F.2d at 1315
(internal quotes and citation omitted).
First, we do not see in the specification of the ’023 patent a clear
indication supporting Patent Owner’s contention that conventional cordless
non-cellular phones should be excluded. Cf. PO Resp. 13 (“A mobile device
is more than just a cordless handset.”). In the Background section, the ’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 . . . .” Ex. 1001, 2:46–48 (emphases added).
While the ’023 patent does refer to the base stations in a “typical cellular
telephone system” as “cell site[s]” (id. at 4:63–64), it also describes the radio
interfaces between the mobile devices and the base stations in more general
terms. Id. at 6:48–54. Thus, the ’023 patent describes the radio interfaces
between the mobile units and both the moving and fixed base stations as “a
IPR2019-01103
Patent 7,979,023 B2
16
standard radio interface, well known in the art.” Id. at 6:48–51. This is
consistent with the stated goal of providing “an infra structure which allows
the use of . . . a cordless phone.” Id. at 2:46–48.
Moreover, we find further support for our conclusion that Patent
Owner’s construction is too limiting in the ’023 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, 3:21–36). In
that embodiment, the power levels for the signals between the moving base
station and the mobile device are chosen to avoid direct communication
between the mobile device and the fixed radio ports. Ex. 1001, 3:21–36.
Phillips requires us also to consider the prosecution history in
construing the claims. 415 F.2d at 1317. Here, the prosecution history of
related U.S. Patent 7,221,904 (the subject of co-pending IPR2019-01101), is
relevant. Pet. Reply 7–8.
The ’023 patent is a continuation of the ’904 patent, and shares a
common specification5 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. 1023, 181
(emphasis added). We find that this prosecution history of the ’904 patent
describing the mobile devices as “telephones” and “radios” does not support

5 Although the specifications are not identical, the minor differences
between the specification of the ’904 patent and the specification of the ’023
patent are not pertinent to this discussion.
IPR2019-01103
Patent 7,979,023 B2
17
Patent Owner’s construction limiting such devices to “a device that must
register with and be able to directly communicate with the cellular network.”
Patent Owner asserts that its proposed construction reflects “the plain
and ordinary meaning” of the term “mobile device” under Phillips. PO
Resp. 13–16; 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 ’023 Patent specification
also describes the invention as a whole and should be limited as such.” Id.
Patent Owner continues: “Specifically, the ’023 Patent relates to and
describes as a whole improving the wireless connections of mobile devices
within cellular telephone systems via a moving base station.” Id.
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 directed to the moving base station—“[a]n apparatus configured
to move relative to Earth”—and Patent Owner has asserted that the invention
of the ’023 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
’023 patent may discuss cellular networks, we find that the disclosure is not
limited 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. Patent Owner fails to demonstrate a disavowal of mobile units
that do not communicate directly with a cellular system either in the
specification or prosecution history. As discussed supra, the ’023 patent
claims are directed to the mobile base station communicating with the
IPR2019-01103
Patent 7,979,023 B2
18
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 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.”). The references to cellular communications in the ’023 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
IPR2019-01103
Patent 7,979,023 B2
19
contrast, for the reasons discussed above, there is no corresponding “clear
and unmistakable statement” limiting the scope of the mobile devices to “a
device that must register with and be able to directly communicate with the
cellular network.”
We do not find Patent Owner’s other authorities to be any more
persuasive. For example, in Personalized Media Communications, LLC v.
Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020) (cited at PO Sur-reply 4), the
Federal Circuit relied on facts not present here, namely, “[d]uring
prosecution, the applicant repeatedly and consistently voiced its position that
encryption and decryption require a digital process in the context of the ’091
patent.” 952 F.3d at 1345. Moreover, the Court observed: “The applicant
never abandoned that position. Indeed, the applicant amended the claims—
giving rise to the claim term at issue on appeal—only to clarify its position
that ‘encryption requires a digital signal.’” Id. at 1345–46. As discussed
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. 1023, 181. Nor has Patent Owner presented 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 is dispute. We
discuss the written description in our analysis supra, and find that it does not
IPR2019-01103
Patent 7,979,023 B2
20
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 an 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
scope of the invention and its advantages as described in the ’023 patent
specification center on the mobile base station, not the mobile device. The
’023 patent specification, therefore, does not favor Patent Owner’s narrow
construction of “mobile devices.” 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 ’023 patent that discuss communications with the fixed base stations
when traveling at lower speeds of less than thirty miles per hour. PO Sur-
reply 3–4. Those citations do not describe the communications as cellular
communications or fixed base stations 70 as cell sites, stating only that their
operation is “essentially the same as that of a standard fixed base station.”
Ex. 1001, 10:63–65.6 Nor are Patent Owner’s citations to the various
occurrences of the term “cellular” in the ’023 patent persuasive. Cf. PO Sur-
reply 5–6. There is no dispute that improving cellular technology is

6 Patent Owner misquotes the description in the ’023 patent 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 that limits them to “cellular” stations.
IPR2019-01103
Patent 7,979,023 B2
21
included among the goals described in the ’023 patent. However, Patent
Owner fails to support its argument that the ’023 patent “explicitly and
exclusively relates to improving the wireless connections of mobile devices
within ‘cellular telephone systems.’” Id. at 5 (original emphasis omitted;
emphasis added). We find, based on the analysis above, that the claims, the
specification, and the prosecution history of the ’023 patent reveal a broader
goal of also improving wireless connections involving non-cellular devices,
such as radios and telephones.
Nor are we persuaded by Patent Owner’s position that the
specification requires the mobile device to “be capable of registering with a
cellular network.” PO Resp. 14–16. Such a registration requirement is not
found in the claims or prosecution history. Registration with a base station
is mentioned in the ’023 patent specification (see PO Sur-reply 3), but the
registration process described there occurs only “[w]hen a mobile unit set is
first powered up or first enters a service area,” and involves the mobile
device transmitting its address to the moving base station, not the fixed base
stations. Ex. 1001, 9:62–67 (“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’ analysis of the ’023 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 ’023 patent discloses registration by the mobile device, it describes
registering with the moving base station and not with the fixed base station.
IPR2019-01103
Patent 7,979,023 B2
22
Ex. 1001, 9:65–67. 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 ’023 patent or
the intrinsic evidence, and therefore we do not adopt a construction that
would limit “mobile devices” to cellular phones or other devices “that must
register with and be able to directly communicate with the cellular network,”
and which excludes conventional cordless phones.
We agree with Petitioner that no construction of “mobile device” is
necessary. Pet. 16; Pet. Reply 5.
5. “automotive vehicle”
Petitioner contends that no construction of this term, appearing in
dependent claim 20, is needed, but if a construction is necessary, Petitioner
construes “automotive vehicle” as “a vehicle moving by means of its own
power.” Pet. Reply 9 (citing Denning Decl. ¶ 184). Patent Owner construes
the term to mean an automobile. PO Resp. 16 (citing Lanning Decl. ¶ 48).
Patent Owner relies on the description in the specification of an automotive
vehicle as an alternative means of moving base stations 30. Id. (citing Ex.
1001, 4:6–10).
As will be apparent from our analysis infra, our decision does not
depend on the construction of “automotive vehicle.” Therefore, we do not
see the need to construe this term to resolve a controversy.
C. Description of Prior Art References
Petitioner’s challenge primarily relies on Ito and Gilhousen865. See
supra. The remaining references (Gardner, Gilhousen390, and Fenwick) are
relied on as secondary references.
IPR2019-01103
Patent 7,979,023 B2
23
1. Ito (Exhibit 1005)
Ito is a patent titled “Mobile Radio Communication System Having
Mobile Base and Portable Devices as a Mobile Station.” Ex. 1005, (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.
Thus, Ito describes a mobile radio communication system that
wirelessly connects a mobile station, or a mobile base device, and a portable
device by a radio channel, in order to eliminate the necessity of wiring the
mobile base device and portable telephone device together and increasing
the maneuverability of the telephone handset. Id. at 2:5–12.
This is illustrated by Figure 6 of Ito, reproduced below.

Figure 6 of Ito depicts a mobile radio communication system.
In Figure 6 of Ito, mobile base device MSS is wirelessly connected
simultaneously with two portable devices PSS1 and PSS2. Id. at 12:52–56.
Base station BSS and mobile base device MSS communicate with each other
IPR2019-01103
Patent 7,979,023 B2
24
by way of radio frequencies fT1 and fR1.7 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.
2. Gilhousen865 (Exhibit 1009)
Gilhousen865 is a patent titled “Airborne Radiotelephone
Communications System.” Ex. 1009, (54). The patent discloses an airborne
communication system that enables one or more radiotelephones to
communicate with a ground-based cellular radiotelephone system. Id. at
(57) (“Abstract”). The aircraft is equipped with a repeater that relays a
signal from the airborne radiotelephone to the ground base station, and vice
versa. Id. This is illustrated by Figures and 1 and 2 of Gilhousen865,
reproduced below.

7 At Petitioner points out (Pet. 19 n.5), Figure 6 of Ito mislabels fT1 as fr1. See
Ex. 1005, 12:57–63.
IPR2019-01103
Patent 7,979,023 B2
25

Figure 1 of Gilhousen865 depicts an airborne telephone
communications system.

Figure 2 of Gilhousen865 shows an airborne-based subsystem.
As shown in Figure 1 above, the airborne radiotelephone communication
system of Gilhousen865 is comprised of two subsystems: ground-based
IPR2019-01103
Patent 7,979,023 B2
26
subsystem 105 and airborne-based subsystem 125. Ex. 1007, 2:9–12. The
ground-based radiotelephone system is comprised of base station 120,
known as a cell site, coupled to public switched telephone network (PSTN)
110 through mobile switching center 115. Id. at 2:21–24.
The base station communicates with the mobile radiotelephones and
switches the signals from the radiotelephones to mobile switching
center 115. Id. at 2:24–27. The base station also provides the proper
channels to the radiotelephone, thus enabling communication with the base
station. Mobile switching center 115 switches signals from the base station
to the PSTN and vice versa. Id. at 2:27–31.
In Figure 2, the subsystem uses CDMA-type radiotelephones 205 to
communicate with radiotelephone signal repeater 210 that is located in the
aircraft. Id. at 2:46–49. The repeater has an amplifier to increase the gain of
the signal that is communicated to the repeater. Id. at 2:49–52.
The repeater receives signals from the individual radiotelephones
within the aircraft and relays them to antenna 215 mounted on the outside of
the aircraft. The outside antenna relays the signals to the base station on the
ground. Id. at 2:53–57.
The airborne subsystem also operates in the reverse direction.
Telephone calls from the PSTN to the base station on the ground are
transmitted to the outside antenna. The antenna communicates the signal to
the proper radiotelephone 205 in the aircraft. Id. at 2:60–65.
Gilhousen865 also describes a hand-off capability. Once the aircraft
reaches the fringe of the present cell site, the radiotelephone begins the
hand-off process. Id. at 3:52–54. The signals from the ground base stations
are received by the external antenna of the airborne subsystem and repeated
to the radiotelephones. This enables the radiotelephones to search for the
IPR2019-01103
Patent 7,979,023 B2
27
strongest pilot signal of the next cell and register with that base station. Id.
at 3:55–59.
In an alternate embodiment, the airborne repeater is replaced by a base
station-type unit that registers the radiotelephones aboard the aircraft. Id. at
3:65–67. Once a radiotelephone is registered with the aircraft base station,
the aircraft base station then searches for the strongest pilot signal from a
ground base station and registers with that base station. Id. at 4:1–5.
3. Gardner (Exhibit 1006)
Gardner is a patent titled “Open Loop Phase Estimation Methods and
Apparatus for Coherent Combining of Signals Using Spatially Diverse
Antennas in Mobile Channels.” Ex. 1006, (54). Gardner describes a
receiver for use in cellular communications. Id. at 2:17–19. The receiver is
configured to receive spatially diverse signals and to properly align and
combine the received signals. Id. at 1:65–2:4.
The receiver includes two spatially diverse antennas. Id. at 2:23–24.
After demodulation and conversion, the received signals are processed by
the receiver for alignment and combining. Id. at 2:64–3:10. Specifically,
after the signals are converted to digital form, phase difference detection is
performed in order to detect “a good estimate of the actual phase difference
between the two signals.” Id. at 2:64–67. Then, the phase difference is used
to phase align the two digitized signal vector by shifting the phase of the
vector. Once aligned, the signals can be combined. Id. at 3:1–10.
4. Gilhousen390 (Exhibit 1007) and Fenwick (Exhibit 1008)
These secondary references will be discussed infra.
IPR2019-01103
Patent 7,979,023 B2
28
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,” 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 Challenges
Petitioner contends claims 11 and 16–21 would have been obvious
over Ito in view of Gardner. Pet. 26. Petitioner’s analysis first focuses on
independent claim 11. Id. at 29.
1. Claim 11
Petitioner’s element-by-element analysis of claim 11 in relation to Ito
and Gardner appears at pages 29–36 of the Petition. Petitioner supports its
analysis with testimony from Mr. Denning. Denning Decl. ¶¶ 108–119.
IPR2019-01103
Patent 7,979,023 B2
29
Petitioner demonstrates that each element of claim 11 is disclosed or
suggested by Ito and Gardner. Pet. 29–36; Denning Decl. ¶¶ 108–119.
a. An apparatus configured to move relative to Earth
Petitioner identifies mobile base device MSS in Ito as the “apparatus”
recited in the claim 11 preamble (“An apparatus configured to move relative
to Earth”). Pet. 29; Denning Decl. ¶ 110. As Petitioner explains: “The
mobile base device MSS communicates with a fixed base station BSS, and
communicates with one or more portable devices PSS within the
automobile.” Pet. 29.
Patent Owner does not challenge Petitioner’s showing that Ito meets
this limitation. We find that the preamble of claim 11 (whether or not
limiting) is met by Ito.8
b. a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
and
a transmitter configured to transmit radio frequency
signals to a mobile device corresponding to the received fixed
port signals.
Petitioner identifies Ito’s transmitter-receivers 50 and 80, respectively,
as the “receiver” and “transmitter” recited in claim 11. Id. at 29–30;
Denning Decl. ¶¶ 114–115. Petitioner’s analysis refers to annotated
Figure 1 of Ito, reproduced below.

8 We do not decide whether the preamble of claim 11 is limiting.
IPR2019-01103
Patent 7,979,023 B2
30

Figure 1 of Ito (annotated) shows an automobile telephone system.
Pet. 32; Denning Decl. ¶ 114. In Figure 1 and the accompanying written
description, Ito discloses mobile base device MSS communicating with
fixed port in BSS2 and a portable device PSS located within the vehicle. Ex.
1005, 5:31–65, 7:9–17; see Pet. 31; Denning Decl. ¶¶ 114–115.
Petitioner shows that the mobile base MSS in Ito includes a
transmitter-receiver for communicating with base station BSS2 and a second
transmitter-receiver for communicating with portable device PSS. Pet. 32
(citing Ex. 1005, Fig. 3, 7:12–16); Denning Decl. ¶ 115. Petitioner shows
that the MSS receives a signal from base station BSS2 from a fixed port via
the first transmitter-receiver 50 and forwards it to the portable device PSS2
via the second transmitter-receiver 80. Pet. 32–33 (citing Ex. 1005, 13:15–
18); Denning Decl. ¶ 115.
Referring back to its proposed claim construction, Patent Owner
contends that the “mobile device” limitation is not met by Ito. PO Resp. 42–
45. Patent Owner states, “Ito does not disclose any ability of its portable
IPR2019-01103
Patent 7,979,023 B2
31
devices to register or directly communicate with a cellular network.” Id. at
44 (citing Lanning Decl. ¶ 147). Patent Owner asserts Ito’s “portable device
is similar to a cordless phone system,” and, therefore, is excluded under
Patent Owner’s construction of “mobile device.” Id. at 44.
Patent Owner’s argument relies on its proposed construction of
“mobile device” as “a device that must register with and be able to directly
communicate with the cellular network.” See supra Section II.B.4. Because
we have not adopted Patent Owner’s claim construction for “mobile device,”
we are not persuaded by this argument.
We find that Ito’s portable device PSS meets the requirement of claim
11 for a mobile device for the reasons given by Petitioner and summarized
supra. See Denning Decl. ¶ 118; Denning Reply Decl. ¶ 32 (citing Ito’s Fig
6, reproduced supra; Ex. 1005, 11:65–12:1). We find that Ito meets the
“receiver” and “transmitter” limitations for the reasons given.
c. a plurality of spatially separated antennas
In addition to the above limitations, claim 11 calls for “a plurality of
spatially separated antennas.” Petitioner explains: “Ito does not explicitly
disclose that first transmitter-receiver 50 includes ‘a plurality of spatially
separated antennas.’” Pet. 30 (emphasis omitted). Thus, Petitioner relies on
Gardner to meet this recitation in the claim. Id.
Petitioner shows that Gardner discloses a modular receiver for use in
cellular communications like those disclosed in Ito. Id. (citing Ex. 1006,
1:10–12); Denning Decl. ¶ 116. Petitioner shows that Gardner discloses that
spatial diversity is “[o]ne of the most useful techniques” for improving
receiver performance, and further that spatial diversity is achieved by using
two or more antennas spaced apart so as to reduce the effects of fading on
IPR2019-01103
Patent 7,979,023 B2
32
the reduced signal. Pet. 30 (quoting Ex. 1006, 1:15–17) (alteration in
original). We find that for these reasons, Gardner discloses this limitation.
d. Ito and Gardner Disclose Claim 11
We find, therefore, that Petitioner has demonstrated that each element
of claim 11 is taught or suggested by Ito and Gardner for the reasons given
by Petitioner and summarized above. We find that Petitioner’s showings are
supported by the disclosures in Ito and Gardner and the Petition, and by the
testimony of Petitioner’s expert, Mr. Denning. Denning Decl. ¶¶ 108–119;
Denning Reply Decl. ¶¶ 32–39.
As discussed supra, we have considered Patent Owner’s challenges to
these showings by Petitioner that the elements of claim 11 are taught or
suggested by Ito and Gardner (PO Resp. 42–45), and find them
unpersuasive.
e. Rationale for Combining Ito and Gardner
Petitioner argues: “[A person of ordinary skill] would have been
motivated to employ Gardner’s spatially diverse antennas in the first
transmitter-receiver 50 of Ito, at least for the reasons of reducing the effects
of fading in the received signals.” Pet. 30 (citing Denning Decl. ¶ 113).
Petitioner further explains that a person of ordinary skill would have been
motivated by Ito’s disclosure of fading at high speeds:
Ito also discloses that signals transmitted to a moving
device often have higher error rates due to “high speed fading
phenomena.” However, Ito does not specifically describe how
such errors can be reduced. Therefore, a [person of ordinary
skill] would have looked to the prior art, such as Gardner, for
determining how to combat the deleterious effects of fading on
signals transmitted to a moving device.
Id. at 26 (citations omitted). Petitioner supports its contentions with credible
testimony from Mr. Denning. See Denning Decl. ¶¶ 102–107, 113. As Mr.
IPR2019-01103
Patent 7,979,023 B2
33
Denning concludes: “[T]he proposed combination of Ito and Gardner would
involve nothing more than incorporating a well-known concept (i.e.,
Gardner’s signal diversity) into a well-known system (i.e., Ito’s radio
communication system).” Id. ¶ 107.
Petitioner also demonstrates a person of ordinary skill would have
expected success in combining these teachings. Mr. Denning testifies,
“modifying Ito with Gardner would have required minimal modifications,”
and provides an example of how Ito and Gardner could have been combined.
Id. ¶ 105. He explains how Ito could have been modified by providing, in
place of antenna 58 connected to the switch in Ito, at least one antenna for
transmission and at least two antennas for reception. Id. He specifically
testifies that a person of ordinary skill “could have combined the system of
Ito with the teachings of Gardner by known methods, and the results of the
combination would have been predictable” to a person of ordinary skill. Id.
¶ 107.
Patent Owner disputes Petitioner’s evidence of the existence of a
motivation to combine the teachings of Ito and Gardner. PO Resp. 36–37.
Patent Owner contends, “such a combination would not result in an
automobile telephone unit that can receive signals from a fixed port.” Id.
Patent Owner contends that such a combination would yield “an inoperable
device”:
If a [person of ordinary skill] were to simply replace the single
antenna of the automobile telephone unit of Ito with the spatially
separated antennas of Gardner, as Petitioner proposes, this
would result in an inoperable device, because it would be unable
to correctly receive or process any signals from the spatially
separated antennas.
Id. at 37.
IPR2019-01103
Patent 7,979,023 B2
34
We disagree with Patent Owner’s assertion that a motivation to
combine Ito and Gardner is lacking. We find that Petitioner has provided
persuasive evidence of such a rationale. Pet. 30–31; Denning Decl. ¶¶ 102–
107, 113; see discussion supra.
Patent Owner cites KSR International Co. v. Teleflex Inc., 550 U.S.
398 (2007), as requiring the Board to consider the motivation to combine in
determining obviousness. PO Resp. 36. But, as the Federal Circuit has
emphasized, in analyzing obviousness, 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.
Given the high level of ordinary skill in the pertinent art before us, we
find that a person having such ordinary skill would have easily recognized
that combining Ito and Gardner would have the advantages identified by
Petitioner. Denning Decl. ¶¶ 105–107. Moreover, such a highly skilled
person would have been able to combine the teaching of those references
with a reasonable expectation of success. Id. As Petitioner summarizes, “a
[person of ordinary skill] could have combined the system of Ito with the
IPR2019-01103
Patent 7,979,023 B2
35
teachings of Gardner by known methods, and the results of the combination
would have been predictable to a [person of ordinary skill].” Pet. 28 (citing
Denning Decl. ¶ 107).
We, therefore, find that Petitioner has demonstrated by a
preponderance of the evidence, supported by expert testimony and by the
references themselves, a motivation to combine the teachings of Ito and
Gardner with a reasonable expectation of success. As Petitioner points out,
Ito itself refers to errors caused by the “high speed fading phenomena” in the
path between the base station and the mobile device. Pet. 26; Ex. 1005,
16:49–61; see also Denning Decl. ¶ 103. Moreover, Gardner discloses that
spatial diversity is “[o]ne of the most useful techniques for improving
receiver performance.” Ex. 1006, 1:14–16. Furthermore, Gardner discloses
to “use two (or more) antennas spaced far enough apart” to reduce the
effects of fading. Id. at 1:16–17.
We are not persuaded by Patent Owner’s argument that combining
Ito and Gardner “would have required new circuitry–– not disclosed in either
Ito or Gardner.” PO Resp. 37. Moreover, “[t]he 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, 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
IPR2019-01103
Patent 7,979,023 B2
36
the teachings of references does not involve an ability to combine their
specific structures.”). We are satisfied with Mr. Denning’s description of
how a person of ordinary skill would have approached making the
combination of these known techniques of using spatially separated
antennas. See Denning Decl. ¶¶ 105–106.
We are not persuaded by the testimony of Patent Owner’s expert, Mr.
Lanning, on this issue. Cf. Lanning Decl. ¶¶ 123–127. His testimony
mirrors arguments in Patent Owner’s response about the combination of Ito
and Gardner resulting in an “inoperable device” and requiring “new
circuitry.” See id. ¶¶ 124–125. As discussed supra, we find that these
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 unpersuasive. For example,
Patent Owner argues that the supporting testimony from Mr. Denning is
“conclusory” and “entitled to little or no weight.” PO Resp. 22–29. We
disagree with Patent Owner’s criticism of Mr. Denning’s testimony, which
we find helpful on this issue, particularly his example of how Ito and
Gardner could be combined. Denning Decl. ¶¶ 105–106. For the reasons
stated above, we find Petitioner’s analysis of this challenge and the
supporting testimony from Mr. Denning, including his explanation of the
rationale for combining the teachings of the references, to be credible and
supported by the cited evidentiary record.
Nor do we agree with Patent Owner that the Petition does not supply
“sufficient detail” on “how to combine” Ito and Gardner (and the other
references). PO Resp. 31–35. According to the ’023 patent, the invention
uses “well-known” equipment and functions. See, e.g., Ex. 1001, 4:28, 5:5–
IPR2019-01103
Patent 7,979,023 B2
37
6, 5:23, 5:52, 5:64, 6:17, 6:28, 6:46, 6:50–51, 6:60, 9:18, 9:31, 9:60. We
find Mr. Lanning’s testimony raising various technical problems in
combining the references to be inconsistent with the admonition by the
Federal Circuit that “the rationale of KSR does not support [the] theory that a
person of ordinary skill can only perform combinations of a puzzle element
A with a perfectly fitting puzzle element B.” ClassCo, Inc., 838 F.3d at
1219. In contrast, Mr. Denning provides an example of how Ito and Gardner
“could have been combined.” Denning Decl. ¶¶ 105–106. The ’023 patent
itself acknowledges that “[v]arious techniques for obtaining high antenna
diversity are well known in the art and antennas employing such techniques
are commercially available.” Ex. 1001, 6:27–29. We are not persuaded that
more detailed explanations of how to combine such “well-known”
equipment are required by KSR.
We are not persuaded by Patent Owner’s “teaching away” argument,
based on its citation of McGinley v. Franklin Sports, Inc., 262 F.3d 1339,
1354 (Fed. Cir. 2001). PO Sur-reply 12. In McGinley, the Federal Circuit
stated that, “[i]f references taken in combination would produce a
‘seemingly inoperative device,’ we have held that such references teach
away from the combination and thus cannot serve as predicates for a prima
facie case of obviousness.” 262 F.3d at 1354. As discussed above, we are
persuaded by Petitioner’s contentions and evidence as to how Ito and
Gardner would have and could have been combined, and, therefore, we do
not agree with Patent Owner’s suggestion that the resulting combination
yields an inoperative device. We, therefore, do not find McGinley’s brief
discussion of “teaching away” helpful to Patent Owner. Moreover,
McGinley was recently distinguished in In re Urbanski, 809 F.3d 1237 (Fed.
Cir. 2016). In Urbanski, as here, the motivation to combine the references
IPR2019-01103
Patent 7,979,023 B2
38
(Wong and Gross) came from the references themselves. Urbanski, 809
F.3d at 1243–44 (“Here, the cited references do not teach away from the
claimed method. . . . Wong thus provides the motivation to modify the
Gross process and suggests the desirability of such modification.”). We are,
therefore, persuaded by Petitioner’s evidence that a person of ordinary skill
would have combined the teachings of Ito and Gardner, and we are not
persuaded by Patent Owner’s argument based on McGinley.
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Ito in combination with Gardner discloses or suggests
each element of claim 11, and 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
explained above, we find Petitioner has shown by a preponderance of
evidence that claim 11 would have been obvious over Ito and Gardner.
2. Claims 16–21
Petitioner provides an element-by-element analysis of dependent
claims 16–21. Pet. 36–42; Denning Decl. ¶¶ 120–136. Patent Owner’s
response refers back to its contentions directed to claim 11. PO Resp. 45.
For the reasons previously given in our analysis of claim 11, supra, we are
not persuaded by those arguments by Patent Owner.
Claim 16 adds the limitation “a controller configured to compare the
received fixed port signals received through the spatially separated antennas
and to select a best signal.” Ex. 1001, 12:32–35 (emphasis added).
Petitioner shows that Gardner meets this “best signal” limitation: “Gardner
discloses that, while there are many well-known ways to make use of the
signals received from the multiple antennas, ‘the simplest of these is to just
choose [sic] the antenna that provides the strongest signal.’” Pet. 36
IPR2019-01103
Patent 7,979,023 B2
39
(quoting Ex. 1006, 1:25–27) (internal alterations omitted). Petitioner relies
on Gardner also to show the “compare” and “select” steps in this claim. Id.
at 36–37.
Patent Owner presents an additional argument for claim 16. PO Resp.
45–49. Patent Owner contends that Petitioner “incorrectly equates”
Gardner’s selection of the “strongest signal” with the claimed “best signal.”
Id. at 46. Patent Owner contends the ’023 patent “provides that ‘a best
signal’ is more than just the strongest signal.” Id. at 47 (citing Ex. 1001,
11:3–8). “At a minimum, ‘best signal’ includes an analysis of the error rate
in addition to the signal strength when viewed in the entire context of the
’023 Patent.” Id. (citing Lanning Decl. ¶ 153)
Petitioner responds that the portion of the ’023 patent cited by Patent
Owner does not support Patent Owner’s position, because it “does not relate
to the claimed limitation, but rather to functions carried out by a mobile
device determining whether to handoff.” Pet. Reply 15 (emphasis omitted);
Denning Reply Decl. ¶ 41–43. We agree with Petitioner. The passage relied
on by Patent Owner describes the mobile unit’s operation in monitoring the
signal from the base stations: “Each mobile unit monitors pilot signals from
fixed and moving base stations and synchronizes to the base station
providing the best signal.” Ex. 1001, 11:11–13. The claim, however, is
directed to functionality of the recited “apparatus,” i.e., the moving base
station. Nor does the claim specify particular metrics (such as error rate)
that must be evaluated by the claimed apparatus to select a “best signal.”
In addition, Mr. Denning testifies that Gardner discloses “well known
schemes” for analyzing signals from two antennas, including one in which
received signals are “weighted with gains proportional to their signal voltage
to noise power ratios.” Denning Reply Decl. ¶ 45 (citing Ex. 1006, 1:32–34)
IPR2019-01103
Patent 7,979,023 B2
40
(emphasis omitted). Mr. Denning testifies that a person of ordinary skill
“would have understood there is a 1-to-1 mapping between signal-to-noise
ratio and error rate for a given modulation and coding.” Id.
Mr. Denning supports these opinions with citations to several
background references, including Exhibits 1042, 1047, and 1044. In
addition, Mr. Denning testifies that Gardner discloses “analyzing signals
using coherent demodulation schemes, which analyze symbol errors of the
signal.” Denning Reply Decl. ¶ 46 (citing Ex. 1006, 1:28–41).
We are persuaded by Petitioner’s evidence and Mr. Denning’s
testimony, summarized above, that this claim limitation is disclosed by Ito
and Gardner. Pet. 36–37; Pet. Reply 14–16; Denning Decl. ¶ 121; Denning
Reply Decl. ¶¶ 40–47. We are not persuaded by Patent Owner’s argument
that Mr. Denning’s testimony is “unsupported.” PO Sur-reply 22. We find
this testimony by Mr. Denning to be credible and supported by the record.
We are not persuaded by Mr. Lanning’s testimony that “the strongest
signal may not be the best signal received by the mobile phone, . . . because
the strongest received signal may not be coming from the correct cellular
network operator or the strongest signal may have some type of distortion
that would cause errors in the data being received.” Lanning Decl. ¶ 154.
We agree with Mr. Denning that claim 16 “requires selecting a best signal
among signals received from a single fixed port. Thus, all signals analyzed
are from the same fixed port, including the best received signal that is
selected.” Denning Reply Decl. ¶ 47. We also agree that Gardner discloses
analysis of the received signals for distortion. Id. (citing Ex. 1006, 2:31–38).
In sum, we determine that for the reasons presented in the Petition and
those discussed above, Petitioner has demonstrated by a preponderance of
IPR2019-01103
Patent 7,979,023 B2
41
the evidence that dependent claims 16–21 would have been obvious over Ito
and Gardner.
3. Claims 22 and 23
These claims depend, directly or indirectly, from claim 11.
Petitioner’s challenge to claim 22 as obvious relies on Ito, Gardner, and
Gilhousen390. Pet. 42–46. Petitioner’s challenge to claim 23 relies on Ito,
Gardner, Gilhousen390, and Fenwick. Id. at 47–51.
Claim 21 (from which claim 22 depends) calls for the receiver to be
“further configured to receive fixed port signals from a plurality of fixed
ports through the plurality of spatially separated antennas.” Ex. 1001,
12:46–49. Claim 22 further recites “each fixed port signal transmitted from
each of the plurality of fixed ports includes common data.” Id. at 12:50–52.
We find that Petitioner shows that Gardner and Gilhousen390 meet
the “common data” limitation added in claim 22. Petitioner shows:
“Because Gilhousen390 describes adding signals corresponding to the same
call received from different base stations, a [person of ordinary skill] would
have found it obvious that the received signals include ‘common data.’” Id.
at 46 (citing Denning Decl. ¶ 145). We find, for the reasons given by
Petitioner and summarized above, that Ito, Gardner, and Gilhousen390
disclose the elements of claim 22.
Moreover, we find that Petitioner demonstrates a motivation to
combine these references. Pet. 42–45. Petitioner states, “Based on the
teachings of Gilhousen390, a [person of ordinary skill] would have been
motivated to modify the combined system of Ito and Gardner with the cell-
site diversity of Gilhousen390 at least for the purpose of further combating
the effects of fading of transmitted signals.” Id. at 44–45 (citing Denning
IPR2019-01103
Patent 7,979,023 B2
42
Decl. ¶ 141). Petitioner explains: “As shown in Gilhousen390’s Fig. 3,
Ito’s mobile base device MSS could be modified to include a second
receiver within the transmitter-receiver 50 identical to its first for receiving
signals from a second base station BSS.” Id. at 45. Relying on expert
testimony from Mr. Denning, Petitioner demonstrates a reasonable
expectation of success in making this modification: “Thus, modifying Ito’s
transmitter-receiver 50 to include the second receiver would have required
minimal modifications.” Id. (citing Denning Decl. ¶ 141).
Claim 23 depends from claim 22 and adds the limitation “wherein
transmission of each fixed port signal from each of the plurality of fixed
ports is delayed by a different time and the receiver is configured to receive
and separate the fixed port signals.” Ex. 1001, 12:53–57. Petitioner shows
that Fenwick’s teachings of “a time diversity configuration” meet the added
limitation of claim 23. Pet. 48 (citing Ex. 1008, 1:6–15, 1:37–40). We find,
for the reasons given by Petitioner, that Ito, Gardner, Gilhousen390, and
Fenwick disclose the elements of claim 23.
We find also that Petitioner shows that “based on the teachings of
Fenwick, a [person of ordinary skill] would have been motivated to modify
the combined system of Ito and Gardner with the time diversity of Fenwick
at least for the purpose of further combating the effects of fading on
transmitted signals, as well as for the additional benefits on signal quality
identified by Fenwick.” Id. at 48–49 (citing Denning Decl. ¶ 150).
Patent Owner responds to Petitioner’s analysis of claims 22 and 23 by
referring back to its contentions directed to claim 11, specifically with
regard to the recited “transmitter configured to transmit radio frequency
signals to a mobile device.” PO Resp. 49–50. For the reasons set forth in
our analysis of claim 11, supra, we are not persuaded by those arguments.
IPR2019-01103
Patent 7,979,023 B2
43
Patent Owner also challenges the motivation to combine Ito and
Gardner with Gilhousen390 and Fenwick. PO Resp. 37–38. Patent Owner
refers generally to “compatibility issues” resulting from combining
Gilhousen390’s “CDMA functionality” with Ito’s controller. Id. Patent
Owner contends a person of ordinary skill in the art “would not have been
motivated to combine Fenwick’s time diversity configuration with the pre-
existing base station of Ito because, as previously discussed, Ito lacks the
necessary design and circuitry details for the pre-existing base stations of the
automobile telephone system.” Id. at 38.
These arguments are similar to the arguments by Patent Owner,
addressed supra, that combining Ito and Garner would involve designing
“new circuitry.” For the reasons given above, we are not persuaded by those
arguments. We find that, given the high level of skill in this art, a person of
such skill would have been motivated to combine the teachings of Ito and
Gardner with Gilhousen390 and Fenwick and would have done so with a
reasonable expectation of success. Among other reasons, according to the
’023 patent, the invention uses “well-known” equipment and functions. See,
e.g., Ex. 1001, 4:28, 5:5–6, 5:23, 5:52, 5:64, 6:17, 6:28, 6:46, 6:50–51, 6:60,
9:18, 9:31, 9:60. We find combining such well-known equipment and
functions would have been within the skill level of an ordinarily skilled
engineer. See Denning Decl. ¶¶ 142 (“the proposed combination of Ito and
Gardner with Gilhousen390 would involve nothing more than incorporating
a well-known concept (i.e., Gilhousen390’s cell-site diversity) into a well-
known system (i.e., Ito and Gardner’s combined radio communication
system)”), 151 (“the proposed combination of Ito, Gardner, and
Gilhousen390 with Fenwick would involve nothing more than incorporating
a well-known concept (i.e., Fenwick’s time diversity) into a well-known
IPR2019-01103
Patent 7,979,023 B2
44
system (i.e., Ito, Gardner, and Gilhousen390’s combined radio
communication system)”). As Petitioner further explains, Gardner “also
describes certain complications associated with a spatial diversity
configuration.” Pet. 43. We are persuaded that a person of ordinary skill
“would have been motivated to look to the prior art, such as Gilhousen390,
for alternative and/or additional methods for reducing fading or other
negative effects on transmitted signals.” Pet. 43–44; Denning Decl. ¶ 139.
Similarly, Fenwick identifies undesirable effects that can be addressed
with its time diversity configuration, including “impulsive noise and
interference.” Ex. 1008, 1:13–15. Therefore, based on the teachings of
Fenwick, we find a person of ordinary skill would have been motivated to
modify the combined system of Ito and Gardner with the time diversity of
Fenwick, at least for the purpose of further combating the effects of fading
on transmitted signals, as well as for the additional benefits on signal quality
identified by Fenwick. Denning Decl. ¶ 150.
We, therefore, determine that for the reasons presented in the Petition
and those discussed above, Petitioner has demonstrated by a preponderance
of the evidence that dependent claim 22 would have been obvious over Ito,
Gardner, and Gilhousen390, and dependent claim 23 would have been
obvious over Ito, Gardner, Gilhousen390, and Fenwick.
C. Gilhousen865 Challenges
Petitioner challenges claims 11 and 16–22 as obvious over
Gilhousen865 and Gilhousen390. Pet. 51–66; Denning Decl. ¶¶ 156–190.
Petitioner contends that claim 23 would have been obvious over those
IPR2019-01103
Patent 7,979,023 B2
45
references further combined with Fenwick. Pet. 67–70; Denning Decl.
¶¶ 191–198. Petitioner’s analysis first focuses on claim 11. Pet. 56.
1. Claim 11
Petitioner provides an element-by-element analysis of claim 11 in
relation to Gilhousen865 and Gilhousen390 at pages 51–60 of the Petition.
Petitioner supports its analysis with testimony from its Mr. Denning.
Denning Decl. ¶¶ 156–173. Petitioner demonstrates that each element of
claim 11 is disclosed or suggested by Gilhousen865 and Gilhousen390.
Pet. 55–60; Denning Decl. ¶¶ 164–173.
a. An apparatus configured to move relative to Earth
Petitioner identifies repeater 210 disclosed by Gilhousen865 as the
“apparatus” recited in the preamble of claim 11. Pet. 56. Petitioner shows
that the repeater “functions both to provide outgoing calls from the
radiotelephone to the ground base station, and incoming calls originating
from the ground subsystem to the airborne radiotelephone.” Id. (citing
Ex. 1009, 2:56–63). Also, “[b]ecause the repeater is installed in an airplane,
it would have been obvious to a [person of ordinary skill] that the repeater is
‘configured to move relative to Earth.’” Id. (emphasis omitted).
Relying on the construction of “configured to” as “constructed to
move with the traffic at a rate of speed which is comparable to the speed of
the traffic,” Patent Owner contends this preamble limitation is not met: “An
airplane does not move with traffic as it is not bound to predetermined
roads.” PO Resp. 52 (citing Lanning Decl. ¶ 48). Petitioner responds that
the term “traffic” should not be confined to “predetermined roads.” Pet.
Reply 17.
As discussed in Section II.B.2, supra, we apply the proposed
construction of “configured to” as “constructed to move with the traffic at a
IPR2019-01103
Patent 7,979,023 B2
46
rate of speed which is comparable to the speed of the traffic.” However, we
see no proper basis in the language of the claims, the specification of the
’023 patent, or its prosecution history to further limit the claims to require
“predetermined roads.” The ’023 patent’s references to “pedestrian traffic”
(Ex. 1001, 2:43–44, 3:18, 4:51) further persuade us that Patent Owner’s
proposed narrowing of the term “traffic” as requiring “predetermined roads”
is contrary to the intrinsic record. We, therefore, find that the claim 11
preamble (whether or not limiting) is met by Gilhousen865’s disclosure of a
repeater in an airplane that moves at speed comparable to air traffic. See
Denning Reply Decl. ¶ 52 (citing Ex. 1036, 611, a dictionary definition of
“traffic” that includes air traffic).
b. a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
and
a transmitter configured to transmit radio frequency
signals to a mobile device corresponding to the received fixed
port signals.
Petitioner identifies the repeater in Gilhousen865 also with the
“receiver” and “transmitter” communicating with a fixed port, recited in
claim 11. Pet. 58–60. This relationship is illustrated by Figure 1 of
Gilhousen865, reproduced below as annotated by Petitioner:

IPR2019-01103
Patent 7,979,023 B2
47

Figure 1 of Gilhousen865 (annotated) shows an
airborne radio telephone system.
Pet. 59. Petitioner shows that repeater 210 in the aircraft includes a receiver
that facilitates communication between a radiotelephone in the aircraft and a
ground-based base station (fixed port), in part by receiving signals (fixed
port signals) from the ground-based base station. Id. at 58–59. Petitioner
also shows that the repeater includes a transmitter that sends signals from the
ground-based stations received by the external antenna of the airborne
system to the radiotelephones. Id. at 60 (quoting Ex. 1009, 3:55–57).
Referring back to its proposed claim construction, Patent Owner
contends, “[w]hile Gilhousen865 does disclose radiotelephones,
Gilhousen865 does not disclose a transmitter configured to transmit
radio frequency signals to a radiotelephone that registers with or is capable
of directly communicating with the cellular network as required by the
limitation of a ‘mobile device.’” PO Resp. 52–53; see also discussion infra
at Section II.B.4. Because we have not adopted Patent Owner’s claim
construction for “mobile device,” we are not persuaded by this argument.
We find, instead, that Gilhousen865’s radiotelephone system meets these
IPR2019-01103
Patent 7,979,023 B2
48
requirements of claim 11 for the reasons given by Petitioner and summarized
supra. See also Denning Decl. ¶¶ 172–173; Denning Reply Decl. ¶ 55.
We also find, contrary to Patent Owner’s suggestion (PO Resp. 53),
that there is no additional requirement that the mobile device must be
“capable of being switched back-and-forth between either a direct
connection with the fixed base station or a connection with a moving base
station.” See discussion supra. We see no support for this additional
requirement in the language of the claims, the specification, or the
prosecution history of the ’023 patent. Consequently, we do not credit
Patent Owner’s argument that Gilhousen865 does not have this capability.
PO Resp. 52. For the reasons given, we find that this limitation is met by
Gilhousen865.
Petitioner argues that even under Patent Owner’s construction of
“mobile device,” Gilhousen865 meets this limitation. Pet. Reply 18–20;
Denning Reply Decl. ¶¶ 58–60. We agree with Petitioner and find that this
limitation would be met even if we had adopted Patent Owner’s construction
for “mobile device.” Gilhousen865 explicitly teaches that the
radiotelephones can register with a base station in a cellular network. Ex.
1009, 3:57–59 (“This enables the radiotelephones to search for the strongest
pilot signal of the next cell and register with that base station.”), cited in Pet.
Reply 19. Moreover, Gilhousen865 describes that the radiotelephones
operate using the industry standard for cellular networks. Ex. 1009, 2:65–
3:2; Denning Reply Decl. ¶ 60. We find that such phones would be capable
of direct communication with the cellular network. Id. We find that
Gilhousen865 meets the “receiver” and “transmitter” limitations.
IPR2019-01103
Patent 7,979,023 B2
49
c. a plurality of spatially separated antennas
Petitioner acknowledges that Gilhousen865 alone does not
“explicitly” disclose this limitation. Pet. 59. Petitioner shows that the
disclosure in Gilhousen390 of a cell-site base station with two separate
antennas meets the recitation in the claim of “a plurality of spatially
separated antennas.” Id. at 59–60. Patent Owner does not dispute this
limitation. We find that this element is met by Gilhousen390.
d. Rationale for Combining Gilhousen865 and Gilhousen390
Petitioner provides a persuasive argument for combining
Gilhousen865 and Gilhousen390. Pet. 51–56. Relying on testimony from
Mr. Denning, Petitioner provides evidence of a rationale to combine the
references: “Deleterious effects on wirelessly-transmitted signals, such as
fading, interference, and other degradations to signal quality were well-
known at the time of the ’023 patent.” Id. at 53 (citing Denning Decl.
¶ 159). Thus, a person of ordinary skill “would have been motivated to look
to the prior art, such as Gilhousen390, for methods of reducing the negative
effects on signals during wireless transmission.” Id.
Petitioner’s showing of a motivation to combine continues: “In order
to counter the negative effects of fading, Gilhousen390 describes employing
various configurations to achieve signal diversity at the receiver.” Id. at 54.
Petitioner further asserts: “Based on the teachings of Gilhousen390, a
[person of ordinary skill] would have been motivated to modify
Gilhousen865’s system with any one or more of the signal diversity
configurations of Gilhousen390 at least for the purpose of reducing the
errors caused by well-known deleterious effects on wirelessly-transmitted
signals.” Id. at 54–55 (citing Denning Decl. ¶ 162).
IPR2019-01103
Patent 7,979,023 B2
50
Petitioner demonstrates making such modifications would have had a
reasonable expectation of success. Relying on testimony from Mr. Denning,
Petitioner asserts, “[m]odifying Gilhousen865 in this manner would have
required minimal modifications.” Id. at 55 (citing Denning Decl. ¶ 162).
Patent Owner challenges the motivation to combine these references.
PO Resp. 39–42. Patent Owner’s principal argument here is similar to its
response that the combination of Ito and Gardner would be “inoperable.”
See Section III.B.1, supra. Patent Owner contends that “Gilhousen390’s
CDMA signal diversity configurations will not work if employed on
Gilhousen865’s high speed airborne repeater.” PO Resp. 39. Elaborating,
Patent Owner focuses on an alleged insufficiency of power:
“Gilhousen390’s CDMA signal diversity configuration cannot increase the
power of Gilhousen865’s airborne repeater fast enough to compensate for
the transmitted signal fading that is occurring on the connection with the
base station due to the high speed of Gilhousen865’s airborne repeater.” Id.
(citing Lanning Decl. ¶¶ 134–138); see also id. at 41 (discussing speed of a
commercial jet). As a result, “with this combination, any calls in progress
will be dropped because handovers cannot occur.” Id.
Petitioner responds that “Gilhousen865’s communication system is a
CDMA communication system,” and consequently the system “would have
considered the power control and other features of CDMA systems to
operate in its preferred embodiment – on a plane.” Pet. Reply 24. Petitioner
also responds that Patent Owner’s presumed rate of speed for an aircraft is
“greatly exaggerated,” using the Cessna 152 airplane as an example. Id. at
24–25 (citing Ex. 1057, “Cessna 152 Information Manual”).
We do not need to reach the question of whether the proposed
combination would work on the Cessna 152 airplane (which Patent Owner
IPR2019-01103
Patent 7,979,023 B2
51
contends went out of production in 1985). Id. at 15. The flaw in Patent
Owner’s argument is the same as that discussed supra with respect to Ito and
Gardner; namely, Patent Owner assumes that the person of ordinary skill (a
highly trained and experienced engineer) would not be able to resolve the
technical issues hypothesized by Patent Owner’s expert, Mr. Lanning. As
stated previously, we find that Mr. Lanning’s testimony on this issue is out
of step with the Supreme Court’s admonition in KSR that the person of
ordinary skill in not “an automaton.” KSR, 550 U.S. at 421.
For this reason, we credit Mr. Denning’s testimony that a person of
ordinary skill would have been motivated to make this combination of the
teachings of Gilhousen865 and Gilhousen890 with a reasonable expectation
of success. See Denning Decl. ¶¶ 156–163; Denning Reply Decl. ¶¶ 67–70.
In addition, Patent Owner continues to urge that Petitioner’s rationale
for combining the references, in this case, Gilhousen390 and Gilhousen865,
and the supporting testimony from Mr. Denning are “conclusory.” PO Resp.
32 (asserting the Petition merely contains “conclusory assurances that a
person of ordinary skill could combine Petitioner’s prior art references, but
the Petition never actually articulates how the [person of ordinary skill in the
art] could do so.”). We disagree and credit Mr. Denning’s testimony. As
previously discussed, we find that Petitioner’s explanation of the rationale
for combining the teachings of the cited references and Mr. Denning’s
testimony, summarized supra, are supported by the record and are not
conclusory.
Nor do we agree that the Petition does not supply “sufficient detail
how to combine” Gilhousen390 and Gilhousen865, or sufficiently
demonstrate “a reasonable expectation of success.” Id. at 31–35. We find
that Petitioner provides a sufficiently detailed explanation of how the
IPR2019-01103
Patent 7,979,023 B2
52
references could have been combined. As discussed supra, the ’023 patent
states that the invention uses “well-known” equipment and functions. See
Denning Decl. ¶ 163 (“[T]he proposed combination of Gilhousen865 and
Gilhousen390 would involve nothing more than incorporating well-known
concepts (i.e., Gilhousen390’s diversity techniques) into a well-known
system (i.e., Gilhousen865 radio communication system).”). As the Federal
Circuit stated in Rothman v. Target Corp., 556 F.3d 1310, 1319 (Fed. Cir.
2009): “[T]his invention falls into a very predictable field. In the
predictable arts, a trial record may more readily show a motivation to
combine known elements to yield a predictable result, thus rendering a
claimed invention obvious.”
We find that Petitioner has demonstrated by a preponderance of the
evidence that a person of ordinary skill would have combined Gilhouen390
and Gilhousen865 with a reasonable expectation of success. We conclude
that for the reasons discussed, Petitioner has demonstrated that claim 11
would have been obvious over those references.
2. Claims 16–22
Petitioner relies on the same combination of references (Gilhousen865
and Gilhousen390) in its obviousness challenge to dependent claims 16–22.
Pet. 61–66. Patent Owner does not address dependent claims 16–19, 21, and
22 separately from claim 11. PO Resp. 53. We conclude that for the
reasons given in connection with claim 11 and for the reasons stated in the
Petition (Pet. 61–66), Petitioner has demonstrated by a preponderance of the
evidence that claims 16–19, 21, and 22 would have been obvious over
Gilhousen865 and Gilhousen390.
Claim 20 depends directly from claim 19 and indirectly from claim
11, and claims 19 and 20 recite how the apparatus of claim 11 is
IPR2019-01103
Patent 7,979,023 B2
53
“conveyed.” In particular, claim 19 recites that “the apparatus [of claim 11]
is conveyed by a vehicle,” and claim 20 recites that “the vehicle is an
automotive vehicle.” Patent Owner contends in Gilhousen865, the repeater
identified by Petitioner as the claimed “apparatus” is mounted in an airplane,
which is not an “automotive vehicle.” PO Resp. 54–55.
While we agree in part with Petitioner and find that an airplane is a
vehicle, whether an airplane is an “automotive vehicle” is another issue.
However, we need not resolve that issue because we agree with Petitioner
that Gilhousen865 suggests that the teachings of that reference would be
applicable to an automobile-based system. Pet. Reply 17–18 (citing Ex.
1009, 2:37–42). Petitioner supports this with testimony from Mr. Denning.
Denning Reply Decl. ¶ 54 (“[A person of ordinary skill] would have found it
obvious to apply Gilhousen’s teachings to an automobile-based system for
use on ‘predetermined roads.’”). We find Mr. Denning’s testimony credible,
especially in light of the high level of ordinary skill in the relevant art, which
encompasses all wireless communications systems, without regard to where
they are located, and the discussion in Gilhousen865 of the similarity
between the disclosed airborne system and ground-based radiotelephone
systems. Ex. 1009, 3:11–13. We conclude that for the reasons given,
Petitioner has demonstrated by a preponderance of the evidence that
claim 20 would have been obvious over Gilhousen865 and Gilhousen390.
3. Claim 23
In challenging dependent claim 23, Petitioner relies on Gilhousen865
and Gilhousen390 further in combination with Fenwick. Pet. 67–70;
Denning Decl. ¶¶ 195–198. According to Petitioner, “based on the teachings
of Fenwick, a [person of ordinary skill] would have been motivated to
modify the combined system of Gilhousen865 and Gilhousen390 with the
IPR2019-01103
Patent 7,979,023 B2
54
time diversity of Fenwick at least for the purpose of combating deleterious
effects on the signals transmitted to Gilhousen865’s repeater, as well as for
the additional benefits on signal quality identified by Fenwick.” Pet. 68
(citing Denning Decl. ¶ 193).
Claim 23 depends directly from claim 22 and indirectly from claims
11 and 21. Patent Owner’s response to the teachings of the references (PO
Resp. 55–56) presents no new arguments, but instead refers to arguments
previously directed to claim 11. Id. Those arguments are discussed above
and are not persuasive for the reasons already given.
Patent Owner also challenges the rationale for combining
Gilhousen865, Gilhousen890, and Fenwick. PO Resp. 41–42. According to
Patent Owner, “[a person of ordinary skill] would not have been motivated
to combine Fenwick’s time diversity configuration with the pre-existing base
station of Gilhousen865, because Gilhousen865 also lacks the necessary
design and circuitry details for the preexisting base station of the ground
based cellular radiotelephone system.” Id. at 41. Patent Owner continues
that the combination “would have required much new circuitry.” Id. at 42.
We discussed similar arguments in connection with our analysis of
Ito, Gardner, and Fenwick. See Section II.B.3, supra. Petitioner
demonstrates that in order to maximize signal quality or to evaluate the
benefits and costs of different diversity methods, a person of ordinary skill
would have been motivated to look to prior art such as Fenwick for
alternative and/or additional diversity methods. Denning Decl. ¶ 191.
We are not persuaded by Patent Owner’s argument that a trained and
experienced engineer falling within the definition of a person ordinary skill
would have been discouraged from making the combination of the
Gilhousen references with the time-diversity of Fenwick; we find, instead,
IPR2019-01103
Patent 7,979,023 B2
55
that such a skilled person would have been motivated to make such a
combination with a reasonable expectation of success. Id. ¶¶ 191–194. As
Mr. Denning testifies, a person of ordinary skill “could have combined the
system of Gilhousen865 and Gilhousen390 with the teachings of Fenwick by
known methods, and the results of the combination would have been
predictable to a [person of ordinary skill] (e.g., by including a DEMUX and
DIVERSITY DECODER for processing a signal received during different
time periods).” Id. ¶ 195. We conclude that for the reasons given, Petitioner
has demonstrated by a preponderance of the evidence that claim 23 would
have been obvious over Gilhiousen865, Gilhousen390, and Fenwick.

IV. CONSTITUTIONAL CHALLENGE
Patent Owner contends that “adjudication of the ’023 patent violates
the U.S. Constitution” because “the current structure of the Board violates
the Appointments Clause of Article II.” PO Resp. 56–57.
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.
IPR2019-01103
Patent 7,979,023 B2
56
Therefore, we disagree with Patent Owner that this Final Written
Decision and our Institution Decision are “invalid.” PO Resp. 57.
V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 11 and 16–23
of the ’023 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 11 and 16–23 of the ’023 patent are not
patentable;
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
11, 16–21

103 Ito, Gardner 11, 16–21
22 103 Ito, Gardner,
Gilhousen390

22
23 103 Ito, Gardner,
Gilhousen390,
Fenwick

23
11, 16–22

103 Gilhousen865,
Gilhousen390

11, 16–22
23

103 Gilhousen865,
Gilhousen390,
Fenwick
23
Overall
Outcome
11, 16–23

IPR2019-01103
Patent 7,979,023 B2
57
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.
IPR2019-01103
Patent 7,979,023 B2
58
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
GAVRILOVICH, DODD & LINDSEY, LLP
chuck@gdllawfirm.com

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