Carucel Investments, LP

Patent Trials and Appeals Board

Mar 1, 2021

IPR2019-01442 (P.T.A.B. Mar. 1, 2021)

Trials@uspto.gov Paper: 31
571-272-7822 Date: March 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MERCEDES-BENZ USA, LLC,
Petitioner,
v.
CARUCEL INVESTMENTS, L.P.,
Patent Owner.

IPR2019-01442
Patent 7,848,701 B2

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

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

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I. INTRODUCTION
A. Background
Mercedes-Benz USA, LLC (“Petitioner” or “Mercedes-Benz”) filed a
Petition requesting inter partes review of claims 10, 15–18, 31, and 33–35
(the “challenged claims”) of U.S. Patent No. 7,848,701 B2 (Ex. 1001, the
“’701 patent”). Paper 2 (“Pet.”). Carucel Investments, L.P. (“Patent
Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
to all of the claims challenged and all grounds raised in the Petition. Paper 8
(“Institution Dec.”).
Following institution, Patent Owner filed a Response. Paper 12 (“PO
Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
(Paper 21, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 27, “PO
Sur-reply”).
On December 2, 2020, we held a consolidated oral hearing with
several related cases involving Patent Owner. A transcript of the hearing is
included in the record. Paper 30 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a). For the reasons we
discuss below, we determine that Petitioner has proven by a preponderance
of the evidence that claims (the “challenged claims”) of the ’701 patent are
unpatentable.
B. Related Proceedings
The parties identify the following pending district court proceedings
involving the ’701 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.);
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Carucel Investments, LP v. Volkswagen Group of America, Inc., 3:18-cv-
03333 (N.D. Tex.); Carucel Investments, LP v. Mercedes-Benz USA, et al.,
3:18-cv-03334 (N.D. Tex.). Paper 4; Pet. 74.
In addition to this Petition, the ’701 patent was also challenged by a
different party (Volkswagen Group of America, Inc.) in IPR2019-01102.
Pet. 60; Paper 4.
Patents related to the ’701 patent are challenged in IPR2019-01101,
IPR2019-01103, IPR2019-01104, IPR2019-01079, IPR2019-01298,
IPR2019-01404, IPR2019-01105, IPR2019-01440, and IPR2019-01441.
Pet. 60–61; Paper 4.
C. Real Parties-in-Interest
Petitioner identifies “Daimler AG, Daimler North America
Corporation, Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
International, Inc.” as the real parties-in-interest. Pet. 60. Patent Owner
identifies Carucel Investments, L.P., as the real party-in-interest. Paper 4, 1.
D. The ’701 Patent
The ’701 patent is titled “Mobile Communication System with
Moving Base Station.” Ex. 1001, (54). According to the patent, “[a]
problem with existing mobile telephone systems is the considerable time
required in handoffs. This becomes a particular problem in urban areas
which are highly congested.” Id. at 1:54–56. The ’701 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 2:65–3:1.
The “movable base station moves with the traffic at a rate of speed which is
comparable to the speed of the traffic and communicates with a moving
mobile telephone unit via standard mobile radio transmission.” Id. at 3:2–5.
The movable base station “communicates by radio signals with a plurality of
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fixed antennas spaced along the path of travel of the mobile base station.”
Id. at 3:5–8.
This is illustrated by Figure 1 of the ’701 patent, reproduced below.

Fig. 1 is a block diagram representation of a roadway structure with fixed
base stations, moving base stations, and fixed radio ports. Id. at 3:43–45.
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 3:65–4:1. Moving base stations
30 are disposed along one side of roadway 10. Id. at 4:1–3. 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 4:3–5.
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
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roadway 10, as indicated by arrow 12. Id. at 4:5–9. 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 4:9–12. Moving base stations
40 are moved along rail 45. Id. at 4:12.
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 4:41–44. 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 4:37–40. 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 4:46–
49.
According to the ’701 patent, the advantage of this system is reducing
the number of handoffs:
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, 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 5:8–16 (emphasis added).
Each of the moving base stations is provided with multiple antennas.
Id. at 5:17–18. Antennas 100 on moving base stations 30, 40 are used to
communicate with mobile units 20, 25, whereas antennas 101 on moving
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base stations 30, 40 are used to communicate with fixed radio ports 50. Id.
at 5:22–26.
E. Illustrative Claims
The ’701 patent has forty-two claims. Nine claims (10, 15–18, 31,
and 33–35) are challenged in the Petition. See supra. Of the challenged
claims, two (claims 10 and 31) are independent. Claim 10 recites1:
10. A movable base station configured to move relative to
Earth, the movable base station comprising:
[10a] a plurality of spatially separated antennas;
[10b] a receiver configured to receive mobile device signals
from a fixed port through the plurality of spatially separated
antennas;
[10c] a controller configured to align and combine the received
fixed port signals; and
[10d] a transmitter configured to transmit radio frequency
signals to a mobile device corresponding to the received fixed
port signals.
Ex. 1001, 11:54–64.
Claim 31 recites:
31. A movable base station configured to move relative to
Earth, the movable base station comprising:
[31a] a plurality of spatially separated antennas;
[31b] a receiver configured to receive fixed port signals from a
fixed port through the plurality of spatially separated antennas;
and
[31c] a transmitter configured to transmit radio frequency
signals to a mobile device corresponding to the received fixed
port signals, the radio frequency signals transmitted within time
slots of time-division multiplex channels.

1 Reference numbers assigned by Petitioner have been added in brackets to
claims 10 and 31.
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Id. at 13:13–22.

E. References and Other Evidence
The Petition relies on the following references:
1. U.S. Patent No. 5,276,686, issued January 4, 1994 (Ex. 1003,
“Ito”);
2. U.S. Patent No. 5,101,501, issued March 31, 1992 (Ex. 1004,
“Gilhousen501”);
3. U.S. Patent No. 5,519,761, filed July 8, 1994 (Ex. 1005,
“Gilhousen761”);
4. U.S. Patent No. 5,652,765, filed May 22, 1995 (Ex. 1031,
“Adachi”).
5. William C, Jakes, “A Comparison of Specific Space Diversity
Techniques for Reduction of Fast Fading in UHF Mobile Radio Systems,”
IEEE Transactions on Vehicular Technology, Vol. VT-20, No. 4, Nov. 1971
(Ex. 1032, “Jakes”).
Pet. 10–20.
In addition, Petitioner submitted a Declaration of Jeffrey Fischer
(Ex. 1008, “Fischer Decl.”) with the Petition and a further Declaration of
Mr. Fischer (Ex. 1106, “Fischer Reply Decl.”)2 with its Reply. Patent
Owner submitted the Declaration of Mark R. Lanning (Ex. 2100, “Lanning

2 Petitioner submitted a corrected version of this declaration with the same
exhibit number as the original version. Our citations refer to the corrected
version.
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Decl.”) with its Patent Owner Response. Both parties have submitted
deposition transcripts for these declarants.3
F. Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
following grounds.
Claims Challenged Statutory Basis 35 U.S.C.4 References
10, 17 § 103 Gilhousen761, Gilhousen501, Adachi
10, 16–18, 31, 34, 35 § 103 Ito, Gilhousen501, Adachi
10, 15–18, 31, 33–35 § 103 Ito, Jakes
Pet. 10.
II. PRELIMINARY MATTERS
A. Level of Ordinary Skill
Petitioner contends: “One of ordinary skill in the art would have at
least a Bachelor’s degree in Electrical Engineering, Computer Science, or an
equivalent area of study, and at least three years of graduate study or
professional experience with wireless and/or cellular communications or
similar experience.” Pet. 7 (citing Fischer Decl. ¶¶ 33).
Patent Owner contends that a person of ordinary skill in the art “at or
near the filing date of the earliest priority application of the ’701 Patent
would have had (i) a Bachelor of Science degree in electrical engineering or

3 Ex. 1101 (“Lanning I Dep.”); Ex. 1102 (“Lanning II Dep.”); Ex. 2108-1
(“Fischer I Dep.”); Ex. 2108-2 (“Fischer II Dep.”).
4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
’701 patent was filed before March 16, 2013 (the effective date of the
relevant amendments), the pre-AIA version of § 103 applies.

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computer engineering or related field of study; (ii) at least two years of
experience with wireless communications systems; and (iii) would also be
familiar with cellular communication technology.” PO Resp. 8. Further,
Patent Owner contends “[a] lack of experience can be compensated with
additional education and a lack of education can be compensated with
additional work experience.” Id. at 9 (citing Lanning Decl. ¶ 59).
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 (three years versus two years) with mobile wireless
communications.
We regard these formulations as not materially different, because
familiarity with mobile wireless communications would normally include
knowledge of cellular communication technology. Furthermore, we do not
regard the one-year difference in experience levels as significant. Both
formulations, also, are consistent with the prior art before us and with the
level of skill reflected in the ’701 patent. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate
level of skill). As the formulations are not materially different, we adopt
Patent Owner’s more specific description, with the exception of the open-
ended language “at least.” However, we would reach the same result on the
ultimate question of patentability of the challenged ’701 patent claims under
either formulation.
B. Claim Construction
We interpret claim terms using “the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
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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 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 862 (Fed. Cir. 2004)).
Petitioner cites a Markman order “regarding the ’701 patent and its
family” issued by the district court in Carucel Investments, L.P. v. Novatel
Wireless, Inc., No. 3-16-cv-00118, Dkt. 131 (S.D. Cal. Sep. 19, 2016)
(“Novatel Litigation”). Pet. 8; see Ex 2105. Petitioner refers us to the
district court’s construction for these terms: “fixed port,” “base station,”
“configured to,” and “transmit radio signals to a mobile device
corresponding to the received fixed port signals.” Id. at 8.
Petitioner contends: “Based on the district court’s constructions of
‘fixed port’ and ‘base station,’ a [person of ordinary skill] would understand
that disclosure of a cellular base station satisfies both claim terms.” Pet. 8.
As to the term “configured to,” Petitioner states: “Petitioner proposes
that this term be applied in this Petition consistent with [Patent Owner]’s
Complaints—that the claimed movable base station is ‘configured to move
relative to Earth’ when a vehicle includes a movable base station.” Pet. 9.
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Petitioner contends: “All other terms are sufficiently clear, should be
given their plain and ordinary meaning as understood by a person of
ordinary skill in the art . . . at the time of the alleged invention, and do not
require construction.” Id.
Patent Owner provides proposed constructions for the terms “fixed
port,” “configured to,” “transmit radio frequency signals to a mobile device
corresponding to the received fixed port signals,” “mobile device,”
“automotive vehicle,” and “cellular base station.” PO Resp. 10–18.
Petitioner responds “that each of the Grounds [asserted by Petitioner]
renders the challenged claims obvious even under [Patent Owner’s]
proposed construction of ‘fixed port,’ ‘configured to,’ ‘transmit radio
frequency signals…,’ ‘automotive vehicle,’ and ‘cellular base station,’ and
that therefore no construction for these terms is required.” Pet. Reply 7.
1. “fixed port”5
Patent Owner proposes that we adopt the district court’s construction
of these “fixed port” in the Novatel litigation, which is: “a stationary device
at which signals can enter or exit a communication network.” PO Resp. 10;6
Ex. 2105, 12.
Petitioner responds that no construction is required. Pet. Reply 7. We
do not see the need to construe this term for the purpose of resolving a
controversy, and therefore, we do not adopt Patent Owner’s proposed

5 The parties agree that there is no difference between the terms “fixed port”
and “fixed radio port.” Hearing Tr. 27:9–23; 88:12–13.
6 Patent Owner misquotes the district court’s claim construction as saying
“enter and exit” rather than “enter or exit,” as stated in the district court’s
order. Ex. 2105, 12. We treat Patent Owner’s misquotation as a
typographical error.
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construction. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999).
2. “configured to”
The district court construed this term as “constructed to move with the
traffic at a rate of speed which is comparable to the speed of the traffic.”
Pet. 9. Petitioner proposes that this term be construed “consistent with
[Patent Owner’s] Complaints” in district court, as requiring “that the claimed
movable base station is ‘configured to move relative to Earth’ when a
vehicle includes a movable base station.” Id. Patent Owner contends that
the proper construction is the construction adopted by the district court. PO
Resp. 10–13.
In our analysis below, we apply the construction adopted by the
district court.
3. “transmit radio frequency signals to a mobile device
corresponding to the received fixed port signals”
Patent Owner urges us to adopt the district court’s construction which
is “transmit radio frequency signals to a mobile device, where the radio
frequency signals correspond to the received fixed port signals.” PO Resp.
13.
We do not see the need to construe this term for the purpose of
resolving a controversy, and therefore, we do not adopt Patent Owner’s
proposed construction.
4. “mobile device/mobile unit”7
Patent Owner contends that mobile units are “also known as cell
phones or mobile phones.” PO Resp. 7. Patent Owner asks us construe

7 The parties agree that the term “mobile unit” in the ’701 patent has the
same meaning as “mobile device.” Hearing Tr. 22:18–23, 88:14–16.
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“mobile device” as “a device that must register with and be able to directly
communicate with the cellular network.” Id. at 13. Patent Owner contends
that this is “the plain and ordinary meaning of the term.” Id. Patent Owner
explains: “A mobile device is more than just a cordless phone handset.” Id.
Patent Owner asserts that a “mobile unit” also includes the “capability
to be switched back-and-forth between either a direct connection with the
fixed base station or a connection with a moving base station.” Id. at 14.
Patent Owner’s proposed construction relies mainly on the ’701 patent
specification: “The ’701 Patent specification teaches that a mobile device
must be capable of directly communicating with either a fixed cellular base
station or a moving base station.” PO Resp. 13 (citing Ex. 1001, 4:46–49).
Furthermore, according to Patent Owner, “the mobile unit’s capability to be
switched back-and-forth between either a direct connection with the fixed
base station or a connection with a moving base station is discussed
repeatedly and throughout the specification.” Id. at 14. Also, “[t]he ’701
Patent specification teaches that a mobile device must be capable of
registering with a cellular network so it is able to receive calls coming from
the cellular network.” Id. at 14–15. Patent Owner cites also the discussion
in the ’701 patent that describes registration by the mobile unit:
When a mobile unit set is first powered up or first enters a
service area, the mobile unit must register in the manner
described earlier, by transmitting its unique address in the new
service area. The address will be received by the closest moving
base station 30 and transmitted via a fixed radio port and the
gateway switch 60 to the telephone network.

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Ex. 1001, 9:49–54 (partially quoted at PO Resp. 15). Patent Owner relies on
testimony from its expert, Mr. Lanning. See PO Resp. 13–15 (citing
Lanning Decl. ¶¶ 58, 65–70. 78).
Petitioner opposes Patent Owner’s proposed construction of mobile
device. Pet. Reply 1–7. Petitioner contends that Patent Owner’s proposed
definition “does not reflect the term’s ordinary meaning.” Id. at 2.
Petitioner asserts that Patent Owner’s proposed construction is “flatly
inconsistent” with a construction Patent Owner proposed in the Novatel
Litigation. Id. Petitioner describes this previous “inconsistent” construction
advanced by Patent Owner in district court as a “non-cellular construction”:
“[Patent Owner] should not be permitted to propose a broad construction to
capture infringing devices in litigation, then make an about-face in an IPR to
avoid the prior art.” Id. Petitioner asserts also that the construction
proposed here by Patent Owner should be rejected because it “contradicts
the claims, the specification and the prosecution history.” Id. at 3.
Petitioner contends that “[n]one of the claims require the ‘mobile device’ to
register, and none require it to communicate directly with a cellular
network.” Id.
Finally, Petitioner concludes its discussion of “mobile device” with
the proposal “that this term is sufficiently clear on its face that construction
is not necessary.” Id. at 6.
Having reviewed and considered the record presented, including
Petitioner’s and Patent Owner’s submissions, we are not persuaded to adopt
Patent Owner’s construction of “mobile device.” Our reasoning follows.
As instructed by Phillips, we first look to the words of the claims.
Phillips, 415 F.3d at 1312. We find that the language of the challenged
claims does not support Patent Owner’s construction. As Petitioner points
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out, the challenged claims themselves do not require the mobile device to
register or communicate directly with a cellular network. Pet. Reply 3. In
fact, the claims are not directed to the mobile device. The ’701 patent
claims the mobile base station, not the mobile units. Hearing Tr. 52:21–
53:5.
Patent Owner’s Response confirms that Patent Owner regards the
mobile base station, and not the mobile device, as the invention: “Most
importantly to the issues presented here, Mr. Gavrilovich invented a ‘mobile
base station’ that significantly improved wireless communications by acting
as an intermediary between cell towers and mobile devices.” PO Resp. 2.
And this identification by Patent Owner of the mobile base station as the
invention is consistent with the Summary of the Invention in the ’701 patent
itself, which states: “These and other problems of the prior art are overcome
in accordance with this invention by means of a moving base station which
is interposed between a moving mobile telephone unit and a fixed base
station.” Ex. 1001, 2:65–3:1.
As Petitioner shows, in the challenged claims of the ’701 patent, it is
the mobile base station, not the mobile device or mobile unit, that
communicates directly with the fixed ports or base stations associated with
the network. Pet. Reply 3. This important aspect of the ’701 patent claims
was explored with Patent Owner’s counsel at the oral argument:
[PATENT OWNER’S COUNSEL]: The purpose of the
invention is to allow all five different mobile devices to be
connected through a moving base station so that there’s only one
hand-off. If you did that at the mobile phone level, that wouldn't
be accomplishing the same purpose. . . .
[THE BOARD]: -- the mobile device doesn’t have to be
a cellular device in order to do that as long as the base station can
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communicate with the cellular network; isn’t that correct? I
mean it’s actually -- the base station in your claims, it’s the base
station that’s communicating with the cellular network not the
mobile device.
[PATENT OWNER’S COUNSEL:]: Right.
Hearing Tr. 53:20–54:6 (emphasis added).
As Patent Owner acknowledges, the mobile base station in the ’701
patent acts as “an intermediary” between the mobile devices and the
network. PO Resp. 3. The challenged claims describe the communications
passing between the moving base station (the recited “apparatus” in the
claim) and the fixed ports of the network and between the moving base
station and the mobile devices. Pet. Reply 3–4.
Thus, for example, independent claim 10 recites that the claimed
“movable base station” has “a receiver configured to receive fixed port
signals from a fixed port” and “a transmitter configured to transmit radio
frequency signals to a mobile device.” Ex. 1001, 11:57–59, 11:62–64
(emphasis added). Claim 31 has similar descriptions of the receiver and
transmitter. Id. at 13:16–21.
Furthermore, the challenged claims do not require the signals
transmitted between the mobile device and the moving base station to be
cellular signals, or identify the recited mobile device as a device that
communicates with a cellular network. Nor do they require registration of
the mobile device with the cellular network. Pet. Reply 3. Based on the
foregoing, we find that the challenged claims of the ’701 patent do not
require a mobile device that must register with or is capable of
communicating directly with a cellular network.
Moreover, we find that the ’701 patent specification does not support
Patent Owner’s construction of “mobile device.” Cf. PO Resp. 14–16; PO
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Sur-reply 6–10. 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.3d at
1315 (internal quotes and citation omitted).
First, we do not see in the specification of the ’701 patent a clear
indication supporting Patent Owner’s contention that conventional non-
cellular cordless phones should be excluded. Cf. PO Resp. 13 (“A mobile
device is more than just a cordless phone handset.”). In the Background
section, the ’701 patent describes the goal of the patent as encompassing “all
applications” including cordless phones: “What is desirable is an infra
structure which allows use of such terminals in all applications, whether in
the home or office as a cordless phone . . . .” Ex. 1001, 2:45–47 (emphasis
added); Fischer Reply Decl. ¶ 7.
While the ’701 patent does refer to the fixed base stations as “cell
site[s]” (Ex. 1001, 4:61–62), it also describes the radio interfaces between
the mobile devices and the base stations in more general terms. Pet. Reply
4; Ex. 1001, 6:34–37. Thus, the ’701 patent describes the radio interface
between the mobile units and both the moving and fixed base stations as “a
standard radio interface, well known in the art.” Ex. 1001, 6:37–39. This
generic description in the ’701 patent of these radio interfaces as a “standard
radio interface” is broader than a “cellular interface,” and is consistent with
the patent’s stated goal of providing “an infrastructure which allows use of .
. . a cordless phone.” Pet. Reply 4 (citing Ex. 1001, 2:45–49); Fischer Reply
Decl. ¶¶ 7–8. Elsewhere, the ’701 patent states this interface “may be the
standard [cellular] air interface standard,” confirming that a cellular interface
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is not a requirement for the mobile units. Ex. 1001, 6:59–61 (emphasis
added).8
We find further support for our conclusion that Patent Owner’s
construction is too limiting in the ’701 patent’s description of an
embodiment where the mobile unit is prevented from communicating
directly with the fixed ports. Ex. 1001, 3:20–35. In this embodiment, the
power levels for the signals between the moving base station and the mobile
unit are chosen to avoid direct communication between the mobile device
and the fixed radio ports. Id. at 3:26–31. This embodiment is consistent
with the claim language, which we find describes the mobile base station,
not the mobile units, communicating with the cellular network. See
discussion supra.
Phillips instructs us that the prosecution history may also be relevant
in construing the claims. 415 F.3d at 1317; see Pet. Reply 5 (discussing
prosecution history). The ’701 patent is a continuation of U.S. Patent No.
7,221,904, and shares a common specification and similar claims with the
’904 patent. Ex. 1001, 1:6–7. During prosecution of the ’904 patent, in an
appeal brief to the Board, the applicant did not limit mobile units to cellular
devices, but instead told the Board that radios and telephones were included:
“The present invention is directed to methods and devices for providing
communication services to moving mobile units such as telephones, radio
modems, or other types of radios.” Ex. 1107, 289 (emphasis added). We
agree with Petitioner and find that this prosecution history describing the
mobile units as “telephones” and “radios” contradicts Patent Owner’s

8 Patent Owner relies on this statement to prove that this interface must be
cellular. See infra.
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construction limiting such devices to “a device that must register with and be
able to directly communicate with the cellular network.” Pet. Reply 5.
Petitioner also cites an October 4, 2004, Office Action in which the
Examiner found that the claim term “mobile unit” read on a reference
(Yokoi) disclosing a cordless phone. Id. (citing Ex. 1107, 328). Petitioner
notes that Patent Owner’s response did not challenge this finding by the
Examiner. Id. (citing Ex. 1107, 338 et seq.).
Patent Owner responds that its proposed construction is “[c]orrect,”
and that Petitioner “attempts to . . . broadly construe the term ‘mobile
device’ in a vacuum.” PO Sur-reply 6–7. Patent Owner contends
Petitioner’s analysis “is flawed for several reasons.” Id. at 6. Patent Owner
further argues that “the ’701 Patent relates to and describes as a whole
improving the wireless connections of mobile devices within cellular
telephone systems via a moving base station . . . .” Id. at 7 (footnote
omitted).
We are not persuaded by these arguments limiting “mobile unit” to
cellular devices as they are contrary to the claim language, the specification,
and the other intrinsic evidence discussed above. In the claims, it is the
mobile base station that communicates with the cellular network, not the
mobile units. See discussion supra. As explained there, the challenged
claims focus on the mobile base station; they do not describe the mobile
units as cellular devices, which according to the prosecution history, can be
radios and telephones. See discussion above. While the ’701 patent may
discuss cellular networks, we find the disclosure and the claims do not limit
the claimed “mobile device” to a cellular phone, for the reasons given above.
Patent Owner asserts that “[t]he purpose of the invention is only
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achieved within a cellular infrastructure.” PO Sur-reply 6. Patent Owner
argues that “the ‘701 Patent explicitly and exclusively relates to improving
the wireless connections of mobile devices within cellular telephone
systems,” and cites numerous references in the patent to cellular
communications. Id. at 8–10 (emphasis and internal quotation marks
omitted). Only one of the citations provided by Patent Owner refers to the
communications interface between the mobile unit and the moving base
station. Id. at 9 (citing Ex. 1001, 7:4–6).9 That one reference refers to a
CDMA (“Code Division Multiple Access”)-based cellular standard (IS-95),
which it indicates “may” be the interface between the mobile unit and the
moveable base. Ex. 1001, 6:60. As discussed supra, this description in the
specification, making use of a cellular standard optional, does not support
Patent Owner’s argument that the patent “explicitly and exclusively relates
to improving the wireless connections of mobile devices within cellular
telephone systems.”
The other quotations from the specification cited by Patent Owner are
merely general references to cellular systems and do not support Patent
Owner’s argument. The ’701 patent specification, in fact, supports
Petitioner’s argument that communications between the mobile unit and the
mobile base station are not required to follow cellular protocols. Thus, as
discussed supra, the ’701 patent states the interface between the mobile units
and the mobile base station “is a standard radio interface.” Ex. 1001, 6:37–
39. And, as just discussed, the patent explains that this interface “may”
follow the cellular protocol IS-95, indicating that it is not required it to do
so. Id. at 6:59–60; cf. PO Sur-reply 9.

9 This citation is incorrect. The quote appears at Ex. 1001, 6:59–61.
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Moreover, this argument focusing on the “cellular infrastructure” does
not address the fact that the challenged claims are directed to the mobile
base station. See discussion supra. The fact that in some alternative
embodiments, the mobile unit may be able to communicate with the cellular
network, does not erase the fact that the challenged claims and the stated
objectives of the ’701 patent, i.e., to provide a mobile base station as an
intermediary between the mobile units and the cellular network, do not
require direct communication.
Patent Owner relies on “Federal Circuit precedent [that] forbids an
overly broad interpretation of the claims.” PO Sur-reply 6–7 (citing Pacing
Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015)). In
Pacing Technologies, the Federal Circuit found evidence of “a clear and
unmistakable statement of disavowal or disclaimer” in the stated objects of
the invention, including a statement that the objects would be accomplished
by the particular feature (a “repetitive motion pacing system”) to which the
Court limited the claims. 778 F.3d at 1025. Here, in contrast, for the
reasons discussed above, there is no corresponding “clear and unmistakable
statement” limiting the scope of the mobile unit to “a device that must
register with and be able to directly communicate with the cellular network.”
Cf. PO Resp. 13. Pacing Technologies, therefore, does not support Patent
Owner’ argument. “To disavow claim scope, the specification must contain
‘expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson &
Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar v. Int’l Trade
Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)
(“Where the specification makes clear that the invention does not include a
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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.”). As discussed above, the ’701 patent claims are
directed to the mobile base station communicating with the cellular network,
and the specification describes an embodiment which prevents the mobile
unit from communicating with the fixed ports. Ex. 1001, 3:20–35; see also
discussion supra. We find that there was no “disavowal or disclaimer” of
mobile units that do not communicate directly with a cellular system.
Patent Owner argues further that “it is well established that ‘when the
scope of the invention is clearly stated in the specification, and is described
as the advantage and distinction of the invention, it is not necessary to
disavow explicitly a different scope.’” PO Sur-reply 8 (quoting On Demand
Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1340 (Fed. Cir. 2006)).
Patent Owner explains: “The Federal Circuit’s analysis in On Demand is
similar to the Patent Owner’s claim construction.” Id. We disagree. As
Patent Owner’s quotation from On Demand makes clear, it is not necessary
to find an explicit disavowal “when the scope of the invention is clearly
stated in the specification, and is described as the advantage and distinction
of the invention.” 442 F.3d at 1340 (quoted at PO Sur-reply 8). However,
in our analysis above of Patent Owner’s position, we find that the scope of
the invention and its advantages as described in the ’701 patent center on the
mobile base station, not the mobile device. The ’701 patent specification,
therefore, does not favor Patent Owner’s narrow construction of “mobile
device.” Thus, On Demand’s exception to the normal requirement for an
explicit disavowal is not applicable here.
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We are not persuaded by Patent Owner’s explanation that “the
movable base station addressed the handoff problems and data bandwidth
constraints of conventional consumer cellular networks in 1995.” PO Sur-
reply 11 (footnote omitted). There is no dispute that improving cellular
technology is included among the goals described in the ’701 patent. But
Patent Owner acknowledges that the claims require that the movable base
station, not the mobile device, be able to communicate directly with the
cellular network:
However, the claims of the ’701 Patent require the apparatus or
movable base station to communicate directly with the cellular
network since it is directed towards improving the wireless
connections of mobile devices within cellular telephone
systems via a movable base station that is interposed between
the mobile devices and the base stations of a cellular network.
Id.; see also discussion supra. Patent Owner therefore fails to support its
argument that the ’701 patent “explicitly and exclusively relates to
improving the wireless connections of mobile devices within ‘cellular
telephone systems.’” PO Sur-reply 8 (emphasis omitted). We find, based on
the analysis above, that the claims, specification, and prosecution history of
the ’701 patent reveal a broader goal of also improving wireless
communications involving non-cellular devices, such as radios and
telephones.
Nor are we persuaded by Patent Owner’s suggestion that the patent
specification requires the mobile device to “register with the cellular
network.” PO Resp. 7. Such a registration requirement is not supported by
the claims or prosecution history.
We note that the challenged claims do not call for registration.
Registration of a mobile unit with a base station is mentioned in the ’701
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patent specification (see PO Resp. 15, PO Sur-reply 7), but the registration
process described there occurs only “[w]hen a mobile unit set is first
powered up or first enters a service area,” and involves the mobile device
transmitting its address to the moving base station, not the fixed base
stations. Ex. 1001, 9:52– 54 (“The address will be received by the closest
moving base station 30 and transmitted . . . to the telephone network”). We
find that in this description, it is the moving base station, rather than the
mobile unit, that handles the registration process with the fixed base station,
as well as subsequent hand-offs. And the transmission of an address by the
mobile unit to the moving base station during start-up uses the generic
“standard radio interface” described in the specification. Ex. 1001, 6:37–39.
However, even if the specification were to include an embodiment
describing registration by the mobile device, that would not alter the fact that
the claims are directed to a mobile base station that communicates directly
with the cellular network and a mobile device that communicates directly
with the mobile base station through a “standard radio interface,” but not
directly with that cellular network. Thus, the patentability of the claimed
apparatus (the mobile base station) does not turn on alleged ability of the
mobile device to communicate directly with the cellular network, or any
other network or device for that matter.
In summary, having considered all the arguments and evidence
presented on this issue, we find that Patent Owner’s proposed construction
for “mobile device” is not supported by the claim language of the ’701
patent or the other intrinsic evidence, and, therefore, we do not adopt a
construction that would limit “mobile device” to cellular phones or other
devices “that must register with and be able to directly communicate with
the cellular network,” and that would exclude conventional cordless phones.
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We agree, therefore, with Petitioner’s reasoning that no construction
of “mobile device” is necessary. Pet. 11; Pet. Reply 6.
5. Other Terms
Patent Owner proposes that the plain and ordinary meaning of
“automotive vehicle,” a term appearing in claim 18, is an automobile. PO
Resp. 16. Further, according to Patent Owner, “an ‘automotive vehicle’
travels along a roadway.” Id. at 17. Petitioner contends that no construction
is necessary for this term. Pet. Reply 7. We find that no construction is
necessary to resolve a controversy, as the challenges based on Ito, discussed
infra, disclose this limitation even under Patent Owner’s construction.
As noted supra, Petitioner contends: “Based on the district court’s
constructions of ‘fixed port’ and ‘base station,’ a [person of ordinary skill]
would understand that disclosure of a cellular base station satisfies both
claim terms.” Pet. 8. Patent Owner points out the term “cellular base
station” is not used in challenged claims, and therefore no construction is
necessary. PO Resp. 18. We agree that no construction of this term is
necessary to resolve a controversy.
We do not find it necessary to construe any other terms. Pet. Reply 7.
C. Description of Prior Art References
Petitioner’s challenge relies on Ito, Gilhousen761, Gilhousen501,
Adachi, and Jakes. See Pet. 10. Because our Decision relies on Ito,
Gilhousen501, Adachi, and Jakes, we provide the following description of
those references
1. Ito (Exhibit 1003)
Ito is a patent titled “Mobile Radio Communication System Having
Mobile Base and Portable Devices as a Mobile Station.” Ex. 1003, (54). Ito
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relates to a cellular-type automobile telephone system that has been known
as a mobile radio communication system. Id. at 1:15–16.
As described in Ito, in known cellular mobile radio telephone systems,
the mobile stations are connected by a radio channel to a base station for the
radio communication zone where it is currently located. Id. at 1:22–24. The
mobile stations are further connected to a wire telephone network by way of
the base station and a control station. Id. at 1:24–26.
The automobile telephone main unit and the handset assembly are
connected by a signal cord. The cradle and the handset are connected by a
curled cord. Id. at 1:51–54. According to Ito, “[w]ith such an arrangement,
the curled cord can constitutes [sic] an annoying obstacle when the driver
drives and speaks into the telephone transmitter simultaneously. Moreover,
the handset cannot be moved away beyond a limit posed by the curled wire
. . . .” Id. at 1:55–59.
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, increasing the
maneuverability of the telephone handset. Id. at 2:5–12.
This is illustrated by Figure 6 of Ito, reproduced below.
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Figure 6 of Ito depicts a mobile radio
communication system. Id. at 5:16–18.
In Figure 6 of Ito, mobile base device MSS is wirelessly connected
simultaneously with two portable devices PSS1 and PSS2. Ex. 1003, 12:52–
56. Base station BSS2 and mobile base device MSS communicate with each
other by way of radio frequencies fT1 and fR1.10 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, 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.
Further, Ito describes that high speed fading phenomena causes errors
in signals. Id. at 16:59–60. The rate of errors in signals due to the high
speed fading phenomena is increased due to the distance of a signal’s

10 Figure 6 of Ito mislabels fT1 as fr1 and BSS2 as BSS. See Ex. 1003, 12:57–
63.
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communication path. See id. at 16:56–61. In particular, Ito describes that
the communication path between the mobile base device MSS and the
portable device PSS is shorter and, therefore, has a smaller rate of errors,
than the communication path between the mobile base device MSS and the
base station BSS. Id.
The embodiment described in Ito makes use of TDMA (Time
Division Multiple Access) and FDMA (Frequency Division Multiple
Access) techniques for communications between the base station BSS and
mobile base device MSS and between the mobile base device and the
portable device PSS. Id. at 5:47–50.
2. Gilhousen501 (Ex. 1004)
Gilhousen501 is a patent titled “Method and System for Providing a
Soft Handoff in Communications in a CDMA Cellular Telephone System.”
Ex. 1004, (54). Gilhousen501 describes a “soft” handoff scheme, employed
for a CDMA cellular telephone system in which a new cell-site modem is
assigned to a mobile unit while the old cell-site continues to service the call.
Id. at 3:9–12. When the mobile unit is located in the transition region
between the two cell-sites, the call can be switched back and forth between
cell-sites as signal strength dictates. Id. at 3:12–15. When mobile unit
communications are firmly established with the new cell-site, e.g., the
mobile unit is well within the new cell, the old cell-site discontinues
servicing the call. Id. at 3:19–22. Gilhousen501 describes this “soft”
handoff as a “make-before-break switching function,” in contrast to previous
cellular telephone systems which used a “break-before-make switching
function.” Id. at 3:24–28.
Figure 1 of Gilhousen501, reproduced below, depicts a schematic
overview of an exemplary CDMA cellular telephone system. Id. at 7:1–3.
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Figure 1 of Gilhousen501 depicts a
CDMA cellular telephone system.

Gilhousen501 explains that in a CDMA cellular telephone system, the
same frequency band is used for all cells. Id. at 2:58–59. Gilhousen501
further describes that:
In the CDMA cellular telephone system, each cell site
transmits a “pilot carrier” signal. This pilot signal is used by the
mobile units to obtain initial system synchronization and to
provide robust time, frequency and phase tracking of the cell-site
transmitted signals.
Each cell-site also transmits a “setup” channel comprised
of spread spectrum modulated information, such as cell-site
identification, system timing, mobile paging information and
various other control signals.
Id. at 3:45–53. When the mobile unit identifies the appropriate setup code
for a given cell-site, system information is received and processed. Id. at
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4:10–12. The mobile unit further monitors the setup channel for control
messages, such as messages indicating that a call is waiting for transfer to
the mobile unit. Id. at 4:12–15.
3. Adachi (Exhibit 1031)
Adachi is a patent titled “Receiver and Repeater for Spread Spectrum
Communications.” Ex. 1031, (54). Adachi discloses a “repeater improving
the effect of a RAKE reception.” Id. at Abstract. Figure 2 of Adachi is
reproduced below.

Figure 2 is a block diagram showing an embodiment of a
spread-spectrum communication repeater. Ex. 1031, 5:51–53.
Base station 10 carries out CDMA communications with mobile stations 16
and 17. Id. at 6:5–7. Repeater 20 has two antennas 21, 22 for the base
station and two antennas 28, 29 for the mobile stations 16. Id. at 6:13–16.
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Signals from base station 10 are received by repeater 20 by antennas
21 and 22. Id. at 6:16–18. The signals are combined, amplified, and sent to
mobile stations 16 via antenna 28. Id. at 6:26–30. Antenna 31 of the mobile
station 16 receives the signal from repeater 20. Id. at 6:35–37. In the
reverse direction, signals from the mobile station 16 are received at the
repeater’s antennas 28 and 29, and are combined, amplified, and
retransmitted to base station 16. Id. at 6:49–67.
5. Jakes (Exhibit 1032)
Jakes is a journal article discussing the use of space diversity system
techniques for reducing rapid fading in mobile communication systems. Ex.
1032, Abstract. Jakes describes using multiple spatially separated antennas
to improve communications between a base station and mobile subscriber.
See, e.g., Figs. 1, 3.
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 Petitioner nor the
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Patent Owner presents evidence on the fourth Graham factor. We therefore
do not consider that factor in this Decision.
B. Challenge to Claims 10, 16–18, 31, 34, and 35
Based on Ito, Gilhousen501, and Adachi
Petitioner contends these claims would have been obvious over the
combination of Ito, Gilhousen501, and Adachi. Pet. 34–50. Petitioner
supports this assertion with testimony from Mr. Fischer. Fischer Decl.
¶¶ 123–160.
Petitioner asserts that a person of ordinary skill would have been
motivated to combine these references with a reasonable expectation of
success. Pet. 34–43; Fischer Decl. ¶¶ 161–167. Petitioner contends that a
person of ordinary “would have been motivated to modify Ito to use the
CDMA ‘soft-handoff’ techniques disclosed in Gilhousen501 because
CDMA technology solves many known problems with FDMA-based
systems, such as Ito.” Pet. 35 (citing Fischer Decl. ¶ 124). Petitioner
presents testimony from Mr. Fischer that a person of ordinary skill “would
have readily understood that CDMA offers significant advantages over
FDMA, e.g., improving the quality of a call connection and reducing
dropped calls.” Id. at 34–35 (citing Fisher Decl. ¶ 123). Petitioner asserts
also that a person of ordinary skill “would have been motivated to
incorporate Adachi’s spatially separated antennas with the circuitry
disclosed in Gilhousen501 such that signals received by Adachi’s antennas
would be processed using Gilhousen501’s ‘soft-handoff’ technique.” Pet.
41–42; Fischer Decl. ¶ 138.
Petitioner argues that in making the Ito-Gilhousen501 combination, a
person of ordinary skill would have had a reasonable expectation of success.
Pet. 40–41. Supported by testimony from Mr. Fischer, Petitioner contends
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“[i]ncorporating the functionality of Gilhousen501 into Ito would have been
a routine modification.” Id. at 41; Fischer Decl. ¶ 136.
Similarly, Petitioner demonstrates there would have been a motivation
to combine Adachi’s spatially separated antennas and Gilshosen501’s “soft
handoff” circuitry in Ito’s system with a reasonable expectation of success.
Pet. 42–43; Fischer Decl. ¶ 141.
1. Independent Claim 10
Petitioner presents an element-by-element analysis of independent
claim 10 in relation to Ito, Gilhousen501, and Adachi. Pet. 43–48. Petitioner
supports its analysis with testimony from Mr. Fischer. Fischer Decl.
¶¶ 142–151. As we discuss, Petitioner demonstrates that each element of
claim 10 is disclosed or suggested by Ito, Gilhousen501, and Adachi.
a. Preamble and Element 10a (“plurality of . . . antennas”)
Petitioner identifies mobile device MSS in Ito as the “moveable base
station” in the preamble of claim 10. Pet. 43 (citing Ex. 1003, Figs. 1, 3).
Petitioner asserts that in Ito, “[t]he MSS and car move relative to Earth when
the car is in motion.” Id. at 44 (citing Fischer Decl. ¶ 142). Patent Owner
does not challenge this analysis.
Similarly, Petitioner identifies the “plurality of spatially separated
antennas” recited in the claim (element 10a) with Adachi’s multiple
antennas. Id.; Fischer Decl. ¶ 143. Patent Owner does not challenge this
analysis, but does challenge the motivation to combine these references. See
infra.
b. Element 10b (“receiver”)
Petitioner relies on the combination of Ito, Gilhousen501, and Adachi
to meet the limitation (element 10b) of “a receiver configured to receive
fixed port signals from a fixed port through a plurality of spatially separated
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antennas.” Id. at 44–46. Petitioner refers to annotated Figure 3 of Ito,
following:

Annotated Figure 3 of Ito is a block diagram
of a mobile base device. Ex. 1003, 3:10–11.
Pet. 45. Figure 3 shows the structure of Ito’s MSS. Ex. 1003, 7:9–12.
Using this figure, Petitioner identifies the claimed receivers and transmitters
communicating with the base station BSS and the portable device PSS by
color: “Each transmitter-receiver unit includes a transmission system
(yellow) and a reception system (orange) that comprise various components
related to speech encoding, signal modulation, and power amplification.”
Pet. 45; Fischer Decl. ¶ 145. Mr. Fischer testifies: “As shown in Figure 3,
the first transmitter-receiver unit 50 wirelessly communicates with base
station BSS (fixed port).” Id. at ¶ 146.
Petitioner relies also on Adachi’s teaching of a plurality of spatially
separated antennas. Pet. 46. Petitioner explains that “[i]n the modified
system of Ito with the CDMA system of Gilhousen501 and the plurality of
antennas from Adachi’s repeater, . . . signals from Gilhousen501’s base
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station are received through the plurality of spatially separated antennas of
Adachi.” Id. (citing Fischer Decl. ¶ 147).
Petitioner asserts a person of ordinary skill “would have been
motivated to implement Adachi’s spatially separated antennas to Ito’s first
transmitter-receiver unit for the same reasons as with respect to the second
transmitter-receiver unit: to reduce the effects of fading and promote high-
quality communications.” Id. at 46 (citing Fischer Decl. ¶ 147).
c. Element 10c (“controller”)
Petitioner asserts that Gilhousen501 discloses “a controller configured
to align and combine the received fixed port signals” as recited in claim
element 10c. Id. at 46–47. Petitioner explains that Gilhousen501 “discloses
that its processor uses ‘diversity combining’ to combine a group of two or
more signals transmitted from a plurality of fixed radio ports.” Pet. 31–32
(citing Ex. 1004, 5:22–6:35).
Petitioner shows that Gilhousen501 also meets the requirement of the
claim to “align and combine” the received signals. Pet. 32–33. According
to Petitioner, in an embodiment of Gilhousen501 having two receivers,
“[b]oth receiver systems perform similar processing on the received signals
and transmit them to combiner and decoder circuitry 80.” Id. at 32 (citing
Ex. 1004, 11:61–63, 12:45-47 (first receiver), 12:48–52 (second receiver).
Petitioner explains that “[a person or ordinary skill would recognize that
diversity combiner and decoder circuitry 80 [in Gilhousen501] would also
‘adjust the timing of the two streams of received signals into alignment and
add[] them together.’” Pet. 33 (citing Ex. 1004, 10:28–31) (alteration in
original); Fischer Decl. ¶ 118).
Further, Petitioner asserts “[a person of ordinary skill] would also be
motivated to incorporate Gilhousen501’s mobile unit embodiment having
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two receivers to take advantage of the diversity combining functionality
described above.” Pet. 33 (citing Fischer Decl. ¶ 119).
d. Element 10d (“transmitter”)
Petitioner relies on Ito’s MSS to meet the limitation (element 10d) of
“a transmitter configured to transmit radio frequency signals to a mobile
device corresponding to the received fixed port signals.” Id. at 47–48;
Fischer Decl. ¶¶ 150–151. Referring again to the annotated Figure 3 of Ito,
illustrating the MSS, Petitioner explains: “Ito transmits a received call from
the base station BSS to the mobile user PSS via transmitter-receiver 80.”
Pet. 48 (citing Ex. 1003, 8:27–9:61); Fischer Decl. ¶ 151.
e. Discussion
As noted, Patent Owner does not challenge Petitioner’s analysis of the
preamble or claim element 10a. We find that for the reasons given by
Petitioner, Ito, Gilhousen501, and Adachi disclose those elements.11
Patent Owner challenges Petitioner’s analysis of “controller” claim
element 10c. Patent Owner contends that “the limitation of Claim 10 is not
directed towards the controller of the mobile unit or the controller of the
cell-site, as Petitioner proposes.” PO Resp. 54. Patent Owner contends the
limitation “requires the controller of the moving base station to be
‘configured to align and combine the received fixed port signals.’” Id.
(emphasis omitted). Patent Owner continues: “Critically, Gilhousen501
does not disclose any moving base station of any type, let alone a moving
base station comprised of ‘a controller configured to align and combine the
received fixed port signals.’” Id. (citing Lanning Decl. ¶¶ 222–223).

11 Because we determine that the preamble’s “moveable base station” is
disclosed by the cited references, we do not express a view on whether the
preamble is limiting.
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Patent Owner makes similar arguments for Ito and Adachi: “[N]either
Ito nor Adachi disclose any type of moving base station comprised of a
controller configured to align and combine the received fixed port signals”,
as required by Claim 10.” Id. at 56 (citing Lanning Decl. ¶ 225).
We are not persuaded by these arguments. Petitioner relies on Ito’s
MSS to meet the requirement of the claims for a moving base station. See
Pet. 43–44 and discussion of claim 10 preamble, supra. Petitioner relies on
Gilhousen501 for its disclosure of the claimed controller. Pet. 46–47.
Petitioner relies on Adachi for its teaching of multiple antennas. Id. at 44.
Patent Owner’s arguments that Gilhousen501 and Adachi fail to disclose a
moving base station with a controller do not address Petitioner’s contentions,
which also rely on Ito’s MSS in combination with Gilhousen501 and
Adachi. Thus, Petitioner’s argument is not persuasive because it addresses
these references separately, but not the combination. We find that for the
reasons given by Petitioner and summarized above, “controller” claim
element 10c is disclosed by Ito, Gilhousen501, and Adachi.
For “transmitter” claim element 10d, Patent Owner contends that Ito,
Gilhousen501, and Adachi fail to disclose a mobile device. PO Resp. 56–
58. This argument is based on Patent Owner’s construction of mobile device
as requiring registration and direct communication with the cellular network.
Id. at 57 (“While Ito does disclose a portable device (PSS), this portable
device does not register with or directly communicate with the cellular
network as required for a ‘mobile device’ in the context of the entire ’904
[sic] Patent.”). For reasons discussed supra, Section II.B.4, we do not
accept Patent Owner’s construction of mobile device because it is not
supported by the language of the claims or the other intrinsic evidence
before us.
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Nor do we agree with Patent Owner’s argument that Ito’s portable
device PSS is “similar to a cordless phone,” and therefore not a mobile
device. PO Resp. 57. We find that cordless telephones such as Ito’s are not
excluded from the scope of the claims for the reasons given supra. Because
we have not adopted Patent Owner’s claim construction, we are not
persuaded by these arguments and find, therefore, that Ito’s portable device
PSS meets the requirement of claim 10 for a mobile device, for the reasons
given by Petitioner and summarized supra. See Pet. 43–44; Pet. Reply 1–7;
Fischer Decl. ¶ 142; Fischer Reply Decl. ¶¶ 4–10. Furthermore, Ito’s PSS
and MSS operate in a cellular system. Ex. 1003, 1:15–16, 5:31–33.
Therefore, Ito’s “cordless telephone” is not a “cordless phone” in the sense
that Patent Owner describes, where “the base is connected to a fixed
telephone line.” See PO Resp. 6. Thus, Patent Owner’s arguments that Ito’s
PSS is not a mobile device are unpersuasive for this reason as well.
Still referring to element 10d, Patent Owner contends Petitioner fails
to show the references disclose a “transmitter configured to transmit radio
frequency signals to a mobile device corresponding to the received fixed
port signals.” PO Resp. 58–59. Patent Owner asserts: “Gilhousen501 only
discloses a direct communication between its single mobile unit (18) and one
or more cell-sites (i.e., fixed base stations) (12, 14, and 16) . . . .” Id. at 58.
Similarly, Patent Owner argues that “Adachi only discloses a stationary
repeater in a communication system that is used to boost weak spread
spectrum (CDMA) signals between a base station and one or more mobile
stations (i.e., mobile devices).” Id. at 59.
We are not persuaded by these arguments. This is another instance of
an argument by Patent Owner that does not respond to Petitioner’s
contentions. Petitioner relies on Ito (not Gilhousen501 or Adachi) for the
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disclosure of a mobile base station (MSS) that communicates directly with a
mobile device (PSS). See Pet. 43; Fischer Decl. ¶ 142. Patent Owner’s
arguments, based on Gilhousen501, alone, or Adachi, alone, are not
responsive to Petitioner’s contentions based on the combination of those
references with Ito.
f. Motivation to Combine
Patent Owner contends that the Petition “is fatally deficient.” PO
Resp. 23–30. According to Patent Owner: “A proper obviousness
combination requires the Petitioner to “explain how specific references
could be combined.” Id. at 23 (citing ActiveVideo Networks, Inc. v. Verizon
Commc’ns, Inc., 694 F.3d 1312, 1327-28 (Fed. Cir. 2012)). Specifically, as
to Ito and Gilhousen501, Patent Owner contends the Petition fails to explain
or address several questions, including “how a [person of ordinary skill]
would combine Gilhousen501’s CDMA modulation techniques, CDMA
soft-handoff circuitry, and CDMA diversity combiner circuitry with that of
Ito’s FDMA/TDMA system;” or “how to combine Adachi’s spatially
separated antennas—designed for a CDMA system—with that of Ito’s
FDMA/TDMA system.” PO Resp. 24–25 (emphasis omitted); see also id. at
38–42.
In addition, Patent Owner contends “Ito’s FDMA/TDMA system is
not compatible with CDMA systems.” PO Resp. 26; PO Sur-reply 25–27.
Patent Owner asserts, “Ito explicitly teaches away from utilizing CDMA
techniques.” PO Resp. 38. And Patent Owner states that “Ito’s
FDMA/TDMA system is not capable of utilizing CDMA modulation
techniques or even transmitting CDMA signals without replacing Ito’s
current FDMA/TDMA circuitry with entirely new CDMA circuitry.” Id.
Mr. Lanning testifies that “these compatibility issues would prohibit Ito’s
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mobile base stations (MSS) from receiving or transmitting CDMA signals
and would further prohibit Ito’s pre-existing base stations (BSS) from
transmitting or receiving CDMA signals.” Lanning Decl. ¶ 175.
We are not persuaded by these arguments. Our reasoning follows.
Patent Owner cites KSR as requiring the Board to consider the
motivation to combine in determining obviousness. PO Sur-reply 22. But
the Federal Circuit has emphasized that 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, alteration in original)). The Federal Circuit has further cautioned,
in ClassCo, against a rigid approach to determining obviousness, stating that
“the rationale of KSR does not support [the] theory that a person of ordinary
skill can only perform combinations of a puzzle element A with a perfectly
fitting puzzle element B.” Id.
We disagree with Patent Owner’s assertion that Petitioner has failed to
demonstrate a motivation to combine the teachings of Ito and Gilhousen501
with a reasonable expectation of success. We find that Petitioner has
provided persuasive evidence of such a rationale and expectation. Pet. 34–
43; Fischer Decl. ¶¶ 123–141; see discussion supra. Mr. Lanning testifies
that CDMA was a “breakthrough technology.” Lanning Decl. ¶ 149.
(heading). Given the high level of ordinary skill in the pertinent art before
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us, we find that a person having such ordinary skill (an experienced wireless
communications systems engineer “familiar with cellular communication
technology”) would have readily recognized that combining Ito with
Gilhousen501’s teachings of CDMA technology would have had the
advantages identified by Petitioner and summarized supra. See also Pet. 34–
40; Fischer Decl. ¶¶ 123–134.
Moreover, we find that such a highly skilled person would have been
able to combine the teachings of those references using known technology,
with a reasonable expectation of success. Fischer Decl. ¶ 135 (“Starting
with Ito, a [person of ordinary skill] familiar with wireless technology such
as CDMA would have naturally sought to implement Ito using CDMA,
which allows the improvement of Gilhousen501’s soft handoff, instead of
Ito’s FDMA, and to do so would have required only the application of
ordinary skill.” ). Mr. Fischer continues: “When designing the system
described in Ito, a [person of ordinary skill] would have naturally
implemented known and commercially available radio communication
components with the mobile base station and base station in the Ito system.”
Id.
This conclusion is further supported by Mr. Lanning’s testimony that
the hardware and software necessary to convert a base station, such as in Ito,
to CDMA were available from Motorola during the relevant time period.
Pet. Reply 20–21; Lanning I Dep. 42:23–43:22. We find that this
modification would have been a substitution of known techniques of
communications, using available hardware and software, with a reasonable
expectation of success. Fischer Decl. ¶¶ 135–137.
We have considered Patent Owner’s arguments and find them not
persuasive. As Petitioner points out, Patent Owner’s incompatibility
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argument is flawed because it assumes the bodily incorporation of
“unmodified CDMA components from Gilhousen501 into Ito’s unmodified
system.” Pet. Reply 19. We agree that Patent Owner’s approach is flawed.
“[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.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
We are not persuaded by the testimony of Patent Owner’s expert, Mr.
Lanning, on this issue. Cf. Lanning Decl. ¶¶ 139–164. His testimony
mirrors arguments in Patent Owner’s Response about the combination of Ito
and Gilhousen501 resulting in “incompatible systems,” and requiring
additional “design and circuitry details.” See id. ¶¶ 124, 173, 178; PO Resp.
21, 25. As discussed supra, we find that those arguments are unpersuasive
and contrary to KSR, and Mr. Lanning’s testimony is similarly unpersuasive.
We have considered Patent Owner’s additional arguments and find
them no more persuasive. For example, Patent Owner argues repeatedly that
Petitioner’s rationale for combining Ito and Gilhousen501 and other
references relied on by Petitioner, and the supporting testimony from Mr.
Fischer, are “conclusory.” PO Resp. 1, 23, 24, 27; PO Sur-reply 15. We
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disagree. We find that Petitioner’s explanation of the rationale for
combining the teachings of the references and Mr. Fischer’s supporting
testimony, summarized supra, are persuasive for the reasons given above.
Nor do we agree with Patent Owner’s argument that the Petition is
“fatally deficient” because it does not explain “in sufficient detail” how to
combine Ito and Gilhousen501 (and other references). PO Resp. 23–25.
According to the ’701 patent, the invention uses “well-known” equipment
and functions. See, e.g., Ex. 1001, 4:26, 5:3–4; 5:20, 5:47, 5:59, 6:10, 6:21,
6:36, 6:39, 6:48, 9:5, 9:18, 9:47. CDMA was a well-known technique at the
time of the alleged invention. Fischer Decl. ¶ 127 (citing Ex. 1026, 50
(stating that CDMA was “[c]ommercially introduced in 1995”)). We are
persuaded that a more detailed explanation of how to combine such well-
known equipment and techniques is not required. See id. ¶ 135 (“Starting
with Ito, a [person of ordinary skill] familiar with wireless technology such
as CDMA would have naturally sought to implement Ito using CDMA, . . .
and to do so would have required only the application of ordinary skill.”).
Mr. Fischer provided additional details at his deposition. Fischer I Dep.
89:11–91:17.12 Moreover, Mr. Lanning’s testimony establishes that the
necessary hardware and software for the transition was available from
Motorola. Lanning I Dep. 42:23–43:22; see discussion supra.
Nor do we agree that “Ito explicitly teaches away from utilizing
CDMA techniques.” PO Resp. 38. A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. In re

12 Our citations to this transcript refer to the original page numbers.
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Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The mere fact that Ito chose an
alternative technology (FDMA) is not sufficient to teach away from
substituting CDMA. See id.
We find, therefore, that for these reasons, Petitioner has demonstrated
by a preponderance of the evidence, including expert testimony and the
references themselves, a motivation to combine the teachings of Ito and
Gilhousen501, with a reasonable expectation of success.
Following the same approach, Patent Owner argues that a person of
ordinary skill would not have been motivated to combine Adachi’s teaching
of plural antennas with Ito and Gilhousen501. PO Resp. 40–42. Patent
Owner’s arguments track those already addressed in connection with
combining Ito and Gilhousen501. Thus, Patent Owner argues that
“compatibility issues” would arise with Ito’s FDMA/TDMA system because
Adachi’s spatially separated antennas were designed for a CDMA system.
Id. at 40–41. And Patent Owner argues that a person of ordinary skill would
not have been motivated to “mix and match” Adachi’s teachings with Ito’s
mobile base station. Id. at 41. With respect to combining Adachi with
Gilhousen501, Patent Owner contends “such a combination would have
required much new circuitry to result in an operable device.” Id. at 41.
For the reasons discussed, these arguments overstate the extent of the
alleged technical problems and overlook the relatively high level of skill in
this art. As Mr. Fischer testifies persuasively, “[a person of ordinary skill]
familiar with diversity techniques in wireless communications would have
naturally sought to implement Adachi into the Ito-Gilhousen501
combination since the well-known benefits of antenna diversity would have
enhanced Ito-Gilhousen501 system’s ability to maintain high-quality
connections between the mobile devices and base stations.” Fischer Decl.
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¶ 141; see also id. ¶¶ 103–104 (discussing advantageous use of Adachi’s
antenna diversity to “mitigate the effects of multipath and fading”).
Accordingly, for the reasons given, we find that Petitioner has
demonstrated that Ito in combination with Gilhousen501and Adachi
discloses or suggests each element of claim 10, and further, that it would
have been obvious to combine the teachings of those references as proposed
by Petitioner, with a reasonable expectation of success. Based on
Petitioner’s analysis, and for the reasons explained above, we find Petitioner
has shown by a preponderance of evidence that claim 10 would have been
obvious in light of Ito, Gilhousen501, and Adachi.
2. Claims 16–18, 31, 34, and 35
Claims 16, 17, and 18 depend (directly or indirectly) from claim 10
and add various features. For example, claim 16 states “the transmitter [is]
further configured to transmit the radio frequency signals within time slots
of time-division multiplex channels.” Pet. 48. Petitioner contends this
additional feature is disclosed by Ito’s MSS. Id. (citing Fischer Decl. ¶ 153).
As Petitioner explains, in Ito, “[u]pon receiving a call, the MSS searches for
an idle radio frequency and time slot to establish a communications
channel.” Id. (citing Ex. 1003, 5:55–61). Petitioner further explains: “In
the proposed combination, Gilhousen501’s CDMA functionality replaces
Ito’s FDMA functionality, leaving its TDMA functionality intact.” Id. at 49.
(emphasis added). Petitioner supports this assertion with testimony from
Mr. Fischer. Fischer Decl. ¶ 155.
Similarly, Petitioner contends that the limitations added by claims 17
and 18 are disclosed Ito alone, or by the combination of Ito, Gilhousen501,
and Adachi. Id. at 49. Claim 17 calls for the movable base station to be
“conveyed by a vehicle.” Ex. 1001, 12:22–23. Claim 18 requires an
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“automotive vehicle.” Id. at 12:24–25. Petitioner shows that Ito discloses
this limitation. Pet. 49. Petitioner contends claims 31, 34, and 35 contain
limitations similar to claims 10, 17, and 18, and therefore relies on the same
prior art disclosures for those claims. Id. at 49–50.
Patent Owner does not separately address the limitations added by
these claims. PO Resp. 59–60. Based on Petitioner’s analysis, and for the
reasons explained above, we find Petitioner has shown by a preponderance
of evidence that claims 16–18, 31, 34, and 35 would have been obvious in
light of Ito, Gilhousen501, and Adachi.
C. Challenge to Claims 10, 15–18, 31, and 33– 35
Based on Ito and Jakes
In a separate challenge, Petitioner contends these claims would have
been obvious over the combination of Ito and Jakes. Pet. 50–59. Petitioner
supports this assertion with testimony from its expert, Mr. Fischer. Fischer
Decl. ¶¶ 161–182.
Petitioner asserts that a person of ordinary skill would have been
motivated to combine these references with a reasonable expectation of
success. Pet. 50–54; Fischer Decl. ¶¶ 161–176. Referring to its previous
discussion of Ito, Petitioner contends that person of ordinary skill “would
have been highly motivated to modify Ito’s system to use a plurality of
spatially separated antennas.” Pet. 50. Petitioner explains further that
“Jakes itself confirms the many advantages of using spatially separated
antennas, e.g., reduction of random amplitude fading and random changes in
phase, mitigating noise, and improvement of transmission power
requirements.” Id. Still further, Petitioner contends that “Jakes itself
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provides an explicit motivation to modify Ito’s system to use Jakes’ multiple
antennas.” Id. at 51–52 (citing Ex. 1032, 81).13
Petitioner asserts that a person of ordinary skill modifying Ito to use
the spatially separated antennas of Jakes would have had a reasonable
expectation of success. Pet. 53–54. “As confirmed by Mr. Fischer, this
functionality was well-known at the time of the ‘701 patent and it would
have been a routine design choice to include this feature.” Id. at 53; Fischer
Decl. ¶ 167.
1. Claim 10
Petitioner’s element-by-element analysis of independent claim 10 in
relation to Ito and Jakes appears at pages 54–56 of the Petition. Petitioner
supports its analysis with testimony from Mr. Fischer. Fischer Decl.
¶¶ 168–174.
Petitioner demonstrates that each element of claim 10 is disclosed or
suggested by Ito and Jakes. Petitioner’s analysis follows closely its previous
analysis based on combining Ito with Gilhousen501 and Adachi.
Petitioner’s analysis of the preamble of claim 10 cites Ito and refers
back to it prior analysis of the “moveable base station” based on Ito,
Gilhousen501, and Adachi. Pet. 54. See discussion supra, Section III.B.1.a
(identifying Ito’s MSS as the moving base station).
Petitioner relies on Jakes to meet the element 10a limitation “a
plurality of spatially separated antennas,” and on the combination of Ito and
Jakes to meet the element 10b limitation of “a receiver configured to receive
fixed port signals from a fixed port through a plurality of spatially separated
antennas.” Pet. 54–55.

13 Citations to Jakes refer to the original page numbers.
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For element 10b, the “receiver” limitation, Petitioner relies on Ito and
Jakes, and refers back to its analysis of this limitation in light of Ito and
Aduchi. Pet. 55. Petitioner asserts that “Jakes discloses the ‘spatially
separated antennas’ limitations” and that a person of ordinary skill “would
have been highly motivated to modify Ito’s system to use a plurality of
spatially separated antennas.” Id. at 50, 55.
Petitioner demonstrates a motivation to combine these references.
Pet. 50–54. Petitioner explains that “Jakes itself confirms the many
advantages of using spatially separated antennas, e.g., reduction of random
amplitude fading and random changes in phase, mitigating noise, and
improvement of transmission power requirements.” Id. at 50. Mr. Fischer
testifies: [A person of ordinary skill] would have been motivated to
combine the spatially separated antennas of Jake[s] with the system of Ito,
for example, because Ito has a mobile base device in a car in a cell phone
system operating inside the vehicle, but with similar fading as was handled
by the multiple antennas in Jakes.” Fischer Decl. ¶ 169.
Petitioner shows that Ito in combination with Jakes discloses element
10c, “a controller configured to align and combine the received fixed port
signals” as recited in the claim. Pet. 55–56. Referring to Ito’s Figure 3,
supra, Petitioner states that “Ito discloses a ‘controller’ (control circuit 71)
for processing received signals from both the base station (BSS) and mobile
device (PSS) as shown in Figure 3. Accordingly, Ito discloses the claimed
‘controller.’” Pet. 55. Petitioner explains further: “Ito’s controller would be
programmed to align and combine the received mobile device signals (Ito’s
PSS signals) as disclosed in Jakes.” Id. at 55–56.
As in its other challenge based on Ito, Petitioner relies on Ito to meet
the element 10d limitation of “a transmitter configured to transmit radio
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frequency signals to a mobile device corresponding to the received fixed
port signals.” Id. at 56.
Patent Owner challenges Petitioner’s demonstration of a motivation to
combine Ito and Jakes. PO Resp. 42–44. According to Patent Owner,
“Petitioner has not articulated any coherent reason why a [person of ordinary
skill] would decide to modify Ito with Jakes, especially, where Jakes is not
directed towards a cellular system of any type (i.e., Jakes does not apply to
FDMA-, TDMA- or CDMA-based cellular systems).” Id. at 42 (citing
Lanning Decl. ¶¶ 192–195).
We do not agree with Patent Owner’s argument. As Petitioner points
out, Patent Owner’s argument is contrary to KSR, which does not require, to
show obviousness, that the elements of the prior art be combined physically,
and mandates that their teachings be viewed from the perspective of a person
of ordinary skill, not “an automaton.” We are more persuaded by Mr.
Fischer’s testimony that a person of ordinary skill “would have been highly
motivated” to modify Ito in light of Jakes to take advantage of “reduction of
random amplitude fading and random changes in phase, mitigating noise,
and improvement of transmission power requirements.” Fischer Decl.
¶ 161. Jakes supports this testimony. For example, Jakes discloses that “a
signal made up of some combination of the two [antennas] would have much
less severe fading properties than a signal from one antenna alone.”
Ex. 1032, 81, quoted at Pet. 52; see also Ex. 1032, Abstract (disclosing that
diversity techniques save power). We find that for the reasons given, a
person of ordinary skill would have combined Ito and Jakes with a
reasonable expectation of success.
Patent Owner’s further argument that Ito does not disclose a “mobile
device” (PO Resp. 60) has been addressed. See supra, Section III.B.1.e
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(discussion of “transmitter” element 10d). Similarly, the argument that
“Jakes does not disclose any type of moving base station” (PO Resp. 60)
does not respond to Petitioner’s contention that Ito’s MSS is the claimed
movable base station. See supra, Section III.B.1.a. We find that for the
reasons given, Ito and Jakes in combination disclose or suggest each of the
limitations of claim 10.
Based on Petitioner’s analysis, and for the reasons explained above,
we find Petitioner has shown by a preponderance of evidence that claim 10
would have been obvious in light of Ito and Jakes.
2. Claims 15–18, 31, and 33–35
Claims 15–18 depend (directly and indirectly) from claim 10 and add
various features. For example, claim 15 further recites “a controller
configured to compare the received fixed port signals received through the
spatially separated antennas and to select a best signal.” Ex. 1001, 12:14–
17. Petitioner asserts this limitation is disclosed by Ito and Jakes. Pet. 56.
As noted supra, claim 16 states “the transmitter [is] further configured
to transmit the radio frequency signals within time slots of time-division
multiplex channels.” Ex. 1001, 12:18–21. Petitioner shows this additional
feature is disclosed by Ito’s MSS. Pet. 56–57. Petitioner refers back to its
analysis of this claim in connection with Ito and Adachi. Id. at 57; see
Section III.B.2, supra. There, Petitioner elaborates: “Ito explains that in its
“FDMA/TDMA technique, a number of radio frequencies are shared by a
plurality of stations. These radio frequencies have a time division signal unit
format where a time frame is divided into a number of time slots . . . .” Pet.
48 (citing Ex. 1003, 5:47–61).
Similarly, Petitioner contends that the limitations added by claims 17
and 18 are disclosed by Ito alone, or by the combination of Ito and Jakes. Id.
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at 58–59. Petitioner contends claims 31, 33, 34, and 35 contain limitations
similar to claims 10, 15, 17, and 18, and therefore relies on the same prior art
disclosures for those claims. Id. at 59.
Patent Owner’s response to claims 15, 17, and 18 relies on its
response to claim 10. PO Resp. 61. Patent Owner presents additional
arguments only for claim 15. Id. at 61–63. As discussed, claim 15 requires
a moveable base station “further comprising a controller configured to
compare the received fixed port signals received through the spatially
separated antennas and to select a best signal.” Ex. 1001, 12:14–17. Patent
Owner contends “Ito does not disclose the required limitation of a controller
‘select[ing] the best signal’ nor does Petitioner provide any evidence to
support its proposition.” PO Resp. 62 (alteration original) (citing Lanning
Decl. ¶ 242). We disagree. Petitioner contends that “Ito in combination
with Jakes discloses this limitation.” Pet. 56. Patent Owner’s argument fails
because it refers to Ito alone, and again does not address the combination of
references, Ito and Jakes.
Patent Owner asserts in its Sur-reply that Ito and Jakes fail to disclose
the “best signal” limitation of claim 15. PO Sur-reply 33. We disagree.
Petitioner provides a detailed description of Jakes’s disclosures of selecting
a best signal under the heading for claim 16, immediately following its
discussion of claim 15,14 demonstrating that “[i]n the proposed combination
[with Jakes], Ito’s controller would be programmed with the functionality of

14 From the context, it is apparent that Petitioner’s discussion of Jakes’s
disclosure of selecting a best signal was incorrectly placed under the heading
for claim 16. For example, Petitioner’s discussion of Jakes mentions a
“best” signal three times, which clearly refers to the “best signal” limitation
recited in claim 15 and not claim 16’s recitation of transmitting within time
slots.
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Jakes’ receiver, which teaches comparing incoming signals received from
spatially separated antennas and selecting the best one.” Pet. 58 (emphasis
added). Petitioner provides an annotated version of Figure 1 of Jakes,
following:

Id. Figure 1 of Jakes, annotated by Petitioner, shows comparing incoming
signals from M spatially separated antennas from M receivers and selecting
the best one. As Petitioner explains, the one of the M receivers having the
highest signal-noise ratio (SNR) is connected to the output. Id. (citing Ex.
1032, 82). Further, Jakes explains that the antenna signals could be
sampled, and the best one sent to the receiver. Id.
Thus, we find that Jakes, which selects a “best” signal based on SNR,
in combination with Ito, discloses this limitation of claim 15.
Patent Owner also argues that the “controller” limitation in claim 15
refers to a controller of the base station, and Jakes does not disclose a
moving base station “of any type.” PO Resp. 62. Patent Owner made a
similar argument in connection with Gilhousen501. See supra, Section
III.B.1.e. As Petitioner points out, the moving base station is recited in the
preamble of claim 10, which Patent Owner does not dispute is met by Ito.
Pet. Reply 31–32. Furthermore, we are not persuaded by this argument
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because it is directed to Jakes alone, and not to the combination of Ito and
Jakes.
Patent Owner does not address claims 31 or 33–35.
We find that for the reasons given, Ito and Jakes disclose or suggest
the limitations of claims 15–18, 31, and 33–35. Based on Petitioner’s
analysis, and for the reasons explained above, we find Petitioner has shown
by a preponderance of evidence that claims 15–18, 31, and 33–35 would
have been obvious in light of Ito and Jakes.
D. Summary and Conclusion
After consideration of the record, including Petitioner’s and Patent
Owner’s arguments and evidence, we determine that for the reasons given,
Petitioner has proven by a preponderance of the evidence that claims 10,
16–18, 31, 34, and 35 of the ’701 patent would have been obvious over Ito,
Gilhousen501, and Adachi, and claims 10, 15–18, 31, and 33–35 of the ’701
patent would have been obvious over Ito and Jakes.
E. Other Grounds
As noted above in Section I.F, supra, Petitioner presents an additional
challenge to claims 10 and 17 of the ’701 patent. Because we determine that
those claims are unpatentable in light of Ito, Gilhousen501, and Adachi, and
Ito and Jakes, for the reasons discussed above, we do not separately assess
the patentability of these claims based on the remaining ground in this
proceeding. 35 U.S.C. § 318(a) (2018) (“If an inter partes review is
instituted and not dismissed under this chapter, the Patent Trial and Appeal
Board shall issue a final written decision with respect to the patentability of
any patent claim challenged by the petitioner and any new claim added
under section 316(d).”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
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(Fed. Cir. 1984) (finding that an administrative agency is at liberty to reach a
decision based on a single dispositive issue).
IV. CONSTITUTIONAL CHALLENGE
Patent Owner contends that “adjudication of the ’701 patent violates
the U.S. Constitution.” PO Resp. 63.
In Arthrex v. Smith & Nephew, 941 F.3d 1320, 1338 (Fed. Cir. 2019),
cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206
(Oct. 13, 2020), the Federal Circuit determined that the current structure of
the Board does not violate Article II as of the date of that precedential
decision. See also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764
(Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the
APJs were constitutionally appointed as of the implementation of the
severance, inter partes review decisions going forward were no longer
rendered by unconstitutional panels.”). Furthermore, in Arthrex, the Federal
Circuit found “no constitutional infirmity in the institution decision as the
statute clearly bestows such authority on the Director pursuant to 35 U.S.C.
§ 314.” 941 F.3d at 1340.
Therefore, we disagree with Patent Owner that this adjudication
“violates the U.S. Constitution.” PO Resp. 63.
V. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 10, 15–18, 31,
and 33–35 of the ’701 patent are not patentable.
A summary of our conclusions is set forth in the table below.
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15 Because we determine that all of the challenged claims are unpatentable
on other grounds, we decline to address this remaining ground in the
Petition.
Claims
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
10, 16–18, 31,
34, 35
103(a) Ito, Gilhousen501,
Adachi
10, 16–18, 31,
34, 35

10, 15–18, 31,
33–35
103(a) Ito, Jakes

10, 15–18, 31,
33–35

10, 17 103(a) Gilhousen761,
Gilhousen501,
Adachi15

Overall
Outcome
10, 15–18, 31,
33–35

IPR2019-01442
Patent 7,848,701 B2
56
For PETITIONER:
Jim Glass
John McKee
Sean Gloth
QUINN EMANUEL URQUHART & SULLIVAN, LLP
jimglass@quinnemanuel.com
johnmckee@quinnemanuel.com
seangloth@quinnemanuel.com

For PATENT OWNER:

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

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

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