UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`———————
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`v.
`
`CARUCEL INVESTMENTS, L.P.
`
`Patent Owner
`
`———————
`Case No. IPR2019-01102
`U.S. Patent No. 7,848,701
`
`———————
`
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`i
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................ 1
`I.
`II. THE REPLY’S CLAIM CONSTRUCTION ANALYSIS INVITES LEGAL
`
`ERROR ............................................................................................................. 1
`A. “Mobile Device” ............................................................................................... 1
`B. “Automotive Vehicle” ...................................................................................... 8
`III. THE REPLY CONFIRMS THAT THE PETITION DOES NOT
`
`SUFFICIENTLY EXPLAIN HOW TO COMBINE THE ASSERTED
`
`PRIOR ART REFERENCES ......................................................................... 11
`IV. THE REPLY DOES NOT CURE THE SHORTCOMINGS OF
`
`PETITIONER’S MOTIVATION TO COMBINE FOR GROUNDS 1-2 ..... 12
`A. Ground 1: Ito with Gardner ............................................................................ 12
`B. Ground 2: Gilhousen865 and Gilhousen390 .................................................. 13
`V.
`PETITIONER HAS FAILED TO DEMONSTRATE THAT ANY
`
`GROUND RENDERS THE CHALLENGED CLAIMS INVALID ........... 15
`A. Ground 1 ......................................................................................................... 15
`1. Ito Fails to Disclose “A Mobile Device” .................................................... 15
`2. Gardner Fails to Disclose “A Controller Configured . . . To Select a Best
`
`Signal” ......................................................................................................... 21
`B. Ground 2 ......................................................................................................... 24
`1. Gilhousen865 Fails to Disclose “Configured To” ...................................... 24
`2. Gilhousen865 Fails to Disclose “A Mobile Device” .................................. 25
`3. Gilhousen865 Fails to Disclose “Automotive Vehicle” ............................. 27
`VI. MR. LANNING’S TESTIMONY DOES NOT LACK EVIDENTIARY
`
`SUPPORT..................................................................................................... 27
`VII. CONCLUSION ........................................................................................... 28
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Abbott Labs. v. Novopharm Ltd.,
`323 F.3d 1324, 1327 (Fed. Cir. 2003) .................................................................. 19
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ..................................................................... 20, 24
`Kartri Sales Co., Inc. et al. v. Zahner Design Group, Ltd.,
`IPR2016-01327, Paper 10 (PTAB Jan. 3, 2017) .................................................. 13
`Lexion Med., LLC v. Northgate Techs., Inc.,
`641 F.3d 1352 (Fed. Cir. 2011) .............................................................................. 1
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) ............................................................................ 12
`On Demand Mach. Corp. v. Ingram Indus.,
`442 F.3d 1331 (Fed. Cir. 2006) ..........................................................................4, 5
`Pacing Techs., LLC v. Garmin Int’l, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) .............................................................................. 2
`Personalized Media Communications, LLC v. Apple Inc.,
`952 F.3d 1336 (Fed. Cir. Mar. 13, 2020) ................................................................ 4
`Phillips v. A.W.H. Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 1
`PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC,
`815 F.3d 734 (Fed. Cir. 2016) ................................................................................ 7
`Roxane Labs., Inc. v. Novartis AG,
`IPR2016-01461 (PTAB Feb. 13, 2017) ................................................................ 20
`Trustees of Columbia Univ. v. Symantec,
`811 F.3d 1359 (Fed. Cir. 2016) .............................................................................. 6
`Rules
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 17
`
`iii
`
`

`

`I.
`
`
`INTRODUCTION
`For the reasons set forth herein and those set forth in the Patent Owner’s
`
`Response (Paper No. 12, “POR”), the Petitioner has failed to meet its burden of
`
`proving unpatentability of the challenged claims by a preponderance of the evidence.
`
`II. THE REPLY’S CLAIM CONSTRUCTION ANALYSIS INVITES
`
`LEGAL ERROR
`
`A.
`“Mobile Device”
`
`
`
`Contrary to Petitioner’s assertion, Patent Owner’s submission of the plain and
`
`ordinary meaning of the term “mobile device”1 was not one of “gamesmanship”;
`
`instead, it was a direct result of and in response to Petitioner’s flawed proposed
`
`construction within its Petition. See Reply at 6. Although Petitioner did not submit
`
`any explicit construction of the term “mobile device” within its Petition, Petitioner
`
`improperly interpreted the “plain and ordinary meaning” of “mobile device” in a
`
`manner similar to a broadest reasonable interpretation analysis—by construing the
`
`meaning of “mobile device” in the abstract. This is improper under the current
`
`Phillips standard. Instead, a claim term must be interpreted according to “its meaning
`
`to the ordinary artisan after reading the entire patent.” Phillips v. A.W.H. Corp., 415
`
`F.3d 1303, 1313 (Fed. Cir. 2005).2 Despite this requirement of the Phillips standard,
`
`                                                            
`1 “A device that must register with and be able to directly communicate with the
`cellular network.” See POR at 13-16.
`2 See also PPC Broadband, Inc. v. Corning Optical Comm’ns RF, LLC, 815 F.3d
`734, 740-42 (Fed. Cir. 2016); Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d
`
`1
`
`

`

`Petitioner’s analysis attempts to (i) broadly construe the term “mobile device” in a
`
`vacuum to include any “movable device capable of receiving and transmitting radio
`
`signals” while ignoring the intrinsic evidence;3 and (ii) disregard the ’701 Patent
`
`specification’s criteria for the term “mobile device.”4
`
`
`
`Petitioner’s analysis is flawed for several reasons. First, Petitioner’s claim
`
`construction analysis is premised on incorrect legal standards. For example, Federal
`
`Circuit precedent forbids an overly broad interpretation of the claims “[w]hen a
`
`patentee describes the features of the present invention as a whole, he alerts the
`
`reader that this description limits the scope of the invention.” Pacing Techs., LLC v.
`
`Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015). In a prior civil action
`
`involving the ‘701 Patent, the district court concluded that the specification of the
`
`related ’904 Patent5 was “describing the system as a whole according to the invention
`
`and not simply a preferred embodiment.” Ex. 2105 at 14-15. Similarly, the ’701
`
`Patent specification also describes the invention as a whole and should be limited as
`
`such. Specifically, the ’701 Patent relates to and describes as a whole improving the
`
`                                                            
`1352, 1356 (Fed. Cir. 2011) (“The customary meaning of a claim term is not
`determined in a vacuum and should be harmonized, to the extent possible, with the
`intrinsic record, as understood within the technological field of the invention.”).
`3 Reply at 4-9.
`4 Id.
`5 The ’701 Patent is a continuation of the U.S. Patent No. 7,221,904 (’904 Patent).
`
`2
`
`

`

`wireless connections of mobile devices within cellular telephone systems via a
`
`moving base station—which is consistent with Patent Owner’s construction of the
`
`term “mobile device”—as demonstrated by the examples below:
`
` “[T]he mobile unit must register in the manner described earlier, by
`
`transmitting its unique address in the new service area . . . . This registration
`
`procedure is required so that an incoming call for the mobile unit can be
`
`appropriately directed.”6 Ex. 1001, 9:49-56.
`
` “The moving base station preferably handles telecommunications with
`
`mobile units which travel at a rate of not more than 30 miles per hour faster
`
`or slower than the moving base station. For example, the moving base stations
`
`30, 40 may be traveling at the rate of 60 miles per hour to accommodate traffic
`
`moving in the range of 30 to 90 miles per hour. In the arrangement of FIG. 1,
`
`fixed base stations 70 would accommodate communications with mobile
`
`units traveling at a speed of less than 30 miles per hour including pedestrian
`
`traffic and stationary units.” Ex. 1001, 4:40-49.
`
` “The operation of the fixed base stations 70 is essentially the same as that of
`
`a standard cellular fixed base station. In congested traffic areas, a mobile unit
`
`which is stopped or slowly moving, e.g., less than 30 miles per hour, will
`
`                                                            
`6 Unless otherwise indicated, all emphasis in either quotations or exhibit figures is
`added by Patent Owner.
`
`3
`
`

`

`preferably be serviced by one of the fixed base stations 70. As the speed of
`
`travel of the mobile unit 20 increases, a handoff will occur between the fixed
`
`base station and a moving base station . . . . Thus, when a call involving a
`
`mobile unit is initiated or when it is determined that a handoff should occur,
`
`the mobile unit may be handed from a moving station to a fixed station, or
`
`vice versa.” Ex. 1001, 10:50-65.
`
`Accordingly, the plain and ordinary meaning of the term “mobile unit” should be
`
`harmonized with the intrinsic evidence above.
`
`
`
`Second, the Reply fails to acknowledge the recent Federal Circuit precedent
`
`that cautions against Petitioner’s flawed standard of effectively requiring statements
`
`in the intrinsic record to rise to the level of a disclaimer in order to inform the
`
`meaning of the disputed claim term. See Personalized Media Communications, LLC
`
`v. Apple Inc., 952 F.3d 1336, 1345-46 (Fed. Cir. Mar. 13, 2020) (“even if those
`
`statements do not rise to the level of a disclaimer.”); Bell Atlantic Network Services,
`
`Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268-69, 1271 (Fed. Cir.
`
`2001) (“[T]he written description can provide guidance as to the meaning of the
`
`claims . . . even if the guidance is not provided in explicit definitional format.”).
`
`
`
`Third, 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.” On Demand
`
`4
`
`

`

`Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1340 (Fed. Cir. 2006). For example,
`
`in On Demand, the Federal Circuit construed the claim term “customer” as the “retail
`
`customer” based on the specification explaining the advantages that the system
`
`provided to this type of customer, “repeatedly reinforc[ing]” its usage of the term
`
`“customer” as the retail customer. On Demand, 442 F.3d at 1334, 1340. The Federal
`
`Circuit’s analysis in On Demand is similar to the Patent Owner’s claim construction.
`
`Here, the ’701 Patent is neither directed towards nor relates to improving the wireless
`
`connections of any “movable device capable of receiving and transmitting radio
`
`signals”, as Petitioner proposes. In stark contrast, the ‘701 Patent explicitly and
`
`exclusively relates to improving the wireless connections of mobile devices within
`
`“cellular telephone systems.” This fact further evidences that the term “mobile
`
`device” is more than just any “movable device capable of receiving and transmitting
`
`radio signals”, as demonstrated below:
`
` “The invention relates to cellular telephone systems in which a mobile unit
`
`communicates by wireless communication to a base station connected to the
`
`wire telephone network and more particularly to cellular telephone systems
`
`adapted for use with fast-moving mobile units.” Ex. 1001, 1:17-21.
`
` “Modern cellular systems use what is known as code division multiple access
`
`(CDMA) spread-spectrum communications.” Ex. 1001, 2:14-16.
`
`5
`
`

`

` “In a typical cellular telephone system, an area is divided into a plurality of
`
`cells with each cell having a centrally located cell site. A mobile unit moving
`
`in such a cellular network communicates by radio with a nearest cell site . .
`
`. A problem with existing mobile telephone systems is the considerable time
`
`required in handoffs . . . A basic principle of cellular telephone systems is
`
`the concept of frequency reuse . . . . 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, 1:27-3:2.
`
` “In the typical cellular telephone system, the base station, also referred to as
`
`a cell site, forms an interface between the mobile unit and the gateway office.”
`
`Ex. 1001, 4:61-63.
`
` “To avoid interrupting communications with a mobile unit traveling along the
`
`roadway in the area where two adjacent loops end, any existing calls are
`
`handed off from the moving base station near the terminating end of its loop
`
`to a moving base station of the next loop . . . . This procedure is equivalent to
`
`a handoff between cell sites of different cells in the existing cellular network
`
`in a manner which is well known in the art.” Ex. 1001, 8:63-9:6.
`
`
`
`Finally, Petitioner’s additional argument that the prosecution history of the
`
`related ’904 Patent “does not support PO’s construction for ‘mobile device’” is
`
`6
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`

`

`incorrect.7 First, the cherry-picked terms “telephones, radio modems, or other types
`
`of radios” were taken from the “summary of the invention” portion of the appellant’s
`
`appeal brief—in which the appellant described a summary of the invention, not a
`
`definition for the term “mobile device.” More importantly, these cherry-picked terms
`
`are not inconsistent with Patent Owner’s proposed construction or the specification
`
`of the ’701 Patent. For example, cellular phones, cellular modems, and hybrid
`
`cellular telephone that included both analog voice and digital data capability (“other
`
`types of radios”) all meet the definition of “mobile device” as set forth by the ’701
`
`Patent. Nothing in the “summary of the invention” portion of the appellant’s appeal
`
`brief modified the definition of the term “mobile device.”
`
`
`
`Finally, Patent Owner’s construction of the term “mobile device” seeks
`
`nothing more than “the construction that most accurately delineates the scope of the
`
`claimed invention.” PPC Broadband, Inc., 815 F.3d 734 at 740-42. Petitioner’s
`
`contention—that the claims should be broadly construed to encompass any
`
`“movable device capable of receiving and
`
`transmitting radio signals”—
`
`accomplishes no such feat since it is without any actual evidentiary support and
`
`directly contradicted by the ’701 Patent. Accordingly, the Board should avoid
`
`Petitioner’s error, especially where only one party has provided substantial evidence
`
`that consistently and fully assesses the term “mobile device” that is “most
`
`                                                            
`7 See Reply at 7-8.
`
`7
`
`

`

`accurately” consistent with the specification of the ’701 Patent. PPC Broadband,
`
`815 F.3d at 740-742. See Philips v. A.W.H. Corp., 415 F.3d 1303, 1313 (Fed. Cir.
`
`2005) (“the person of skill in the art is deemed to read the claim term not only in the
`
`context of the particular claim in which the disputed term appears, but in the context
`
`of the entire patent, including the specification”).
`
`
`
`
`
`B.
`
`“Automotive Vehicle”
`
`Patent Owner seeks nothing more than the construction of “automotive
`
`vehicle” that “most accurately” delineates the scope of the claimed invention,8 which
`
`is supported by (i) the ’701 Patent specification;9 (ii) the file history of the related
`
`U.S. Patent No. 7,848,701 (the “’701 Patent”);10 and, even, (iii) Petitioner’s extrinsic
`
`evidence.
`
`
`
`In an attempt to disregard Patent Owner’s supporting intrinsic evidence,11
`
`Petitioner once again relies on incorrect legal standards—requiring statements in the
`
`intrinsic record to rise to the level of a “clear disclaimer” or “clear disavowal of
`
`claim scope” in order to inform the meaning of the disputed claim term. Reply at 9-
`
`10. As previously discussed, recent Federal Circuit precedent cautions against the
`
`                                                            
`8 “Automobile.” See POR at 16-17.
`9 See Ex. 1001, Abstract, 4:6-10.
`10 See Ex. 2107 at 51.
`11 See POR at 16-17.
`
`8
`
`

`

`same error being urged by Petitioner here. See Personalized Media Communications,
`
`952 F.3d at 1345-46; Kaken Pharmaceutical Co. v. Iancu, 952 F.3d 1346, 1353-54
`
`(Fed. Cir. Mar. 13, 2020) (Reiterating that the “prosecution history can inform the
`
`meaning of the claim language by demonstrating how the inventor understood the
`
`invention”).
`
`
`
` Additionally, Petitioner’s “permissive” language argument is premised on a
`
`mischaracterization of the ’701 Patent specification and should be rejected. See
`
`Reply at 10. For example, the ’701 Patent does not disclose that an “automotive
`
`vehicle” may travel on the roadway, as Petitioner proposes. Id. In fact, the
`
`specification explicitly provides that one example of the “other suitable conveying
`
`device” for moving the mobile base station is an “automotive vehicle traveling on
`
`the roadway.” See Ex. 1001, 4:5-9.
`
`Furthermore, Patent Owner’s proposed construction is consistent with the
`
`black-letter law that “[i]t is highly disfavored to construe terms in a way that renders
`
`them void, meaningless, or superfluous.” Wasica Finance GmbH v. Continental
`
`Automotive Sys., Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017). In stark contrast,
`
`Petitioner’s proposed construction—“a vehicle moving by means of its own
`
`power”—would render the term “automotive vehicle” of Claim 18 void,
`
`meaningless, and superfluous.
`
`9
`
`

`

`
`
`Notably, the ’701 Patent provides an example of a vehicle (“by means of
`
`rail”) while also providing an example of an “automotive vehicle” (“automotive
`
`vehicle traveling on the roadway”), as demonstrated above. Under Petitioner’s
`
`proposed construction,12 there is no longer a distinction between the claim terms
`
`“vehicle” (Claim 17) or “automotive vehicle” (Claim 18) when considering the
`
`examples set forth in the specification—namely, traveling by means of rail and an
`
`automobile—because both examples are “vehicles” and certainly move by “means
`
`of [their] own power.” 13 Even adding Gilhousen865’s airplane into this analysis—
`
`as Petitioner proposes—would further render the term “automotive vehicle”
`
`superfluous for the same reasons. Therefore, Petitioner’s proposed construction
`
`cannot be the correct construction.
`
`
`
`The Reply now seeks to make its case by baldly asserting that “non-
`
`automotive vehicles” such as “wagons, strollers, trailers, bicycles” “would satisfy
`
`Claim 17 without satisfying Claim 18.”14 However, Petitioner’s argument is
`
`misguided because it fails to account for Claim 10 of which Claim 17 depends that
`
`requires the limitation of “configured to.” As an initial matter, “wagons, strollers,
`
`                                                            
`12 Petitioner proposes that “automotive vehicle” should be interpreted as a vehicle
`that “mov[es] by means of its own power.” Reply at 8-11.
`13 The doctrine of claim differentiation provides a presumption that differently
`worded claims cover different claim scope. See Wi-LAN USA, Inc. v. Apple Inc.,
`830 F.3d 1374, 1391 (Fed. Cir. 2016).
`14 Reply at 22.
`
`10
`
`

`

`trailers, and bicycles”—alone—“do[] not move with traffic” and “do[] not move
`
`with the traffic at a rate of speed which is comparable to the traffic”, such as at the
`
`exemplary speed of 60mph set forth in the ’701 Patent. See Ex. 1001, 4:37-40.
`
`
`
`Even Petitioner’s additional “pedestrian traffic” argument15 is a non-sequitur
`
`because the ’701 Patent discloses that “slower moving traffic . . . communicate via
`
`the fixed base stations” and not via moving base stations. See Ex. 1001, 3:15-19.
`
`Therefore, slower moving traffic (even “wagon” traffic, “stroller” traffic, etc.) would
`
`be serviced by a fixed port and not any moving base station employed on a wagon,
`
`bicycle or stroller. Accordingly, “non-automotive” vehicles such as “wagons,
`
`strollers, trailers, and bicycles” do not satisfy Claim 17.
`
`
`
`Accordingly, Petitioner’s arguments (including its proposed construction)
`
`should be disregarded because they are contrary to not only established Federal
`
`Circuit precedent; but also, the intrinsic record of the ’701 Patent.
`
`III. THE REPLY CONFIRMS THAT THE PETITION DOES NOT
`SUFFICIENTLY EXPLAIN HOW TO COMBINE THE ASSERTED
`PRIOR ART REFERENCES
`
`
`
`
`Patent Owner demonstrated that Grounds 1–2 of the Petition fail to explain in
`
`sufficient detail how the prior art would be modified or combined to arrive at the
`
`claimed invention, and the Reply did not overcome these deficiencies. See POR at
`
`31-36. Critically, Petitioner makes no attempt to distinguish ActiveVideo in its
`
`                                                            
`15 Reply at 17.
`
`11
`
`

`

`Reply, let alone contend that the Petition satisfies ActiveVideo’s requirement to “to
`
`explain how specific references could be combined.” 694 F.3d at 1327-28. Instead
`
`of substantively addressing Patent Owner’s arguments, Petitioner mischaracterizes
`
`Patent Owner’s argument as one of requiring the Petitioner “to combine references
`
`like perfectly fitting puzzle pieces”16 and otherwise ignores the significant
`
`incompatibilities with its proposed combinations. See POR at 31-36. Petitioner thus
`
`confirms that no such explanation exists; and therefore has failed to meet its burden
`
`of proof.
`
`IV. THE REPLY DOES NOT CURE THE SHORTCOMINGS OF
`PETITIONER’S MOTIVATION TO COMBINE FOR GROUNDS 1-2
`
`
`
`A. Ground 1: Ito with Gardner
`
`A POSITA would not have been motivated to combine Ito with Gardner
`
`because such a combination would result in an inoperable device. See POR at 37-
`
`38. Notably, Federal Circuit precedent has emphasized that if references taken in
`
`combination would produce a “seemingly inoperative device,” such references teach
`
`away from the combination and thus cannot serve as predicates for a prima facie
`
`case of obviousness. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed.
`
`Cir. 2001).
`
`                                                            
`16 Reply at 23.
`
`12
`
`

`

`It was Petitioner’s burden to address this shortcoming in the Petition so as to
`
`sufficiently explain why a POSITA, without Petitioner’s hindsight, would have
`
`selected the specific modification assumed in the Petition. See Blackberry Corp. v.
`
`Facebook, Inc., IPR2019-01596, Paper 7, 18 (PTAB Mar. 5, 2020). However,
`
`neither the Petition nor the Reply addressed this incompatibility and, instead, only
`
`considered its unsupported assumptions “in a vacuum” by relying on the “modular
`
`nature” of Gardner’s receiver17 and the simplicity of the modification.18 See also
`
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1363 (Fed.
`
`Cir. 2017) (“Evidence suggesting reasons to combine cannot be viewed in a vacuum
`
`apart from evidence suggesting reasons not to combine.”). Accordingly, Petitioner
`
`has failed to meet its burden of proof for Ground 1.
`
`B. Ground 2: Gilhousen865 and Gilhousen390
`
`In an attempt to overcome the compatibility issues set forth in the POR,19
`
`Petitioner improperly alleges that the presumed rate of speed set forth in the POR
`
`                                                            
`17 See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327
`(Fed. Cir. 2012) (holding that conclusory statements that that a person of ordinary
`skill in the art would have known how to combine references, based on the ‘modular’
`nature of the claimed components, is insufficient and fraught with hindsight bias”).
`18 See Mintz v. Dietz and Watson, 679 F.3d 1372, 1378-79 (Fed. Cir. 2012).
`19 See POR at 38-41.
`
`13
`
`

`

`“is significantly exaggerated.”20 However, Petitioner’s contention is flawed for
`
`several reasons.
`
`First, the referenced “Cessna 152” went out of production in 1985—which is
`
`nine years before the filing date of Gilhousen865. Therefore, a POSITA would not
`
`consider
`
`the Cessna 152 as an “exemplary” airplane contemplated by
`
`Gilhousen865—as Petitioner proposes.
`
`Second, Petitioner’s contention that the Cessna 152 “was capable of far lower
`
`speeds (e.g., ‘31 knots’ ((~36 MPH)) than suggested by PO” is misleading.21 Patent
`
`Owner does not dispute that the Cessna 152 was capable of lower speeds (i.e., 31-
`
`44 knots) when the power of the Cessna 152 is OFF (i.e., no engine power)—as
`
`provided by Petitioner’s cited exhibit.22 Conveniently, Petitioner disregarded the
`
`“CONDITIONS: Power Off” at the top corner of the information manual pertaining
`
`to “stall speeds”23 from which Petitioner retrieved its speed of “31 knots”. See Ex.
`
`1037 at 69.
`
`                                                            
`20 Reply at 24.
`21 Reply at 24.
`22 A POSITA would understand that a Cessna 152 with the power off would not
`remain airborne much longer.
`23 A POSITA would also understand that “stall speeds” are not an equivalent nor a
`replacement for “cruising speeds.”
`
`14
`
`

`

`
`
`Even if a POSITA would consider a Cessna 152 as an exemplary airplane
`
`(which it would not), the power of the Cessna 152 would have to be off in order for
`
`its airspeed to be less than the maximum speed that the Gilhousen390 system can
`
`support (i.e., 50 MPH). See POR at 38-41. Notably, the information manual provides
`
`that the Cessna 152’s cruising speed is “107 knots” (~123mph)24—which is nearly
`
`2.5 times faster than the maximum speed than the Gilhousen390 system can support.
`
`Accordingly, Petitioner has failed to meet its burden of proof for Ground 2.
`
`V.
`
`
`PETITIONER HAS FAILED TO DEMONSTRATE THAT ANY
`GROUND RENDERS THE CHALLENGED CLAIMS INVALID
`A. Ground 1
`1.
`Ito Fails to Disclose “A Mobile Device”
`As an initial matter, Petitioner’s attempt to limit Patent Owner’s POR
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`description of Ito’s portable device (PSS)—comparing Ito’s PSS to a cordless phone
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`system—to solely Ito’s alternate embodiment is unavailing.25 Petitioner’s contention
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`disregards Patent Owner’s description26 and Mr. Lanning’s description27 of Ito’s
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`portable device (PSS), which relates to all of Ito’s disclosed embodiments.
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`                                                            
`24 See Ex. 1037 at 4. See also Ex. 1037 at 53.
`25 See Reply at 12-13.
`26 See POR at 41-43.
`27 See Ex. 2100, ¶79-81.
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`15
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`Contrary to Petitioner’s assertion, Patent Owner does not “overlook key
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`teachings in Ito.” Reply at 13. In contrast, Petitioner’s reliance on cherry-picked
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`disclosures from Ito’s first embodiment—in an attempt to cure Ito’s failure to
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`disclose the “mobile device” limitation required by Claim 10—is unavailing. See
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`Reply at 13-14. Specifically, Petitioner purports that “Ito discloses that ‘radio
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`transmission signals coming from said power amplifier 16 are forwarded to the
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`antenna 18 [of the PSS (‘mobile device’)], which sends them out to a
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`corresponding base station BSS”;28 however, this cherry-picked disclosure ignores
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`the overall disclosure of the first embodiment—including the order of operation
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`between Ito’s BSS, MSS and PSS. When viewed in the proper context, this cited
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`communication link is, at best, an indirect communication link via Ito’s mobile base
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`device (MSS). This statement is in direct contradiction to what is shown in the
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`drawings (Figures 1, 2, and 3) as shown below. In contrast, Figures 1, 2, and 3
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`demonstrate that this disclosure—from Ito’s first embodiment—is an indirect
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`communication link via Ito’s mobile base device (MSS).
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`As Ito explains, Figure 1 “shows a schematic view of a first embodiment of
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`the mobile radio communication system of the invention.” Notably, Figure 1 labels
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`the signals between Ito’s BSS and Ito’s MSS as “fR1” and “Ft1” (purple); and, in
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`                                                            
`28 Reply at 12.
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`16
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`contrast, labels the signals between Ito’s MSS to Ito’s PSS as “fRA” and “FtA” (red),
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`as demonstrated below:
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`Ex. 1005, Figure 1.
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`
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`Figure 1 does not disclose any direct communication between Ito’s BSS and
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`Ito’s PSS. This is further supported by Figure 2 which “is a block diagram showing
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`17
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`the configuration of a portable device of the [first] embodiment of FIG. 1”,29 in
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`which the signals transmitted by and/or received at antenna (18) of Ito’s PSS are
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`labeled as “fRA” and “fTA”—which are identified in Figure 1 as the signals between
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`Ito’s MSS and Ito’s PSS—as demonstrated below:
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`Ex. 1005, Figure 2.
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`
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`Figure 2 also does not disclose any direct communication between Ito’s BSS
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`and Ito’s PSS. This is also further supported by Figure 3 which “is a block diagram
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`showing the configuration of a mobile base device of the [first] embodiment of
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`                                                            
`29 Ex. 1005, 5:8-9.
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`18
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`FIG. 1”,30 in which (i) the signals transmitted by and/or received at antenna (58) of
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`Ito’s MSS are labeled as “fR1” and “fT1”—which are identified in Figure 1 as the
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`signals between Ito’s BSS and Ito’s MSS—and (ii) the signals transmitted by and/or
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`received at antenna (88) of Ito’s MSS are labeled as “fRA” and “fTA”—which are
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`identified in Figure 1 as the signals between Ito’s MSS and Ito’s PSS—as
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`demonstrated below:
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`
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`                                                            
`30 Ex. 1005, 5:10-11.
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`19
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`Ex. 1005, Figure 3.
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`Figure 3 also does not disclose any direct communication between Ito’s BSS
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`and Ito’s PSS. Accordingly, Petitioner’s cherry-picked disclosure from Ito’s first
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`embodiment is, at best, an indirect communication link via Ito’s mobile base device
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`(MSS) when viewed in the proper context.
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`Recognizing these shortcomings of Ito, Petitioner attempts to rely on the
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`unsupported and conclusory testimony of Mr. Denning. See Reply at 14 (citing Ex.
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`1034, ¶ 38) (“Even if Ito does not explicitly disclose that its PSS can directly
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`communicate and register with a cellular network, a POSA would have recognized
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`Ito as implying this functionality.”). But Petitioner cannot salvage its obviousness
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`argument by supplementing Ito with unsupported and conclusory expert testimony.31
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`See Roxane Labs., Inc. v. Novartis AG, IPR2016-01461, slip op. at 10 (PTAB Feb.
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`13, 2017) (Paper 9). (“Where, as here, the conclusory testimony is the sole basis for
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`establishing that a claim limitation is taught or suggested by the prior art, we find it
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`insufficient to establish a reasonable likelihood of prevailing regarding that claim.”).
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`As the Federal Circuit explained in Scripps Clinic & Research Foundation v.
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`Genentech, Inc., “[t]he role of extrinsic evidence is to educate the decision-maker to
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`                                                            
`31 Petitioner is inviting legal error because the Patent Office cannot rely on “general
`conclusions” as a “replacement for documentary evidence for core factual findings
`in a determination of patentability.” K/S HIMPP v. Hear-Wear Techs., LLC, 751
`F.3d 1362, 1366 (Fed. Cir. 2014).
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`20
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`what the reference meant to persons of ordinary skill in the field of the invention,
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`not to fill gaps in the reference.” 927 F.2d 1565, 1576 (Fed. Cir. 1991). Petitioner’s
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`flawed reliance on Ito assumes too much—without any evidentiary support—and
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`does not satisfy Petitioner’s burden under §316(e).
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`Accordingly, the Reply does not cure Ito’s failure to disclose the “mobile
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`device” limitation required by at least Claim 10 of the Challenged Claims.
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`Gardner Fails to Disclose “A Controller Configured . . . To
`2.
`Select a Best Signal”
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`
` Although Petitioner did not submit any express con