Trials@uspto.gov
`571-272-7822
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`Paper 6
`Date: December 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`____________
`
`IPR2019-01104
`Patent 8,463,177 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`
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`
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`
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`
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`
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`571-272-7822
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`
`
`
`
`
`Paper 6
`Date: December 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`____________
`
`IPR2019-01104
`Patent 8,463,177 B2
`____________
`
`
`Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
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`
`
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`
`
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`IPR2019-01104
`Patent 8,463,177 B2
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`I.
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`INTRODUCTION
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`Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition for
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`an inter partes review of claims 16, 21–28, 30, 31, 47–49, and 51–53 of U.S.
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`Patent No. 8,463,177 B2 (Ex. 1001, “the ’177 patent”). Paper 2 (“Pet.”).
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`Carucel Investments, L.P. (“Patent Owner”) did not file a Preliminary
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`Response.
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`Under 37 C.F.R. § 42.4(a), we have authority to determine whether to
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`institute an inter partes review. Upon considering the Petition and the
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`evidence of record, we determine that Petitioner has demonstrated a
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`reasonable likelihood of prevailing in showing the unpatentability of at least
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`one of the challenged claims. For the reasons described below, we institute
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`an inter partes review of claims 16, 21–28, 30, 31, 47–49, and 51–53 of the
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`’177 patent with respect to all grounds in the Petition.
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`
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`II. BACKGROUND
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`A. Related Proceedings
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`According to Petitioner and Patent Owner, the ’177 patent is involved
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`in district court litigations:
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`(1) Carucel Investments LP v. Fiat Chrysler Automobiles US LLC et
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`al., Case No. 3-18-cv-03331 (N.D. Tex., filed Dec. 18, 2018),
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`(2) Carucel Investments LP v. General Motors Company, Case No. 3-
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`18-cv-03332 (N.D. Tex., filed Dec. 18, 2018),
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`(3) Carucel Investments LP v. Volkswagen Group of America Inc.,
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`Case No. 3-18-cv-03333 (N.D. Tex., filed Dec. 18, 2018), and
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`(4) Carucel Investments LP v. Mercedes-Benz USA LLC et al., Case
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`No. 3-18-cv-03334 (N.D. Tex., filed Dec. 18, 2018). Pet. 3; Paper 3, 1.
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`Petitioner and Patent Owner also state that the ’177 patent is related to
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`certain patents involved in inter partes reviews:
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`(1) U.S. Patent No. 7,221,904: IPR2019-01298, -01101, -01573,
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`‑01635;
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`(2) U.S. Patent No. 7,848,701: IPR2019-01102, -01442;
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`(3) U.S. Patent No. 7,979,023: IPR2019-01079, -01103, -01404; and
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`(4) U.S. Patent No. 8,718,543: IPR2019-01105, -01106, -01441.
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`See Pet. 3; Paper 3, 1.
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`B. Real Parties-in-Interest
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`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
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`Owner identifies itself as the real party in interest. Paper 3, 1.
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`C. The ʼ177 Patent (Ex. 1001)
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`The title of the ʼ177 patent is “Mobile Communication System with
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`Moving Base Station.” Ex. 1001, code (54). The ’177 patent relates to
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`cellular telephone systems and states that a “problem with existing mobile
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`telephone systems is the considerable time required in handoffs,” which is
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`the process by which a mobile unit is transferred from one cell site to
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`another as it moves through a network. Id. at 1:39–47, 1:58–59. According
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`to the ’177 patent, in urban areas, the number of cells is increased and cell
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`size is decreased to accommodate more users. Id. at 1:59–2:2. The ’177
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`patent states that a drawback of reducing cell size is that mobile units cross
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`cell boundaries more often, requiring more handoffs. Id. at 2:2–6.
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`To address this purported problem, the ’177 patent proposes a mobile
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`communication system that employs moving base stations, which move in
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`the direction of traffic along a roadway. Id. at 2:65–3:6. The moving base
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`stations are interposed between mobile units and fixed base stations. Id.
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`The ’177 patent states that, “because of movement of the base station in the
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`same direction as the traveling mobile unit, the number of handoffs is greatly
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`reduced.” Id. at 5:17–19.
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`D. Illustrative Claim
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`As mentioned above, the challenged claims are claims 16, 21–28, 30,
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`31, 47–49, and 51–53. Claims 16 and 47 are the independent claims among
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`the challenged claims, and are reproduced below:
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`16. A method comprising:
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`receiving fixed port signals from a fixed port through the
`plurality of spatially separated antennas moving relative to
`Earth; and
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`transmitting, to a mobile device, radio frequency signals
`corresponding to the received fixed port signals.
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`Ex. 1001, 12:18–23.
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`47. A method comprising:
`
`receiving a first radio frequency signal through a
`plurality of spatially separated antennas moving relative to
`Earth and
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`transmitting, to a mobile device moving relative to Earth,
`a second radio frequency signal corresponding to the received
`first radio signal.
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`Ex. 1001, 14:9–15.
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`
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`E. References
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`Petitioner relies on the following references:
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`1. U.S. Patent No. 5,276,686, issued January 4, 1994 (Ex. 1005,
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`“Ito”).
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`2. U.S. Patent No. 5,504,786, issued April 2, 1996 (Ex. 1006,
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`“Gardner”).
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`3. U.S. Patent No. 5,109,390, issued April 28, 1992 (Ex. 1007,
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`“Gilhousen ’390”).
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`4. U.S. Patent No. 4,001,692, issued January 4, 1997 (Ex. 1008,
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`“Fenwick”).
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`5. U.S. Patent No. 5,559,865, issued September 24, 1996 (Ex. 1009,
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`“Gilhousen ’865”).
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`Petitioner also relies on testimony from Scott A. Denning (Ex. 1003,
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`“Denning Decl.”).
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`F. Grounds Asserted
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`Petitioner challenges the patentability of the ʼ177 patent claims on the
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`following grounds:
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`Claim(s) Challenged
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`16, 21–26, 30,
`31, 47–49, 51–53
`27
`28
`16, 21–27, 30,
`31, 47–49, 51–53
`28
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`Pet. 7.
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`35 U.S.C. §
`103
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`References
`Ito, Gardner
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`103
`103
`103
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`103
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`Ito, Gardner, Gilhousen ’390
`Ito, Gardner, Fenwick
`Gilhousen ’865, Gilhousen ’390
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`Gilhousen ’865, Gilhousen
`’390, Fenwick
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`G. Overview of the Asserted Prior Art
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`1. Overview of Ito (Ex. 1005)
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`Ito is a patent titled “Mobile Radio Communication System Having
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`Mobile Base and Portable Devices as a Mobile Station,” and issued on
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`January 4, 1994. Ex. 1005, codes (54), (45). Petitioner contends Ito is prior
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`art under 35 U.S.C. § 102(b). Pet. 5.
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`According to Ito, cellular mobile radio telephone systems have mobile
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`stations that are connected by a radio channel to a base station for the radio
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`communication zone where it is currently located. Ex. 1005, 1:22–24. The
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`mobile stations are further connected to a wire telephone network by way of
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`the base station and a control station. Id. at 1:24–26. The automobile
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`telephone main unit and the handset assembly are connected by a signal
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`cord, and the cradle and the handset are connected by a curled cord. Id.
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`at 1:51–54. Ito explains that “[w]ith such an arrangement, the curled cord
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`can constitute[] an annoying obstacle when the driver drives and speaks into
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`the telephone transmitter simultaneously. Moreover, the handset cannot be
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`moved away beyond a limit posed by the curled wire . . . .” Id. at 1:55–59.
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`To address these issues, Ito describes a mobile radio communication
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`system that wirelessly connects a mobile station, or a mobile base device,
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`and a portable device by a radio channel, in order to eliminate the necessity
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`of wiring the mobile base device and portable telephone device together and
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`increasing the maneuverability of the telephone handset. Id. at 2:5–12. This
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`is illustrated by Figure 6 of Ito, reproduced below.
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`Figure 6 of Ito depicts a mobile radio communication system.
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`In Figure 6 of Ito, mobile base device MSS is wirelessly connected
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`simultaneously with two portable devices PSS1 and PSS2. Ex. 1005, 12:52–
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`56. Base station BSS and mobile base device MSS communicate with each
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`other by way of radio frequencies fT 1 and fR1.1 Id. at 12:57–63. Mobile base
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`device MSS and portable devices PSS1 and PSS2 communicate with each
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`other by way of radio frequencies fT A and fRA. Id.
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`
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`As described by Ito, Figure 3 (not shown) illustrates mobile base
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`device MSS, which has two transmitter-receiver units. Ex. 1005, 7:9–12.
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`The first transmitter-receiver unit is used for radio communication with base
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`station BSS by way of a first radio channel. Id. at 7:12–17. The second
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`transmitter-receiver unit is used for radio communication with its portable
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`devices PSS by way of a second radio channel. Id.
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`1
`As Petitioner points out (Pet. 16 n.5), Figure 6 of Ito mislabels fT 1 as
`fr1. See Ex. 1005, 12:57–63.
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`2. Overview of Gardner (Ex. 1006)
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`Gardner is a patent titled “Open Loop Phase Estimation Methods and
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`Apparatus for Coherent Combining of Signals Using Spatially Diverse
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`Antennas in Mobile Channels.” Ex. 1006, code (54). Petitioner asserts that,
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`because Gardner was filed on October 5, 1993, which is before the earliest
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`effective filing date of the ’177 patent, it is prior art under 35 U.S.C.
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`§ 102(e). Pet. 5.
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`Gardner describes a receiver for use in cellular communications.
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`Ex. 1006, 2:17–19. The receiver is configured to receive spatially diverse
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`signals and to properly align and combine the received signals. Id. at 1:65–
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`2:4. The receiver includes two spatially diverse antennas. Id. at 2:23–24.
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`After demodulation and conversion, the received signals are processed by
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`the receiver for alignment and combining. Id. at 2:64–3:10. Specifically,
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`after the signals are converted to digital form, phase difference detection is
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`performed in order to detect “a good estimate of the actual phase difference
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`between the two signals.” Id. at 2:64–67. Then, the phase difference is used
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`to phase align the two digitized signal vectors by shifting the phase of the
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`vector. Id. at 3:1–7. Once aligned, the signals can be combined. Id. at 3:7–
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`10.
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`3. Overview of Gilhousen ’865 (Ex. 1009)
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`Gilhousen ’865 is a patent titled “Airborne Radiotelephone
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`Communication System.” Ex. 1009, code (54). Petitioner asserts that,
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`because Gilhousen ’865 was filed on July 8, 1994, which is before the
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`earliest effective filing date of the ’177 patent, it is prior art under 35 U.S.C.
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`§ 102(e). Pet. 6.
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`Gilhousen ’865 is directed to an airborne communication system that
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`allows radiotelephones on a plane to communicate with a ground-based
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`cellular system. Ex. 1009, code (57). Figure 1 of Gilhousen ’865 is
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`reproduced below.
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`
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`Figure 1 of Gilhousen ’865, reproduced above, depicts an airborne
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`communication system having ground-based subsystem 105 and airborne-
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`based subsystem 125. Ex. 1009, 2:9–12. As shown in Figure 1, ground-
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`based subsystem 105 has base station 120 coupled to antenna 150 and to
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`mobile switching center 115, which in turn is coupled to public switched
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`telephone network (PSTN) 110. Id. at 2:21–33.
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`Figure 2 of Gilhousen ’865 is reproduced below.
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`Figure 2 of Gilhousen ’865, reproduced above, depicts an airborne-based
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`subsystem having radiotelephones 205, signal repeater 210, and antenna 215
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`mounted on the outside of the aircraft. Ex. 1009, 2:45–52. Repeater 210
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`receives signals from radiotelephones 205 within the aircraft and relays them
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`to antenna 215, which relays the signals to the base station on the ground.
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`Id. at 2:53–57. Gilhousen ’865 discloses that signal repeater 210 may be
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`replaced by an airborne base station that “has the same functionality of its
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`ground-based counterpart but on a much smaller scale since it does not have
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`to handle the thousands of radiotelephones of the ground-based station.” Id.
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`at 3:3–10.
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`4. Overview of Gilhousen ’390 (Ex. 1007)
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`Gilhousen ’390 is a patent titled “Diversity Receiver in a CDMA
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`Cellular Telephone System.” Ex. 1007, code (54). Petitioner asserts that,
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`because Gilhousen ’390 issued on April 28, 1992, more than three years
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`before the earliest effective filing date of the ’177 patent, it is prior art under
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`35 U.S.C. § 102(b). Pet. 6.
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`Gilhousen ’390 discloses techniques for receiving the strongest
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`signals from multiple sites in a cellular system. Ex. 1007, 4:27–34. One
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`technique disclosed in Gilhousen ’390 involves using two receivers to
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`demodulate signals on the two strongest paths and using information from
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`both signals in a “diversity combining operation,” which results in improved
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`resistance to multipath fading. Id. at 8:11–21. Gilhousen ’390 also discloses
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`a mobile unit having multiple digital data receivers to enable diversity
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`reception. Id. at 12:35–40, Fig. 2.
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`5. Overview of Fenwick (Ex. 1008)
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`Fenwick is a patent titled “Time Diversity Data Transmission
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`Apparatus.” Ex. 1008, code (54). Petitioner asserts that, because Fenwick
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`issued on January 4, 1997, more than 18 years before the earliest effective
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`filing date of the ’177 patent, it is prior art under 35 U.S.C. § 102(b). Pet. 6.
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`Fenwick discloses a time diversity data transmission apparatus.
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`Fenwick explains that “[s]ignal fading, impulsive noise and interference are
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`deleterious effects frequently encountered in many transmission circuits”
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`and that where “these effects are present, the quality of transmission is
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`deteriorated.” Ex. 1008, 1:14–18. According to Fenwick, its data
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`transmission apparatus reduces these deleterious effects through “time
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`diversity.” Id. at 1:32–40. Fenwick explains that time diversity means
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`“transmission of data two or more times with a time delay between each
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`transmission.” Id. at 1:37–40. Although previous systems employed
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`synchronous time diversity, Fenwick proposes an asynchronous system as an
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`improvement to the prior art that “permits many different transmission data
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`rates to be utilized without requiring changes in operating frequency.” Id. at
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`2:5–8. A receiver in Fenwick’s system receives the multiple time-delayed
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`data streams, which, “after removal of time diversity, are algebraically added
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`to form a sum data stream.” Id. at 2:25–29.
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`
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`III. ANALYSIS
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`A. Level of Ordinary Skill in the Art
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`Petitioner asserts that a person of ordinary skill in the art would have
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`had “a B.S. degree in Computer Science, Electrical Engineering, or an
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`equivalent field, as well as at least 2–3 years of academic or industry
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`experience in mobile wireless communications, or comparable industry
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`experience.” Pet. 13 (citing Denning Decl. ¶¶ 29–30).
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`We regard Petitioner’s definition as consistent with the prior art
`
`before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
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`(prior art itself may reflect an appropriate level of skill). Thus, for the
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`purpose of our decision, we adopt Petitioner’s proposal.
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`B. Claim Construction
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`In an inter partes review based on a petition filed on or after
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`November 13, 2018,2 the claims are construed
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`using the same claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C.
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`2
`See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018).
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`[§] 282(b), including construing the claim in accordance with
`the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.
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`37 C.F.R. § 42.100(b) (Nov. 2018); see Phillips v. AWH Corp., 415 F.3d
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`1303, 1312–13 (Fed. Cir. 2005). Any special definitions for claim terms
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`must be set forth in the specification with reasonable clarity, deliberateness,
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`and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Petitioner asserts that none of the claim terms needs to be construed to
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`resolve issues in dispute in the proceeding. Pet. 14. We determine that no
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`claim term requires express construction for purposes of this Decision. See
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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`1999) (“[O]nly those terms need be construed that are in controversy, and
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`only to the extent necessary to resolve the controversy.”); Nidec Motor
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`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
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`Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).
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`C. Obviousness over Ito and Gardner
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`Petitioner asserts that claims 16, 21–26, 30, 31, 47–49, and 51–53 are
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`unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
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`of Ito and Gardner. Pet. 23–47.
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`1. Analysis of Asserted Obviousness of Claims 16, 21–26, 30,
`31, 47–49, and 51–53
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the subject matter sought to be patented and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved based on underlying factual
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`determinations including: (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level
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`of ordinary skill in the art; and (4) when in the record, objective evidence of
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`nonobviousness. Graham, 383 U.S. at 17–18. In that regard, an
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`obviousness analysis “need not seek out precise teachings directed to the
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`specific subject matter of the challenged claim, for a court can take account
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`of the inferences and creative steps that a person of ordinary skill in the art
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`would employ.” KSR, 550 U.S. at 418.
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`a) Petitioner’s Arguments
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`In support of Petitioner’s contention that claims 16, 21–26, 30, 31,
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`47–49, and 51–53 would have been obvious over the combined teachings of
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`Ito and Gardner, Petitioner provides an element-by-element analysis
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`showing where each element of the challenged claims is in Ito or Gardner.
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`Pet. 23–47. Petitioner supports its analysis with testimony from Mr.
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`Denning. See Denning Decl. ¶¶ 102–164. We have reviewed the
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`information provided by Petitioner, including the relevant portions of the
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`supporting Denning Declaration (Ex. 1003). Based on the current record,
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`for reasons set forth below, we are persuaded that Petitioner has
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`demonstrated a reasonable likelihood of prevailing on this obviousness
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`challenge.
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`(i) Independent Claim 16
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`As mentioned above, the preamble of claim 16 recites a “method
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`comprising.” Petitioner asserts that, to the extent the preamble is limiting,
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`Ito’s mobile base device MSS, as modified by the teachings of Gardner,
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`performs the method steps recited in claim 16. Pet. 26 (citing Ex. 1005,
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`12:52).
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`Claim 16 recites that the method comprises “receiving fixed port
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`signals from a fixed port through the plurality of spatially separated antennas
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`moving relative to Earth.” Petitioner asserts that this limitation is taught, in
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`part, by Ito’s disclosure that its “mobile base device MSS facilitates
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`communication between a stationary base station BSS2 (fixed port) and a
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`portable device PSS located within the vehicle” and that the MSS
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`“‘receive[s] a signal from the base station BSS2’ (receiving [a] fixed port
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`signal[] from a fixed port) via the first transmitter-receiver 50 and
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`‘forward[s] it to the portable device PSS2’ via the second transmitter-
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`receiver 80.” Pet. 27–28 (citing Ex. 1005, 5:62–65, 13:15–18). Petitioner
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`furthers asserts that, because the MSS is located in an automobile, “antenna
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`58 is ‘moving relative to earth.’” Id. at 29. Petitioner also asserts that
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`Gardner discloses “receiving fixed port signals . . . through the plurality of
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`spatially separated antennas,” as recited in claim 16, because “Gardner
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`explains that, during operation, multiple ‘RF signals [are] received on the
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`two antennas’ in order to improve receiver performance and combat fading
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`issues.” Id. (quoting Ex. 1006, 2:24–30, 1:15–24).
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`Claim 16 recites that the method comprises “transmitting, to a mobile
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`device, radio frequency signals corresponding to the received fixed port
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`signals.” Petitioner asserts that this limitation is taught by Ito’s disclosure
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`that “mobile base device MSS facilitates communication between a base
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`station BSS2 (fixed port) and a portable device PSS (mobile device) located
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`within a vehicle.” Pet. 30. Petitioner explains that Ito’s mobile base device
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`Patent 8,463,177 B2
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`MSS “receive[s] a signal from the base station BSS2 and forward[s] it to
`
`the portable device PSS2” and that a person of ordinary skill in that art
`
`would have understood that “the signal transmitted to the portable device
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`PSS corresponds to those received from the base station BSS2” and “this
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`forwarding process is performed for multiple signals.” Id. at 31 (citing
`
`Ex.1005, 13:15–18, 6:41–46, 8:62–64; Ex. 1003 ¶ 116).
`
`Even if Petitioner’s two prior art references (Ito and Gardner) disclose
`
`all of the limitations in claim 16 when combined, there must be evidence to
`
`explain why a person of ordinary skill in the art would have combined the
`
`references to arrive at the claimed invention. Kinetic Concepts, Inc. v. Smith
`
`& Nephew, Inc., 688 F.3d 1342, 1366–67 (Fed. Cir. 2012) (citing
`
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008)
`
`(holding that post-KSR “some kind of motivation must be shown from some
`
`source, so that the [trier of fact] can understand why a person of ordinary
`
`skill would have thought of either combining two or more references or
`
`modifying one to achieve the patented [invention]”)). A precise teaching
`
`directed to the specific subject matter of a challenged claim is not necessary
`
`to establish obviousness. KSR, 550 U.S. at 418. Rather, “any need or
`
`problem known in the field of endeavor at the time of invention and
`
`addressed by the patent can provide a reason for combining the elements in
`
`the manner claimed.” Id. at 420. Accordingly, Petitioner must show that “a
`
`skilled artisan would have been motivated to combine the teachings of the
`
`prior art references to achieve the claimed invention, and that the skilled
`
`artisan would have had a reasonable expectation of success in doing so.” In
`
`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
`
`(internal quotations and citations omitted).
`
`
`
`16
`
`
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`IPR2019-01104
`Patent 8,463,177 B2
`
`
`Here, Petitioner provides a rationale for combining Ito and Gardner.
`
`See, e.g., Pet. 23–25. Petitioner asserts that Ito’s first receiver-transmitter 50
`
`(base station side) and second receiver-transmitter 80 (portable device side)
`
`each include only a single antenna, and, thus, are not configured to receive
`
`spatially diverse signals. Id. at 23. According to Petitioner, Ito also
`
`discloses that signals transmitted to a moving device often have higher error
`
`rates due to “high speed fading phenomena” but does not specifically
`
`describe how such errors can be reduced. Id. (citing Ex. 1005, 16:49–61;
`
`Denning Decl. ¶ 103). Petitioner explains that a person of ordinary skill in
`
`the art “would have looked to the prior art, such as Gardner, for determining
`
`how to combat the deleterious effects of fading on signals transmitted to a
`
`moving device.” Id. at 24 (citing Denning Decl. ¶ 103). Petitioner also
`
`explains that “Gardner emphasizes the importance of employing spatially
`
`diverse antennas in the receiver to reduce the effects of fading on received
`
`signals” and contends that, based on the teachings of Gardner, a person of
`
`ordinary skill in the art “would have been motivated to modify Ito so as to
`
`incorporate spatially diverse antennas.” Id. (citing Ex. 1006, 1:15–24;
`
`Denning Decl. ¶ 105).
`
`Petitioner further asserts that a person of ordinary skill in the art
`
`“would have recognized Gardner’s spatially diverse receiver to be modular”
`
`and that “[m]odifying Ito with Gardner would have required minimal
`
`modifications.” Pet. 24 (citing Denning Decl. ¶ 105). According to
`
`Petitioner, a person of ordinary skill in the art “could have combined the
`
`system of Ito with the teachings of Gardner by known methods, and the
`
`results of the combination would have been predictable (e.g., by replacing
`
`Ito’s antenna with Gardner’s spatially separated antennas),” and “the
`
`
`
`17
`
`
`
`IPR2019-01104
`Patent 8,463,177 B2
`
`proposed combination of Ito and Gardner would involve nothing more than
`
`incorporating a well-known concept (i.e., Gardner’s signal diversity) into a
`
`well-known system (i.e., Ito’s radio communication system).” Id. at 25
`
`(citing Denning Decl. ¶ 107).
`
`
`
`
`
`b) Patent Owner’s Arguments
`
`Patent Owner did not file a Preliminary Response.
`
`c) Threshold Determination for the Challenged Claims
`
`Based on the present record, we find that Petitioner has shown a
`
`reasonable likelihood of prevailing with respect to its challenge of claim 16
`
`as unpatentable as being obvious over Ito and Gardner, and thus, Petitioner’s
`
`evidence is sufficient for the purpose of instituting inter partes review.
`
`Petitioner also provides a detailed analysis explaining where the
`
`combination of Ito and Gardner teaches or suggests the limitations in claims
`
`21–26, 30, and 31, which depend from independent claim 16, and claims
`
`47–49, and 51–53. Pet. 32–47. Based on our review of Petitioner’s
`
`arguments and evidence concerning claims 16, 21–26, 30, 31, 47–49, and
`
`51–53, we have determined that Petitioner has shown a reasonable
`
`likelihood of proving that the challenged claims are unpatentable. See Pet.
`
`23–47 (providing detailed explanation and supporting citations to the prior
`
`art and testimony of Mr. Denning).
`
`
`
`
`
`18
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`
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`IPR2019-01104
`Patent 8,463,177 B2
`
`
`D. Remaining Challenges––Obviousness over Ito, Gardner, Fenwick,
`Gilhousen ’390, and Gilhousen ’865
`Petitioner asserts that: (1) claim 27 is unpatentable under 35 U.S.C.
`
`
`
`§ 103 as obvious over the combined teachings of Ito, Gardner, and
`
`Gilhousen ’390; (2) claim 28 is unpatentable under 35 U.S.C. § 103 as
`
`obvious over the combined teachings of Ito and Gardner, and Fenwick;
`
`(3) claims 16, 21–27, 30, 31, 47–49, and 51–53 are unpatentable under 35
`
`U.S.C. § 103 as obvious over the combined teachings of Gilhousen ’865 and
`
`Gilhousen ’390; and (4) claim 28 is unpatentable under 35 U.S.C. § 103 as
`
`obvious over the combined teachings of Gilhousen ’865, Gilhousen ’390,
`
`and Fenwick. Pet. 48–78. Having determined that Petitioner’s challenge of
`
`claims 16, 21–26. 30, 31, and 47–49 over Ito and Gardner meets the
`
`threshold for review, we institute a review as to all of challenged claims and
`
`grounds contained in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct.
`
`1348, 1359–60 (2018) (holding that a decision to institute under 35 U.S.C.
`
`§ 314 may not institute on fewer than all claims challenged in the petition);
`
`Trial Practice Guide Update 31 (July 2019) (“The Board will not institute on
`
`fewer than all claims or all challenges in a petition.”), available at
`
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`
`update3.pdf.
`
`
`
`IV. CONCLUSION
`
`For the reasons expressed above, we determine that Petitioner has
`
`established the requisite reasonable likelihood of prevailing as to at least one
`
`challenged claim of the ’177 patent. Because Petitioner has satisfied the
`
`threshold for institution as to one claim, we institute inter partes review on
`
`
`
`19
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`
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`IPR2019-01104
`Patent 8,463,177 B2
`
`all claims and all grounds raised in the Petition. See SAS, 138 S. Ct. at
`
`1359–60; Trial Practice Guide Update 31.
`
`Our factual findings and determinations at this stage of the proceeding
`
`are preliminary and based on the evidentiary record developed thus far. This
`
`is not a final decision as to the patentability of claims for which inter partes
`
`review is instituted. Our final decision will be based on the record as fully
`
`developed during trial.
`
`
`
`V. ORDER
`
`It is, therefore,
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 16, 21–28, 30, 31, 47–49, and 51–53 of the ʼ177 patent
`
`with respect to all grounds in the Petition is hereby instituted; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`
`commencing on the entry date of this Decision.
`
`
`
`20
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`
`
`IPR2019-01104
`Patent 8,463,177 B2
`
`PETITIONER:
`
`Ryan Richardson
`rrichardson-ptab@sternekessler.com
`
`Michael Specht
`mspecht-ptab@sternekessler.com
`
`Lauren Schleh
`lschleh-ptab@sternekessler.com
`
`Daniel Yonan
`dyonan-ptab@sternekessler.com
`
`
`
`PATENT OWNER:
`
`Charles Gavrilovich
`chuck@gdllawfirm.com
`
`Sanford E. Warren, Jr.
`swarren@wriplaw.com
`
`R. Scott Rhoades
`srhoades@wriplaw.com
`
`
`
`
`
`
`
`
`21
`
`
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