Trials@uspto.gov
`571-272-7822
`
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`
`
`Paper 6
`Date: December 30, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, INC.,
`Petitioner,
`
`v.
`
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`____________
`
`IPR2019-01440
`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
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 6
`Date: December 30, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, INC.,
`Petitioner,
`
`v.
`
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`____________
`
`IPR2019-01440
`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
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01440
`Patent 8,463,177 B2
`
`
`I.
`
`INTRODUCTION
`Mercedes-Benz USA, LLC (“Petitioner”) filed a Petition for an inter
`partes review of claims 16, 21–28, 30, 31, 47–49, and 51–53 of U.S. Patent
`No. 8,463,177 B2 (Ex. 1001, “the ’177 patent”). Paper 2 (“Pet.”). Carucel
`Investments, L.P. (“Patent Owner”) did not file a Preliminary Response.
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether to
`institute an inter partes review. Upon considering the Petition and the
`evidence of record, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing in showing the unpatentability of at least
`one of the challenged claims. For the reasons described below, we institute
`an inter partes review of claims 16, 21–28, 30, 31, 47–49, and 51–53 of the
`’177 patent with respect to all grounds in the Petition.
`
`
`II. BACKGROUND
`
`A. Related Proceedings
`According to Petitioner and Patent Owner, the ’177 patent is involved
`in the following pending district court litigations:
`(1) Carucel Investments LP v. Fiat Chrysler Automobiles US LLC et
`al., Case No. 3-18-cv-03331 (N.D. Tex., filed Dec. 18, 2018),
`(2) Carucel Investments LP v. General Motors Company, Case No. 3-
`18-cv-03332 (N.D. Tex., filed Dec. 18, 2018),
`(3) Carucel Investments LP v. Volkswagen Group of America Inc.,
`Case No. 3-18-cv-03333 (N.D. Tex., filed Dec. 18, 2018), and
`(4) Carucel Investments LP v. Mercedes-Benz USA LLC et al., Case
`No. 3-18-cv-03334 (N.D. Tex., filed Dec. 18, 2018). Pet. 72–73; Paper 5, 1.
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`Petitioner and Patent Owner state that the ’177 patent is also involved
`in IPR2019-01104. Pet. 72; Paper 5, 1. Petitioner and Patent Owner also
`state that the ’177 patent is related to certain patents involved in inter partes
`reviews:
`(1) U.S. Patent No. 7,221,904: IPR2019-01298, -01101, -01573,
`‑01635;
`(2) U.S. Patent No. 7,848,701: IPR2019-01102, -01442;
`(3) U.S. Patent No. 7,979,023: IPR2019-01079, -01103, -01404; and
`(4) U.S. Patent No. 8,718,543: IPR2019-01105, -01106, -01441.
`See Pet. 71–72; Paper 5, 1–2.
`
`B. Real Parties-in-Interest
`Petitioner identifies Daimler AG, Daimler North America
`Corporation, Mercedes-Benz U.S. International, Inc., and itself as the real
`parties-in-interest. Pet. 71. Patent Owner identifies itself as the real party-
`in-interest. Paper 5, 1.
`
`C. The ʼ177 Patent (Ex. 1001)
`The title of the ʼ177 patent is “Mobile Communication System with
`Moving Base Station.” Ex. 1001, code (54). The ’177 patent relates to
`cellular telephone systems and states that a “problem with existing mobile
`telephone systems is the considerable time required in handoffs,” which is
`the process by which a mobile unit is transferred from one cell site to
`another as it moves through a network. Id. at 1:39–47, 1:58–59. According
`to the ’177 patent, in urban areas, the number of cells is increased and cell
`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
`cell boundaries more often, requiring more handoffs. Id. at 2:2–6.
`To address this purported problem, the ’177 patent proposes a mobile
`communication system that employs moving base stations, which move in
`the direction of traffic along a roadway. Id. at 2:65–3:6. The moving base
`stations are interposed between mobile units and fixed base stations. Id.
`The ’177 patent states that, “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 5:17–19.
`
`D. Illustrative Claim
`As mentioned above, the challenged claims are claims 16, 21–28, 30,
`31, 47–49, and 51–53. Claims 16 and 47 are the independent claims among
`the challenged claims, and are reproduced below:
`16. A method comprising:
`receiving fixed port signals from a fixed port through the
`plurality of spatially separated antennas moving relative to
`Earth; and
`transmitting, to a mobile device, radio frequency signals
`corresponding to the received fixed port signals.
`Ex. 1001, 12:18–23.
`47. A method comprising:
`receiving a first radio frequency signal through a
`plurality of spatially separated antennas moving relative to
`Earth and
`transmitting, to a mobile device moving relative to Earth,
`a second radio frequency signal corresponding to the received
`first radio signal.
`Ex. 1001, 14:9–15.
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`E. References
`Petitioner 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,
`“Gilhousen ’501”).
`3. U.S. Patent No. 5,519,761, issued May 21, 1996 (Ex. 1005,
`“Gilhousen ’761”).
`4. U.S. Patent No. 5,652,765, issued July 29, 1997 (Ex. 1031,
`“Adachi”).
`5. An article titled, “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, Jakes et
`al. (November 1971) (Ex. 1032, “Jakes”).
`6. U.S. Patent No. 5,614,914, issued March 25, 1997 (Ex. 1033,
`“Bolgiano”).
`Petitioner also relies on testimony from Jeffrey Fischer (Ex. 1008,
`“Fischer Decl.”).
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`35 U.S.C. §
`103
`
`References
`Gilhousen ’761, Adachi
`
`F. Grounds Asserted
`Petitioner challenges the patentability of the ʼ177 patent claims on the
`
`following grounds:
`Claims Challenged
`16, 24, 30, 31,
` 47–49, 51–53
`22, 26, 27
`
`Gilhousen ’761, Adachi, Gilhousen
`’501
`Gilhousen ’761, Adachi, Bolgiano
`Ito, Gilhousen ’501, Adachi
`
`Ito, Jakes
`
`103
`
`103
`103
`
`103
`
`27, 28
`16, 22–27, 30,
`31, 47–49, 51–53
`16, 21–26, 30, 31, 47–
`49, 51, 52
`Pet. 10.
`
`
`III. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`had “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. ¶¶ 32–
`33).
`
`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)
`(prior art itself may reflect an appropriate level of skill). Thus, for the
`purpose of our decision, we adopt Petitioner’s proposal.
`
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`B. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018,1 the claims are construed
`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), 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.
`37 C.F.R. § 42.100(b) (Nov. 2018); see Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005). Any special definitions for claim terms
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner asserts that the following claim terms should be construed
`using the claim constructions used by the district court in Carucel
`Investments, LP v. Novatel Wireless, Inc., et al., Civil Act. 16-cv-118-KSC
`(S.D. Ca.):
`
`
`Term
`
`“fixed port”
`
`“base station”
`
`Construction
`“a stationary device at which signals
`can enter or exit a communication
`network”
`“a fixed device a mobile radio
`transceiver (transmitter/receiver)
`talks to, to talk to a person or to get
`to the landline phone network,
`public or private”
`
`
`1
`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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`
`“configured to”
`
`“transmit radio signals to a mobile
`device corresponding to the
`received fixed port signals”
`
`“constructed to move with the
`traffic at a rate of speed which is
`comparable to the speed of the
`traffic”
`“transmit radio frequency signals to
`a mobile device, where the radio
`frequency signals correspond to the
`received fixed port signals”
`
`
`Pet. 8 (citing Ex. 1037). Petitioner also asserts that the claimed movable
`base station is “configured to move relative to Earth” when a vehicle
`includes a movable base station. Pet. 9.
`We determine that no claim term requires express construction for
`purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., et
`al., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the
`context of an inter partes review).
`
`
`C. Obviousness over Gilhousen ’761 and Adachi
`Petitioner asserts that claims 16, 24, 30, 31, 47–49, and 51–53 are
`unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
`of Gilhousen ’761 and Adachi. Pet. 18–30. We first address the two
`references and then address the merits of the challenge.
`
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`
`1. Overview of Gilhousen ’761 (Ex. 1005)
`Gilhousen ’761 is a patent titled “Airborne Radiotelephone
`Communications System.” Ex. 1005, code (54). Petitioner asserts that
`Gilhousen ’761 is prior art under 35 U.S.C. § 102(a). Pet. 10.
`Gilhousen ’761 is directed to an airborne communication system that
`allows radiotelephones on a plane to communicate with a ground-based
`cellular system. Ex. 1005, code (57). Figure 1 of Gilhousen ’761 is
`reproduced below.
`
`
`
`Figure 1 of Gilhousen ’761, reproduced above, depicts an airborne
`communication system having ground-based subsystem 105 and airborne-
`based subsystem 125. Id. at 2:16–18. As shown in Figure 1, ground-based
`subsystem 105 has base station 120 coupled to antenna 150 and to mobile
`switching center 115, which in turn is coupled to public switched telephone
`network (PSTN) 110. Id. at 2:27–39.
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`Figure 2 of Gilhousen ’761 is reproduced below.
`
`
`Figure 2 of Gilhousen ’761, reproduced above, depicts an airborne-based
`subsystem having Code Division Multiple Access-type (CDMA)
`radiotelephones 205, signal repeater 210, and antenna 215 mounted on the
`outside of the aircraft. Ex. 1005, 2:51–58. Repeater 210 receives signals
`from radiotelephones 205 within the aircraft and relays them to antenna 215,
`which relays the signals to the base station on the ground. Id. at 2:59–63.
`Gilhousen ’761 discloses that signal repeater 210 may be replaced by an
`airborne base station that “has the same functionality of its ground-based
`counterpart but on a much smaller scale since it does not have to handle the
`thousands of radiotelephones of the ground-based station.” Id. at 3:9–16.
`
`
`2. Overview of Adachi (Ex. 1031)
`Adachi is a patent titled “Receiver and Repeater for Spread Spectrum
`Communications.” Ex. 1031, code (54). Petitioner asserts that Adachi is
`prior art under 35 U.S.C. § 102(a) and (e). Pet. 13.
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`Adachi discloses a “repeater improving the effect of a RAKE
`reception.” Ex. 1031, code (57). 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
`Code Division Multiple Access (CDMA) communications with mobile
`stations 16 and 17. Id. at 6:6–7. 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. 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 the
`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
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`repeater’s antennas 28 and 29, and are combined, amplified, and
`retransmitted to base station 16. Id. at 6:49–66.
`
`
`3. Analysis of Asserted Obviousness of Claims 16, 24, 30, 31,
`47–49, and 51–53
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented 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 based on 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 ordinary skill in the art; and (4) when in the record, objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In
`this regard, an obviousness analysis “need not seek out precise teachings
`directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`
`
` Petitioner’s Arguments
`In support of Petitioner’s contention that claims 16, 24, 30, 31, 47–49,
`and 51–53 would have been obvious over the combined teachings of
`Gilhousen ’761 and Adachi, Petitioner provides an element-by-element
`analysis showing where each element of the challenged claims is in
`Gilhousen ’761 or Adachi. Pet. 18–30. Petitioner supports its analysis with
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`testimony from Mr. Fischer. See Fischer Decl. ¶¶ 94–125. We have
`reviewed the information provided by Petitioner, including the relevant
`portions of the supporting Fischer Declaration (Ex. 1008). Based on the
`current record, for reasons set forth below, we are persuaded that Petitioner
`has demonstrated a reasonable likelihood of prevailing on this obviousness
`challenge.
`
`(i) Independent Claim 16
`As mentioned above, the preamble of claim 16 recites a “method
`comprising.” Petitioner asserts that, to the extent the preamble is limiting,
`Gilhousen ’761 discloses a method relating to its airborne communications
`system. Pet. 22 (citing Ex. 1005, 3:17–47; Fischer Decl. ¶¶ 103–104).
`Claim 16 recites that the method comprises “receiving fixed port
`signals from a fixed port through the plurality of spatially separated antennas
`moving relative to Earth.” Petitioner asserts that Adachi teaches this
`limitation because Adachi’s “repeater 20 receives signals from the base
`station (fixed port) through antennas 21 and 22.” Pet. 22–23 (citing Ex.
`1031, 6:13–18. Fischer Decl. ¶¶ 105–106). In Petitioner’s proposed
`combination, Gilhousen ’761’s “repeater is replaced by Adachi’s repeater
`which includes multiple spatially separated antennas,” including antennas
`21, 22, 28, 29. Id. at 23–24 (citing Ex. 1031, 6:13–16, 6:49–54; Fischer
`Decl. ¶¶ 108–110). Petitioner further asserts that Gilhousen ’761’s aircraft
`has an “airborne based subsystem,” which contains “radiotelephone signal
`repeater (210),” and that the “aircraft containing the airborne subsystem is
`necessarily ‘constructed to move with the traffic at a rate of speed which is
`comparable to the speed of the traffic,’ since during flight the aircraft (and
`the included airborne substation and repeater) moves at the speed of air
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`traffic on its flight route.” Id. at. 25–26 (citing Ex. 1005, Figs. 1, 2, 1:54–62,
`2:15–18; Fischer Decl. ¶ 111).
`Claim 16 recites that the method comprises “transmitting, to a mobile
`device, radio frequency signals corresponding to the received fixed port
`signals.” Petitioner asserts that this limitation is taught by Adachi’s
`disclosure that “[s]ignals received from the base station via antennas 21 and
`22 . . . , the signals that arrived at combiner 25 as described above are fed to
`antenna 28 . . . via amplifier 26 and circulator 27 (the transmitter) to be sent
`to the mobile stations” so that “the combined signals corresponding to the
`original signal received from the base station (‘fixed port’) are transmitted to
`the mobile station (‘mobile device’; in the combination, Gilhousen761’s
`radiotelephones 205).” Pet. 25–27 (citing Ex. 1031, 6:28–32, Fig. 2; Fischer
`Decl. ¶¶ 112–114).
`Even if Petitioner’s two prior art references (Gilhousen ’761 and
`Adachi) 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
`
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`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).
`Here, Petitioner provides a rationale for combining Gilhousen ’761
`and Adachi such that in the combined Gilhousen ’761-Adachi system,
`“Adachi’s repeater would take the place of Gilhousen761’s repeater, and
`communicate with Gilhousen761’s airborne radiotelephones via a plurality
`of spatially separated antennas and with the ground base station via another
`plurality of spatially separated antennas.” Pet. 20 (citing Fischer Decl.
`¶ 98); see generally id. at 18–21.
`Petitioner asserts that a person of ordinary skill in the art would have
`been motivated to incorporate Adachi’s CDMA repeater and its spatially
`separated antennas into the Gilhousen ’761 “‘repeater embodiment’ (shown
`in Fig. 2)” for several reasons. Pet. 18. First, Petitioner asserts that “Adachi
`teaches a solution to the well-known ‘fading’ problem, and [a person of
`ordinary skill in the art] would have been motivated to incorporate this
`teaching into Gilhousen[ ’761].” Id. According to Petitioner, the “amount
`of the fade typically increases linearly with the speed of the vehicle the
`mobile unit is in,” and “[i]n a fast-moving vehicle such as an aircraft, the
`effects of fading due to movement have a severely detrimental effect on
`signal quality.” Id. (citing Ex. 1029; Ex. 1006, 2:9–14, 2:17–19; Fischer
`Decl. ¶ 94) (citation omitted). Petitioner asserts that a person of ordinary
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`skill would immediately recognize that “a wireless connection between a
`movable base station situated inside an aircraft and one or more terrestrial
`base stations below would be particularly susceptible to fading and that it
`would be advantageous to modify the Gilhousen[ ’761] system to mitigated
`such fading effects.” Id. (citing Fischer Decl. ¶ 94; see Ex. 1005, 2:15–18,
`2:50–3:8).
`Second, Petitioner asserts that “[a]ntenna diversity is one well-
`understood technique in the prior art to mitigate multipath fading effects and
`avoid interference” caused by “obstacles inside an aircraft.” Pet. 19 (citing
`Fischer Decl. ¶ 95; Ex. 1035, 604; Ex. 1036, 1; Ex. 1032, 81). Petitioner
`explains that “[o]ne technique uses a ‘Rake’ receiver, which was well-
`known in the prior art.” Id. (citing Ex. 1031, 1:48–51; Fischer Decl. ¶ 95).
`According to Petitioner, a person of ordinary skill would have been
`motivated “to employ Adachi’s repeater and its multiple, spatially separated
`antennas in place of repeater 210 in Gilhousen761’s ‘repeater embodiment’
`to mitigate the effects of multipath and fading.” Id. (citing Fischer Decl.
`¶ 95). Petitioner also asserts that because Adachi’s repeater is specifically
`designed for a CDMA cellular telecommunications system, a person of
`ordinary skill would have sought “to implement Adachi’s repeater and its
`spatially separated antennas in place of Gilhousen761’s repeater 210, which
`would have been a suitable and readily accomplished substitution.” Id.
`(citing Ex. 1031, 2:45–49; Fischer Decl. ¶¶ 96–97).
`
`
` 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
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`as unpatentable as being obvious over Gilhousen ’761 and Adachi, 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 Gilhousen ’761 and Adachi teaches or suggests the
`limitations in claims 24, 30, and 31, which depend from independent claim
`16, and claims 47–49 and 51–53. Pet. 27–30. Based on our review of
`Petitioner’s arguments and evidence concerning claims 16, 24, 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.
`18–30 (providing detailed explanation and supporting citations to the prior
`art and testimony of Mr. Fischer).
`
`
`D. Remaining Challenges––Obviousness over Gilhousen ’761,
`Adachi, Gilhousen ’501, Bolgiano, Ito, and Jakes
`Petitioner asserts that: (1) claims 22, 26, and 27 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over the combined teachings of
`Gilhousen ’761, Adachi, and Gilhousen ’501; (2) claims 27 and 28 are
`unpatentable under 35 U.S.C. § 103 as obvious over the combined teachings
`of Gilhousen ’761, Adachi, and Bolgiano; (3) claims 16, 22–27, 30, 31, 47–
`49, and 51–53 are unpatentable under 35 U.S.C. § 103 as obvious over the
`combined teachings of Ito, Gilhousen ’501, and Adachi; and (4) claims 16,
`21–26, 30, 31, 47–49, 51, and 52 are unpatentable under 35 U.S.C. § 103 as
`obvious over the combined teachings of Ito and Jakes. Pet. 31–70. We have
`reviewed Petitioner’s arguments and evidence, and determine that the
`Petition provides the requisite showing, at this stage of the proceeding, that
`
`
`
`17
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`
`
`IPR2019-01440
`Patent 8,463,177 B2
`
`the combinations of references cited disclose the subject matter of these
`claims. Patent Owner does not offer, at this stage, and arguments addressing
`Petitioner’s substantive showing. We are persuaded, based on the current
`record, that Petitioner has shown a reasonable likelihood of proving that the
`challenged claims are unpatentable on these grounds. See also 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
`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.
`
`
`
`
`18
`
`
`
`IPR2019-01440
`Patent 8,463,177 B2
`
`
`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.
`
`
`
`19
`
`
`
`IPR2019-01440
`Patent 8,463,177 B2
`
`For PETITIONER:
`James M. Glass
`John T. McKee
`Sean Gloth
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`seangloth@quinnemanuel.com
`
`
`
`
`For PATENT OWNER:
`
`Charles D. Gavrilovich, Jr.
`GAVRILOVICH, DODD & LINDSEY, LLP
`chuck@gdllawfirm.com
`
`Sanford E. Warren, Jr.
`R. Scott Rhoades
`WARREN RHOADES LLP
`swarren@wriplaw.com
`srhoades@wriplaw.com
`
`
`
`
`
`
`
`
`
`
`20
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