Trials@uspto.gov
`571-272-7822
`
`Paper: 31
`Date: March 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`
`IPR2019-01442
`Patent 7,848,701 B2
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper: 31
`Date: March 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`v.
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`
`IPR2019-01442
`Patent 7,848,701 B2
`
`
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-01442
`Patent 7,848,701 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Mercedes-Benz USA, LLC (“Petitioner” or “Mercedes-Benz”) filed a
`Petition requesting inter partes review of claims 10, 15–18, 31, and 33–35
`(the “challenged claims”) of U.S. Patent No. 7,848,701 B2 (Ex. 1001, the
`“’701 patent”). Paper 2 (“Pet.”). Carucel Investments, L.P. (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
`to all of the claims challenged and all grounds raised in the Petition. Paper 8
`(“Institution Dec.”).
`Following institution, Patent Owner filed a Response. Paper 12 (“PO
`Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
`(Paper 21, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 27, “PO
`Sur-reply”).
`On December 2, 2020, we held a consolidated oral hearing with
`several related cases involving Patent Owner. A transcript of the hearing is
`included in the record. Paper 30 (“Hearing Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision, issued pursuant to 35 U.S.C. § 318(a). For the reasons we
`discuss below, we determine that Petitioner has proven by a preponderance
`of the evidence that claims (the “challenged claims”) of the ’701 patent are
`unpatentable.
`
`B. Related Proceedings
`The parties identify the following pending district court proceedings
`involving the ’701 patent: Carucel Investments, LP v. Fiat Chrysler
`Automobiles US LLC, et al., 3:18-cv-03331 (N.D. Tex.); Carucel
`Investments, LP v. General Motors Company, 3:18-cv-03332 (N.D. Tex.);
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`Patent 7,848,701 B2
`Carucel Investments, LP v. Volkswagen Group of America, Inc., 3:18-cv-
`03333 (N.D. Tex.); Carucel Investments, LP v. Mercedes-Benz USA, et al.,
`3:18-cv-03334 (N.D. Tex.). Paper 4; Pet. 74.
`In addition to this Petition, the ’701 patent was also challenged by a
`different party (Volkswagen Group of America, Inc.) in IPR2019-01102.
`Pet. 60; Paper 4.
`Patents related to the ’701 patent are challenged in IPR2019-01101,
`IPR2019-01103, IPR2019-01104, IPR2019-01079, IPR2019-01298,
`IPR2019-01404, IPR2019-01105, IPR2019-01440, and IPR2019-01441.
`Pet. 60–61; Paper 4.
`
`C. Real Parties-in-Interest
`Petitioner identifies “Daimler AG, Daimler North America
`Corporation, Mercedes-Benz USA, LLC and Mercedes-Benz U.S.
`International, Inc.” as the real parties-in-interest. Pet. 60. Patent Owner
`identifies Carucel Investments, L.P., as the real party-in-interest. Paper 4, 1.
`D. The ’701 Patent
`The ’701 patent is titled “Mobile Communication System with
`
`Moving Base Station.” Ex. 1001, (54). According to the patent, “[a]
`problem with existing mobile telephone systems is the considerable time
`required in handoffs. This becomes a particular problem in urban areas
`which are highly congested.” Id. at 1:54–56. The ’701 patent addresses this
`problem by providing “a moving base station which is interposed between a
`moving mobile telephone unit and a fixed base station.” Id. at 2:65–3:1.
`The “movable base station moves with the traffic at a rate of speed which is
`comparable to the speed of the traffic and communicates with a moving
`mobile telephone unit via standard mobile radio transmission.” Id. at 3:2–5.
`The movable base station “communicates by radio signals with a plurality of
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`IPR2019-01442
`Patent 7,848,701 B2
`fixed antennas spaced along the path of travel of the mobile base station.”
`Id. at 3:5–8.
`
`This is illustrated by Figure 1 of the ’701 patent, reproduced below.
`
`
`
`Fig. 1 is a block diagram representation of a roadway structure with fixed
`base stations, moving base stations, and fixed radio ports. Id. at 3:43–45.
`
`In Figure 1, a divided highway has mobile units 20 traveling on first
`
`roadway 10, in one direction, and mobile units 25 traveling along second
`roadway 15, in the opposite direction. Id. at 3:65–4:1. Moving base stations
`30 are disposed along one side of roadway 10. Id. at 4:1–3. The base
`stations are spaced apart by a selected distance equivalent to the diameter of
`the cell served by the moving base station. Id. at 4:3–5.
`
`Moving base stations 30 may be moved by means of rail 35 or other
`suitable conveying device, which may include an automotive vehicle
`traveling on the roadway, in the same direction as the traffic flow on
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`IPR2019-01442
`Patent 7,848,701 B2
`roadway 10, as indicated by arrow 12. Id. at 4:5–9. Similarly, moving base
`stations 40 are disposed along adjacent roadway 15, moving in the direction
`of the traffic as indicated by arrow 17. Id. at 4:9–12. Moving base stations
`40 are moved along rail 45. Id. at 4:12.
`
`
`In operation, base stations 30 move in the direction of the flow of the
`traffic at a rate of, for example, sixty miles per hour, which may be faster
`than some traffic and slower than other traffic. Id. at 4:41–44. The moving
`base stations handle telecommunications with mobile units 25, which travel
`at a rate of not more than thirty miles per hour faster or slower than the
`moving base stations. Id. at 4:37–40. Fixed base stations 70 accommodate
`communications with mobile units traveling at speeds of less than thirty
`miles per hour, including pedestrian traffic and stationary units. Id. at 4:46–
`49.
`According to the ’701 patent, the advantage of this system is reducing
`
`the number of handoffs:
`The system in accordance with the invention differs from the
`prior art primarily in that the base stations 30, 40 are moving
`with the traffic and communicate with the gateway office 60 via
`fixed radio ports 50. Furthermore, the various call-handling
`functions, including handoff, are performed by the moving base
`station.
`Advantageously, because of movement of the base station in the
`same direction as the traveling mobile unit, the number of
`handoffs is greatly reduced.
`Id. at 5:8–16 (emphasis added).
`
`Each of the moving base stations is provided with multiple antennas.
`Id. at 5:17–18. Antennas 100 on moving base stations 30, 40 are used to
`communicate with mobile units 20, 25, whereas antennas 101 on moving
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`IPR2019-01442
`Patent 7,848,701 B2
`base stations 30, 40 are used to communicate with fixed radio ports 50. Id.
`at 5:22–26.
`
`E. Illustrative Claims
`The ’701 patent has forty-two claims. Nine claims (10, 15–18, 31,
`and 33–35) are challenged in the Petition. See supra. Of the challenged
`claims, two (claims 10 and 31) are independent. Claim 10 recites1:
`10. A movable base station configured to move relative to
`Earth, the movable base station comprising:
`[10a] a plurality of spatially separated antennas;
`[10b] a receiver configured to receive mobile device signals
`from a fixed port through the plurality of spatially separated
`antennas;
`[10c] a controller configured to align and combine the received
`fixed port signals; and
`[10d] a transmitter configured to transmit radio frequency
`signals to a mobile device corresponding to the received fixed
`port signals.
`Ex. 1001, 11:54–64.
`
`Claim 31 recites:
`31. A movable base station configured to move relative to
`Earth, the movable base station comprising:
`[31a] a plurality of spatially separated antennas;
`[31b] a receiver configured to receive fixed port signals from a
`fixed port through the plurality of spatially separated antennas;
`and
`[31c] a transmitter configured to transmit radio frequency
`signals to a mobile device corresponding to the received fixed
`port signals, the radio frequency signals transmitted within time
`slots of time-division multiplex channels.
`
`
`1 Reference numbers assigned by Petitioner have been added in brackets to
`claims 10 and 31.
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`6
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`IPR2019-01442
`Patent 7,848,701 B2
`Id. at 13:13–22.
`
`
`E. References and Other Evidence
`The Petition relies on the following references:
`1. U.S. Patent No. 5,276,686, issued January 4, 1994 (Ex. 1003,
`“Ito”);
`2. U.S. Patent No. 5,101,501, issued March 31, 1992 (Ex. 1004,
`“Gilhousen501”);
`3. U.S. Patent No. 5,519,761, filed July 8, 1994 (Ex. 1005,
`“Gilhousen761”);
`4. U.S. Patent No. 5,652,765, filed May 22, 1995 (Ex. 1031,
`“Adachi”).
`5. William C, Jakes, “A Comparison of Specific Space Diversity
`Techniques for Reduction of Fast Fading in UHF Mobile Radio Systems,”
`IEEE Transactions on Vehicular Technology, Vol. VT-20, No. 4, Nov. 1971
`(Ex. 1032, “Jakes”).
`Pet. 10–20.
`
`In addition, Petitioner submitted a Declaration of Jeffrey Fischer
`(Ex. 1008, “Fischer Decl.”) with the Petition and a further Declaration of
`Mr. Fischer (Ex. 1106, “Fischer Reply Decl.”)2 with its Reply. Patent
`Owner submitted the Declaration of Mark R. Lanning (Ex. 2100, “Lanning
`
`
`2 Petitioner submitted a corrected version of this declaration with the same
`exhibit number as the original version. Our citations refer to the corrected
`version.
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`7
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`IPR2019-01442
`Patent 7,848,701 B2
`Decl.”) with its Patent Owner Response. Both parties have submitted
`deposition transcripts for these declarants.3
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the challenged claims are unpatentable on the
`following grounds.
`Claims Challenged Statutory Basis
`35 U.S.C.4
`10, 17
`§ 103
`10, 16–18, 31, 34, 35 § 103
`10, 15–18, 31, 33–35 § 103
`Pet. 10.
`
`References
`Gilhousen761, Gilhousen501,
`Adachi
`Ito, Gilhousen501, Adachi
`Ito, Jakes
`
`II. PRELIMINARY MATTERS
`A. Level of Ordinary Skill
`Petitioner contends: “One of ordinary skill in the art would have at
`least a Bachelor’s degree in Electrical Engineering, Computer Science, or an
`equivalent area of study, and at least three years of graduate study or
`professional experience with wireless and/or cellular communications or
`similar experience.” Pet. 7 (citing Fischer Decl. ¶¶ 33).
`Patent Owner contends that a person of ordinary skill in the art “at or
`near the filing date of the earliest priority application of the ’701 Patent
`would have had (i) a Bachelor of Science degree in electrical engineering or
`
`
`3 Ex. 1101 (“Lanning I Dep.”); Ex. 1102 (“Lanning II Dep.”); Ex. 2108-1
`(“Fischer I Dep.”); Ex. 2108-2 (“Fischer II Dep.”).
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’701 patent was filed before March 16, 2013 (the effective date of the
`relevant amendments), the pre-AIA version of § 103 applies.
`
`
`
`8
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`IPR2019-01442
`Patent 7,848,701 B2
`computer engineering or related field of study; (ii) at least two years of
`experience with wireless communications systems; and (iii) would also be
`familiar with cellular communication technology.” PO Resp. 8. Further,
`Patent Owner contends “[a] lack of experience can be compensated with
`additional education and a lack of education can be compensated with
`additional work experience.” Id. at 9 (citing Lanning Decl. ¶ 59).
`The formulations differ slightly, in that Patent Owner’s formulation
`specifically calls for familiarity with cellular communication technology,
`whereas Petitioner’s formulation is more general, requiring a comparable
`level of experience (three years versus two years) with mobile wireless
`communications.
`We regard these formulations as not materially different, because
`familiarity with mobile wireless communications would normally include
`knowledge of cellular communication technology. Furthermore, we do not
`regard the one-year difference in experience levels as significant. Both
`formulations, also, are consistent with the prior art before us and with the
`level of skill reflected in the ’701 patent. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate
`level of skill). As the formulations are not materially different, we adopt
`Patent Owner’s more specific description, with the exception of the open-
`ended language “at least.” However, we would reach the same result on the
`ultimate question of patentability of the challenged ’701 patent claims under
`either formulation.
`
`B. Claim Construction
`We interpret claim terms using “the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
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`IPR2019-01442
`Patent 7,848,701 B2
`generally given their ordinary and customary meaning” as understood by a
`person of ordinary skill in the art in question at the time of the invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations
`omitted) (en banc). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17). Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
`858, 862 (Fed. Cir. 2004)).
`Petitioner cites a Markman order “regarding the ’701 patent and its
`family” issued by the district court in Carucel Investments, L.P. v. Novatel
`Wireless, Inc., No. 3-16-cv-00118, Dkt. 131 (S.D. Cal. Sep. 19, 2016)
`(“Novatel Litigation”). Pet. 8; see Ex 2105. Petitioner refers us to the
`district court’s construction for these terms: “fixed port,” “base station,”
`“configured to,” and “transmit radio signals to a mobile device
`corresponding to the received fixed port signals.” Id. at 8.
`Petitioner contends: “Based on the district court’s constructions of
`‘fixed port’ and ‘base station,’ a [person of ordinary skill] would understand
`that disclosure of a cellular base station satisfies both claim terms.” Pet. 8.
`As to the term “configured to,” Petitioner states: “Petitioner proposes
`that this term be applied in this Petition consistent with [Patent Owner]’s
`Complaints—that the claimed movable base station is ‘configured to move
`relative to Earth’ when a vehicle includes a movable base station.” Pet. 9.
`
`10
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`IPR2019-01442
`Patent 7,848,701 B2
`Petitioner contends: “All other terms are sufficiently clear, should be
`given their plain and ordinary meaning as understood by a person of
`ordinary skill in the art . . . at the time of the alleged invention, and do not
`require construction.” Id.
`Patent Owner provides proposed constructions for the terms “fixed
`port,” “configured to,” “transmit radio frequency signals to a mobile device
`corresponding to the received fixed port signals,” “mobile device,”
`“automotive vehicle,” and “cellular base station.” PO Resp. 10–18.
`Petitioner responds “that each of the Grounds [asserted by Petitioner]
`renders the challenged claims obvious even under [Patent Owner’s]
`proposed construction of ‘fixed port,’ ‘configured to,’ ‘transmit radio
`frequency signals…,’ ‘automotive vehicle,’ and ‘cellular base station,’ and
`that therefore no construction for these terms is required.” Pet. Reply 7.
`1. “fixed port”5
`Patent Owner proposes that we adopt the district court’s construction
`of these “fixed port” in the Novatel litigation, which is: “a stationary device
`at which signals can enter or exit a communication network.” PO Resp. 10;6
`Ex. 2105, 12.
`Petitioner responds that no construction is required. Pet. Reply 7. We
`do not see the need to construe this term for the purpose of resolving a
`controversy, and therefore, we do not adopt Patent Owner’s proposed
`
`
`5 The parties agree that there is no difference between the terms “fixed port”
`and “fixed radio port.” Hearing Tr. 27:9–23; 88:12–13.
`6 Patent Owner misquotes the district court’s claim construction as saying
`“enter and exit” rather than “enter or exit,” as stated in the district court’s
`order. Ex. 2105, 12. We treat Patent Owner’s misquotation as a
`typographical error.
`
`11
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`IPR2019-01442
`Patent 7,848,701 B2
`construction. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`
`2. “configured to”
`The district court construed this term as “constructed to move with the
`traffic at a rate of speed which is comparable to the speed of the traffic.”
`Pet. 9. Petitioner proposes that this term be construed “consistent with
`[Patent Owner’s] Complaints” in district court, as requiring “that the claimed
`movable base station is ‘configured to move relative to Earth’ when a
`vehicle includes a movable base station.” Id. Patent Owner contends that
`the proper construction is the construction adopted by the district court. PO
`Resp. 10–13.
`In our analysis below, we apply the construction adopted by the
`district court.
`3. “transmit radio frequency signals to a mobile device
`corresponding to the received fixed port signals”
`Patent Owner urges us to adopt the district court’s construction which
`is “transmit radio frequency signals to a mobile device, where the radio
`frequency signals correspond to the received fixed port signals.” PO Resp.
`13.
`
`We do not see the need to construe this term for the purpose of
`resolving a controversy, and therefore, we do not adopt Patent Owner’s
`proposed construction.
`4. “mobile device/mobile unit”7
`Patent Owner contends that mobile units are “also known as cell
`phones or mobile phones.” PO Resp. 7. Patent Owner asks us construe
`
`7 The parties agree that the term “mobile unit” in the ’701 patent has the
`same meaning as “mobile device.” Hearing Tr. 22:18–23, 88:14–16.
`
`12
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`IPR2019-01442
`Patent 7,848,701 B2
`“mobile device” as “a device that must register with and be able to directly
`communicate with the cellular network.” Id. at 13. Patent Owner contends
`that this is “the plain and ordinary meaning of the term.” Id. Patent Owner
`explains: “A mobile device is more than just a cordless phone handset.” Id.
`
`Patent Owner asserts that a “mobile unit” also includes the “capability
`to be switched back-and-forth between either a direct connection with the
`fixed base station or a connection with a moving base station.” Id. at 14.
`Patent Owner’s proposed construction relies mainly on the ’701 patent
`specification: “The ’701 Patent specification teaches that a mobile device
`must be capable of directly communicating with either a fixed cellular base
`station or a moving base station.” PO Resp. 13 (citing Ex. 1001, 4:46–49).
`Furthermore, according to Patent Owner, “the mobile unit’s capability to be
`switched back-and-forth between either a direct connection with the fixed
`base station or a connection with a moving base station is discussed
`repeatedly and throughout the specification.” Id. at 14. Also, “[t]he ’701
`Patent specification teaches that a mobile device must be capable of
`registering with a cellular network so it is able to receive calls coming from
`the cellular network.” Id. at 14–15. Patent Owner cites also the discussion
`in the ’701 patent that describes registration by the mobile unit:
`When a mobile unit set is first powered up or first enters a
`service area, the mobile unit must register in the manner
`described earlier, by transmitting its unique address in the new
`service area. The address will be received by the closest moving
`base station 30 and transmitted via a fixed radio port and the
`gateway switch 60 to the telephone network.
`
`
`
`
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`Ex. 1001, 9:49–54 (partially quoted at PO Resp. 15). Patent Owner relies on
`testimony from its expert, Mr. Lanning. See PO Resp. 13–15 (citing
`Lanning Decl. ¶¶ 58, 65–70. 78).
`Petitioner opposes Patent Owner’s proposed construction of mobile
`device. Pet. Reply 1–7. Petitioner contends that Patent Owner’s proposed
`definition “does not reflect the term’s ordinary meaning.” Id. at 2.
`Petitioner asserts that Patent Owner’s proposed construction is “flatly
`inconsistent” with a construction Patent Owner proposed in the Novatel
`Litigation. Id. Petitioner describes this previous “inconsistent” construction
`advanced by Patent Owner in district court as a “non-cellular construction”:
`“[Patent Owner] should not be permitted to propose a broad construction to
`capture infringing devices in litigation, then make an about-face in an IPR to
`avoid the prior art.” Id. Petitioner asserts also that the construction
`proposed here by Patent Owner should be rejected because it “contradicts
`the claims, the specification and the prosecution history.” Id. at 3.
`Petitioner contends that “[n]one of the claims require the ‘mobile device’ to
`register, and none require it to communicate directly with a cellular
`network.” Id.
`Finally, Petitioner concludes its discussion of “mobile device” with
`the proposal “that this term is sufficiently clear on its face that construction
`is not necessary.” Id. at 6.
`Having reviewed and considered the record presented, including
`Petitioner’s and Patent Owner’s submissions, we are not persuaded to adopt
`Patent Owner’s construction of “mobile device.” Our reasoning follows.
`
`As instructed by Phillips, we first look to the words of the claims.
`Phillips, 415 F.3d at 1312. We find that the language of the challenged
`claims does not support Patent Owner’s construction. As Petitioner points
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`out, the challenged claims themselves do not require the mobile device to
`register or communicate directly with a cellular network. Pet. Reply 3. In
`fact, the claims are not directed to the mobile device. The ’701 patent
`claims the mobile base station, not the mobile units. Hearing Tr. 52:21–
`53:5.
`
`Patent Owner’s Response confirms that Patent Owner regards the
`mobile base station, and not the mobile device, as the invention: “Most
`importantly to the issues presented here, Mr. Gavrilovich invented a ‘mobile
`base station’ that significantly improved wireless communications by acting
`as an intermediary between cell towers and mobile devices.” PO Resp. 2.
`And this identification by Patent Owner of the mobile base station as the
`invention is consistent with the Summary of the Invention in the ’701 patent
`itself, which states: “These and other problems of the prior art are overcome
`in accordance with this invention by means of a moving base station which
`is interposed between a moving mobile telephone unit and a fixed base
`station.” Ex. 1001, 2:65–3:1.
`
`As Petitioner shows, in the challenged claims of the ’701 patent, it is
`the mobile base station, not the mobile device or mobile unit, that
`communicates directly with the fixed ports or base stations associated with
`the network. Pet. Reply 3. This important aspect of the ’701 patent claims
`was explored with Patent Owner’s counsel at the oral argument:
`
`[PATENT OWNER’S COUNSEL]: The purpose of the
`invention is to allow all five different mobile devices to be
`connected through a moving base station so that there’s only one
`hand-off. If you did that at the mobile phone level, that wouldn't
`be accomplishing the same purpose. . . .
`
`[THE BOARD]: -- the mobile device doesn’t have to be
`a cellular device in order to do that as long as the base station can
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`communicate with the cellular network; isn’t that correct? I
`mean it’s actually -- the base station in your claims, it’s the base
`station that’s communicating with the cellular network not the
`mobile device.
`
`[PATENT OWNER’S COUNSEL:]: Right.
`Hearing Tr. 53:20–54:6 (emphasis added).
`
`As Patent Owner acknowledges, the mobile base station in the ’701
`patent acts as “an intermediary” between the mobile devices and the
`network. PO Resp. 3. The challenged claims describe the communications
`passing between the moving base station (the recited “apparatus” in the
`claim) and the fixed ports of the network and between the moving base
`station and the mobile devices. Pet. Reply 3–4.
`
`Thus, for example, independent claim 10 recites that the claimed
`“movable base station” has “a receiver configured to receive fixed port
`signals from a fixed port” and “a transmitter configured to transmit radio
`frequency signals to a mobile device.” Ex. 1001, 11:57–59, 11:62–64
`(emphasis added). Claim 31 has similar descriptions of the receiver and
`transmitter. Id. at 13:16–21.
`Furthermore, the challenged claims do not require the signals
`transmitted between the mobile device and the moving base station to be
`cellular signals, or identify the recited mobile device as a device that
`communicates with a cellular network. Nor do they require registration of
`the mobile device with the cellular network. Pet. Reply 3. Based on the
`foregoing, we find that the challenged claims of the ’701 patent do not
`require a mobile device that must register with or is capable of
`communicating directly with a cellular network.
`Moreover, we find that the ’701 patent specification does not support
`Patent Owner’s construction of “mobile device.” Cf. PO Resp. 14–16; PO
`
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`Sur-reply 6–10. As stated in Phillips, “the specification is always highly
`relevant to the claim construction analysis. Usually, it is dispositive; it is the
`single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
`1315 (internal quotes and citation omitted).
`First, we do not see in the specification of the ’701 patent a clear
`indication supporting Patent Owner’s contention that conventional non-
`cellular cordless phones should be excluded. Cf. PO Resp. 13 (“A mobile
`device is more than just a cordless phone handset.”). In the Background
`section, the ’701 patent describes the goal of the patent as encompassing “all
`applications” including cordless phones: “What is desirable is an infra
`structure which allows use of such terminals in all applications, whether in
`the home or office as a cordless phone . . . .” Ex. 1001, 2:45–47 (emphasis
`added); Fischer Reply Decl. ¶ 7.
`While the ’701 patent does refer to the fixed base stations as “cell
`site[s]” (Ex. 1001, 4:61–62), it also describes the radio interfaces between
`the mobile devices and the base stations in more general terms. Pet. Reply
`4; Ex. 1001, 6:34–37. Thus, the ’701 patent describes the radio interface
`between the mobile units and both the moving and fixed base stations as “a
`standard radio interface, well known in the art.” Ex. 1001, 6:37–39. This
`generic description in the ’701 patent of these radio interfaces as a “standard
`radio interface” is broader than a “cellular interface,” and is consistent with
`the patent’s stated goal of providing “an infrastructure which allows use of .
`. . a cordless phone.” Pet. Reply 4 (citing Ex. 1001, 2:45–49); Fischer Reply
`Decl. ¶¶ 7–8. Elsewhere, the ’701 patent states this interface “may be the
`standard [cellular] air interface standard,” confirming that a cellular interface
`
`17
`
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`IPR2019-01442
`Patent 7,848,701 B2
`is not a requirement for the mobile units. Ex. 1001, 6:59–61 (emphasis
`added).8
`We find further support for our conclusion that Patent Owner’s
`construction is too limiting in the ’701 patent’s description of an
`embodiment where the mobile unit is prevented from communicating
`directly with the fixed ports. Ex. 1001, 3:20–35. In this embodiment, the
`power levels for the signals between the moving base station and the mobile
`unit are chosen to avoid direct communication between the mobile device
`and the fixed radio ports. Id. at 3:26–31. This embodiment is consistent
`with the claim language, which we find describes the mobile base station,
`not the mobile units, communicating with the cellular network. See
`discussion supra.
`Phillips instructs us that the prosecution history may also be relevant
`in construing the claims. 415 F.3d at 1317; see Pet. Reply 5 (discussing
`prosecution history). The ’701 patent is a continuation of U.S. Patent No.
`7,221,904, and shares a common specification and similar claims with the
`’904 patent. Ex. 1001, 1:6–7. During prosecution of the ’904 patent, in an
`appeal brief to the Board, the applicant did not limit mobile units to cellular
`devices, but instead told the Board that radios and telephones were included:
`“The present invention is directed to methods and devices for providing
`communication services to moving mobile units such as telephones, radio
`modems, or other types of radios.” Ex. 1107, 289 (emphasis added). We
`agree with Petitioner and find that this prosecution history describing the
`mobile units as “telephones” and “radios” contradicts Patent Owner’s
`
`
`8 Patent Owner relies on this statement to prove that this interface must be
`cellular. See infra.
`
`18
`
`
`
`IPR2019-01442
`Patent 7,848,701 B2
`construction limiting such devices to “a device that must register with and be
`able to directly communicate with the cellular network.” Pet. Reply 5.
`Petitioner also cites an October 4, 2004, Office Action in which the
`Examiner found that the claim term “mobile unit” read on a reference
`(Yokoi) disclosing a cordless phone. Id. (citing Ex. 1107, 328). Petitioner
`notes that Patent Owner’s response did not challenge this finding by the
`Examiner. Id. (citing Ex. 1107, 338 et seq.).
`Patent Owner responds that its proposed construction is “[c]orrect,”
`and that Petitioner “attempts to . . . broadly construe the term ‘mobile
`device’ in a vacuum.” PO Sur-reply 6–7. Patent Owner contends
`Petitioner’s analysis “is flawed for several reasons.” Id. at 6. Patent Owner
`further argues that “the ’701 Patent relates to and describes as a whole
`improving the wireless connections of mobile devices within cellular
`telephone systems via a moving base station . . . .” Id. at 7 (footnote
`omitted).
`We are not persuaded by these arguments limiting “mobile unit” to
`cellular devices as they are contrary to the claim language, the specification,
`and the other intrinsic evidence discussed above. In the claims, it is the
`mobile base station that communicates with the cellular network, not the
`mobile units. See discussion supra. As explained there, the challenged
`claims focus on the mobile base station; they do not describe the mobile
`units as cellular devices, which according to the prosecution history, can be
`radios and telephones. See discussion above. While the ’701 patent may
`discuss cellular networks, we find the disclosure and the claims do not limit
`the claimed “mobile device” to a cellular phone, for the reasons given above.
`Patent Owner asserts that “[t]he purpose of the invention is only
`
`19
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`IPR2019-01442
`Patent 7,848,701 B2
`achieved within a cellular infrastructure.” PO Sur-reply 6. Patent Owner
`argues that “the ‘701 Patent explicitly and exclusively relates to improving
`the wireless connections of mobile devices within cellular telephone
`systems,” and cites numerous references in the patent to cellular
`communications. Id. at 8–10 (emphasis and internal quotation marks
`omitted). Only one of the citations provided by Patent Owner refers to the
`communications interface between the mobile unit and the moving base
`station. Id. at 9 (citing Ex. 1001, 7:4–6).9 That one reference refers to a
`CDMA (“Code Division Multiple Access”)-based cellular standard (IS-95),
`which it indicates “may” be the interface between the mobile unit and the
`moveable base. Ex. 1001, 6:60. As discussed supra, this description in the
`specification, making use of a cellular standard optional, does not support
`Patent Owner’s argument that the patent “explicitly and exclusively relates
`to improving t
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