Case: 21-1731 Document: 123 Page: 1 Filed: 12/26/2023
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CARUCEL INVESTMENTS L.P.,
`Appellant
`
`v.
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`
`-------------------------------------------------
`
`CARUCEL INVESTMENTS L.P.,
`Appellant
`
`v.
`
`UNIFIED PATENTS, LLC,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2021-1731, 2021-1734, 2021-1735, 2021-1736, 2021-1737
`______________________
`
`

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`Case: 21-1731 Document: 123 Page: 2 Filed: 12/26/2023
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`2
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`CARUCEL INVESTMENTS L.P. v. VIDAL
`
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`01079, IPR2019-01101, IPR2019-01102, IPR2019-01103,
`IPR2019-01105, IPR2019-01573.
`
`-------------------------------------------------
`
`CARUCEL INVESTMENTS L.P.,
`Appellant
`
`v.
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2021-1911, 2021-1912, 2021-1913, 2021-1914
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`01298, IPR2019-01404, IPR2019-01441, IPR2019-01442,
`IPR2019-01635, IPR2019-01644.
`______________________
`
`Decided: December 26, 2023
`______________________
`
`BRIAN T. BEAR, Spencer Fane LLP, Kansas City, MO,
`argued for appellant. Also represented by ANDY LESTER,
`Oklahoma City, OK; ERICK ROBINSON, Houston, TX; R.
`SCOTT RHOADES, Warren Rhoades LLP, Arlington, TX.
`
` DEBRA JANECE MCCOMAS, Haynes and Boone, LLP,
`
`

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`Case: 21-1731 Document: 123 Page: 3 Filed: 12/26/2023
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`3
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`Dallas, TX, argued for appellee. Also represented by
`RAGHAV BAJAJ, Austin, TX; ANGELA M. OLIVER, Washing-
`ton, DC; MICHELLE ASPEN, ROSHAN MANSINGHANI, Unified
`Patents, LLC, Chevy Chase, MD.
`
` MICHAEL TYLER, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, argued for
`intervenor. Also represented by PETER J. AYERS, ROBERT
`MCBRIDE, FARHEENA YASMEEN RASHEED. Also represented
`by PETER JOHN SAWERT in 2021-1911, 2021-1912, 2021-
`1913, 2021-1914.
` ______________________
`
`Before DYK, SCHALL, and STARK, Circuit Judges.
`STARK, Circuit Judge.
`Carucel Investments L.P. (“Carucel”) appeals the final
`written decisions of the Patent Trial and Appeal Board
`(“Board”) holding that certain claims of U.S. Patent Nos.
`7,221,904
`(“’904 patent”), 7,848,701
`(“’701 patent”),
`7,979,023 (“’023 patent”), and 8,718,543 (“’543 patent” and,
`together with the ’904, ’701, and ’023 patents, the “Carucel
`patents”) are unpatentable as obvious. For the reasons
`provided below, we affirm.
`
`I
`A
`The Carucel patents, each entitled “mobile communi-
`
`cation system with moving base station,” share substan-
`tially identical specifications. The patents disclose a
`mobile communication system that “employs moving base
`stations moving in the direction of flow of traffic moving
`along a roadway.” ’904 patent, Abstract. These “moving
`base stations” then “communicate with a plurality of fixed
`radio ports connected by a signal transmission link to a
`gateway office which, in turn, is connected to the wire line
`network.” Id. This general configuration of the various
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`elements of the invention is illustrated in Figure 1 of the
`Carucel patents, reproduced below, which depicts 1) “mo-
`bile units 20 traveling on a first roadway 10,” 2) “[a] plural-
`ity of moving base stations 30 [which] are disposed along
`one side of the roadway 10 . . . [and which] may be moved
`by means of a rail 35, or other suitable conveying device
`which may include an automotive vehicle travelling on the
`roadway, in the same direction as the traffic flow on the
`roadway 10,” and 3) “a plurality of fixed radio ports 50
`which are connected . . . to a telephone office connected to
`the wire line telephone network and referred to as a . . .
`gateway office 60 [which] forms the interface between the
`mobile telecommunication system and the wire line tele-
`phone network.” Id. at 3:66-4:28.
`
`Illustrative claim 22 of the ’904 patent recites:
`22. An apparatus adapted to move in accordance
`with a movement of a mobile unit moving relative
`to a plurality of fixed radio ports, the apparatus
`comprising:
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`a receiver adapted to receive a plurality of signals,
`each of the plurality of signals transmitted from
`each of the plurality of fixed radio ports within a
`frequency band having a lower limit greater than
`300 megahertz;
`a transmitter adapted to transmit, within the fre-
`quency band, a resultant signal to the mobile unit
`in accordance with at least one of the plurality of
`signals; and
`a processor adapted to maximize an amount of
`transferred information to the mobile unit by eval-
`uating a quality of each of the plurality of signals
`transmitted from the plurality of fixed radio ports.
`B
`Carucel brought patent infringement lawsuits against
`Volkswagen Group of America, Inc. (“Volkswagen”) and
`Mercedes-Benz USA, LLC (“Mercedes-Benz”) in the U.S.
`District Court for the Northern District of Texas, asserting
`all four Carucel patents. Volkswagen and Mercedes-Benz
`then filed petitions for several inter partes review (“IPR”)
`proceedings of all of the Carucel patents, which were insti-
`tuted by the Board. A third-party organization, Unified
`Patents, Inc. (“Unified”), also obtained institution of an IPR
`of certain claims of the ’023 patent.
`institution of IPRs,
`In their petitions seeking
`Volkswagen and Mercedes-Benz set out various obvious-
`ness combinations, based on (as pertinent to here) primary
`prior art references U.S. Patent Nos. 5,559,865 (“Gil-
`housen865”), 5,519,761 (“Gilhousen761”), and 5,276,686
`(“Ito”).1 Gilhousen865 and Gilhousen761, which share
`
`
`1 Unified’s grounds for unpatentability were obvi-
`ousness combinations involving primary references U.S.
`Patent Nos. 5,422,934
`(“Massa”) and 4,748,655
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`substantially identical specifications, disclose an airborne
`communication system that allows radiotelephones on a
`plane to communicate with a ground-based telephone sys-
`tem. Figure 1 shows the Gilhousen system with ground-
`based subsystem 105 and airborne-based subsystem 125.
`No. 21-1911 J.A. 1241, 1245.2 As shown, the ground-based
`subsystem 105 includes base station 120 coupled to an-
`tenna 150 and to mobile switching center 115, which in
`turn is coupled to public switched telephone network
`(“PSTN”) 110. J.A. 1245.
`
`
`
`
`(“Thrower”), which are not at issue in Carucel’s appeal with
`respect to Unified (No. 21-1731).
`2
`“J.A.” refers to the joint appendix filed in Appeal
`No. 21-1911, unless otherwise indicated.
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`Figure 2 of the Gilhousen references depicts an air-
`borne-based subsystem having radiotelephones 205, signal
`repeater 210, and antenna 215. J.A. 1243, 1245. Repeater
`210 receives signals from radiotelephones 205 within an
`aircraft and relays them to antenna 215 mounted outside
`the aircraft, which in turn relays the signals to the base
`station on the ground. J.A. 1245. These references disclose
`that signal repeater 210 may be replaced by “an airborne
`base station that has the ability to register the radiotele-
`phones on the aircraft. The airborne base station then reg-
`isters
`the radiotelephone with
`the ground based
`subsystem.” J.A. 1246 at 3:9-13. The airborne base station
`has “the same functionality of its ground-based counter-
`part but on a much smaller scale since it does not have to
`handle the thousands of radiotelephones of the ground-
`based station.” Id. at 3:13-16.
`
`
`Ito discloses “a mobile radio communication system
`that wirelessly connects not only between a base station
`and a mobile station but also between a mobile station, or
`a mobile base device, and a portable device by a radio chan-
`nel in order to eliminate the necessity of wiring the mobile
`base device and portable device and enhance the
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`maneuverability of an automobile telephone handset.” J.A.
`1212 at 2:6-12. This system is illustrated in Figure 6 of Ito,
`J.A. 1208, which depicts a mobile radio communication sys-
`tem, in which a mobile base device (MSS) is “connected
`simultaneously with two portable devices PSS1 and PSS2.”
`J.A. 1217 at 12:50-54. The base station (BSS) and the mo-
`bile base device (MSS) communicate with each other by
`way of radio frequencies, and the mobile base device (MSS)
`and portable devices (PSS1 and PSS2) communicate with
`each other by way of different radio frequencies. J.A. 1217.
`Ito teaches using frequency-division multiple access
`(“FDMA”) and time-division multiple access (“TDMA”)
`techniques “for connection between a base station and a
`mobile base device as well as for connection between a mo-
`bile base device MSS and a portable device PSS. With a
`FDMA/TDMA technique, a number of radio frequencies are
`shared by a plurality of stations.” J.A. 1214 at 5:47-52.
`
`
`The Board issued final written decisions determining
`that each of the challenged claims is unpatentable as obvi-
`ous over combinations of prior art references including Gil-
`housen865, Gilhousen761, and Ito. Carucel filed motions
`for rehearing, which were denied, and then timely
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`appealed.3 Following the Supreme Court’s issuance of its
`decision in United States v. Arthrex, Inc., 141 S. Ct. 1970
`(2021), we remanded for the limited purpose of allowing
`Carucel to seek Director Review. After such review was
`denied, Carucel filed amended notices of appeal. Mercedes-
`Benz and Volkswagen then notified us they would not par-
`ticipate in the appeals. Hence, briefing was submitted only
`by Carucel, Unified, and the Director of the U.S. Patent
`and Trademark Office (“PTO”).
`The Board had jurisdiction under 35 U.S.C. § 316(c).
`We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and
`35 U.S.C. §§ 141(c), 319.
`
`II
`Obviousness is a question of law based on underlying
`fact findings. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 427 (2007). Those findings include: (1) the scope and
`content of the prior art; (2) differences between the prior
`art and the claims at issue; (3) the level of ordinary skill in
`the pertinent art; and (4) secondary considerations such as
`commercial success, long felt but unsolved needs, and fail-
`ure of others. See Graham v. John Deere Co., 383 U.S. 1,
`17-18 (1966). We review the Board’s legal conclusions on
`obviousness de novo and its findings of fact for substantial
`
`
`In No. 21-1731, Carucel appeals the final written
`3
`decisions in IPR2019-1101/1573, regarding the ’904 patent;
`IPR2019-1102 (’701 patent); IPR2019-1103 (’023 patent);
`IPR2019-1079 (’023 patent); and IPR 2019-1105 (’543 pa-
`tent). All but one of the IPRs at issue in No. 21-1731 were
`filed by Volkswagen; the exception, IPR2019-1079 (’023 pa-
`tent), was filed by Unified. In No. 21-1911, Carucel appeals
`the final written decisions in IPR2019-1298/1635, regard-
`ing the ’904 patent; IPR2019-1442 (’701 patent); IPR2019-
`1404 (’023 patent); and IPR2019-1441/1644 (’543 patent).
`All of the IPRs in No. 21-1911 were filed by Mercedes-Benz.
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`evidence. See HTC Corp. v. Cellular Commc’ns Equip.,
`LLC, 877 F.3d 1361, 1369 (Fed. Cir. 2017). “Substantial
`evidence is such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.” Intel
`Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1378 (Fed.
`Cir. 2023). “[T]he possibility of drawing two inconsistent
`conclusions from the evidence does not prevent an admin-
`istrative agency’s finding from being supported by substan-
`tial evidence.” Consolo v. Fed. Mar. Comm’n, 383 U.S. 607,
`620 (1966). Additionally, we “defer to the Board’s findings
`concerning the credibility of expert witnesses.” Yorkey v.
`Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010).
`We review the Board’s claim construction de novo and
`any subsidiary factual findings based on extrinsic evidence
`for substantial evidence. See Polaris Innovations Ltd. v.
`Brent, 48 F.4th 1365, 1372 (Fed. Cir. 2022). Claim terms
`are generally given their ordinary and customary meaning,
`which is the meaning understood by one of ordinary skill
`in the art at the time of the invention, reading the claim in
`the context of the full specification and prosecution history.
`See Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed.
`Cir. 2005) (en banc); see also Lexion Med., LLC v. Northgate
`Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011). “There
`are only two exceptions to this general rule: 1) when a pa-
`tentee sets out a definition and acts as his own lexicogra-
`pher, or 2) when the patentee disavows the full scope of the
`claim term either in the specification or during prosecu-
`tion.” Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d
`1362, 1365 (Fed. Cir. 2012).
`We review the actions of the PTO for compliance with
`the Administrative Procedure Act (“APA”), 5 U.S.C. § 551
`et seq. Applying this standard of review, we “hold unlawful
`and set aside agency action, findings, and conclusions
`found to be . . . arbitrary, capricious, an abuse of discretion,
`or otherwise not in accordance with law,” “without ob-
`servance of procedure required by law,” or “unsupported by
`substantial evidence.” 5 U.S.C. §§ 706(2)(A), (D), (E).
`
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`III
`On appeal, Carucel challenges: (1) the Board’s con-
`struction of the claim terms “mobile unit” and “mobile de-
`vice;” (2) the Board’s construction of “adapted to;”4 (3) the
`Board’s conclusion that various claims of Carucel’s patents
`are invalid as obvious over several prior art combinations;
`and (4) the PTO’s “Director Review” procedures, which
`Carucel contends violate the APA. We conclude that none
`of these issues has merit.
`
`A
`Before addressing Carucel’s contentions, we begin by
`rejecting the PTO’s position that Carucel forfeited its op-
`portunity to appeal the Board’s construction of “mobile
`unit” and “mobile device” by not first raising these chal-
`lenges in its request for Director Review. Appeals from IPR
`proceedings are governed by 35 U.S.C. § 319, which pro-
`vides that “[a] party dissatisfied with the final written de-
`cision of the Patent Trial and Appeal Board . . . may appeal
`the decision.” The statute does not impose as a further re-
`quirement for preserving issues that they also be presented
`as part of an intra-agency appeal.
`The only other authority the PTO cites for its forfeiture
`position is our non-precedential decision in Polycom, Inc. v.
`Fullview, Inc., 767 F. App’x 970, 980 (Fed. Cir. 2019), which
`held that “Polycom could have, and should have, raised [its]
`anticipation argument in its request for rehearing” and, as
`such, found the argument waived (forfeited). It would seem
`to us, however, that just as failure to seek rehearing cannot
`result in forfeiture, see In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1377 (Fed. Cir. 2016), neither should failure
`to raise an issue when rehearing is sought result in
`
`4 Carucel raises this issue only in Appeal No. 21-
`1731 and only in connection with IPRs filed by Volkswagen,
`not those initiated by Unified.
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`forfeiture. In any case, Polycom concerned inter partes
`reexamination, not inter partes review. Inter partes reex-
`aminations are governed by a regulation requiring parties
`seeking rehearing of a Board decision to “state with partic-
`ularity the points believed to have been misapprehended or
`overlooked in rendering the Board’s opinion reflecting its
`decision.” 37 C.F.R. § 41.79(b)(1). No similar regulation or
`other authority exists in the IPR context.5 Thus, issues
`Carucel litigated in the IPR but chose not to present in its
`requested Director Review are not forfeited and may be
`pressed on appeal.
`
`B
`Carucel appeals the Board’s construction of “mobile de-
`vice” and “mobile unit,” terms the parties agree have the
`same meaning as each other. Carucel proposed that these
`terms should be construed as “a device that must register
`with and be able to directly communicate with the cellular
`network.” The Board held, instead, that no construction
`
`5 At the time Carucel made its requests for Director
`Review, the PTO’s Arthrex Q&As webpage did not mention
`any exhaustion requirement. See PTO, Arthrex Q&As,
`https://www.uspto.gov/patents/patent-trial-and-appeal-
`board/procedures/arthrex-qas (last accessed December 18,
`2023). Later, on April 22, 2022, the Arthrex Q&As webpage
`was superseded by the PTO’s Interim Process for Director
`Review webpage, which instructed that parties “should
`raise any additional issues sparingly, if at all.” No. 21-1911
`Appellant’s Reply Br. at 9. On July 24, 2023, the PTO pub-
`lished “Revised Interim Director Review Process,” an-
`nouncing that henceforth “[a]ny argument not made within
`the Request [for Director Review] may be deemed waived.”
`See PTO, Revised Interim Director Review Process,
`https://www.uspto.gov/patents/ptab/decisions/revised-in-
`terim-director-review-process (last accessed December 18,
`2023).
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`was necessary. On appeal we must address two disputes:
`(1) whether the “mobile device” and “mobile unit” are lim-
`ited to devices that work with a “cellular network” or may
`also include devices that work with other telephone net-
`works, such as cordless phones; and (2) whether the
`claimed “mobile device” and “mobile unit” must be capable
`of registering and communicating with the network “di-
`rectly” (i.e., “by itself”) without relying on actions by inter-
`mediaries.6 We agree with the Board on both issues: the
`“mobile device” and “mobile unit” are not limited to devices
`that work with a “cellular network” or to those that are ca-
`pable of registering and communicating “directly” with the
`network.
`First, there is no basis in the intrinsic record to limit
`the “mobile device” or “mobile unit” to devices that work
`only with a “cellular network.” Nothing about the claim
`language – that is, the words “mobile,” which refers to ca-
`pability of movement, or “unit” or “device,” which are ge-
`neric indications of a physical article – even suggests
`Carucel’s proposed restriction.
`Turning to the specification, Carucel points to the
`“Field of the Invention,” which states that the Carucel pa-
`tents “relate[] to cellular telephone systems in which a mo-
`bile unit communicates by wireless communication to a
`
`6 Although its proposed construction does not explic-
`itly require that the claimed “mobile device” and “mobile
`unit” register with a network “by itself,” Carucel has main-
`tained, both during the IPRs and in the present appeals,
`that its proposed construction does so. See, e.g., No. 21-
`1731 J.A. 10635 (stating that prior art did not disclose “mo-
`bile device” limitation as prior art telephone was “not capa-
`ble of registering with a cellular network by itself”); No. 21-
`1731 Appellant’s Reply Br. at 12 (arguing that “mobile de-
`vice must register as part of its independent functionality”
`and “by definition . . . can do so by itself”).
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`base station connected to the wire telephone network.”
`E.g., ’904 patent at 1:15-18 (emphasis added). That the in-
`vention “relates to” cellular telephone systems does not
`mean the invention is also limited to, and may only be prac-
`ticed with, a cellular network. Carucel emphasizes that
`“[t]he only embodiments disclosed in the specification are
`mobile units and mobile base stations that connect to mo-
`bile cellular networks” and “[t]he only communications
`standards discussed” in the specification, “TDMA/CDMA
`and IS-95,” are “cellular phone standards.” No. 21-1731
`Appellant’s Br. at 36-37. However, “[e]ven when the spec-
`ification describes only a single embodiment, the claims of
`the patent will not be read restrictively unless the patentee
`has demonstrated a clear intention to limit the claim scope
`using words or expressions of manifest exclusion or re-
`striction.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`898, 906 (Fed. Cir. 2004) (internal quotation marks omit-
`ted). We see no such clear intention here. To the contrary,
`adoption of Carucel’s construction would result in the
`claims failing to capture the breadth of the patents’ disclo-
`sure – including embodiments in which mobile devices
`communicate with the moving base stations using “a stand-
`ard radio interface, well known in the art,” ’904 patent at
`6:43-45 – a generally disfavored outcome in the absence of
`intrinsic evidence limiting the scope of the claims. See
`Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583
`(Fed. Cir. 1996) (noting that claim construction excluding
`preferred embodiment “is rarely, if ever, correct”).
`Second, the intrinsic evidence does not require the “mo-
`bile device” or “mobile unit” to be able to “directly” com-
`municate with the telephone network or to register with
`the telephone network “by itself.” To the contrary, the
`specification repeatedly discloses embodiments in which
`the claimed “mobile device” or “mobile unit” communicates
`with the telephone network indirectly via intermediaries.
`In one such embodiment, “the mobile unit does not receive
`communications from the fixed radio port but only from the
`
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`movable base station . . . thereby eliminating any direct
`communication from the mobile unit to the fixed radio
`port.” ’904 patent at 3:49-56 (emphasis added); see also id.
`at 3:18-21 (explaining that moving base stations may be
`interposed between fixed base stations and mobile device).
`For its narrower construction, Carucel relies on a por-
`tion of the specification which states, in pertinent part:
`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 ad-
`dress 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 net-
`work. This registration procedure is required so
`that an incoming call for the mobile unit can be ap-
`propriately directed.
`’904 patent at 9:64-10:4. Even this portion of the specifica-
`tion, however, describes indirect communication between
`the “mobile unit” and the telephone network during the
`registration process, explaining that the “address” of the
`mobile unit is relayed to the telephone network via inter-
`mediaries including “the closest moving base station 30 and
`. . . a fixed radio port and the gateway switch 60.” Id. (em-
`phasis added). This language does not support the restric-
`tive reading of the claim terms pushed by Carucel.
`Thus, we agree with the Board’s decision to reject
`Carucel’s proposed construction of the terms “mobile de-
`vice” and “mobile unit.” Because Carucel only challenges
`the Board’s claim construction to the extent that it failed
`to narrow claim scope in the manner Carucel had proposed,
`we need not determine whether the Board was also correct
`that these terms require no construction.
`C
`
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`CARUCEL INVESTMENTS L.P. v. VIDAL
`
`In appeal No. 21-1731 only, Carucel challenges the
`Board’s construction of the term “adapted to,” as it appears
`in the preambles of claims 22 and 34 of the ’904 patent. In
`previous litigation, a district court construed the term to
`mean “‘constructed to move with the traffic at a rate of
`speed which is comparable to the speed of the traffic.’” No.
`21-1731 J.A. 234-35 (quoting J.A. 5556-59). The Board ac-
`cepted the parties’ agreement to adopt this same construc-
`tion. Later, the parties developed a dispute over the
`meaning of “traffic” as used in the Board’s construction.
`Specifically, Carucel proposed that “traffic” refers only to
`“an automotive vehicle traveling on a roadway” and does
`not also include “airplane traffic.” No. 21-1731 J.A. 6639.
`Carucel argued that because “[a]n airplane does not move
`with traffic as it is not bound to predetermined roads,” and
`“an airplane can travel at speeds up to five hundred miles-
`per-hour and, as such, does not move with the traffic at a
`rate of speed which is comparable to the traffic,” airplanes
`must be excluded from the construction. Id. The Board
`rejected Carucel’s proposed narrowing of the term, as it
`was not supported by the specification or the prosecution
`history of the Carucel patents.
`We agree with the Board’s rejection of Carucel’s pro-
`posal to narrow the claim term “adapted to” by restricting
`“traffic” to only “vehicular traffic” traveling on “predeter-
`mined roads.” Carucel asserts that “[t]he type of traffic
`that is described in the specification is solely automobile
`traffic” and “the sole embodiment is directed to ‘roadways’
`involving ‘vehicular traffic.’” No. 21-1731 Appellant’s Br.
`at 46. However, as the Board explained and the PTO ar-
`gues on appeal, the specification also discloses pedestrian
`traffic. See, e.g., ’904 patent at 2:41 (“The low speed is
`mostly pedestrian traffic . . .”), 3:35-39 (“[A] number of
`fixed base stations are provided in addition to moving base
`stations allowing slower moving traffic, such as pedestrian
`traffic . . . to communicate via the fixed base stations.”),
`4:48-51 (“[F]ixed base stations 70 would accommodate
`
`

`

`Case: 21-1731 Document: 123 Page: 17 Filed: 12/26/2023
`
`CARUCEL INVESTMENTS L.P. v. VIDAL
`
`17
`
`communications with mobile units traveling at a speed of
`less than 30 miles per hour including pedestrian traffic and
`stationary units.”). Carucel’s narrowed construction, thus,
`would improperly read embodiments relating to pedestrian
`traffic out of the scope of the claims. See Vitronics, 90 F.3d
`at 1583.
`Carucel urges us to consider the testimony of its expert,
`Dr. Lanning, who opined that there is a significant differ-
`ence in the circuitry and signaling between a car-based sys-
`tem and one involving commercial aircraft. We may not,
`however, rely on extrinsic evidence to adopt a claim con-
`struction that contradicts what a person of ordinary skill
`in the art would understand from the intrinsic evidence.
`See Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8
`F.4th 1285, 1287 (Fed. Cir. 2021) (“If the meaning of a
`claim term is clear from the intrinsic evidence, there is no
`reason to resort to extrinsic evidence.”).
`For these reasons, we affirm the Board’s construction
`of the term “adapted to.”
`
`D
`Carucel next contends that substantial evidence does
`not support the Board’s determination that its patent
`claims were proven to be invalid as obvious. In particular,
`Carucel challenges the Board’s findings with respect to the
`combination of Gilhousen865 with Gilhousen3907 and the
`combinations of Ito with references relating to a CDMA cel-
`lular system.8 We are unpersuaded.
`
`
`7 U.S. Patent No. 5,109,390. See No. 21-1731 J.A.
`2166-76.
`8
`In the No. 21-1731 appeal, Carucel also faults com-
`binations involving the Vercauteren reference. But the
`Board did not consider the Vercauteren-based combina-
`tions in its final written decision and neither do we.
`
`

`

`Case: 21-1731 Document: 123 Page: 18 Filed: 12/26/2023
`
`18
`
`CARUCEL INVESTMENTS L.P. v. VIDAL
`
`Carucel first attacks the Board’s findings regarding the
`combination of the aircraft repeater disclosures in Gil-
`housen865 with the CDMA system of Gilhousen390, criti-
`cizing the Board for failing to credit the testimony of
`Carucel’s expert, Dr. Lanning, who pointed out “technical
`flaws that would render the combination of the two refer-
`ences non-functional.” No. 21-1731 Appellant’s Br. at 48.
`Substantial evidence supports the Board’s determination
`of obviousness based on the combination of Gilhousen865
`and Gilhousen390. For instance, with respect to claim 22
`of the ’904 patent, the Board relied on the testimony of pe-
`titioner’s expert, Dr. Ding, to find that a person of ordinary
`skill in the art would have been motivated to modify Gil-
`housen865’s airborne communication system with Gil-
`housen390’s “various configurations to achieve signal
`diversity at the receiver,” at least for the purpose of “reduc-
`ing errors caused by well-known deleterious effects on
`wirelessly-transmitted signals.” No. 21-1731 J.A. 259, 261-
`62; see also No. 21-1731 J.A. 3457-65 ¶¶ 97-109. The Board
`also credited Dr. Ding’s testimony that an ordinarily
`skilled artisan would have combined these references “with
`a reasonable expectation of success.” No. 21-1731 J.A. 261
`(citing No. 21-1731 J.A. 10509-12 ¶¶ 46-50). The testimony
`cited by the Board directly addressed Carucel’s contentions
`as to the purported incompatibility caused by the high
`speed of aircraft. Having determined to credit the opinion
`of Dr. Ding, a finding to which we defer, see Yorkey, 601
`F.3d at 1284, the Board had substantial evidence for its
`conclusion that “the proposed combination of Gilhousen865
`and Gilhousen390 would involve nothing more than incor-
`porating well-known concepts . . . into a well-known sys-
`tem.” No. 21-1731 J.A. 263-64 (citing No. 21-1731 J.A.
`3465 ¶ 109).9
`
`
`9 Carucel faults the Board’s final written decisions
`for failing to adequately explain why it was persuaded by
`
`

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`Case: 21-1731 Document: 123 Page: 19 Filed: 12/26/2023
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`CARUCEL INVESTMENTS L.P. v. VIDAL
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`19
`
`Carucel next challenges the Board’s obviousness deter-
`minations regarding combinations involving Ito and a
`CDMA cellular phone system. Carucel argues that Ito de-
`scribes a TDMA system and, because “CDMA and TDMA
`cellular phone systems are incompatible as a matter of
`technology,” a skilled artisan would not combine these ref-
`erences. No. 21-1731 Appellant’s Br. at 50. Substantial
`evidence supports the Board’s conclusion to the contrary.
`For example, looking again at ’904 patent claim 22 –
`which was challenged in IPR2019-1298/1635 based on the
`combination of Ito and Gilhousen50110 – the Board credited
`testimony from petitioner’s expert, Dr. Fischer, that devel-
`opments in the telecommunications industry would have
`led a person of ordinary skill in the art to apply Gil-
`housen501’s CDMA technology to Ito’s disclosures, given
`the advantages of CDMA over FDMA/TDMA. J.A. 40-41
`(citing J.A. 1387-89 ¶¶ 104-09). The Board also pointed to
`Gilhousen501’s disclosure that CDMA technology has “sig-
`nificant advantages” over Ito’s FDMA/TDMA technology.
`J.A. 40 (citing J.A. 1230 at 1:18-23).
`Taking claim 13 of the ’543 patent as another example
`– which was challenged in IPR2019-1105 based on the com-
`bination of Ito, Paneth,11 and Gilhousen390 – the Board
`
`certain obviousness arguments, analogizing the situation
`here to what we encountered in Alacritech, Inc. v. Intel
`Corp., 966 F.3d 1367, 1371 (Fed. Cir. 2020). This compari-
`son lacks merit. Here, unlike in Alacritech, the Board out-
`lined the parties’ dispute and articulated its rationale,
`includin