Volkswagen Group Of America Inc v. Carucel Investments LP

1. Case Identification

• Case #: IPR2019-01104
• Patent #: 8,463,177
• Filed: May 20, 2019
• Petitioner(s): Volkswagen Group of America, Inc.
• Patent Owner(s): Carucel Investments L.P.
• Challenged Claims: 16, 21-28, 30-31, 47-49, 51-53

2. Patent Overview

• Title: Mobile Communication System With Moving Base Station
• Brief Description: The ’177 patent discloses methods for wireless communication involving a "moving base station" interposed between a fixed network base station and a portable device. The moving base station, located in a vehicle along with the portable device, relays signals to reduce handoffs and improve communication quality for the portable device.

3. Grounds for Unpatentability

Ground 1: Claims 16, 21-26, 30, 31, 47-49, and 51-53 are obvious over Ito in view of Gardner.

• Prior Art Relied Upon: Ito (Patent 5,276,686) and Gardner (Patent 5,504,786).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ito disclosed the core concept of the ’177 patent: a mobile base device (MSS) in an automobile that communicates with both a fixed base station (BSS) and a portable device (PSS) within the same vehicle, thereby relaying signals. Ito’s system, however, used single antennas and acknowledged issues with "high speed fading phenomena." To address the limitations of independent claim 16 requiring a "plurality of spatially separated antennas," Petitioner turned to Gardner. Gardner explicitly taught that using spatially diverse antennas was a well-known and useful technique for improving receiver performance in mobile channels by reducing the effects of fading. Gardner described a modular receiver that receives signals on two or more spatially diverse antennas, aligns their phases, and combines them.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would have been motivated to combine Gardner’s spatial diversity receiver with Ito’s mobile base station. Ito identified the problem of fading in a mobile environment but did not provide a solution. Gardner directly addressed this known problem with a specific, modular solution. A POSITA would have recognized Gardner's teachings as a known solution to a known problem and would have incorporated its spatial diversity into Ito's system to improve performance.
  • Expectation of Success: The combination was argued to be predictable. Incorporating a well-known concept like Gardner's signal diversity into a known system like Ito's radio communication system would have predictably resulted in improved signal quality and reduced fading, the exact benefits described by Gardner.

Ground 2: Claims 16, 21-27, 30, 31, 47-49, and 51-53 are obvious over Gilhousen865 in view of Gilhousen390.

• Prior Art Relied Upon: Gilhousen865 (Patent 5,559,865) and Gilhousen390 (Patent 5,109,390).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented an alternative primary invalidity theory starting with Gilhousen865. This reference disclosed an airborne communication system with a repeater on an airplane that relays signals between a ground base station and an in-cabin wireless telephone, analogous to the ’177 patent’s moving base station. However, Gilhousen865 did not describe specific measures for countering signal degradation. Petitioner argued that Gilhousen390, by the same inventor, provided the missing elements. Gilhousen390 explicitly taught methods to counter fading in mobile communications through various diversity techniques, including "space diversity" (using multiple antennas) and "cell-site diversity" (receiving signals from multiple base stations simultaneously). For example, to meet the "plurality of spatially separated antennas" limitation, Petitioner pointed to Gilhousen390’s teaching of using two separate antennas for space diversity reception. To meet limitations related to receiving signals from multiple fixed ports (claim 26), Petitioner relied on Gilhousen390's teaching of cell-site diversity.
  • Motivation to Combine: A POSITA seeking to improve the performance of the Gilhousen865 system would have been motivated to look to Gilhousen390. Gilhousen390 directly addressed the known problem of fading in mobile environments, a problem inherent in the Gilhousen865 system. The fact that both patents share an inventor would have made the combination particularly compelling, as a POSITA would expect the inventor's own related work to provide compatible solutions.
  • Expectation of Success: The combination of these two references would have predictably yielded a system with improved resistance to fading. A POSITA would have expected that applying the diversity techniques from Gilhousen390 to the repeater in Gilhousen865 would successfully improve signal quality, as that was the express purpose of the diversity techniques.

Ground 3: Claim 27 is obvious over Ito in view of Gardner and Gilhousen390.

• Prior Art Relied Upon: Ito (Patent 5,276,686), Gardner (Patent 5,504,786), and Gilhousen390 (Patent 5,109,390).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Ito and Gardner from Ground 1, which established a moving base station with spatial antenna diversity. Petitioner argued this combination did not explicitly teach the limitations of claim 27, which required that signals from a plurality of fixed ports include "common data" and are combined. To supply this teaching, Petitioner added Gilhousen390. Gilhousen390 disclosed a "cell-diversity mode" where a call is routed through multiple cell-sites, and the receiver combines the signals. Petitioner contended that for these signals to be constructively combined to improve the error rate, a POSITA would have understood they must contain "common data" (i.e., signals for the same call).
  • Motivation to Combine: Petitioner argued that a POSITA, having already combined Ito and Gardner to mitigate fading via spatial diversity, would have been further motivated to incorporate Gilhousen390's cell-site diversity. This would serve as an additional or alternative method for addressing fading and improving signal quality, particularly during handoffs between coverage zones, a scenario inherent in Ito's mobile system.
  • Expectation of Success: Combining signals with common data from multiple sources was a known technique for improving signal quality. Therefore, a POSITA would have had a reasonable expectation that adding Gilhousen390's cell-site diversity to the Ito/Gardner system would predictably improve the error rate of the received data.

• Additional Grounds: Petitioner asserted additional obviousness challenges. Ground 3 argued claim 28 is obvious over Ito, Gardner, Gilhousen390, and Fenwick (Patent 4,001,692), adding Fenwick to teach time diversity. Ground 5 made a similar argument for claim 28 over Gilhousen865, Gilhousen390, and Fenwick, again using Fenwick to teach transmitting signals with different time delays to combat fading.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 16, 21-28, 30-31, 47-49, and 51-53 of Patent 8,463,177 as unpatentable.