PTAB

IPR2019-01442

Mercedes Benz USA LLC v. Carucel Investments LP

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Communication System With Moving Base Station
  • Brief Description: The 7,848,701 patent discloses a system to address the "handoff problem" in mobile communications by using movable base stations as intermediaries between mobile devices (e.g., cell phones) and fixed network base stations, thereby reducing the number of handoffs required by the mobile device itself.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gilhousen761, Gilhousen501, and Adachi

  • Claims 10 and 17 are obvious over Gilhousen761 in view of Gilhousen501 and Adachi.
    • Prior Art Relied Upon: Gilhousen761 (Patent 5,519,761), Gilhousen501 (Patent 5,101,501), and Adachi (Patent 5,652,765).
    • Core Argument for this Ground:
      • Prior Art Mapping: Petitioner argued that Gilhousen761 discloses a movable base station within an aircraft for communicating with ground stations, satisfying the core "movable base station" limitation. Gilhousen501, by the same inventor, teaches improved "soft handoff" techniques and a controller that processes and combines signals from multiple sources using diversity combining in a CDMA system. Adachi discloses a repeater with a plurality of spatially separated antennas to mitigate multipath fading effects in CDMA systems. The combination allegedly provides all elements of claim 10. Claim 17's requirement of conveyance by a "vehicle" is met by the aircraft in Gilhousen761.
      • Motivation to Combine: A POSITA would combine Gilhousen501's improved soft handoff methods into the CDMA system of Gilhousen761 to solve known handoff reliability problems, as both references are in the same field and from the same inventor. A POSITA would further incorporate Adachi’s spatially separated antennas into the combined system to mitigate multipath fading, a well-understood problem in mobile communications that Adachi was designed to address.
      • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involves applying known solutions (soft handoff, antenna diversity) to solve their respective, well-known problems (handoff reliability, signal fading) within the same technical field of CDMA communications.

Ground 2: Obviousness over Ito, Gilhousen501, and Adachi

  • Claims 10, 16-18, 31, and 34-35 are obvious over Ito in view of Gilhousen501 and Adachi.

    • Prior Art Relied Upon: Ito (Patent 5,276,686), Gilhousen501 (Patent 5,101,501), and Adachi (Patent 5,652,765).
    • Core Argument for this Ground:
      • Prior Art Mapping: Petitioner contended that Ito discloses a "mobile base device" installed in a car that serves as an intermediary between a standard cellular base station and a portable phone inside the car, satisfying the "movable base station" limitation. However, Ito uses an FDMA/TDMA system. The proposed combination replaces Ito's older FDMA protocol with the superior CDMA "soft-handoff" technology and diversity-combining controller taught by Gilhousen501. Adachi is then added to provide the plurality of spatially separated antennas. Ito further discloses transmitting signals within time slots (claim 16), and the mobile base device is explicitly installed in a car (claims 17, 18, 34, 35).
      • Motivation to Combine: A POSITA would have been motivated to replace Ito's FDMA system with the more advanced CDMA technology from Gilhousen501 to improve call quality, enhance capacity, and reduce dropped calls, which were known limitations of FDMA systems. Once the system was modified to use CDMA, a POSITA would be further motivated to incorporate Adachi’s antenna diversity to mitigate fading, a known issue in CDMA environments.
      • Expectation of Success: There was a reasonable expectation of success because upgrading a system from FDMA to the more robust CDMA standard was a well-understood and predictable path of innovation. Incorporating antenna diversity from Adachi was a routine design choice to enhance the performance of the resulting CDMA system.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) for claims 10, 15-18, 31, and 33-35 over Ito in view of Jakes (a 1971 publication on space diversity). This ground argued for modifying Ito's system with Jakes's teachings on using spatially separated antennas to mitigate signal fading.

4. Key Claim Construction Positions

  • Petitioner argued for applying claim constructions from a prior district court litigation involving the ’701 patent ( Carucel Investments, L.P. v. Novatel Wireless, Inc.).
  • "configured to move relative to Earth": Petitioner adopted Patent Owner's litigation position that this term is met when a movable base station is installed in a vehicle that is "constructed to move with traffic."
  • "fixed port" / "base station": Based on the court's prior construction, Petitioner argued that a standard cellular base station connected to the telephone network meets the limitations for both terms.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) or §314(a) would be inappropriate.
  • The petition contended it was not a "serial" or "follow-on" petition, as Petitioner had not previously filed against the ’701 patent.
  • Petitioner asserted it has no "significant relationship" with petitioners in other IPRs filed against the ’701 patent (e.g., Volkswagen Group of America), arguing they are not co-defendants, were accused of infringing with different products, and there was no coordination. These factors were argued to weigh heavily in favor of institution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 10, 15-18, 31, and 33-35 of Patent 7,848,701 as unpatentable.