Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13330 Page 1 of 16
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`CARUCEL INVESTMENTS, L.P., a
`Delaware limited partnership,
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`Case No.: 16-cv-118-H-KSC
`
`Plaintiff,
`
`v.
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`NOVATEL WIRELESS, INC., a
`Delaware corporation; VERIZON
`COMMUNICATIONS, INC., a Delaware
`corporation; and CELLCO
`PARTNERSHIP d/b/a/VERIZON
`WIRELESS, a Delaware general
`partnership,
`
`Defendants.
`
`ORDER DENYING PLAINTIFF’S
`MOTION FOR JUDGMENT AS A
`MATTER OF LAW OR, IN THE
`ALTERNATIVE, FOR A NEW
`TRIAL
`
`[Doc. No. 348.]
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`On May 8, 2017, Plaintiff Carucel Investments, L.P. filed a motion for judgment as
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`a matter of law or, in the alternative, for a new trial. (Doc. No. 348.) On May 26, 2017,
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`Defendants Novatel Wireless, Inc., Verizon Communications, Inc., and Cellco Partnership
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`doing business as Verizon Wireless filed a response in opposition to Plaintiff’s motion.
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`(Doc. No. 353.) On June 5, 2017, Plaintiff filed its reply. (Doc. No. 354.)
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 1
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13331 Page 2 of 16
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`The Court held a hearing on the matter on June 12, 2017. Robert F. Ruyak and
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`Robert M. Harkins, Jr. appeared for Plaintiff. Amardeep L. Thakur, Joshua L. Sohn, and
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`Bruce Zisser appeared for Defendants. For the reasons below, the Court denies Plaintiff’s
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`motion for judgment as a matter of law or, in the alternative, for a new trial.
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`Background
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`On May 27, 2015, Plaintiff Carucel Investments, L.P. filed a complaint for patent
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`infringement in the United States District Court for the Southern District of Florida against
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`Defendants Novatel Wireless, Inc., AT&T Mobility LLC, Verizon Communications, Inc.,
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`and TigerDirect, Inc., alleging infringement of U.S. Patent No. 7,221,904, U.S. Patent No.
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`7,848,701, U.S. Patent No. 7,979,023, U.S. Patent No. 8,463,177, U.S. Patent No.
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`8,718,543, and U.S. Patent No. 8,849,191.1 (Doc. No. 1, Compl.) Specifically, Plaintiff
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`alleged that Defendants’ mobile broadband hotspot devices, the MiFi devices, infringe the
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`patents-in-suit. (Id. ¶¶ 28-29.)
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`The patents-in-suit are all entitled “Mobile Communication System with Moving
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`Base Station” and share an essentially identical specification. (See Doc. No. 1, Compl.
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`Exs. A-C, E-F.) The invention disclosed in the patents-in-suit “relates to cellular telephone
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`systems in which a mobile unit communicates by wireless communication to a base station
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`connection to the wire telephone network and more particularly to cellular telephone
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`systems adapted for use with fast-moving mobile units.” ’904 Patent at 1:16-19. The
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`specification details the problems that prior art telecommunications systems had with fast-
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`moving mobile units, particularly the problem of dealing with transfers of fast-moving
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`mobile units between stationary cell sites as the mobile units move through the cellular
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`network. See id. at 1:22-2:61. The specification provides the following summary of the
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`invention:
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`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
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`1
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`3, 5.)
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`The ’177 and ’191 patents are no longer asserted in this action. (Doc. No. 198; Doc. No. 277 at
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 2
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13332 Page 3 of 16
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`a moving mobile telephone unit and a fixed base station. In accordance with
`this invention, a 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. The
`movable base station further communicates by radio signals with a plurality
`of fixed antennas spaced along the path of travel of the mobile base station.
`The several fixed antennas are connected to a telephone wire line network via
`a telephone gateway office in a standard fashion.
`In accordance with this
`invention, the fixed radio ports are synchronized and the interface between the
`moving base station and the fixed radio ports is a time division multiplexed
`(TDM)-direct-sequence, spread-spectrum CDMA.
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`Id. at 3:18-34. Figure 1 of the ’904 patent displays an embodiment of the claimed system:
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`As an example of the claimed invention, Claim 22 of the ’904 Patent provides:
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`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
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 3
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13333 Page 4 of 16
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`comprising:
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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;
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`a transmitter adapted to transmit, within the frequency band, a resultant signal
`to the mobile unit in accordance with at least one of the plurality of signals;
`and
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`a processor adapted to maximize an amount of transferred information to the
`mobile unit by evaluating a quality of each of the plurality of signals
`transmitted from the plurality of fixed radio ports.
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`Id. at 12:65-13:11.
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`On September 15, 2015, Carucel dismissed its claims against Defendant TigerDirect,
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`Inc. with prejudice. (Doc. No. 11.) On December 16, 2015, Carucel filed a first amended
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`complaint alleging infringement of the same six patents and adding as a new Defendant
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`Cellco Partnership d/b/a Verizon Wireless. (Doc. No. 58.)
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`On January 15, 2016, the action was transferred to the Southern District of
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`California. (Doc. Nos. 69-70.) On September 19, 2016, the Court issued a claim
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`construction order construing the disputed terms in the patents-in-suit. (Doc. No. 131.) On
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`December 9, 2016, the Court dismissed Defendant AT&T with prejudice. (Doc. No. 139.)
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`On March 2, 2017, the Court denied Defendants’ motion for summary judgment.
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`(Doc. No. 226.) On April 3, 2017, the Court issued an order on the parties’ Daubert
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`motions and motions in limine. (Doc. No. 305.)
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`The Court held a jury trial beginning on April 4, 2017. (Doc. No. 316.) On April
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`10, 2017, the jury returned a verdict finding that Plaintiff had failed to prove that any of
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`the accused products infringed any of the asserted patent claims.2 (Doc. No. 335 at 2.) On
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`2
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`During the reading of the verdict in Court, an issue arose as to the jury’s answers to Question No.
`3 regarding “Validity – Obvious or Non-Obvious” in the verdict form. At the hearing, the parties agreed
`that the jury’s answers to Question No. 3 were moot in light of the jury’s answers to Question No. 1
`regarding “Infringement” in the verdict form. (Doc. No. 341, Trial Tr. Vol. V at 6-7.)
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 4
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13334 Page 5 of 16
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`April 10, 2017, the Court entered judgment in favor of Defendants and against Plaintiff.
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`(Doc. No. 336.) By the present motion, Plaintiff moves pursuant to Federal Rule of Civil
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`Procedure 50(b) for judgment as a matter of law in its favor on the issue of infringement
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`or, in the alternative, for a new trial under Rule 59. (Doc. No. 348-1.)
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`I.
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`Legal Standards
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`A.
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`Rule 50 Motion for Judgment as a Matter of Law
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`Discussion
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`In a patent case, a motion for judgment as a matter of law is governed by the law of
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`the regional circuit, here the Ninth Circuit. InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
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`751 F.3d 1327, 1338 (Fed. Cir. 2014). Under Federal Rule of Civil Procedure 50, a court
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`should render judgment as a matter of law (“JMOL”) only when “a party has been fully
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`heard on an issue during a jury trial and the court finds that a reasonable jury would not
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`have a legally sufficient evidentiary basis to find for the party on that issue . . . .” Fed. R.
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`Civ. P. 50(a)(1); see Reeves v. Sanderson Plumbing Prods., 530 U.S. 133, 149 (2000). In
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`other words, judgment as a matter of law is proper when “the evidence, construed in the
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`light most favorable to the nonmoving party, permits only one reasonable conclusion, and
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`that conclusion is contrary to the jury’s verdict.” Pavao v. Pagay, 307 F.3d 915, 918 (9th
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`Cir. 2002); accord InTouch Techs., 751 F.3d at 1338; see also Hangarter v. Provident Life
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`& Accident Ins. Co., 373 F.3d 998, 1005 (9th Cir. 2004) (“JMOL should be granted only
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`if the verdict is ‘against the great weight of the evidence, or it is quite clear that the jury
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`has reached a seriously erroneous result.’”); Reeves, 530 U.S. at 150 (“[T]he standard for
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`granting summary judgment ‘mirrors’ the standard for judgment as a matter of law.”). In
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`contrast, “[a] jury’s verdict must be upheld if it is supported by substantial evidence, which
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`is evidence adequate to support the jury’s conclusion, even if it is also possible to draw a
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`contrary conclusion.” Pavao, 307 F.3d at 918.
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`In deciding a motion for judgment as a matter of law, a court “must view all evidence
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`in the light most favorable to the nonmoving party, draw all reasonable inferences in the
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`favor of the non-mover, and disregard all evidence favorable to the moving party that the
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 5
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13335 Page 6 of 16
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`jury is not required to believe.” Harper v. City of Los Angeles, 533 F.3d 1010, 1021 (9th
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`Cir. 2008); see Reeves, 530 U.S. at 150-51. A district court “may not make credibility
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`determinations or weigh the evidence.” Reeves, 530 U.S. at 150. “‘[T]he court must accept
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`the jury’s credibility findings consistent with the verdict’ . . . [and] ‘may not substitute its
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`view of the evidence for that of the jury.’” Winarto v. Toshiba Am. Elecs. Components,
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`Inc., 274 F.3d 1276, 1283 (9th Cir. 2001).
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`B.
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`Rule 59 Motion for New Trial
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`In a patent case, a motion for a new trial is also governed by the law of the regional
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`circuit. InTouch Techs., 751 F.3d at 1338. Under Federal Rule of Civil Procedure 59(a),
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`a district court “may, on motion, grant a new trial on all or some of the issues–and to any
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`party– . . . after a jury trial, for any reason for which a new trial has heretofore been granted
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`in an action at law in federal court.” “Rule 59 does not specify the grounds on which a
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`motion for a new trial may be granted. Rather, the court is bound by those grounds that
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`have been historically recognized.” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir.
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`2007) (internal citations and quotation marks omitted). In the Ninth Circuit, “‘[t]he trial
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`court may grant a new trial only if the verdict is contrary to the clear weight of the evidence,
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`is based upon false or perjurious evidence, or to prevent a miscarriage of justice.’” Id.; see
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`also Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009) (“[A]
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`district court in the Ninth Circuit ‘may grant a new trial only if the verdict is against the
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`clear weight of the evidence.’”). “Unlike with a Rule 50 determination, [a] district court,
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`in considering a Rule 59 motion for new trial, is not required to view the trial evidence in
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`the light most favorable to the verdict. Instead, the district court can weigh the evidence
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`and assess
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`the credibility of
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`the witnesses.”
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` Experience Hendrix L.L.C. v.
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`Hendrixlicensing.com Ltd, 762 F.3d 829, 842 (9th Cir. 2014). “‘[A] district court may not
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`grant a new trial simply because it would have arrived at a different verdict.’” Wallace v.
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`City of San Diego, 479 F.3d 616, 630 (9th Cir. 2007).
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`“The grant of a new trial is ‘confided almost entirely to the exercise of discretion on
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`the part of the trial court.’” Murphy v. City of Long Beach, 914 F.2d 183, 186 (9th Cir.
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 6
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13336 Page 7 of 16
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`1990) (quoting Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980)). On appeal,
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`the Ninth Circuit “afford[s] considerable deference to the district court’s new trial decision
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`and will not overturn the district court’s decision to grant a new trial absent an abuse of
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`discretion.” Experience Hendrix, 762 F.3d at 842. A district court’s “denial of a motion
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`for a new trial is reversible ‘only if the record contains no evidence in support of the
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`verdict’ or if the district court ‘made a mistake of law.’” E.E.O.C. v. Go Daddy Software,
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`Inc., 581 F.3d 951, 962 (9th Cir. 2009).
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`C.
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`Infringement
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`Under 35 U.S.C. § 271(a), “whoever without authority makes, uses, offers to sell, or
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`sells any patented invention, within the United States . . . infringes the patent.” A patent
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`infringement analysis proceeds in two steps. Markman v. Westview Instruments, Inc., 52
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`F.3d 967, 976 (Fed. Cir. 1995), aff’d 517 U.S. 370. In the first step, the court construes
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`the asserted claims as a matter of law. See id. In the second step, the factfinder compares
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`the claimed invention to the accused device. Id.; see also Verizon Servs. Corp. v. Cox
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`Fibernet Va., Inc., 602 F.3d 1325, 1340 (Fed. Cir. 2010) (“A determination of infringement
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`is a question of fact . . . .”).
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`The patentee bears the burden of proving infringement. Medtronic, Inc. v. Mirowski
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`Family Ventures, LLC, 134 S. Ct. 843, 846, 849 (2014). “To prove literal infringement,
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`the patentee must show that the accused device contains every limitation in the asserted
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`claims. If even one limitation is missing or not met as claimed, there is no literal
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`infringement.” Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1308 (Fed. Cir.
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`2002); accord Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011).
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`II.
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`Analysis of Plaintiff’s Motion
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`Each of the claims asserted at trial from the patents-in-suit contains language stating
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`that the claimed apparatus/movable base station/transmitter is “adapted to” or “configured
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`to” move. (See Doc. No. 348-1 at 5.) In the Court’s claim construction order, the Court
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`construed “the terms ‘adapted to’ and ‘configured to’ as ‘constructed to move with the
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`traffic at a rate of speed which is comparable to the speed of the traffic.’” (Doc. No. 131
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 7
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13337 Page 8 of 16
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`at 16.) All of the arguments in Plaintiff’s motion center around the “adapted to/configured
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`to” claim limitation.
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`A.
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`The Court’s Claim Construction
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`As an initial matter, in its motion, Plaintiff argues that the Court’s claim construction
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`for the term “adapted to/configured to” was erroneous. (Doc. No. 348-1 at 21-23.)
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`Specifically, Plaintiff argues that the Court erred in construing the term “adapted
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`to/configured to” by finding that the specification contained a disclaimer for that claim
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`term. (Id.) In response, Defendants argue that Plaintiff has waived any right to request a
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`revised claim construction for this claim term. (Doc. No. 353 at 7-8.) Defendants further
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`argue that the Court’s construction for this term was proper and that Plaintiff has failed to
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`provide a sufficient basis for reconsideration of the construction. (Id. at 17-21.)
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`The Court agrees with Defendants that Plaintiff waived its right to contest the
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`Court’s finding of a disclaimer with respect to the claim term “adapted to/configured to.”
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`See Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009) (“[L]itigants
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`waive their right to present new claim construction disputes if they are raised for the first
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`time after trial.”). In their claim construction briefing, Plaintiff proposed that the term
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`“adapted to” be given its plain meaning and be construed as “adjusted to a specified use or
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`situation.” (Doc. No. 123 at 17.) In addition, Plaintiff proposed that the term “configured
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`to” be given its plain meaning and be construed as “shaped, fashioned, or constructed to.”
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`(Id. at 17.) Defendants argued that the terms “adapted to” and “configured to” should be
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`construed as “constructed to move by a conveying device to track the movement of a
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`mobile unit,” or at the very least be construed as “constructed to.” (Doc. No. 120 at 16.)
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`On September 14, 2016, the Court issued a tentative claim construction order
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`rejecting the parties’ proposed constructions and “tentatively constru[ing] the terms
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`‘adapted to’ and ‘configured to’ as ‘constructed to move with the traffic at a rate of speed
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`which is comparable to the speed of the traffic.’” (Doc. No. 129 at 16.) In the tentative
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`order, the Court explained that its tentative construction was based on a disclaimer
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`contained in the specification describing the invention as a whole. (Id. at 14-15 (citing
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 8
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`

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`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13338 Page 9 of 16
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`Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1025 (Fed. Cir. 2015); Regents
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`of Univ. of Minnesota v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013).) At the
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`claim construction hearing, Plaintiff did not contest the Court’s tentative claim
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`construction. At the beginning of the claim construction hearing, counsel for Plaintiff
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`stated: “Your Honor, for Plaintiff, we’ll go ahead and submit on the tentative.” (Doc. No.
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`352 at 1-2.) Following the hearing, the Court issued its claim construction order adopting
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`the same construction and supporting analysis for the term “adapted to/configured to”
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`contained in the Court’s tentative order. (Doc. No. 131 at 16.) Plaintiff never moved for
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`reconsideration or clarification of the Court’s claim construction for the term “adapted
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`to/configured to” prior to trial. By waiting until post-trial motions to contest the Court’s
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`construction for the term “adapted to/configured to” and the Court’s disclaimer finding
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`related to that term, Plaintiff waived the specific claim construction arguments that it now
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`seeks to present. See Cordis, 561 F.3d at 1331 (“[L]itigants waive their right to present
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`new claim construction disputes if they are raised for the first time after trial.”); GPNE
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`Corp. v. Apple Inc., 108 F. Supp. 3d 839, 850 (N.D. Cal. 2015).
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`Further, even assuming Plaintiff did not waived its challenge to the Court’s claim
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`construction for the term “adapted to/configured to,” Plaintiff has failed to present a
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`sufficient basis for the Court to reconsider or alter its construction for that term. The
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`specification for the patents-in-suit provides:
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`“In accordance with this invention, a
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`movable base station moves with the traffic at a rate of speed which is comparable to the
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`speed of the traffic and communicates with a moving mobile telephone unit via standard
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`mobile radio transmission.” ’904 Patent at 3:21-25. Here, the specification is clearly
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`describing the invention as a whole and not merely a preferred embodiment of the
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`invention. The Federal Circuit has explained: “When a patentee describes the features of
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`the present invention as a whole, he alerts the reader that this description limits the scope
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`of the invention.” Pacing Techs., 778 F.3d at 1025; accord Regents of Univ. of Minnesota,
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`717 F.3d at 936.
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`The Court acknowledges that the Federal Circuit has also explained that “that use of
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 9
`
`

`

`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13339 Page 10 of 16
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`the phrase ‘present invention’ or ‘this invention’ is not always so limiting, such as where
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`the references to a certain limitation as being the ‘invention’ are not uniform, or where
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`other portions of the intrinsic evidence do not support applying the limitation to the entire
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`patent.” Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136 (Fed. Cir.
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`2011). But Plaintiff has failed to show that this is a situation where the references to the
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`limitation as being part of the invention as a whole are not uniform or where other portions
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`of the intrinsic record are to the contrary. In arguing that the specification does not support
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`the Court’s claim construction, Plaintiff identifies the following language in the
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`specification:
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`In operation, the moving base stations 30 may move in the direction of
`the flow of the traffic at a rate of, for example, 60 miles per hour, which may
`be faster than some traffic and slower than other traffic. The moving base
`station preferably handles telecommunications with mobile units which travel
`at a rate of not more than 30 miles per hour faster or slower than the moving
`base station. For example, the moving base stations 30, 40 may be traveling
`at the rate of 60 miles per hour to accommodate traffic moving in the range of
`30 to 90 miles per hour. In the arrangement of FIG. 1, fixed base stations 70
`would accommodate communications with mobile units traveling at a speed
`of less than 30 miles per hour including pedestrian traffic and stationary units.
`It will be readily apparent that instead of having fixed and moving base
`stations as depicted in FIG. 1, slowly moving and rapidly moving units may
`be used as well.
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`’904 Patent at 4:39-54. (Doc. No. 348-1 at 20, 22-23.) But this portion of the specification
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`is consistent with the Court’s construction for the term “adapted to/configured to” as
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`“constructed to move with the traffic at a rate of speed which is comparable to the speed
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`of the traffic.” Here, the specification describes a system where the moving base station
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`moves in the direction of the flow of traffic at a specific rate of speed, 60 miles per hour,
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`that is comparable to the speed of the traffic at issue, which is traveling at 30 to 90 miles
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`per hour. In the described system, any traffic moving slower than 30 miles per hour would
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`utilize a different base station, either a fixed base station or a slower moving base station.
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`Accordingly, the Court declines to reconsider its construction for the claim term “adapted
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`16-cv-118-H-KSC
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 10
`
`

`

`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13340 Page 11 of 16
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`to/configured to.” The Court’s construction for the term “adapted to/configured to”
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`remains “constructed to move with the traffic at a rate of speed which is comparable to the
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`speed of the traffic.”
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`B.
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`Infringement
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`As the patentee, Plaintiff bore the burden of establishing at trial that the accused
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`products contain every limitation in the asserted claims, including the “adapted
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`to/configured to” limitation as construed by the Court.3 See Riles, 298 F.3d at 1308;
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`Uniloc, 632 F.3d at 1301. Thus, Plaintiff held that burden of proving to the jury that the
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`accused products were constructed to move with the traffic at a rate of speed which is
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`comparable to the speed of the traffic. (See Doc. No. 131 at 16.)
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`The jury’s finding of non-infringement was supported by substantial evidence and
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`was not against the clear weight of evidence. As an initial matter, the Court addresses
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`Plaintiff’s contention that it proved infringement as a matter of law and that there is no
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`legal basis for the jury’s non-infringement finding because the evidence at trial showed
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`that the accused products are capable of being operated while in a moving in a car that is
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`traveling in traffic. (See Doc. No. 348-1 at 11 (“[T]he evidentiary record is clear, based on
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`Defendants’ own admission, that the accused devices were built to work in traffic and were
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`tested extensively to work in various traffic conditions and speeds.”).) The Court agrees
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`with Defendants that this argument by Plaintiff fails to give full meaning to the Court’s
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`claim construction for the term “adapted to/configured to.” (See Doc. No. 353 at 9.) The
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`
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`3
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`The Court notes that Plaintiff appears to imply that Defendants bore the burden at trial of proving
`their non-infringement theory. (See, e.g., Doc. No. 348-1 at 11 (“[W]hether Caurcel is entitled to
`judgment of infringement based on the evidence at trial is determined by whether Defendants presented
`sufficient evidence for a reasonable jury to conclude that its accused MiFi products did not meet the
`singular ‘constructed to move’ limitation.”).) Plaintiff, not Defendants, bears the burden of proof with
`respect to infringement. See Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843, 849
`(2014) (“It is well established that the burden of proving infringement generally rests upon the
`patentee.”); Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1314 (Fed. Cir. 2011) (“‘The
`patentee bears the burden of proving infringement by a preponderance of the evidence.’ If the patentee
`fails to meet that burden, the patentee loses regardless of whether the accused comes forward with any
`evidence to the contrary.” (citation omitted)).
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`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 11
`
`

`

`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13341 Page 12 of 16
`
`Court’s claim construction for the term “adapted to/configured to” requires not only that
`
`the moving base station is “constructed to move with the traffic” but that it is constructed
`
`to move “at a rate of speed which is comparable to the speed of the traffic.”
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`As shown at trial by Plaintiff’s own infringement expert, this limitation is not met
`
`by simply placing an operating base station in a moving vehicle that is traveling with traffic.
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`At trial, when discussing the prior art reference Uhlirz, Plaintiff’s expert, Dr. Kiasaleh,
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`testified that the “adapted to/configured to” claim limitation is not satisfied by simply
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`placing a base station on a moving train that travels along a highway with moving cars.
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`(Doc. No. 340, Trial Tr. Vol. IV at 140; see also id. at 137-141.) Dr. Kiasaleh explained
`
`that that particular example was insufficient to satisfy the claim limitation because the
`
`speed of the train “is not comparable to [the] rate of traffic.” (Doc. No. 340, Trial Tr. Vol.
`
`IV at 140.) Thus, Plaintiff’s own expert recognized that the Court’s claim construction for
`
`the term “adapted to/configured to” requires not only that the moving base station is
`
`“constructed to move with the traffic” but that it is constructed to move “at a rate of speed
`
`which is comparable to the speed of the traffic.”
`
`There was ample evidence presented at trial to allow a reasonable juror to conclude
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`that the accused MiFi devices do not infringe the patents-in-suit. At trial, Dr. Slim Souissi,
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`Novatel’s former CTO, explained that the accused MiFi devices are portable “like a phone”
`
`in that they “can work in any environment, mobile or static.” (Doc. No. 337, Trial Tr. Vol.
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`I at 232.) He further explained that because they are portable, they can operate in a “train,
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`car, anything that moves.” (Id. at 233.) He also testified that the devices were tested in
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`moving vehicles, but that during the testing, they did not “intentionally set [specific]
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`speeds” for the cars. (Id. at 235-36.) He testified that they only needed to ensure that the
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`devices could operate in normal vehicle conditions. (Id. at 236.) Mr. Tidke, Novatel’s
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`Director of Software Engineering, further explained in regards to that testing that the MiFi
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`device has no knowledge of what speed it is traveling at, and it is not aware of any other
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`vehicles around it while it is traveling. (Doc. No. 339, Trial Tr. Vol. III at 32-33.)
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`Similarly, Defendants’ expert, Dr. Kenney, testified that the MiFi devices have no way of
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`16-cv-118-H-KSC
`
`Carucel Investments—Exhibit 2106
`IPR2019-01079: Unified Patents, Inc. v. Carucel Investments L.P.
`Page 12
`
`

`

`Case 3:16-cv-00118-H-KSC Document 356 Filed 06/13/17 PageID.13342 Page 13 of 16
`
`telling how fast they might be moving or if they are moving at all and that they have no
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`cognition of any surrounding traffic.4 (Id. at 84, 102; see also id. at 79-85.) In addition,
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`Charles Gavrilovich, Jr., a patent attorney and Carucel partner, testified that he qualified
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`as a person of ordinary skill in the art, had written the claims of each of the patents-in-suit,
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`and was very familiar with those claims. (Doc. No. 337, Trial Tr. Vol. I at 84, 87-90, 158-
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`59.) Despite his knowledge, Mr. Gavrilovich testified that in 2011, he had an opportunity
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`to use a MiFi device, but did not conclude at that time that the device infringed the patents-
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`in-suit. (Id. at 140, 159.) This evidence along with the testimony from Plaintiff’s expert
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`Dr. Kiasaleh provided ample and substantial evidence for the jury to find that the accused
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`products did not infringe the patents-in-suit in light of the “adapted to/configured to” claim
`
`limitation because the devices were not constructed to move with the traffic at a rate of
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`speed which is comparable to the speed of the traffic. Whether the accused products
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`satisfied the the “adapted to/configured to” claim limitation was a triable issue of fact, and
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`the jury chose to resolve that factual dispute in favor of Defendants.
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`Further, the Court rejects Plaintiff’s contention that the verdict runs contrary to the
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`Court’s claim construction order. (See Doc. No. 348-1 at 1-2, 23.) Specifically, the Court
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`rejects Plaintiff’s assertion that the Court is altering its prior claim construction. (See id.)
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`As the patentee, Plaintiff bore the burden of proving infringement at trial, which included
`
`proving that the accused MiFi devices satisfy the “the “adapted to/configured to” claim
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`limitation. See Riles, 298 F.3d at 1308; Uniloc, 632 F.3d at 1301. To do so, Plaintiff
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`needed to prove not only that the accused products were “constructed to move with the
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`traffic” but also that they were constructed to move “at a rate of speed which is comparable
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`to the speed of the traffic” under the claim construction set forth in the Court’s September
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`
`
`4
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`The Court notes that Plaintiff did not object to this testimony from Dr. Kenney and Mr. Tidke.
`(See Doc. No. 339, Trial Tr. Vol. III at 79-85.) Plaintiff failed to object despite the Court explaining in
`its order on Plaintiff’s Motion in Limine No. 4 that “any concer

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