`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 32
`
`Entered: September 14, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`VOLKSWAGEN GROUP OF AMERICA INC.,
`Petitioner,
`v.
`CARUCEL INVESTMENTS L.P.,
`Patent Owner.
`___________
`
`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`___________
`
`UNIFIED PATENTS, LLC.,
`Petitioner,
`v.
`CARUCEL INVESTMENTS, L.P.,
`Patent Owner.
`_____________
`
`IPR2019-01079 (Patent 7,979,023 B2)
`_____________
`
`Record of Oral Hearing
`Held: September 2, 2020
`_____________
`
`
`Before THOMAS L. GIANNETTI, DANIEL J. GALLIGAN, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER,
`VOLKSWAGEN OF AMERICA GROUP, INC.:
`
`
`RYAN RICHARDSON, ESQUIRE
`Sterne Kessler Goldstein & Fox
`1100 New York Avenue
`Suite 600
`Washington, D.C. 20005
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PETITIONER,
`UNIFIED PATENTS, LLC:
`
`
`
`MICHELLE CALLAGHAN, ESQUIRE
`Unified Patents, LLP
`1875 Connecticut Avenue, N.W.
`Floor 10
`Washington, D.C. 20009
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER,
`CARUCEL INVESTMENTS, L.P.:
`
`
`
`
`
`
`
`
`
`
`SCOTT RHOADES, ESQUIRE
`ELVIN SMITH, ESQUIRE
`STANFORD WARREN, ESQUIRE
`Warren Rhoades, LLP
`1212 Corporate Drive
`Suite 250
`Irving, TX 75038
`
`The above-entitled matter came on for hearing on Wednesday,
`September 2, 2020, commencing at 12:00 p.m., EDT, by video/by telephone,
`before Walter Murphy, Notary Public.
`
`
`
`
`
` 2
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`
`
`
`
`
`
`
`
`P R O C E E D I N G S
`
` - - - - -
`
`JUDGE GIANNETTI: So welcome everyone to th is PTAB
`
`
`
`
`
`remote hearing. This is a consolidated hearing, . The first case
`
`is Volkswagen Group of America v. Caru cel Investments, L.P.,
`
`involving IPR 2019-0101, that's patent 7,221,904. IPR 2019-
`
`01102 involving patent 7,848,701, IPR 2019 -01103 involving
`
`patent 7,979,023 and finally IPR 2019 -01105 that is patent
`
`8,718,543 and those are the IPRs involving Volkswagen Group of
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`America and Carucel Investments. We also have on for argument
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`today Unified Patents, LLC v. Caru cel Investments, L.P., that's
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`IPR 2019-01079 involving patent 7,979,023. Th e hearing today
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`will be a consolidated hearing in the cases that I just mentioned.
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`
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`Let me introduce the panel. I'm Judge Giannetti. I will be
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`presiding at this hearing and additionally we have Judge Galligan
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`and Judge Korniczky. Let me start by gettin g appearances. First
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`let's start with Petitioner Unified. Who is appearing today for
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`Unified?
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`
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`MS. CALLAHAN: Apologies , I was muted on both of my
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`phones. Good afternoon, Your Honors, appearing for Unified
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`Patents is Michele Callahan and also on the lin e is Roshan
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`Mansinghani.
`
`
`
`
`
` 3
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`
`
`JUDGE GIANNETTI: All right. And who is appearing
`
`today for Volkswagen of America?
`
`
`
`
`
`
`
`(Pause, due to technical difficulties. )
`
`JUDGE GIANNETTI: Hello? I'm hearing a garbled voice
`
`but I can't make out what you're saying. Who is appearing for
`
`Volkswagen? Do we have counsel on?
`
`
`
`MR. RICHARDSON: Yes. Sorry, Your Honor, I was just
`
`having some audio issues . This is Ryan Richardson with the law
`
`firm of Sterne, Kessler, Goldstein & Fox on behalf of
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`Volkswagen Group of America.
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`JUDGE GIANNETTI: Okay, Mr. Richardson. And who is
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`appearing for Patent Owner Caru cel?
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`
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`MR. RHOADES: Good day, Your Honor. Can you hear
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`me?
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`JUDGE GIANNETTI: Yes, I can.
`
`MR. RHOADES: Okay. This is Scott Rho ades
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`representing Carucel Investments and we w ill be referring to as
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`Carucel throughout the argument. Also on the line is Mr. Elvin
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`Smith and Mr. Sanford Warren who will be speaking on behalf of
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`Patent Owner as well during the presentations.
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`
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`JUDGE GIANNETTI: Okay. All right. So we have our
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`appearances. We have our court reporter, Mr. Murphy. Mr.
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`Murphy, you're on the line? I just want to get that confirmation.
`
`
`
`
`
` 4
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`
`
`THE REPORTER: Yes, I am, Your Honor. I've been
`
`rolling ever since you opened --
`
`
`
`
`
`
`
`JUDGE GIANNETTI: Okay.
`
`THE REPORTER: -- as 12 noon exactly.
`
`JUDGE GIANNETTI: Okay. Thank you, Mr. Murphy. So
`
`I think we have everybody on line and we can hear you and we
`
`can see you, so I think we're ready to begin. Let me run over
`
`some procedures here before we get started. This is obviously a
`
`remote hearing by video and so far we've been pretty good in
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`overcoming any technical problems. I've had quite a few of
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`these and we've avoided technical glitches in most of them but
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`we are concerned that you have your opportunity to be heard so
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`if at any time during the proceeding you run into any technical
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`difficulties please let us know and you can do that, for example,
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`by contacting the team member that set up the call or just
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`generally try to get in touch with us through some other means,
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`but that would be the best way to do it. So I don't expect that we
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`will be having problems but it sometimes happens.
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`
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`The second thing I want to remind people is to get control
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`of the mute button. Make sure that when you are speaking that
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`you are unmuted and that you stay unmuted, but when you're not
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`speaking for any period of time please mute yourself to avoid
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`23
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`any background noise we might hear. When you speak you
`
`
`
`
`
` 5
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`should identify yourself so that our court reporter, Mr. Murphy,
`
`knows who's speaking. If you 're going to speak for a length of
`
`time just do that at the beginning so that when we get our
`
`transcript back we will have speakers properly identified.
`
`
`
`The last thing I want to mention is that we do have all of
`
`the record in this case available to us inc luding your
`
`demonstratives. All members of the panel have all the papers
`
`that you've filed available to us during the hearing. If you do
`
`refer to any exhibits or demonstratives , as I expect that you will
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`be, please identify them, the page number and the document that
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`you're referring to so that we have a clear record of what you're
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`talking about and so that the panel can follow along.
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`
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`I want to say a word about demonstratives. I see both
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`parties have filed demonstratives in the case and I just want to
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`remind you that demonstratives in our proceedings are an aid to
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`arguments. They are not part of the argument or the record.
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`They are just your aids in presenting your argument . So I think
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`you should keep that in mind that the record of this proc eeding
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`will be the transcript that will be produced by Mr. Murphy and
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`will be distributed to you after the hearing.
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`
`
`All right. Now we have given each side two hours to
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`present arguments. We have a LEAP practitioner. I think you're
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`all aware that the PT AB has a program for less experienced
`
`
`
`
`
` 6
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`lawyers called the LEAP program and I believe Ms. Callaghan
`
`has made application and it's been approved so that the
`
`Petitioners, and particular ly Unified, will have an extra 15
`
`minutes so their allocation will be two h ours and 15 minutes.
`
`The Patent Owner's side will have two hours and you may divide
`
`those -- that time up among counsel as you wish. It sounds like
`
`there will be some division of argument and that's fine. I just
`
`wanted to remind the parties that this ma y be a long hearing, it
`
`may go as long as four hours , so we will take a break around
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`halfway point at some logical stopping point, we'll take a ten or
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`fifteen minute break. Our court reporter and our tech people
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`have asked that when we do take a break tha t you remain on line,
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`don't sign off so that it will be easy to get up and running after
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`the break. We want to keep the hearing moving so that we finish
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`in a reasonable amount of time. Let me -- any questions before
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`we begin from either side? I see we'v e just lost a video. Either
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`of the Petitioners have any questions?
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`MS. CALLAGHAN: Unified does not, Your Honor.
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`JUDGE GIANNETTI: Okay. Volkswagen?
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`MR. RICHARDSON: No questions for Volkswagen, Your
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`Honor.
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`JUDGE GIANNETTI: Caru cel, any questions?
`
`MR. RHODES: No, Your Honor.
`
` 7
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`
`
`JUDGE GIANNETTI: Okay. All right. Let me ask the
`
`Petitioners, have you -- do you have a plan for how you're going
`
`to divide things up? Who's going to go first and how you're
`
`going to present your case? There is a lot of o verlap, I'm
`
`looking at your slides and I wondered if you had a plan in mind
`
`for how you're going to present your case?
`
`
`
`MS. CALLAGHAN: Yes, Your Honor. This is Michelle
`
`Callaghan for Unified. I will present first on the 023 patent in
`
`the 1079 proceeding and then I will try to take on 30 minutes and
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`reserve about 15 minutes for rebuttal and then Mr. Richardson
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`for Volkswagen will pick up the 023 patent in Volkswagen's
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`proceedings so that there's some continuity there.
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`
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`JUDGE GIANNETTI: All right. Okay. I think I
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`14
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`understand that. I did not mention that the Petitioner may
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`reserve time for rebuttal and the Patent Owner may reserve time
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`for surrebuttal. So it sounds like you are reserving 15 minutes
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`for your part of the case, Ms. Callaghan . Mr. Richardson, are
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`you going to reserve any time? Will there be additional rebuttal
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`from you?
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`MR. RICHARDSON: Yes, Your Honor. We're going to use
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`one hour for the direct portion and then reserve a half an hour of
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`our time for rebuttal.
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`JUDGE GIANNETTI: Okay. So all together that's 45
`
` 8
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`minutes of rebuttal on the Petitioner's side. All right. On the
`
`Patent Owner's side I will ask you the same question in the
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`beginning of your presentation unless you want to tell us now but
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`you may want to wait and see how things go before you decide
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`how much rebuttal time you need. Mr. Rhoades?
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`MR. RHOADES: Yes, Your Honor.
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`JUDGE GIANNETTI: You want to reserve?
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`MR. RHOADES: We'd like to (indiscernible.)
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`JUDGE GIANNETTI: Yes. Okay, that's fair. All right. I
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`think we're ready to begin unless anybody has any further
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`questions. Ms. Callaghan, I believe you're up first; is that right?
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`MS. CALLAGHAN: Yes, Your Honor.
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`JUDGE GIANNETTI: Okay. I will be keeping time here .
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`Unfortunately we don't have the lights that tell you how much
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`time you have left but I will try to give you some warning when
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`you're getting close to the end of your initial time period. If you
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`want to continue at that point you can, but it will come out of
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`your rebuttal time. All right, Ms. Calla ghan, whenever you're
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`ready you may proceed.
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`MS. CALLAGHAN: Thank you, Your Honor. As
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`mentioned, I am Michelle Callaghan and I represent Unified
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`Patents, LLC and we'll start at slide 4. The 023 patent describes
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`a system in which a mobile unit, green, t ravels along the
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`
`
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` 9
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`roadway and communicates with a fixed port or base station,
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`blue, through a moving base station, red .
`
`
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`On slides 5 and 6 we have the two independent claims,
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`claims 1 and 11. They each recite an apparatus configured to a
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`relative to the earth and it comprises spatially separated
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`antennas. Claim 1 recites the apparatus receiving signals from
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`the mobile device and transmitting them to a base station while
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`claim 11 on slide 6 is similar but recites the signals going the
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`other direction from a fixed port to the apparatus through a
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`mobile device. The content (phonetic) that was critically new
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`here was that the apparatus transmitting signals between the
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`mobile device and base station can loop.
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`
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`Turning to slide 7, the apparatus is simply a standard radio
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`interface unit that uses well known commercially available
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`antennas and circuits and on slide 8, the radio interface uses
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`known procedures for handoff and station selection. So the gist
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`of the claimed invention is an apparatus comprising admitte dly
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`known hardware and using the same techniques as the prior art
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`and saying now it's not a moving device. With that, unless Your
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`Honors have any questions I will turn to slide 12 to discuss the
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`claim construction dispute regarding mobile device. Unified
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`submits that mobile device is a term that is clear on its face. It
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`means no construction.
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`
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` 10
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`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`
`
`JUDGE GIANETTI: But counsel, before you go into that I
`
`just want to ask you about the preamble. Is there a dispute over
`
`the construction of the preamble or are y ou both satisfied with
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`the District Court's construction?
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`
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`MS. CALLAGHAN: Unif ied and Carucel have proposed
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`the District Court's construction but as we mentioned in the
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`reply, there isn't a material dispute regarding this construction so
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`because it's not material dispute, the Board was correct in its
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`Institution decision that it does not need to be construed for the
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`purpose of this proceeding. But again, Unified and Carucel
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`proposed the same construction and Unified would not object to
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`that.
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`JUDGE GIANNETTI: Okay, thank you.
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`MS. CALLAGHAN: Of course. So on slide 12 Unified
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`submits that mobile device is a term that is clear on its face and
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`needs no construction. Carucel, on the other hand, takes this
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`term and loads it with five additional limitations. First, Carucel
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`adds registering and second communicating directly with the
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`cellular network. The third and fourth bullets here are not
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`explicitly part of Carucel's construction but these require the
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`device to be able to communicate directly with multipl e moving
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`base stations and a fixed base station, and then fifth Carucel
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`indicates that its construction is meant to exclude cordless
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` 11
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`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`phones on the end of the mobile device.
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`The fifth directly contradicts the specification. On slide 13
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`the 023 patent describes long applications for the mobile
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`terminal including in cordless phones. Unified describes
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`(phonetic) this disclosure in its reply and Carucel did not address
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`it in its surreply.
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`Turning to slide 14. Dr. Madisetti's testimony confirms the
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`broader plain meaning of mobile device. As he points out the
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`plain meaning of mobile device was never limited to cellular
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`devices and he explains how easy it would be to specify as much
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`in the claims to serve their noted (phonetic) function. Carucel
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`declined to depose Dr. Madisetti on this testimony and Mr.
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`Lanning, Carucel's expert, does not refute this. His testimony is
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`on slide 15.
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`15
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`Here, Mr. Lanning explains that he did not draft these
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`16
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`constructions but merely applied Carucel's attorney construction
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`and his declaration only testifies to an example of what may fit
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`the plain meaning. As he confirmed in his deposition the phrase
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`"such as" is non-exclusive and we note this because in its
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`surreply, Carucel has accused Unified of using attorney argument
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`to construe the claims. But it's Carucel that's pushing attorney
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`argument.
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`23
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`In fact, turning to slide 16 Carucel's legal theory for its
`
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`
`
` 12
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`construction has shifted. Carucel first proposed in its response
`
`that its construction was based on plain meaning. When faced
`
`with the obvious criticisms of this position, Carucel switched
`
`theories in its surreply arguing that certain statements
`
`constituted disclaimers and more recently in its surreply in
`
`Volkswagen, Carucel suggests that those same statements did not
`
`rise to the level of disclaimer and now on slide 31 of its
`
`demonstratives, Carucel indicates the specification defines
`
`mobile device.
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`As we have we -- we have some case law on slide 11 just as
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`11
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`examples, but there are exacting standards for construing terms
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`to be narrower than their plain meaning. So we'll look at what
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`13
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`part of the specification Carucel identifies as limiting and show
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`why Carucel's wrong. But first on slide 17 --
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`JUDGE KORNICZKY: Excuse me counsel. This is Judge
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`Korniczky. So what is -- what does Unified believe the
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`construction of mobile device is?
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`MS. CALLAGHAN: Well, we don't think a construction is
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`necessary but it reacts (phonetic) with the plain meaning of
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`mobile devices. It's a device that is mobile, it isn't stuck to one
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`place. It's capab le of being moved, and the claims themselves
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`specify what a mobile device must use. They must send signals
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`through and receive signals from an appar atus to communicate
`
`
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`
`
` 13
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`with the base station and it's relevant here but it's kind of gotten
`
`lost in the briefi ng. Mobile device is not the focus of the claim.
`
`The apparatus is what's claimed and what the patent is describing
`
`to be modeled. Mobile device is ancillary, it's just something
`
`that the apparatus sends signals to and receiv es the signals from.
`
`The specification even refers repeatedly to a generic mobile unit.
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`It doesn't even use the phrase mobile device.
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`JUDGE KORNICZKY: Counsel, do you believe that the
`
`mobile unit and the mobile device are used interchangeably or
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`are they different?
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`MS. CALLAGHAN: I mean I think that they're both
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`generic. I don't think it's probably that they were used
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`13
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`interchangeably because the specification doesn’t use mobile
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`device. I think they're meant to generally be the same though. I
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`15
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`think that is the basis -- the only possible basis for mobile device
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`16
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`in the specification.
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`JUDGE GIANNETTI: Counsel, there must be some
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`18
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`meaning other than just device. I mean a device, it's obviously
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`some sort of communication device , isn't it? The mobile device
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`could be a car seat , a car seat could be a mobile device.
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`21
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`Device is a generic term that goes beyond communications
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`devices.
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`23
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`
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`MS. CALLAGHAN: Well if a car seat were able to send
`
` 14
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`signals to an apparatus and communicate with a base station and
`
`receive signals from the base station via the apparatus, I think it
`
`would meet the construction of mobile device in the claims. You
`
`know, and again in slide 13 the specification emphasizes that
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`what's desirable is a structure that allows the terminal in all
`
`applications including cordless phones and home and office , in
`
`shopping malls, et cetera. It's not limiting what the device is.
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`Nothing in the specification purports to limit mobile device.
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`You know, the claim defines the function of the mobile device so
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`I'm not just saying it's any device, it has to be a mobile device,
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`11
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`but if the function it has is communicating with the base station
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`12
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`via the apparatus and it's ancillary to the claims.
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`13
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`
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`JUDGE GIANNETTI: Okay. I'm looking at claim 11 and
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`14
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`all it says is that it's -- the transmitter configured to transmit
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`radio frequency signals to a mobile device. Doesn't say anything
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`more about the device. I mean it's -- inferentially it receives
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`radio frequency signals but it doesn't say anything about what
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`the mobile device does. Obvious ly it must be some sort of
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`communication device, right?
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`MS. CALLAGHAN: Yes. It needs to be a mobile robial
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`(phonetic) communication device.
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`JUDGE GIANNETTI: Okay.
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`MS. CALLAGHAN: But we think that fits the plain
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` 15
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`meaning of the claim and --
`
`
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`JUDGE GIANNETTI: Well what do you think of, I may be
`
`oversimplifying Patent Owner's theory and we'll hear from them
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`on this I'm sure, but what do you think of the argument that this
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`patent is about cell phones, cellular devices, and so when it talks
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`about a mobile device it's talking about a cell phone or
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`something that communicat es through the cell network. Why is
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`that such a stretch?
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`MS. CALLAGHAN: Well, the construction doesn't say it's
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`a cell phone and you may want to ask them about that. I think
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`they're just basically trying to read out a basic cordless device to
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`get around the prior art rather than limit the claim in a
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`13
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`meaningful way. But in any case there are two overarching
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`reasons, Your Honor, why the claim isn't limited to a cellular
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`phone, and basically Carucel does not have the law on its side
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`and it doesn't have the facts to support this theory.
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`17
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`As to the law, both parties agree that mobile device has a
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`plain meaning that includes, for example, PDAs or laptops. But
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`Carucel is arguing for somethin g narrower but these devices
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`don't count, even though they would otherwise unless they fit
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`these five criteria on slide 12. But, and we can turn to slide 11,
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`these cases provide an exacting standard. Disavowal must be
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`explicit and we --
`
`
`
`
`
` 16
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`
`1
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`2
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`3
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`4
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`5
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`JUDGE GIANNETTI: Yes. We're familiar with the cases.
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`I know them well. What is it in the specification or in the
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`intrinsic evidence that rules out that it can't be -- I mean if you
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`read this patent it's about cell phones. The focus is on cell
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`phones. Why is it such a stretch to call the mobile device --
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`which the patent doesn’t say much about the mobile device and
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`at least the claim doesn't -- why is it such a stretch to say that
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`that must be a cell phone or a cellular device?
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`MS. CALLAGHAN: The patent isn't about ce ll phones, we
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`10
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`respectfully disagree, but the patent is about this apparatus, this
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`11
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`mobile base station and it does talk about in the context of
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`12
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`cellular communication but it doesn't limit itself to cellular
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`13
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`communication.
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`14
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`15
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`JUDGE GIANNETTI: All right. Thank you.
`
`MS. CALLAGHAN: But we're happy to walk through what
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`16
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`Carucel cites as limiting. So, and before we do I just want to go
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`17
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`to slide 17 to address Carucel's first requirement that a mobile
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`18
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`device must be able to communication with a moving base
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`19
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`station. In parent patent, the Applicant recited communicating
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`20
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`with moving base station shown in the fourth -- for the first few
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`21
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`blocks, but in the 023 patent they just said apparatus and so the
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`22
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`Patent Owner showed that they were perfectly capable of
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`23
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`claiming the excluded concepts that Carucel kind of likens
`
`
`
`
`
` 17
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`(phonetic) to the 023 claims and on slide 18, we note that the
`
`apparatus is limited to these stations. Mr. Lanning, Carucel's
`
`expert said no.
`
`So with that, let's go through the part of the specification
`
`Carucel tries to identify as limiting the mobile device with in
`
`mind that both parties agree that there is a plain meaning for the
`
`mobile device that includes non -cellular devices, Carucel's limit
`
`by giving a narrower claim meaning. So on slide 19 is the first
`
`of three passages that Carucel says are limiting. The fifth
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`statement is taken out of context.
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`We considered with a little more context on slide 20. You
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`see language that simply describes how calls were directed to the
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`13
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`correct device in the context of a specific embodiment, the
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`14
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`embodiment of figure 1 discussing CDMA phones and perhaps
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`this will answer your question regarding why this isn't limited to
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`16
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`cell phones. The specification confirms that figure 1 is referring
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`17
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`to a specific embodiment and that's at column 3, line 64 and in
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`18
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`column 6, lines 49 to 54, the specification confirms that the
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`radio interface is used in the base stations with only preferably
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`CDMA but, TDM/CDMA, not limited only to CDMA phones and
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`21
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`then finally in column 11, lines 22 to 26 i t confirms that the
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`embodiments are illustrative only, not meant to limit the claims.
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`23
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`So moving on to the next two passages that Carucel cites on
`
`
`
`
`
` 18
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`slides 21 and 22. These don't even have words of limitations and
`
`you even see the opposite, but this is prefe rably what the system
`
`does but the unit may be handed (phonetic) off to a base station
`
`and discussing the claims and the arrangement of figure 1. None
`
`of this language that Carucel points to insinuates the disclaimer
`
`or meets the high bar of limiting a ph rase to something other
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`than its plain meaning and if anything, this language does the
`
`opposite.
`
`So with that, unless there are any additional questions we'll
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`move on to the instituted grounds and before doing so, we'll just
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`note that Carucel's arguments r egarding mobile devices in the
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`independent claims fall within this construction for both the
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`Massa and Thrower grounds but we contend that the claims are
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`14
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`obvious even if the Board were to adopt a limiting construction
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`15
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`that limited the mobile device to cell ular devices.
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`16
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`So with that, moving to slide 26. In Massa, the primary
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`reference in grounds 1 to 3 discloses a handset 26 which is in
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`communication with a cellular accessory apparatus that is
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`19
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`configured to move relative to the earth because it's mounted o n
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`a vehicle. The apparatus receives signals from the handset and
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`forwards them to a base station and vice versa. As mentioned,
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`Carucel's patentability argument is wrong because it's based on a
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`23
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`flawed claim construction , but assuming arguendo that Carucel 's
`
`
`
`
`
` 19
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`construction were correct and that the claims were limited to
`
`cellular devices, we believe that they've improperly limited
`
`Massa's disclosure.
`
`On slide 27, Carucel repeatedly refers to Massa's invention
`
`but focusing solely on the prior art invention or preferred
`
`embodiments is improper as a matter of law. A reference must
`
`be considered for everything it teaches, not just preferred
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`embodiments, and on slide 28, as discussed in Unified's reply,
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`Massa simply expresses a preference for the more basic handse ts
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`because they would have been more cost effective than brick
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`cellular phones but a POSITA would have appreciated Massa's
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`disclosure that handheld cellular phones would have benefited
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`from the vehicular accessory apparatus because they also had a
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`limited range too. So even under Carucel's construction , the
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`15
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`concept of a cellular and mobile device that communicates with a
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`16
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`base station through a vehicle apparatus or a mobile apparatus is
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`17
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`obvious over Massa and Dr. Madisetti confirmed this and his
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`18
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`testimony here is unrebutted or unrefuted.
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`19
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`So with that I will go to the Thrower grounds on slide 29
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`20
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`unless Your Honors have any questions. Okay. Thrower teaches
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`21
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`a communal unit, the apparatus, that acts as a service area or
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`22
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`gateway for portable telephone units for mobile devices and it
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`23
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`acts as an intermediary transmitting signals between the portable
`
`
`
`
`
` 20
`
`

`

`IPR2019-01101 (Patent 7,221,904 B1)
`IPR2019-01102 (Patent 7,848,701 B2)
`IPR2019-01103 (Patent 7,979,023 B2)
`IPR2019-01105 (Patent 8,718,543 B2)
`IPR2019-01079 (Patent 7,979,023 B2)
`
`telephone and the cellular base station. So (indiscernible) --
`
`JUDGE GIANNETTI: Counsel, would you repeat -- would
`
`you repeat what slide you're on. I didn't --
`
`MS. CALLAGHAN: Twenty nine.
`
`JUDGE GIANNETTI: Thank you.
`
`MS. CALLAGHAN: Sure. Thank you.
`
`JUDGE GIANNETTI: Thanks.
`
`MS. CALLAGHAN: So the communal unit which is the
`
`apparatus acts as an intermediary transmitting signals between a
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`portable telephone and a ce llular base station. The communal
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`units are transportable such as on trains so they move relative to
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`the earth. Therefore, Thrower teaches most of the limitati

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