GOOGLE LLC, LG ELECTRONICS, INC.,
`LG ELECTRONICS, U.S.A., INC.,
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`HUAWEI DEVICE USA, INC.
`v.
`RYUJIN FUJINOMAKI
`
`Inter Partes Review of U.S. Patent No. 6,151,493
`IPR2016-01522*
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`November 28, 2017
`
`*Case IPR2017-01017 has been joined with this proceeding
`
`1
`
`Google EX1028
`
`
`LG ELECTRONICS, U.S.A., INC.,
`LG ELECTRONICS MOBILECOMM U.S.A., INC.,
`SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`HUAWEI DEVICE USA, INC.
`v.
`RYUJIN FUJINOMAKI
`
`Inter Partes Review of U.S. Patent No. 6,151,493
`IPR2016-01522*
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`November 28, 2017
`
`*Case IPR2017-01017 has been joined with this proceeding
`
`1
`
`Google EX1028
`
`
`
`Table Of Abbreviations
`
`Abbreviation
`Pet.
`
`POPR
`
`POR
`
`Reply
`
`ID
`
`Description
`IPR2016-01522, Paper 1, Petition for Inter Partes Review of United States
`Patent No. 6,151,493
`IPR2016-01522, Paper 7, Patent Owner Ryujin Fujinomaki’s Preliminary
`Response to Petition for Inter Partes Review
`IPR2016-01522, Paper 20, Patent Owner Ryujin Fujinomaki’s Response to
`Petition for Inter Partes Review
`IPR2016-01522, Paper 21, Petitioners’ Consolidated Reply to Patent
`Owner’s Response
`IPR2016-01522, Paper 8, Decision - Institution of Inter Partes Review
`
`2
`
`
`
`Instituted Grounds
`
`References
`Yamamoto and
`Mardirossian
`Yamamoto, Mardirossian,
`and the knowledge of a
`POSITA
`Yamamoto, Mardirossian,
`and Takeuchi
`Yamamoto, Mardirossian,
`and Olah
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`’493 Claims
`Challenged
`Claims 1-3 and 8
`
`Claim 10
`
`Claims 4-6
`
`Claim 9
`
`3
`
`
`
`Overview Of The Issues
`
`• Whether Yamamoto discloses an “identification code signal”
`• Whether Yamamoto discloses a “confirmation signal”
`• Whether Yamamoto discloses “maintaining the electronic
`device in an operational state while the identification code
`signal received by said second receiver is at or above the
`predetermined value, and when the identification code
`signal is below the predetermined value, said use
`prohibition canceling unit at least partially disabling the
`electronic device”
`• Whether there is motivation to combine
`Yamamoto with Mardirossian
`
`4
`
`
`
`“identification code signal”
`
`5
`
`
`
`“Identification Code Signal” Should Be Given Its
`Plain And Ordinary Meaning
`Claim 1:
`“A device for prohibiting unauthorized
`use of an electronic device, the device
`comprising:
`an identification code transmission
`unit comprising:
`a first transmitter for transmitting an
`identification code signal at a
`constant level; …
`a use prohibition canceling unit
`comprising: … a second receiver for
`receiving the identification code
`signal; and
`said use prohibition canceling unit
`maintaining the electronic device in
`an operational state while the
`identification code signal received
`by said second receiver is at or
`above the predetermined value …”
`EX1001, cl. 1.
`
`EX1001, Fig. 1; Pet 8.
`
`6
`
`
`
`“Identification Code Signal” Should Be Given Its Plain And Ordinary Meaning;
`If Construed, “Identification Code Signal” Means “A Signal That Includes A
`Predetermined Code”
`Petitioners’ Construction
`Plain and Ordinary Meaning
`
`Patent Owner’s Construction
`“a signal that contains information
`representing the 1) the phone number of the
`electronic device, 2) an ID number or signal
`indicative of other information about the
`owner of the electronic device, or 3) any
`number or code peculiar to the electronic
`device, and that is transmitted regularly and
`periodically”
`POR 11-13.
`
`If construed, “a signal that includes a
`predetermined code”
`
`Reply 2-4.
`
`‘493 Patent Specification:
`“a signal containing a predetermined code signal is used as the ID signal.”
`
`EX1001, 5:50-51;
`see also EX1027 ¶ 10; Reply 2.
`
`“transmitting an identification signal including a predetermined code signal”
`
`EX1001, 4:35-42;
`see also EX1027 ¶ 10; Reply 2; ID 6.
`
`7
`
`
`
`Patent Owner’s Construction Of “Identification Code Signal” Improperly
`Reads Limitations From Embodiments Into The Claims
`Petitioners’ Construction
`Patent Owner’s Construction
`“a signal that contains information
`Plain and Ordinary Meaning
`representing the 1) the phone number of the
`electronic device, 2) an ID number or signal
`indicative of other information about the
`owner of the electronic device, or 3) any
`number or code peculiar to the electronic
`device, and that is transmitted regularly and
`periodically”
`POR 11-13.
`
`If construed, “a signal that includes a
`predetermined code”
`
`Reply 2-4.
`
`‘493 Patent Specification:
`“the ID signal may be one comprising an M-sequence ... signal and a code signal particular
`to the cellphone number.”
`
`EX1001, 5:51-55.
`“[t]he phone number as the code signal may be any other ID number or signal indicative of
`other information about the owner or person in charge.”
`
`EX1001, 5:64-67.
`“[i]n the embodiment, the code signal represents the phone number but may represent
`any other number or code peculiar to the particular phone.”
`EX1001, 6:10-13;
`Hill-Rom Servs., Inc. v. Stryker Corp:
`see also EX1027 ¶ 12; Reply 2-3.
`“we do not read limitations from the embodiments in the specification into the claims.”
`755 F.3d 1367, 1371-72 (Fed. Cir. 2014); Reply 3.
`
`8
`
`
`
`Patent Owner’s Construction Of “Identification Code Signal” Improperly
`Reads “Regular[] And Periodic[]” Transmission Into The Claims
`Petitioners’ Construction
`Patent Owner’s Construction
`“a signal that contains information
`Plain and Ordinary Meaning
`representing the 1) the phone number of the
`electronic device, 2) an ID number or signal
`indicative of other information about the
`owner of the electronic device, or 3) any
`number or code peculiar to the electronic
`device, and that is transmitted regularly and
`periodically”
`POR 11-13.
`
`If construed, “a signal that includes a
`predetermined code”
`
`Reply 2-4.
`
`Dr. Quackenbush:
`“A POSITA would have understood that the plain and ordinary meaning of ‘identification
`code signal’ does not require ‘regular[] and periodic[]’ transmission.”
`“the ’493 patent specification does not define ‘identification code signal’ to require
`‘regular[] and periodic[]’ transmission.”
`
`EX1027 ¶ 13; Reply 3.
`Under claim differentiation, “intermittent” transmission (i.e., occurring at predetermined
`intervals) is not required by independent claim 1:
`’493 Dependent Claims 3, 6, 8:
`“transmitting the identification code signal ... as intermittent signals”
`See also EX1001, 5:58-62, 6:66-7:1; EX1027 ¶ 13; Reply 3.
`
`Reply 3.
`
`9
`
`
`
`Yamamoto Expressly Discloses An “Identification Code Signal”
`
`Yamamoto Figure 2:
`
`EX1004, Fig. 2; EX1003 ¶¶ 60-61; EX1027 ¶ 18; Pet. 29; Reply 6.
`
`Yamamoto:
`“Control signals to be so far
`transmitted and received
`between the base unit 100
`and branch unit 200 are
`transmitted through the control
`channel. Each of the control
`signals is attached with an ID
`so that collation of this ID
`enables positive control of
`interconnection between the base
`unit 100 and branch unit 200.”
`
`EX1004, 7:5-10; EX1003 ¶¶ 60-61; EX1027 ¶ 18;
`Pet. 28-29; Reply 5.
`“The identification signal is
`generally called ID code.”
`
`EX1004, 5:12-13.
`See also EX1004, 4:57-64, 5:7-26, 5:37-39, Figs. 18, 21;
`EX1003 ¶¶ 60-61; EX1027 ¶ 18;
`Pet. 28-29; Reply 5-6; ID 12.
`
`10
`
`
`
`Yamamoto Expressly Discloses An “Identification Code Signal”
`(cont’d)
`
`Yamamoto Figure 2:
`
`Dr. Quackenbush:
`“Q. What signal disclosed in the
`Yamamoto reference corresponds
`to the identification code signal…?
`
`A. So Yamamoto discloses that
`the base unit transmits to the
`branch unit signal, and this is in
`paragraph 61, I quote, ‘is attached
`with an ID so that collation of this
`ID enables positive control of
`interconnection between the base
`unit 100 and branch unit 200.’ …
`such a signal, in my opinion, is
`what I meant to identification
`code signal.”
`
`EX1004, Fig. 2; EX1003 ¶¶ 60-61; EX1027 ¶ 18; Pet. 29; Reply 6.
`
`EX2004, 43:18-44:3; Reply 6-7;
`EX1027 ¶ 26; EX1003 ¶¶ 60-61.
`
`11
`
`
`
`Even Under Patent Owner’s Unduly Narrow Construction,
`Yamamoto Discloses An “Identification Code Signal”
`Patent Owner Argues:
`“Yamamoto does not disclose a signal used to identify the device that is sent regularly and periodically.”
`POR 41.
`Yamamoto Figure 18:
`Yamamoto:
`“[S]ignal transfer between the base unit 100
`and branch unit 200 is carried out based on
`the frame format shown in FIG. 18. In this
`format, reference numeral 21 denotes a
`synchronizing signal, 22 a control signal, and
`23 a digitized voice signal. The control signal 22
`contains various types of control signals for
`setting of a radio link, … theft-proof data”
`EX1004, 12:33-40; EX1003 ¶¶ 60-61; EX1027 ¶¶ 21-22, 25; Pet. 28-29; Reply 7-9.
`“Each of the control signals is attached with
`an ID”
`Dr. Quackenbush:
`EX1004, 7:5-10; EX1003 ¶¶ 60-61; EX1027 ¶¶ 21-22, 25; Pet. 28-29; Reply 7-9.
`“As Yamamoto discloses use of the frame format shown in Figure 18, where multiple
`contiguous frames are transmitted (e.g., during at least call setup and for the duration of a
`call) and each frame includes a control signal attached with an ID, Yamamoto teaches that
`the identification code signal is transmitted periodically and regularly from the base
`unit to the branch unit.”
`
`EX1004, Fig. 18; EX1027 ¶ 21; EX1003 ¶¶ 60-61; Pet. 29; Reply 9.
`
`EX1027 ¶ 22; Reply 8.
`See also EX1004, 14:1-20, Fig. 21; EX1003 ¶¶ 88-90, 99, 101; EX1027 ¶ 22; Pet. 43-46, 48-49; Reply 9; ID 26.
`
`12
`
`
`
`Even Under Patent Owner’s Unduly Narrow Construction,
`Yamamoto Discloses An “Identification Code Signal” (cont’d)
`Patent Owner Argues:
`“[the control] signals…in column 7 are call setup signals…only transmitted sporadically (if at all) when a
`call is being initialized.”
`Yamamoto Figure 18:
`
`POR 41-42.
`
`Yamamoto:
`“[S]ignal transfer between the base unit 100
`and branch unit 200 is carried out based on
`the frame format shown in FIG. 18. In this
`format, reference numeral 21 denotes a
`synchronizing signal, 22 a control signal,
`and 23 a digitized voice signal. ”
`
`EX1004, 12:33-40;
`EX1003 ¶¶ 60-61; EX1027 ¶¶ 21-22, 25; Pet. 29; Reply 10.
`
`EX1004, Fig. 18; EX1027 ¶ 21; EX1003 ¶¶ 60-61; Pet. 29; Reply 9.
`Dr. Quackenbush:
`“Yamamoto expressly describes transmitting the signals between the base unit and branch unit
`according to the frame format shown in Figure 18, which depicts that each frame includes a
`‘control’ portion of the signal containing an ID code and a ‘voice’ portion of the signal,
`which includes voice data that indicates that the signals are transmitted during a call.”
`EX1027 ¶ 23; Reply 10.
`Hewlett-Packard Co. v. Mustek Sys., Inc.:
`“a prior art product that sometimes, but not always, embodies a claimed method
`nonetheless teaches that aspect of the invention.”
`
`340 F.3d 1314, 1326 (Fed. Cir. 2003); Reply 10.
`
`13
`
`
`
`“confirmation signal”
`"confirmation signal"
`
`14
`
`
`
`“Confirmation Signal” Should Be Given Its
`Plain And Ordinary Meaning
`Claim 1:
`
`“A device for prohibiting unauthorized
`use of an electronic device, the device
`comprising:
`an identification code transmission
`unit comprising:
`… a first receiver for receiving a
`confirmation signal;
`an alarm mechanism being activated
`when the confirmation signal
`received by said first receiver is
`below a predetermined value;
`a use prohibition canceling unit
`comprising: a second transmitter for
`transmitting the confirmation
`signal at a constant level …”
`
`EX1001, cl. 1.
`
`EX1001, Fig. 1; Pet. 8.
`
`15
`
`
`
`“Confirmation Signal” Should Be Given Its Plain And Ordinary Meaning;
`If Construed, “Confirmation Signal” Means “A Signal Returned In Response To
`The Identification Code Signal”
`Petitioners’ Construction
`Plain and Ordinary Meaning
`
`Patent Owner’s Construction
`“a signal that contains information
`representing the 1) the phone number of the
`electronic device, 2) an ID number or signal
`indicative of other information about the
`owner of the electronic device, or 3) any
`number or code peculiar to the electronic
`device, and that is transmitted regularly and
`periodically”
`POR 11-13.
`
`If construed, “a signal returned in response
`to the identification code signal”
`
`Reply 4-5.
`
`‘493 Patent Specification:
`“the canceling unit receives an ID code signal from the transmission unit….The canceling
`unit returns a confirmation signal”
`
`EX1001, Abstract;
`see also EX1027 ¶ 14; Reply 4.
`
`“a confirmation signal returned from the transmitter of the canceling unit 20”
`
`EX1001, 4:36-42;
`see also EX1027 ¶ 14; Reply 4; ID 6.
`
`16
`
`
`
`Patent Owner’s Construction Of “Confirmation Signal” Improperly
`Reads Limitations From Embodiments Into The Claims
`Petitioners’ Construction
`Patent Owner’s Construction
`“a signal that contains information
`Plain and Ordinary Meaning
`representing the 1) the phone number of the
`electronic device, 2) an ID number or signal
`indicative of other information about the
`owner of the electronic device, or 3) any
`number or code peculiar to the electronic
`device, and that is transmitted regularly and
`periodically”
`POR 11-13.
`
`If construed, “a signal returned in response
`to the identification code signal”
`
`Reply 4-5.
`
`’493 Patent Specification:
`“the ID signal may be one comprising an M-sequence...signal and a code signal particular
`to the cellphone number.”
`
`EX1001, 5:51-55.
`“[t]he phone number as the code signal may be any other ID number or signal indicative of
`other information about the owner or person in charge.”
`
`EX1001, 5:64-67.
`“[i]n the embodiment, the code signal represents the phone number but may represent
`any other number or code peculiar to the particular phone.”
`
`EX1001, 6:10-13.
`See also Reply 4; EX1027 ¶ 16.
`
`17
`
`
`
`Patent Owner’s Construction Of “Confirmation Signal” Improperly
`Reads “Regular[] And [P]eriodic” Transmission Into The Claims
`Petitioners’ Construction
`Patent Owner’s Construction
`“a signal that contains information
`Plain and Ordinary Meaning
`representing the 1) the phone number of the
`electronic device, 2) an ID number or signal
`indicative of other information about the
`owner of the electronic device, or 3) any
`number or code peculiar to the electronic
`device, and that is transmitted regularly and
`periodically”
`POR 11-13.
`
`If construed, “a signal returned in response
`to the identification code signal”
`
`Reply 4-5.
`
`Dr. Quackenbush:
`“A POSITA would have understood that the plain and ordinary meaning of ‘confirmation
`signal’ does not require ‘regular[] and periodic[]’ transmission.”
`“the ’493 patent specification does not define ‘confirmation signal’ to require ‘regular[]
`and periodic[]’ transmission.”
`
`EX1027 ¶ 17; Reply 4-5.
`Under claim differentiation, “intermittent” transmission (i.e., occurring at predetermined
`intervals) is not required by independent claim 1.
`Reply 4-5.
`’493 Dependent Claims 3, 6, 8:
`“receiving the confirmation code signal as intermittent signals”
`EX1001, cls. 3, 6, 8; see also EX1001, 5:58-62, 6:66-7:1; EX1027 ¶ 17; Reply 4-5.
`
`18
`
`
`
`Yamamoto Discloses A “Confirmation Signal”
`
`Yamamoto Figure 2:
`
`Yamamoto:
`“Control signals to be so far
`transmitted and received between
`the base unit 100 and branch unit
`200 are transmitted through the
`control channel. Each of the control
`signals is attached with an ID so
`that collation of this ID enables
`positive control of interconnection
`between the base unit 100 and
`branch unit 200.”
`EX1004, 5:27-36, 7:5-8, Fig. 2; Pet. 36-38; Reply 11.
`“Another output of the receiver 106 is
`sent ... to the identification signal
`detecting circuit 110 for collating an
`identification signal determined by
`a combination of the base unit 100
`and branch unit 200”
`
`EX1004, Fig. 2; EX1003 ¶¶ 65, 75; Pet. 38; Reply 12.
`EX1004 5:3-12.
`See also EX1003 ¶¶ 74-75, 65; EX1027 ¶ 27; Pet. 36-39; Reply 11; ID 12.
`
`19
`
`
`
`Yamamoto Discloses A “Confirmation Signal” (cont’d)
`
`Yamamoto Figure 2:
`
`Dr. Quackenbush:
`“A POSITA would have understood
`that the signals transmitted from
`Yamamoto’s branch unit 200 to
`base unit 100 are ‘confirmation
`signal[s]’ because they carry ‘an
`identification signal determined
`by a combination of the base unit
`100 and branch unit 200’ and are
`transmitted in response to signals
`received from base unit 100—thus
`confirming receipt of the signal
`transmitted from the branch unit to
`base unit and ‘enabl[ing] positive
`control of interconnection between
`the base unit 100 and branch unit
`200.’”
`
`EX1004, Fig. 2; EX1003 ¶¶ 65, 75; Pet. 38; Reply 12.
`
`EX1003 ¶¶ 75, 65;
`see also EX1027 ¶ 27; Pet. 36-39; Reply 11.
`
`20
`
`
`
`Even Under Patent Owner’s Unduly Narrow Construction,
`Yamamoto Discloses A “Confirmation Signal”
`Patent Owner Argues:
`“Yamamoto does not disclose a signal used to identify the device that is sent regularly and periodically.”
`POR 43-44.
`Yamamoto Figure 18:
`Yamamoto:
`“[S]ignal transfer between the base unit 100
`and branch unit 200 is carried out based on
`the frame format shown in FIG. 18. In this
`format, reference numeral 21 denotes a
`synchronization signal, 22 a control signal, and
`23 a digitized voice signal. The control signal
`22 contains various types of control signals for
`setting of a radio link, … theft-proof data”
`EX1004, 12:33-40; EX1003 ¶ 75; EX1027 ¶¶ 30-34; Pet. 36-39; Reply 14.
`“Each of the control signals is attached
`with an ID”
`Dr. Quackenbush:
`EX1004, 7:5-10; EX1003 ¶¶ 60-61; EX1003 ¶ 75; EX1027 ¶¶ 30-34; Pet. 36-39; Reply 14.
`Dr. Quackenbush:
`“As Yamamoto discloses use of the frame format shown in Figure 18, where multiple
`contiguous frames are transmitted (e.g., during at least call setup and for the duration of a
`call) and each frame includes a control signal attached with an ID, Yamamoto teaches that
`the confirmation signal is transmitted periodically and regularly from the branch unit
`to the base unit.”
`
`EX1004, Fig. 18; EX1027 ¶ 30; EX1003 ¶ 75; Reply 14.
`
`EX1027 ¶ 31; Reply 14.
`
`21
`
`
`
`Even Under Patent Owner’s Unduly Narrow Construction,
`Yamamoto Discloses A “Confirmation Signal” (cont’d)
`Patent Owner Argues:
`“[the control] signals…in column 7 are call setup signals…only transmitted sporadically (if at all) when a
`call is being initialized.”
`Yamamoto Figure 18:
`
`POR 44.
`
`Yamamoto:
`“[S]ignal transfer between the base unit 100
`and branch unit 200 is carried out based on
`the frame format shown in FIG. 18. In this
`format, reference numeral 21 denotes a
`synchronization signal, 22 a control signal,
`and 23 a digitized voice signal. ”
`EX1004, 12:33-40; EX1003 ¶ 75; EX1027 ¶ 30; Pet. 27; Reply 14.
`
`EX1004, Fig. 18; EX1027 ¶ 30; EX1003 ¶ 75; Reply 14.
`Dr. Quackenbush:
`“Yamamoto expressly describes transmitting the signals between the base unit and branch unit
`according to the frame format shown in Figure 18, which depicts that each frame includes a
`“control” portion of the signal containing an ID code and a “voice” portion of the signal,
`which includes voice data that indicates that the signals are transmitted during a call.”
`EX1027 ¶ 32; Reply 14.
`Hewlett-Packard Co. v. Mustek Sys., Inc.:
`“a prior art product that sometimes, but not always, embodies a claimed method
`nonetheless teaches that aspect of the invention.”
`
`340 F.3d 1314, 1326 (Fed. Cir. 2003); Reply 14-15.
`
`22
`
`
`
`“maintaining the electronic device in an
`operational state while the
`identification code signal received by
`said second receiver is at or above the
`predetermined value, and when the
`identification code signal is below the
`predetermined value, said use
`prohibition canceling unit at least
`partially disabling the electronic device”
`
`23
`
`
`
`Yamamoto Discloses “maintaining the electronic device in an operational state
`while the identification code signal received by said second receiver is at or
`above the predetermined value”
`
`Yamamoto:
`“[w]ith regard to the theft-proof feature, the system is provided with the
`following means: (1) When a branch unit theft is detected, calling operation is
`disabled to inhibit the subsequent use of the branch unit.”
`EX1004, 2:53-60; EX1003 ¶¶ 81-82; Pet. 40-42; ID 23.
`
`“inhibiting subsequent calling operation of the branch unit when the theft
`detection means detects the branch unit theft.”
`
`EX1004, 15:46-50; EX1003 ¶¶ 81-82; Pet. 40-42; ID 23.
`
`Dr. Quackenbush:
`“Yamamoto discloses that ‘calling operation’ is inhibited when a theft occurs,
`thus teaching that the branch unit is operational prior to detecting a theft.”
`EX1003 ¶ 83; see also EX1003 ¶ 84; Pet. 40-42.
`
`24
`
`
`
`The Claims Do Not Require “Re-establishing
`An Operational State”
`Patent Owner Argues:
`“Yamamoto ... teaches away ... as Yamamoto contemplates a persistent disabled state .... By
`not re-establishing an operational state ... Yamamoto deviates from the Challenged Claims.”
`POR 45.
`
`Claim 1:
`“A device for prohibiting unauthorized use of an
`electronic device, the device comprising:
`…
`said use prohibition canceling unit maintaining
`the electronic device in an operational state
`while the identification code signal received by
`said second receiver is at or above the
`predetermined value, and when the identification
`code signal is below the predetermined value, said
`use prohibition canceling unit at least partially
`disabling the electronic device.”
`
`EX1001, cl. 1.
`
`Dr. Quackenbush:
`“There is no limitation in the
`Claims that requires ‘re-
`establishing an operational
`state’ of the electronic device.”
`EX1027 ¶ 37; Reply 15-16.
`“[T]he claim term ‘while’ as recited
`in Claim 1 refers to the time
`period prior to at least partially
`disabling the electronic device.”
`EX1027 ¶ 37; Reply 16.
`
`25
`
`
`
`The Claims Do Not Require That The “Element Function As
`Claimed At All Times”
`Patent Owner Argues:
`“while” requires that “an element function as claimed at all times.”
`Dr. Quackenbush:
`“[T]he ’493 patent specification explains that there are situations where the phone is off
`and not operational, while the canceling unit receives an identification code signal that
`is at or above the predetermined value.”
`’493 Patent:
`“As mentioned above, the unit 20 is always on irrespective of whether
`the power switch of the phone 30 is on or off.”
`Hewlett-Packard Co. v. Mustek Sys., Inc.:
`“a prior art product that sometimes, but not always, embodies a claimed method
`nonetheless teaches that aspect of the invention.”
`
`EX1001, 8:33-35; Reply 15-16.
`
`POR 46.
`
`EX1027 ¶ 38; Reply 15-16.
`
`340 F.3d 1314, 1326 (Fed. Cir. 2003); Reply 15; ID 23.
`See also Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc.,
`843 F.3d 1315, 1336 (Fed. Cir. 2016) (finding prior art that discloses the
`limitation “during” the period of start-up, but not during normal
`operation, nonetheless meets the limitation);
`Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016).
`
`Reply 15.
`
`26
`
`
`
`Yamamoto Discloses “when the identification code signal is below the
`predetermined value, said use prohibition canceling unit at least partially
`disabling the electronic device”
`
`Yamamoto Figure 2:
`
`Yamamoto:
`
`Yamamoto:
`“theft detecting means …
`for detecting a branch unit
`theft when … an intensity
`of an electric field of an
`electromagnetic wave
`received from the base
`unit is lower than a
`predetermined value”
`
`EX1004, 15:32-38;
`EX1003 ¶¶ 81-82; EX1027 ¶ 40; Pet. 40-42; Reply 17.
`
`“inhibiting subsequent
`calling operation of the
`branch unit when the theft
`detection means detects
`the branch unit theft.”
`
`EX1004, 15:46-50;
`EX1003 ¶¶ 81-82; EX1027 ¶ 40; Pet. 40-42; Reply 17.
`
`27
`
`EX1004, Fig. 2; EX1003 ¶¶ 60-61; Pet. 29.
`
`
`
`Claim 1 Does Not Recite A “Theft Detector” Or Any Details
`Regarding How The “Theft Detector” Works
`Patent Owner Argues:
`“Yamamoto’s ‘theft detection means’/’theft detector’ is not disclosed as making use of [this] specific control
`signal” and Yamamoto does not disclose “the signal input to the C-DET 204 is the same identification code signal”
`POR 35.
`
`Claim 1:
`“A device for prohibiting unauthorized use of an
`electronic device, the device comprising:
`…
`said use prohibition canceling unit maintaining the
`electronic device in an operational state
`while the identification code signal received by
`said second receiver is at or above the
`predetermined value, and when the identification
`code signal is below the predetermined value,
`said use prohibition canceling unit at least
`partially disabling the electronic device.”
`
`EX1001, cl. 1.
`
`Dr. Quackenbush:
`“Claim 1 does not recite a theft
`detector or any details regarding the
`internal operation of the theft
`detector. Claim 1 only states that the
`electronic device is disabled ‘when the
`identification code signal is below the
`predetermined value.’”
`
`EX1027 ¶ 42; Reply 18-19.
`“[I]n contrast to Claim 1, dependent
`Claim 7 additionally recites a ‘signal
`presence determination unit’ and its
`operation, which includes making a
`‘determin[ation] [as to] whether the
`particular signal is higher than the
`predetermined value.”
`EX1027 ¶ 42; EX1001, 10:22-34; Reply 18-19.
`
`28
`
`
`
`Even Under Patent Owner’s Impermissibly Narrow Reading, Yamamoto Discloses
`“when the identification code signal is below the predetermined value, said use
`prohibition canceling unit at least partially disabling the electronic device”
`Patent Owner Argues:
`“Yamamoto’s ‘theft detection means’/’theft detector’ is not disclosed as making use of [this] specific control
`signal” and Yamamoto does not disclose “the signal input to the C-DET 204 is the same identification code signal”
`POR 35.
`Yamamoto:
`Yamamoto Figure 19:
`“theft detector 54 receives, as its inputs, a signal 55 …
`proportional to the intensity of the received electric
`field from the receiver 51.”
`
`EX1004, 12:56-13:30; EX1027 ¶ 44; Reply 20-21.
`
`Dr. Quackenbush:
`“This disclosure in Yamamoto indicates that the entire
`signal, including the control portion ‘attached with an
`ID,’ is input into the received field detector (C-DET 204)
`and measured, and Yamamoto’s identification code
`signal is thus used by the theft detector to assess
`whether to disable calling operation of the branch
`unit.”
`EX1027 ¶ 44; EX1004, 12:56-13:30, 12:33-56, Fig. 19; EX1003 ¶¶ 81-82; Pet. 40-42; Reply 20-21.
`“Yamamoto explicitly discloses that the control signals are used for theft detection: the
`control signals transmitted between the base unit and branch unit includes ‘various types of
`control signals for … theft-proof data.’”
`
`EX1004, Fig. 19; Pet. 33; Reply 18.
`
`EX1027 ¶ 46 (citing EX1004,12:35-46); Reply 21.
`
`29
`
`
`
`Motivation to Combine
`Yamamoto with Mardirossian
`
`30
`
`
`
`A POSITA Would Have Been Motivated To Combine
`Yamamoto With Mardirossian
`Dr. Quackenbush:
`“[A] POSITA would have been motivated to and would have found it
`straightforward and obvious to look to Mardirossian and to implement
`Mardirossian’s teachings—
`of transmitting at a constant level to simplify transmitter/receiver design and save
`costs (Elements 1.B, 1.F),
`activating an alarm when the level of the received signal is below a predetermined value
`to notify a wider audience of the theft (Element 1.D),
`implementing a security system to prevent theft of cellular phones (Claim 2),
`and to the extent not already taught by Yamamoto, intermittently transmitting signals to
`save power and reduce battery consumption (Claims 3, 6, 8)—
`in Yamamoto’s system, and would have understood that the combination would
`work as expected.”
`
`PO does not dispute these advantages and does not dispute that the
`combination would have worked.
`
`Reply 23.
`
`EX1027 ¶ 47; see also EX1003 ¶¶ 64, 78, 70, 87, 94, 100, 101; Pet. 19-23; Reply 22-23.
`
`31
`
`
`
`A POSITA Would Have Been Motivated To Combine
`Yamamoto With Mardirossian (cont’d)
`Patent Owner Argues:
`“it is unclear why one would combine Yamamoto and Mardirossian because the two references
`relate to different applications of wireless telephony.”
`Dr. Quackenbush:
`“Patent Owner’s assertions regarding a possible difference in the number of users are
`irrelevant to the claimed functionality …, which does not depend on the number of users.”
`EX1027 ¶ 48; EX1003 ¶¶ 64, 78, 70, 87, 94, 100, 101; Pet. 19-23; Reply 23.
`“the teachings of Mardirossian are indeed applicable to Yamamoto, as both … relate to
`systems for transmitting signals from one device to another device for the purpose of
`monitoring the proximity of a phone and preventing theft”
`EX1027 ¶ 48; EX1004, 1:7-15, 12:34-13:30; EX1005, 1:4-13, 4:15-24, 5:43-48; EX1003 ¶¶ 64, 78, 70, 87, 94, 100, 101; Pet. 19-23; Reply 23.
`
`POR 46.
`
`“[a] wireless security system for a cordless telephone system is also applicable in the case
`of a mobile, or cellular, communications system”
`
`In re Mouttet:
`“The test for obviousness is not whether the features of a secondary reference may be
`bodily incorporated into the structure of the primary reference....”
`686 F.3d 1322, 1332 (Fed. Cir. 2012) (citation omitted); Reply 23; ID 23-24.
`
`EX1027 ¶ 49 (citing EX1009 ¶ 8); Reply 23.
`
`32
`
`
`
`A POSITA Would Have Been Motivated To Combine
`Yamamoto With Mardirossian (cont’d)
`Patent Owner Argues:
`“it is unclear how one of ordinary skill in the art would combine the system of Yamamoto with Mardirossian …. Both
`Mardirossian and Yamamoto are one-sided threshold detection systems.”
`Yamamoto:
`Yamamoto Figure 2:
`“base unit 100 comprises ... a receiver 106, a
`controller 107, an antenna duplexer 108, a
`received-field detecting circuit 109, an
`identification signal detecting circuit 110”
`EX1004, 4:57-64.
`“branch unit 200 comprises … an antenna
`duplexer 202, an identification signal detecting
`circuit 203, a received-field detecting circuit
`204, a receiver 205, … a controller 208”
`EX1004, 5:14-36.
`See also EX1027 ¶ 50; EX1003 ¶¶ 51, 61, 89; Pet. 13-15, 26, 29, 31, 46; Reply 24-25.
`Dr. Quackenbush:
`“A POSITA would have found it routine and straightforward to implement an alarm that is
`activated when the signal received is below a predetermined value, as taught in Mardirossian,
`in base unit 100 because base unit 100 already includes a receiver and signal strength
`measurement circuitry and would have known that such a combination (yielding
`the claimed limitation) would work and provide the expected functionality.”
`EX1003 ¶ 70; Pet. 21, 13; Reply 24-25; see also EX1004, Fig. 2, 4:57-64, 5:14-36; ID 24-25.
`
`EX1004, Fig. 2; EX1027 ¶ 50; Pet. 13-15, 29, 38; Reply 25.
`
`POR 47-48, 26.
`
`33
`
`
`
`Challenged Claims 1-3
`
`Claim 1
`
`Claim 2
`
`Claim 3
`
`2. The device as
`claimed in claim
`1, wherein the
`electronic device
`comprises a
`cellular phone.
`
`1. A device for prohibiting unauthorized use of an
`electronic device, the device comprising:
`an identification code transmission unit
`comprising:
`a first transmitter for transmitting an
`identification code signal at a constant level;
`a first receiver for receiving a confirmation
`signal;
`an alarm mechanism being activated when the
`confirmation signal received by said first
`receiver is below a predetermined value;
`a use prohibition canceling unit comprising:
`a second transmitter for transmitting the
`confirmation signal at a constant level;
`a second receiver for receiving the identification
`code signal; and
`said use prohibition canceling unit maintaining the
`electronic device in an operational state while the
`identification code signal received by said second
`receiver is at or above the predetermined value, and
`when the identification code signal is below the
`predetermined value, said use prohibition canceling
`unit at least partially disabling the electronic device.
`
`3. The device as
`claimed in claim 2,
`wherein said
`identification code
`transmission unit
`further comprises a first
`transmit-receive control
`timer for transmitting
`the identification code
`signal and receiving the
`confirmation code
`signal as intermittent
`signals and said use
`prohibition canceling
`unit further comprises a
`second transmit-receive
`control timer for
`transmitting the
`confirmation code
`signal and receiving the
`identification code
`signal as intermittent
`signals.
`
`34
`
`
`
`Challenged Claims 4-6
`
`Claim 4
`
`Claim 5
`
`Claim 6
`
`4. The device as claimed in claim 2, wherein
`at least one of the identification code signal
`and the confirmation signal comprises a
`binarized pseudo-irregular signal and a
`particular code signal.
`
`5. The device as
`claimed in claim 1,
`wherein at least
`one of the
`identification code
`signal and the
`confirmation
`signal comprises a
`binarized pseudo-
`irregular signal
`and a particular
`code signal.
`
`6. The device as claimed in
`claim 5, wherein said
`identification code transmission
`unit further comprises a first
`transmit-receive control timer
`for transmitting the
`identification code signal and
`receiving the confirmation code
`signal as intermittent signals
`and said use prohibition
`canceling unit farther comprises
`a second transmit-receive
`control timer for transmitting
`the confirmation code signal
`and receiving the identification
`code signal as intermittent
`signals.
`
`35
`
`
`
`Challenged Claims 8-10
`
`Claim 8
`
`Claim 9
`
`Claim 10
`
`8. The device as claimed in claim 1, wherein
`said identification code transmission unit
`further comprises a first transmit-receive
`control timer for transmitting the
`identification code signal and receivin
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