IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: McDowell et al.
`U.S. Patent No.:
`7,039,435 Attorney Docket No.: 35548-0101IP1
`Issue Date:
`May 2, 2006
`
`Appl. Serial No.: 09/967,140
`
`Filing Date:
`September 28, 2001
`
`Title:
`PROXIMITY REGULATION SYSTEM FOR USE WITH A
`PORTABLE CELL PHONE AND A METHOD OF OPERATION
`THEREOF
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 7,039,435
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`TABLE OF CONTENTS
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 2 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 2 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 3 
`C. 
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................. 3 
`D. 
`Service Information ............................................................................... 4 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 4 
`
`II. 
`
`V. 
`
`III.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 4 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 4 
`B. 
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............ 5 
`IV.  SUMMARY OF THE ’435 PATENT ............................................................. 7 
`A. 
`Brief Description ................................................................................... 7 
`B. 
`Summary of the Prosecution History .................................................... 8 
`C. 
`Level of Ordinary Skill ......................................................................... 9 
`Claim Construction Under 37 C.F.R. §§ 42.104(b)(3) .................................... 9 
`1. 
`“position to a communications tower” (claim 1) .......................... 10 
`VI.  GROUND 1: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY BAIKER .. 13 
`A.  Overview of Baiker ............................................................................. 13 
`B. 
`Application to Challenged Claims ...................................................... 14 
`VII.  GROUND 2: CLAIMS 1, 2, 3, AND 6 ARE OBVIOUS IN VIEW OF
`BAIKER AND WERLING ........................................................................... 27 
`A. 
`Predictable Combination of Baiker and Werling ................................ 27 
`B. 
`Application to Challenged Claims ...................................................... 30 
`VIII.  GROUND 3: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY IRVIN ...... 37 
`A.  Overview of Irvin ................................................................................ 37 
`B. 
`Application to Challenged Claims ...................................................... 39 
`IX.  GROUND 4: CLAIMS 1, 2, 3, AND 6 ARE OBVIOUS IN VIEW OF
`IRVIN AND MYLLYMÄKI ......................................................................... 49 
`A. 
`Predictable Combination of Irvin and Myllymäki .............................. 49 
`B. 
`Application to Challenged Claims ...................................................... 52 
`
`i
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`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`X.  GROUND 5: CLAIMS 1, 2, AND 3 ARE OBVIOUS IN VIEW OF BODIN
`AND IRVIN ................................................................................................... 59 
`A. 
`Predictable Combination of Bodin and Irvin ...................................... 59 
`B. 
`Application to Challenged Claims ...................................................... 60 
`XI.  GROUND 6: CLAIM 6 IS OBVIOUS IN VIEW OF BODIN, IRVIN, AND
`MYLLYMÄKI .............................................................................................. 67 
`A. 
`Predictable Combination of Bodin, Irvin, and Myllymäki ................. 67 
`B. 
`Application to Challenged Claims ...................................................... 68 
`XII.  CONCLUSION .............................................................................................. 69 
`
`
`
`ii
`
`

`

`EX1001
`EX1002
`EX1003
`EX1004
`
`EX1005
`EX1006
`EX1007
`EX1008
`EX1009
`
`EX1010
`
`EX1011
`
`EX1012
`
`EX1013
`
`EX1014
`
`EX1015
`
`EX1016
`
`
`
`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`
`EXHIBITS
`
`U.S. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
`File History of the ’435 Patent
`Declaration of Jonathan Wells, Ph.D.
`Certified English Translation of European Patent Publication
`EP 1091498 (“Baiker”)
`U.S. Pat. No. 6,456,856 (“Werling”)
`PCT Patent Publication WO 2002/05443 (“Irvin”)
`U.S. Pat. No. 6,018,646 (“Myllymäki”)
`U.S. Pat. No. 5,390,338 (“Bodin”)
`Joint Claim Construction Chart, Worksheet, and Hearing State-
`ment in Bell Northern Research, LLC, v. Huawei Device
`(Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co., Ltd.,
`and Huawei Device USA, Inc. (Case No. 3:18-cv-1784)
`(S.D.Cal., filed 4/19/19)
`U.S. Provisional Patent Application No. 09/612,034 (“Irvin
`Provisional”)
`Michael Barr, Programming Embedded Systems in C and C++
`(O’Reilly & Associates, 1999)
`Rudolf F. Graf, Modern Dictionary of Electronics (Butter-
`worth-Heinemann, 1999)
`Harry Newton, Newton’s Telecom Dictionary (Miller Freeman,
`Inc., 1999)
`Webster’s II New College Dictionary (Houghton Mifflin Co,
`1999)
`Martin H. Weik, Fiber Optics Standard Dictionary (Chapman
`& Hall, 1997)
`European Patent Publication EP 1091498 (“Baiker”)
`
`iii
`
`

`

`EX1017
`
`EX1018
`EX1019
`
`EX1020
`
`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`Webster’s New World College Dictionary (Simon & Schuster,
`1997)
`U.S. Pat. No. 6,029,074 (“Irvin ’074”)
`Defendants’ Joint Opening Claim Construction Brief in Bell
`Northern Research, LLC, v. Huawei Device (Dongguan) Co.,
`Ltd., Huawei Device (Shenzhen) Co., Ltd., and Huawei Device
`USA, Inc. (Case No. 3:18-cv-1784) (S.D. Cal.)
`Plaintiff’s Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. Huawei Device (Dongguan) Co., Ltd.,
`Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA,
`Inc. (Case No. 3:18-cv-1784) (S.D. Cal.)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`Huawei Technologies Co., Ltd. (“Huawei” or “Petitioner”) petitions for In-
`
`ter Partes Review (“IPR”) of claims 1, 2, 3, and 6 (“the Challenged Claims”) of
`
`U.S. Patent No. 7,039,435 (“the ’435 patent”).
`
`The ’435 patent generally relates to cellular devices that regulate transmis-
`
`sion power based on proximity of the device to the user. The examiner allowed the
`
`’435 patent after applicant argued the prior art failed to teach a power governing
`
`subsystem that determines a transmit power level for a portable cell phone based
`
`on both a network adjusted transmit power level (as a function of a position to a
`
`communications tower) and a proximity transmit power level. EX1002, 19-27; 73-
`
`74; Infra, Section IV.B. The claims were improperly granted, however, because the
`
`examiner had an incomplete record of the prior art, and as detailed below, more
`
`pertinent prior art plainly disclosed these exact features. If these teachings had
`
`been fully analyzed during prosecution, the ’435 patent never would have issued.
`
`Huawei therefore requests the Board to institute IPR of the Challenged Claims.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Huawei Technologies Co., Ltd.; Huawei Device USA, Inc.; Huawei Invest-
`
`ment & Holding Co., Ltd.; Huawei Device (Shenzhen) Co., Ltd.; Huawei Device
`
`Co., Ltd.; Huawei Tech. Investment Co., Ltd.; and Huawei Device (Hong Kong)
`
`Co., Ltd. are the real parties-in-interest. No other parties had access to or control
`
`
`
`2
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`over the present Petition, and no other parties funded the present Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Bell Northern Research, LLC (“BNR”)—the alleged Patent Owner—filed a
`
`complaint in the U.S. District Court for the Southern District of California (Case
`
`No. 3:18-cv-1784) against Huawei Device (Dongguan) Co., Ltd., Huawei Device
`
`(Shenzhen) Co., Ltd., and Huawei Device USA, Inc., asserting 6 patents. The ini-
`
`tial complaint, which did not allege infringement of the ’435 patent, was served on
`
`August 3, 2018. BNR did not allege infringement of the ’435 patent until the sec-
`
`ond amended complaint served on November 13, 2018.
`
`BNR also filed complaints in the Southern District of California alleging in-
`
`fringement of the ’435 patent by other parties: ZTE Corporation, ZTE (USA) Inc.,
`
`and ZTE (TX) Inc. (3:18-cv-1786); and LG Electronics Mobile Research U.S.A.,
`
`LLC, LG Electronics U.S.A. Inc., LG Electronics, Inc. (3:18-cv-2864). Huawei is
`
`not a real party-in-interest to any of these above-listed district court proceedings.
`
`Also, none of the parties in these district court proceedings is a real party-in-inter-
`
`est in the proceedings involving Huawei or in privity with Huawei.
`
`C.
` Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioners provides the following designation of counsel.
`
`Lead Counsel
`Michael T. Hawkins, Reg. No. 57,867
`3200 RBC Plaza, 60 South Sixth Street
`
`Backup counsel
`Craig Deutsch, Reg. No. 69,264
`Tel: 612-278-4514 / deutsch@fr.com
`
`
`
`3
`
`

`

`Minneapolis, MN 55402
`Tel: 612-337-2569 / Fax 612-288-9696
`hawkins@fr.com
`IPR35548-0101IP1@fr.com
`
`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`
`
`Sangki Park, Reg. No. 77,261
`Tel: 612-638-5763 / spark@fr.com
`
`Christopher Hoff, Reg. No. 67,738
`Tel: 612-766-2066 / hoff@fr.com
`
`
`Jason W. Wolff, Reg. No. 43,281
`Tel: 858-678-4719 / wolff@fr.com
`
`Kim Leung, Reg. No. 64,399
`Tel: 858-678-4713 / leung@fr.com
`
`Jennifer Huang, Reg. No. 64,297
`Tel: 612-766-2094 / jjh@fr.com
`
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR35548-0101IP1@fr.com
`
`(referencing No. 35548-0101IP1 and cc’ing hawkins@fr.com and
`
`PTABInbound@fr.com).
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any addi-
`
`tional fees.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’435 Patent is available for IPR and that Peti-
`
`tioner is not barred or estopped from requesting IPR.
`
`
`
`4
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of the Challenged Claims on the grounds listed be-
`
`low. In support, this petition includes a declaration of Jonathan Wells, Ph.D.
`
`(EX1003).
`
`Ground
`1
`
`Claims
`1, 2, 3
`
`§102 - Baiker
`
`Basis for Rejection
`
`2
`
`3
`
`4
`
`5
`
`6
`
`1, 2, 3, 6
`
`§103 - Baiker and Werling
`
`1, 2, 3
`
`§102 - Irvin
`
`1, 2, 3, 6
`
`§103 - Irvin and Myllymäki
`
`1, 2, 3
`
`§103 - Bodin and Irvin
`
`6
`
`§103 - Bodin, Irvin, and Myllymäki
`
`Baiker (published April 11, 2001) and is prior art under at least § 102(a).
`
`Bodin (issued Feb. 14, 1995) and Myllymäki (issued Jan 25. 2000) were published
`
`over a year before the earliest possible priority date (Sep. 28, 2001), and are prior
`
`art under § 102(b). Werling (filed July 26, 1999) is prior art under at least §
`
`102(e).
`
`Irvin (filed June 20, 2001) is prior art under at least § 102(e) based on its
`
`PCT filing date of June 20, 2001. Although only relevant to the extent Patent
`
`Owner attempts to establish a conception date prior to June 20, 2001, Irvin claims
`
`
`
`5
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`priority to U.S. Provisional Application 09/612,034 (“Irvin Provisional”) filed July
`
`7, 2000. Irvin thus has a § 102(e) prior art date of July 7, 2000, because the Irvin
`
`Provisional supports at least one claim of Irvin. Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d, 1375, 1381-82 (Fed. Cir. 2015); Polaris Indus., Inc. v.
`
`Arctic Cat Inc., Case IPR2016-01713, Paper 9, at 13 (PTAB Feb. 27, 2017) (“only
`
`one claim”). As demonstrated below and confirmed by Dr. Wells (EX1003, ¶81),
`
`the Irvin Provisional provides support under 35 U.S.C. § 112 for at least claim 1 of
`
`Irvin:
`
`an antenna;
`
`Irvin Claim 1
`1. A portable communication device op-
`erable to limit transmitter power if
`proximate a human body, comprising:
`
`Exemplary Support in Irvin Provi-
`sional (EX1010)
`Cl. 1: “A portable communication de-
`vice operable to limit transmitter power
`if proximate a human body, compris-
`ing:”;
`4: “This invention relates to a mobile
`terminal used in a wireless communica-
`tion system and, more particularly, to a
`mobile terminal operable to limit trans-
`mitter power if proximate a human
`body.”
`Cl. 1: “an antenna”;
`8: “antenna 12”;
`FIG. 1.
`a transmitter connected to the antenna; Cl. 1: “a transmitter connected to the
`antenna”;
`8: “transmitter 18”;
`FIG. 1.
`Cl. 1: “a detector for detecting if the
`antenna is proximate a human body;
`and”
`10: “proximity detector 38”;
`FIG. 1.
`6
`
`a detector for detecting if the antenna is
`proximate a human body; and
`
`
`
`

`

`a control operatively connected to the
`transmitter and to the detector, the con-
`trol controlling transmitter power an
`limiting transmitter power if the detec-
`tor detects that the antenna is proxi-
`mate a human body.
`
`
`
`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`Cl. 1: “a control operatively connected
`to the transmitter and to the detector,
`the control controlling transmitter
`power and limiting transmitter power if
`the detector detects that the antenna is
`proximate a human body.”
`10: “The processor 22 operates in ac-
`cordance with a control program, as de-
`scribed more specifically below, to
`limit or cap transmitter power output if
`the antenna 12 is proximate a human
`body.”
`
`Notably, all references but Irvin and Werling were never before the exam-
`
`iner during prosecution. Irvin was not addressed in an office action and is not cu-
`
`mulative to art applied in prosecution of the ’435 patent. Werling is applied here
`
`in a manner similar to that by the Office during prosecution, which was not chal-
`
`lenged by Patent Owner. For at least these reasons, there is no basis for a determi-
`
`nation under 35 U.S.C. § 325(d) that “substantially the same prior art or argu-
`
`ments” were presented to the Office. To be sure, none of the six factors identified
`
`in the PTAB’s Becton, Dickinson and Company decision weigh in favor of such a
`
`finding. See IPR2017-01586, Paper 8 at 17-28 (PTAB Dec. 15, 2017).
`
`IV. SUMMARY OF THE ’435 PATENT
`A. Brief Description
`The ’435 patent generally describes techniques for reducing the transmit
`
`power level of a portable cell phone when located near a human body. EX1001,
`
`
`
`7
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`1:63-67; EX1003, ¶¶28-29. For example, the ’435 patent describes cell phone de-
`
`vices including a “typical power circuit” that provides a transmit power level.
`
`EX1001, 3:31-34; 4:31-61. A “proximity regulation system” is coupled with the
`
`“power circuit” and determines a “proximity transmit power level” based on “its
`
`location proximate the portable cell phone user.” EX1001, 3:43-4:4. A “network
`
`adjusted transmit power level may be reduced to a value determined by the prox-
`
`imity transmit power level when the location of the portable cell phone 200 is
`
`within the vicinity of the user's head,” and “just within the vicinity of a user’s
`
`body.” EX1001, 5:24-36.
`
`B.
`Summary of the Prosecution History
`During prosecution of the ’435 patent, the first office action rejected original
`
`claim 19 (corresponding to issued claim 1) based upon a combination of Werling
`
`(EX1005) and Vogel (a secondary reference). EX1002, 84-85. In response, the
`
`applicant amended the claim (Id., 69) and then argued that the cited combination
`
`did not teach a power circuit that provides a network adjusted transmit power level
`
`“as a function of a position to a communications tower.” Id., 73 (repeating this
`
`phrase three times). The applicant then contended that, due to this alleged short-
`
`coming, it followed that Werling and Vogel failed to teach a power governing sub-
`
`system that determines “a transmit power level for a portable cell phone based on a
`
`
`
`8
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`network adjusted transmit power level and a proximity transmit power level as re-
`
`cited in Claim 19.” Id., 73-74.
`
`In response, claims 19-27 were allowed, but claims 1-18 remained rejected.
`
`Id. at 20-27. The applicant canceled rejected claims 1-18, and a notice of allow-
`
`ance followed. EX1002, 4-7; 15-18. Notably, the examiner provided reasons for
`
`their conclusion that claims 19-27 were allowable, which emphasized the final ele-
`
`ment of issued claim 1. EX1002, 27. As explained below, the Baiker, Irvin, and
`
`Bodin references—which were never considered by the examiner—plainly dis-
`
`close these elements of issued claim 1, including the features emphasized in the ex-
`
`aminer’s reasons for allowance. EX1003, ¶¶30-32.
`
`C. Level of Ordinary Skill
`The ’435 patent was filed September 28, 2001, and no claim of priority was
`
`made. The evidence shows a person of ordinary skill in the art at the time of inven-
`
`tion (“POSITA”) would have had at least a bachelor’s degree in electrical engi-
`
`neering, computer engineering, computer science, or a related technical field, and
`
`at least 1-2 years of experience in the field of wireless communication devices, or
`
`an equivalent advanced education in the field of wireless communication devices.
`
`EX1003, ¶¶23-24.
`
`V. Claim Construction Under 37 C.F.R. §§ 42.104(b)(3)
`Petitioner submits that all claim terms should be construed according to the
`
`
`
`9
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. Although both parties have submitted briefing on claim construc-
`
`tion in copending district court litigation (EX1009, EX1019, EX1020), the litiga-
`
`tion is in an early stage, and the Court has not issued a claim construction order.
`
`1.
`“position to a communications tower” (claim 1)
` For the phrase “position to a communications tower,” this Petition sets forth
`
`a first claim construction and a second, alternative claim construction. The Board
`
`has previously authorized the use of alternative constructions in IPR petitions, and
`
`Petitioner should be treated no differently here. General Electric Co. v Vestas
`
`Wind Systems A/S, IPR2018-00928, Paper No. 9, 12-16 (PTAB Nov. 5, 2018) (“the
`
`rule does not prohibit a petitioner from submitting more than one construction”);
`
`Intel Corp. v Qualcomm Inc., IPR2018-01340, Paper No. 8, 11-13 (PTAB Jan. 15,
`
`2019) (“the petitioner may offer alternative constructions and demonstrate un-
`
`patentability under each construction.”); Hologic, Inc. v Enzo Life Sciences, Inc.,
`
`IPR2018-00019, Paper No. 21, 7 (PTAB Nov. 28, 2018). As explained in detail
`
`below, the Petition sets forth alternative constructions along with an ample demon-
`
`stration of the unpatentability of the Challenged Claims under each alternative in-
`
`terpretation, which is sufficient for institution of review. General Electric, Paper
`
`9, 12-16; Intel, Paper 8, 11-13.
`
`According to a first construction, the phrase “position to a communications
`
`
`
`10
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`tower” means “transmit signal strength of a communications path between the
`
`communications tower and the portable cell phone.” EX1020, 63-71; EX1009, 63,
`
`129 (citing ’435 patent, 3:39-42 and “Mobile Communications Engineering: The-
`
`ory and Applications”). Under this construction, the term “position” does not take
`
`on its ordinary meaning and is instead equated with a “signal strength”—namely, a
`
`transmit signal strength of a communications path. Based on this interpretation,
`
`the claim language incorporates the embodiment described in column 3 of the ’435
`
`patent in which the “network adjusted transmit power level is based on a transmit
`
`signal strength of a communications path between the communications tower 110
`
`and the portable cell phone 120.” EX1001, 3:39-42 (emphasis added); EX1003,
`
`¶¶33-34. As detailed below, Baiker and Irvin each disclose a network adjusted
`
`transmit power level based on a transmit signal strength of a communications path
`
`between a communications tower and mobile device. Infra, Section VI-IX. Thus,
`
`if the Board adopts this first construction of “position to a communications tower,”
`
`Grounds 1-4 demonstrate that the Challenged Claims are unpatentable.
`
`This Petition presents a second, alternative construction based upon the
`
`straightforward and literal language of “position to a communications tower.” In
`
`this alternative, no formal construction is necessary because plain language of the
`
`claim recites “position,” which does not carry any specialized meaning in the art
`
`and is not lexicographically defined in the ’435 patent specification. EX1003, ¶35.
`
`
`
`11
`
`

`

`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`In particular, the commonly recognized meaning of a “position” is simply a loca-
`
`tion or distance relative another object, and thus the phrase “position to a commu-
`
`nications tower” plainly and ordinarily describes a location or distance to a com-
`
`munications tower. Id. This interpretation is consistent with the intrinsic evidence,
`
`as the ’435 patent includes use of this phrase in the specification, without any lexi-
`
`cographic definition or disclaimer that equates the term “position” to “a transmit
`
`signal strength.” See, e.g., EX1001, 2:18-21 (“the present invention provides a
`
`portable cell phone that includes a power circuit as a function of a position to a
`
`communications tower and a proximity regulation system” (emphasis added)).
`
`Indeed, the specification uses the term “position” in several instances that are con-
`
`sistent with its ordinary meaning, none of which are tethered to a “transmit signal
`
`strength.” Id., 3:4-6 (“positioned”); 6:33-37 (“position indicator” and “posi-
`
`tioned”); EX1019, 46-51. Also, this ordinary meaning of “position” is confirmed
`
`by the extrinsic evidence. EX1003, ¶35 (citing to EX1014 (“a place or location”);
`
`EX1017 (“the place where a person or thing is, esp. in relation to others”). Alter-
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`natively, to the extent the Board deems an explicit construction of this term to be
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`required, this term should be construed to mean “position of the portable cell
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`phone relative to a communications tower,” consistent with how this term would
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`have been plainly and ordinarily understood by a POSITA. EX1003, ¶35. The
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`Bodin reference describes adjusting transmit power based on distance to a base sta-
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`tion/communication tower. Infra, Section X-XI. Thus, if the Board adopts this al-
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`ternative interpretation, Grounds 5-6 demonstrate that the Challenged Claims are
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`unpatentable.
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`VI. GROUND 1: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY BAIKER
`A. Overview of Baiker
`Baiker (EX1004) describes a “hand-held mobile telephone” in which “the
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`damage potential of the electromagnetic radiation emitted by the device can be ef-
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`ficiently reduced for the user.” EX1004, Abstract, [0006]-[0007]. Baiker de-
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`scribes this can be accomplished by controlling “the power of the RF transmitter
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`… on the basis of a distance measured (e.g., to the user’s head).” Id. Baiker pro-
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`vides a block diagram of the “hand-held mobile telephone” in Figure 3 (annotated
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`below on p. 16). EX1003, ¶39.
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`As shown in Figure 3, the hand-held mobile telephone 1 includes an “RF
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`transmitter (10/6)” that includes an “antenna 6” and “RF amplifier 10,” “a sensor
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`(7) for measuring a distance between the hand-held [mobile telephone] and a body
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`part of a user,” and “a circuit (15) for controlling the power of the RF transmitter
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`(10/6) depending on the measured distance.” EX1004, Abstract, [0019]. The an-
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`tenna 6 “forms the interface to the base station.” Id., [0025].
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`Baiker teaches the power of the RF transmitter is regulated based on both (1)
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`the measured distance (“distance signal”) between the device and body part of the
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`user and (2) a “quality signal supplied by the base station.” Id., [0028]; EX1003,
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`¶¶37-41. Baiker expressly describes that “control 15,” which regulates RF ampli-
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`fier 10, “has a first input for a distance signal, which is detected and processed by
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`the distance sensor 7 and the sensor electronics 14,” and “a second input” that “is
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`provided for a quality signal supplied by the base station.” Id. For example, the
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`measured distance can be used to determine an “allowed maximum value” of the
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`output of the RF amplifier 10, and the quality signal, which “measures the strength
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`of the signal received from the hand-held mobile telephone,” is used to determine
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`“by what value [the hand-held mobile telephone] can reduce its transmission power
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`or to what value [the hand-held mobile telephone] may delimit the RF amplifier 10
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`without the connection being dropped.” Id., [0030] (“allowed maximum
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`value…”); [0031] (“can determine by what value…”).
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`B. Application to Challenged Claims
`[1.P] A portable cell phone, comprising:
`To the extent the preamble is a limitation, Baiker discloses a portable cell
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`phone. EX1003, ¶¶36, 42. For example, Baiker describes a “hand-held mobile tel-
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`ephone.” EX1004, [0019]; see also id., Title, Abstract, [0017]. Moreover, Baiker
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`provides explicit description of operation that further confirms its “mobile tele-
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`phone” is a cell phone. See, e.g. EX1004, [0037] (“signal exchange occurs be-
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`tween the hand-held radio and the base station, for example, when a switch occurs
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`between one radio cell and the next.” (emphasis added)).
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`
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`EX1003, ¶42; EX1004, FIG. 1 (annotated).
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` [1.1] a power circuit that provides a network adjusted transmit power level as a
`function of a position to a communications tower; and
`Baiker’s mobile telephone includes a power circuit provided by the “RF am-
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`plifier,” alone or together with the “control” (e.g., at least a portion of the “control”
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`that affects the transmit power level produced by the “RF amplifier”) and the “as-
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`sociated electrical connections.” EX1004, [0025]-[0026], [0028]; EX1003, ¶¶43-
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`44. The “RF amplifier” is “regulated by a control 15” and serves to amplify a
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`15
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`modulated RF signal for emission by the “antenna.” Id. In other words, the “RF
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`amplifier” produces a transmit power level for the outgoing transmission to be
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`emitted by the “antenna.” Id.
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`
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`EX1003, ¶43; EX1004, FIG. 3 (annotated), [0025] (“a circuit configuration for the
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`performance of the control”).
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`The evidence here confirms Baiker’s “RF amplifier” is just like the embodi-
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`ment of the ’435 patent, which describes “the power circuit 130 may be a typical
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`power circuit in the portable cellphone 120 that produces a transmit power level
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`equivalent to, for instance, a maximum transmit power level of one watt,” and that
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`16
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`employs the “antenna 125” for transmission. EX1001, 3:31-42; EX1003, ¶45.
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`Baiker further discloses that its power circuit (e.g., “RF amplifier”) provides
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`a network adjusted transmit power level as a function of a position to a commu-
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`nications tower (consistent with the first construction described above, supra, Sec-
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`tion V). In particular, Baiker discloses a network adjusted transmit power level
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`that is the same as an embodiment of the ’435 patent—namely, one that is “based
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`on a transmit signal strength of a communications path between the communica-
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`tions tower 110 and the portable cell phone 120.” EX1001, 3:39-42. Because the
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`scope of claim 1 encompasses this embodiment of the ’435 patent under this first
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`construction, it likewise encompasses Baiker’s prior art teaching too. In more de-
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`tail, Baiker describes that the “RF amplifier 10 is regulated by a control 15,” in-
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`cluding an “input provided for a quality signal supplied by the base station.”
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`EX1004, [0028] (emphasis added). The “quality signal” is indicative of a transmit
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`signal strength of a communications path between the communications tower (e.g.,
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`“base station”) and portable cell phone. EX1004, [0031]; EX1003, ¶¶45-47.
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`Indeed, Baiker describes “a circuit is provided in the base station that
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`measures the strength of the signal received from the hand-held mobile telephone
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`1 and transmits the same (e.g. together with other control data) to the hand-held
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`mobile telephone 1 in the downlink. The quality signal may, for example, simply
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`indicate whether the hand-held mobile telephone 1 may reduce the current trans-
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`mission power (further) or not.” EX1004, [0031] (emphasis added); cl. 4 (“Hand-
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`held radio according to any of claims 1 or 2, characterized in that the power of the
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`RF transmitter (10/6) can be adjusted depending on a signal characterized by a
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`connection quality.”); cl. 9; see also [0009] (“Preferably, the device controls its
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`transmission power in accordance with the requirements of the connection to the
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`base station. The transmission power may, for example, be reduced, when the sig-
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`nals from the base station (to which the connection has been made) are strong.”);
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`[0034] (“A quality signal may also be generated in the hand-held mobile telephone
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`1 instead of in the base station.”). Baiker thus describes that the “RF ampli-
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`fier”/“antenna”/“control” may provide a transmit power level based on both the
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`“quality signal” and proximity to a user. When the transmit power level is not ad-
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`justed based on proximity to a user (e.g., the transmit power level is based only on
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`the “quality signal”), the “RF amplifier” provides the network adjusted transmit
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`power level. See, e.g. EX1004, [0021] (describing that the transmit power is not
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`limited based on user proximity when the distance to the user is greater than a
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`“second distance d2.”).
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`Accordingly, the “RF amplifier,” which provides a transmit power level
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`based on a “quality signal,” alone or together with its electrical connections/con-
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`ductors and/or portions of the “control,” as described by Baiker, discloses a power
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`Attorney Docket No. 35548-0101IP1
`IPR of U.S. Patent No. 7,039,435
`circuit that provides a network adjusted transmit power level as a function of a po-
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`sition to a communications tower.
`
` [1.2] a proximity regulation system, including:
`Baiker discloses a proximity regulation system. EX1003, ¶¶47-48. For ex-
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`ample, Baiker describes that “[a]ccording to the invention, the power of the RF
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`transmitter is controlled on the basis of a distance measured (e.g. to the user’s
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`head).” EX1004, [0007]. Indeed, Baiker describes “distance-dependent regulation
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`of the RF power emitted by the antenna” as “the core of the invention.” EX1004,
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`[0021].
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`Baiker describes that “control 15” regulates transmit power based on prox-
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`imity to a user. EX1004, [0028] (“the RF amplifier 10 is regulated by a control 15
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`according to the invention.”). A “distance signal” is “detected and processed by
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`the distance sensor 7 and the sensor electronics 14” and input to the “control 15.”
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`Id.; see also Abstract (“a circuit (15) for controlling the power of the RF transmit-
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`ter (10/6) depending on the measured distance [is] provided]”). In other words, the
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`transmit power output by the RF amplifier is limited to an allowable range depend-
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`ing on a distance of the device to a user. EX1004, [0030] (“Principally, the