`
`
`Filed: October 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`
`PETITIONER,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`
`PATENT OWNER.
`
`___________________
`
`Case No. IPR2019-01186
`U.S. Patent No. 7,039,435
`___________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`INTRODUCTION .......................................................................................... 1 
`
`OVERVIEW OF THE ’435 INVENTION .................................................... 3 
`
`LEVEL OF ORDINARY SKILL ................................................................... 5 
`
`CLAIM CONSTRUCTION ........................................................................... 5 
`
`A.  “position to a communications tower” ........................................................... 5 
`
`1.  First Proposed Construction .......................................................................... 6 
`
`2.  Petitioner’s Alternative Proposed Construction for “position to a
`communications tower” .............................................................................. 13 
`
`V. 
`
`VI. 
`
`PROSECUTION HISTORY OF THE ’435 PATENT ................................ 15 
`
`OVERVIEW OF PRIMARY PRIOR ART REFERENCES ....................... 19 
`
`A.  Baiker ........................................................................................................... 19 
`
`B.  Werling ......................................................................................................... 19 
`
`C. 
`
`Irvin .............................................................................................................. 21 
`
`D.  Myllymäki .................................................................................................... 22 
`
`E.  Bodin ............................................................................................................ 23 
`
`VII. 
`
`VIII. 
`
`A. 
`
`STANDARD FOR GRANTING INTER PARTES REVIEW ...................... 24 
`
`INTER PARTES REVIEW SHOULD NOT BE INSTITUTED .................. 24 
`
`Institution Should Be Denied Because The District Court Litigation Is In
`Advanced Stages .......................................................................................... 25 
`
`B.  Ground 1: Baiker Does Not Anticipate Any Challenged Claim .................. 28 
`
`
`
`i
`
`

`

`1.  Baiker Fails to Disclose the Claimed “Power Circuit that Provides a
`Network Adjusted Transmit Power Level…” Limitation. ......................... 28 
`
`2.  Baiker Fails to Disclose the Claimed “Power Governing Subsystem
`that…Determines A Transmit Power Level…Based on” the Network
`Adjusted Transmit Power Level and the Proximity Transmit Power
`Level. ........................................................................................................... 31 
`
`C.  Ground 2: The Addition of Werling does not Cure Baiker’s Deficiencies
`Regarding Claim 1 ........................................................................................ 32 
`
`1.  Werling does not supply the limitations missing from Baiker. .................. 32 
`
`2.  Petitioner fails to establish a motivation to combine Baiker and Werling . 33 
`
`D.  Ground 3: Irvin Does Not Anticipate the Challenged Claims ..................... 36 
`
`1.  The Examiner Considered Irvin During Prosecution and the Board
`Should Deny Institution under 325(d) ........................................................ 36 
`
`2.  Petitioner Failed to Show that Irvin is Entitled to Any Date Prior to its
`Filing Date of June 20, 2001 ....................................................................... 41 
`
`3.  Irvin Fails to Disclose the Claimed “Power Circuit that Provides a
`Network Adjusted Transmit Power Level…” Limitation. ......................... 43 
`
`4.  Irvin Fails to Disclose “A Transmit Power…Based on [the] Network
`Adjusted Power Level and [the] Proximity Transmit Power Level.”......... 45 
`
`E.  Ground 4 ....................................................................................................... 45 
`
`1.  The Examiner Considered Irvin and Art Cumulative of Myllymäki
`During Prosecution and the Board Should Deny Institution under 325(d) 45 
`
`2.  Petitioner Has Failed to Show that Irvin Is Entitled to Any Date Prior to
`Its Filing Date.............................................................................................. 46 
`
`3.  The Combination of Irvin and Myllymäki Fails to Remedy the
`Deficiencies of Irvin ................................................................................... 46 
`
`4.  Petitioner Provides No Reasonable Motivation to Combine Irvin and
`Myllymaki .................................................................................................... 47 
`
`
`
`ii
`
`

`

`F.  Ground 5: Petitioner Fails to Show the Combination of Bodin and Irvin
`Teaches Every Element of the Challenged Claims and Does Not Show
`Sufficient Motivation to Combine ................................................................ 49 
`
`1.  The Examiner Considered Irvin and Art Cumulative of Bodin During
`Prosecution and the Board Should Deny Institution under 325(d) ............. 50 
`
`2.  The Combination of Irvin and Bodin Does Not Supply the Missing
`Disclosures of Irvin ..................................................................................... 51 
`
`3.  Petitioner Presents No Reasonable Evidence that a POSITA Would Be
`Motivated to Combine Irvin with Bodin ..................................................... 52 
`
`G.  The Invention of the ’435 Patent Antedates the Baiker and Irvin
`References. ................................................................................................... 56 
`
`1.  The Invention Disclosure Statement and its Associated Metadata
`Corroborate that the Inventors Conceived of the Claimed Invention by,
`or shortly after, February 27, 2001 ............................................................. 57 
`
`2.  Corroborated Evidence and Testimony Establish the Inventors to the
`’435 Patent Diligently Constructively Reduced to Practice their
`Invention between Conception and their September 28, 2001 Filing Date 61 
`
`IX. 
`
`CONCLUSION ............................................................................................ 63 
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases 
`
`Align Tech., Inc. v. ClearCorrect Operating, LLC,
`745 F. App’x 361 (Fed. Cir. 2018) ...................................................................... 35
`
`Becton, Dickinson and Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ................................................ 38
`
`Belden Inc. v. Berk–Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 55
`
`Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc.,
`262 F.3d 1258 (Fed. Cir. 2001) ............................................................................ 10
`
`Brown v. Barbacid,
`436 F.3d 1376 (Fed. Cir. 2006) ............................................................................ 61
`
`CaptionCall, L.L.C. v. UltratecInc.,
`IPR2013-00544, Paper 74 (PTAB Mar. 3, 2015) ................................................ 42
`
`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) .............................................................................. 60
`
`Cox Comms., Inc. v. AT&T Intell. Prop. I, L.P.,
`IPR2015-01227, Paper No. 70 (PTAB May 19, 2015) ........................................ 42
`
`Deeper, UAB v. Vexilar, Inc.,
`IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) .................................................. 40
`
`Dynamic Drinkware, LLC, v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 42
`
`Edge Endo, LLC v. Michael Scianamblo,
`IPR2018-01320, Paper 15 (PTAB Jan. 14, 2019) ................................................ 24
`
`EiKO Global, LLC, v. Blackbird Tech LLC D/B/A Blackbird
`Technologies,
`IPR2017-00980, Paper 16 (PTAB Sept. 1, 2017) ................................................ 32
`
`
`
`iv
`
`

`

`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16 (PTAB May 15, 2019) ............................................... 26
`
`Huawei Device Co., Ltd. v. Maxell, Ltd.,
`IPR2018-00246, Paper 8 (PTAB June 29, 2019) ................................................. 36
`
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) ..................................................................... 41, 42
`
`In re Kahn,
`441 F. 3d 977 (Fed. Cir. 2006) ...................................................................... 48, 55
`
`InfoBionic, Inc. v. Braemar Mfg., LLC,
`IPR2015-01704, Paper 11 (PTAB Feb. 16, 2016) ............................................... 34
`
`Irdeto Access, Inc. v. Echostar Satellite Corp.,
`383 F.3d 1295 (Fed. Cir. 2004) ............................................................................ 10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 48, 55, 56
`
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017) ..................................................................... 52, 54
`
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) ............................................................................ 61
`
`NHK Spring Co., Ltd. v. Intri-Plex Techs. Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................ 26
`
`Nintendo Co. Ltd. et al. v. Genuine Enabling Tech. LLC,
`IPR2018-00542, Paper 7 (PTAB Aug. 6, 2018) .................................................. 54
`
`Orexo AB v. Actavis Elizabeth LLC,
`903 F.3d 1265 (Fed. Cir. 2018) ............................................................................ 34
`
`Personal Web Techs. v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 35
`
`SAS Inst. v. Iancu,
`138 S. Ct. 1348 (2018) ......................................................................................... 24
`
`
`
`v
`
`

`

`Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc.,
`774 F.3d 968 (Fed. Cir. 2014) .............................................................................. 61
`
`Unified Patents Inc. v. Cuica, LLC,
`IPR2016-01644, Paper 16 (PTAB Feb. 27, 2017) ............................................... 40
`
`Unified Patents Inc. v. Realtime Data LLC,
`IPR2017-02129, Paper 11 (PTAB Mar. 27, 2018) .............................................. 35
`
`ZTE (USA), Inc. v. Fractus S.A.,
`IPR2018-01461, Paper 10 (PTAB Feb. 28, 2019) ............................................... 27
`
`Other Authorities 
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.108 ................................................................................................... 24
`
`
`
`vi
`
`

`

`I.
`
`INTRODUCTION
`
`Patent Owner submits this Preliminary Response, which is timely filed on
`
`October 11, 2019. The Board should deny institution of the Petition for a host of
`
`reasons.
`
`First, it would not be an efficient use of the Board’s resources in view of the
`
`advanced stage of the district court litigation. The Case Management Order there
`
`set the final pretrial conference for March 20, 2020, with trial expected to follow
`
`shortly thereafter. (See Ex. 2001.) If IPR is instituted, the Board’s statutory
`
`deadline for its Final Written Decision would be some time in January 2021,
`
`potentially ten months after the district court trial. Petitioner relies on the same art
`
`in the district court case as in this Petition. (See Ex. 2011, 31-32.) The Board
`
`should exercise its discretion under § 314(a) to avoid inefficient and duplicative
`
`parallel proceedings.
`
`Second, even if the Board considers the substance of the references,
`
`Petitioner fails to show a reasonable likelihood that it will prevail with respect to
`
`the only challenged independent claim. Grounds 1 and 2, which rely primarily on
`
`the Baiker reference, fail to disclose a key limitation of the claims—namely, “a
`
`power circuit that provides a network adjusted transmit power level as a function
`
`of a position to a communication tower” and that the “transmit power level” of the
`
`device be determined “based on [the] network adjusted transmit power level and
`
`
`
`1
`
`

`

`[the] proximity transmit power level.” (Id. (emphasis added).) (Ex. 1001, claim 1.)
`
`For Grounds 3-5, which rely primarily on Irvin, the Examiner either expressly
`
`considered all of the asserted prior art or directly considered art cumulative of the
`
`examined art, and allowed the claims over it, warranting denial of the Petition
`
`under § 325(d). Additionally, each of Petitioner’s Grounds 3-5 relies on alleged
`
`prior art that fails to disclose the same limitations of claim 1—mentioned above
`
`that Baiker fails to disclose. Finally, for each of Grounds 2, 4, and 5, which rely on
`
`a purported obviousness combination, Petitioner fails to show why a POSITA
`
`would have been motivated to combine the cited prior art, or how a POSITA would
`
`do so. These shortcomings are fatal to Petitioner’s institution request.1
`
`Third, corroborated evidence shows that the ’435 Patent inventors conceived
`
`of the invention and diligently reduced it to practice thereafter sufficient to
`
`antedate the Baiker and Irvin prior art on which Petitioner relies as primary
`
`references for every ground challenging the claims. This effectively removes
`
`these references as prior art and warrants non-institution.
`
`
`1 Because Petitioner has failed to show a reasonable likelihood that independent
`
`claim 1 is anticipated or rendered obvious, it necessarily follows that the dependent
`
`claims are also not anticipated or obvious. Therefore, this Preliminary Response is
`
`limited to Petitioner’s arguments and grounds related to claim 1—Grounds 1-5.
`
`
`
`2
`
`

`

`Patent Owner respectfully requests that the Board deny institution of a trial
`
`on all challenged claims (i.e., claims 1, 2, 3, and 6) of the ’435 Patent.
`
`II. OVERVIEW OF THE ’435 INVENTION
`The ’435 Patent is entitled “Proximity Regulation System for Use with a
`
`Portable Cell Phone and a Method of Operation Thereof,” and issued from an
`
`application filed on September 28, 2001.
`
`The ’435 Patent generally relates to a system or method that regulates a cell
`
`phone’s transmission power to reduce potentially harmful radiation when the
`
`phone is proximate to a cell phone user. The specification states:
`
`Typically, the quality of service of a cell phone is proportional to the
`transmit power level of the cell phone. Though no definite proof has
`been determined, health concerns have arisen due to the power used to
`transmit the radio frequency of cell phones when operated close to the
`body of a cell phone user. For example, when held close to the ear,
`many users have health concerns about the high levels of radio
`frequency energy causing damage to brain cells.
`….
`Cell phone users still want the best possible quality of service from
`their cell phone. However, health concerns regarding the transmit
`power of cell phones are now beginning to affect some users.
`
`(Ex. 1001, 1:33-50.) The background section of the ’435 Patent describes
`
`shortcomings of the prior art:
`
`
`
`3
`
`

`

`Manufacturers have tried several options to relieve the fears of
`consumers. One such option involves permanently reducing the power
`of the transmitter in cellphones… [U]nfortunately, this also reduces
`the quality of service of the cell phone. Another option for consumers
`is the use of cell phones with a base that typically allows a higher
`transmit power level of up to three watts….These type of cell phones,
`however, do not allow the flexibility demanded by consumers that is
`found in the use of a portable cell phone.
`(Id., 1:51-62.)
`
`One aspect of the invention is “a proximity regulation system for use with a
`
`portable cell phone.” (Id., 2:3-5.) This proximity regulation system “includes a
`
`location sensing subsystem and a power governing subsystem, which cooperate to
`
`determine both the proximity transmit power level and when it may be employed.”
`
`(Id., 3:47-51.) The location sensing subsystem determines the location of the cell
`
`phone relative to the user, and based on this information, the power governing
`
`subsystem, which is coupled to the location sensing subsystem, determines a
`
`“proximity transmit power level” of the phone. (Id.)
`
`Another aspect is a “power circuit” that produces one level of device’s
`
`transmission power as a function of its position to the cell tower. (Id., 3:31-34.)
`
`The ’435 Patent refers to its Figure 1 and elaborates on the power circuit’s
`
`function, disclosing that “[t]hrough communications with the communications
`
`tower 110 employing the antenna 125, the power circuit,” provides a “network
`
`
`
`4
`
`

`

`adjusted transmit power level….” (Id., 3:34-37.) This “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.” (Id.,
`
`3:39-42.)
`
`According to the invention of the ’435 Patent, the ultimate transmit power
`
`level of the device is determined based on, for example, considering, adjusting, or
`
`modifying the network adjusted transmit power level and the proximity transmit
`
`power level. (See, e.g., Ex. 1001, 5:24-36; 7:9-40.)
`
`III. LEVEL OF ORDINARY SKILL
`For purposes of this Preliminary Response only, Patent Owner does not
`
`dispute Petitioner’s definition of a POSITA. (Pet., 9.)
`
`IV. CLAIM CONSTRUCTION
`A.
`“position to a communications tower”
`Petitioner provided two alternate constructions of the above phrase. (Pet.,
`
`10-13). Petitioner’s first construction mirrors the construction proposed by Patent
`
`Owner in the related litigation, namely; “transmit signal strength of a
`
`communications path between the communications tower and the portable cell
`
`phone.” (Ex. 1020, 63-71). Petitioner’s alternative proposed construction mirrors
`
`Petitioner’s proposed construction in the related litigation, calling for plain and
`
`ordinary meaning, which is restated in the alternative to mean; “position of the
`
`portable cell phone relative to a communications tower.” (Ex. 1019, 47-51).
`
`
`
`5
`
`

`

`First Proposed Construction
`
`1.
`Patent Owner agrees with Petitioner’s first construction, i.e., that “position
`
`to a communications tower” means “transmit signal strength of a communications
`
`path between the communications tower and the portable cell phone.”
`
`The term in question is bolded within the highlighted portion below of
`
`Claim 1 of the ’435 Patent:
`
`
`
`1. A portable cell phone, comprising:
`
`a power circuit that provides a network adjusted
`transmit power level as a function of a position to a
`communications tower; and
`a proximity regulation system, including:
`
`a location sensing subsystem that determines a
`location of said portable cell phone proximate a user;
`and
`a power governing subsystem, coupled to said
`
`location sensing subsystem,
`that determines a
`proximity transmit power level of said portable cell
`phone based on said location and determines a
`transmit power level for said portable cell phone
`based on said network adjusted transmit power level
`and said proximity transmit power level.
`In this claim, the “network adjusted transmit power level” is defined as a
`
`function of the disputed phrase “position to a communications tower.”
`
`Accordingly, any elaboration within the specification on this function that
`
`determines the network adjusted transmit power level is important to construing
`
`this term. The specification contains at least three such instances.
`
`The first instance states:
`
`
`
`6
`
`

`

`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.
`
`(Ex. 1001, 3:39-42.) This statement would inform a POSA reading the similarly
`
`worded phrase from claim 1; namely: “network adjusted transmit power level as a
`
`function of a position to a communications tower.” Both phrases reference the
`
`same term: “network adjusted transmit power level.” The specification’s statement
`
`that this term is “based on a transmit signal strength of a communications path
`
`between the communications tower 110 and the portable cell phone 120,” would
`
`cause a POSA to understand that claim 1’s “network adjusted transmit power level
`
`as a function of a position to a communications tower,” means “network adjusted
`
`transmit power level as a function of a transmit signal strength of a
`
`communications path between the communications tower and the portable cell
`
`phone.”
`
`The second instance in the specification also confirms that “network
`
`adjusted transmit power level” is determined by the communications path between
`
`the portable cell phone and the communications tower:
`
`After adjusting the transmit power level, the portable
`cell phone then transmits at a reduced level in a step
`350. In one embodiment, the adjusted transmit power
`level may not exceed the network adjusted
`transmit power
`level as determined by the
`communications path between the portable cell
`
`
`
`7
`
`

`

`phone and the communications tower. In other
`embodiments, the adjusted transmit power level may
`be reduced to the proximity transmit power level.
`
`(Ex. 1001 7:21-26) (emphasis added). Although the excerpt above includes
`
`language referring to a particular embodiment, this language refers to the relative
`
`power of the ultimately adjusted transmit power level of the cell phone, and not the
`
`statement that the network adjusted transmit power level is determined by the
`
`communications path between the portable cell phone and communications tower.
`
`The transmission signal strength necessary for a signal to travel between a tower
`
`and cell phone is determined by the communications path along which these
`
`signals must travel (taking into account, for example, whether there are natural or
`
`man-made obstructions in the communications path). (See, e.g., Ex. 2022 (William
`
`Lee, Mobile Communications Engineering – Theory and Applications 21-22,
`
`McGraw Hill (2d ed. 1997) (“Terrestrial losses are greatly affected by the general
`
`topography of the terrain….In general the texture and roughness of the terrain tend
`
`to dissipate propagated energy, reducing the received signal strength at the mobile
`
`unit and also at the base station….However, even under the most optimal siting
`
`
`
`8
`
`

`

`conditions, there are often hills, trees, and various man-made structure and vehicles
`
`that can adversely affect the propagation of mobile-radio signals.”).)2
`
`The third instance in the specification describing of what the network
`
`adjusted transmit power level is a function, also supports this construction:
`
`In one embodiment, the network adjusted transmit
`power level may equal the maximum transmit power
`level of a portable cell phone. In other embodiments,
`the network adjusted transmit power level may be
`a reduction from the maximum transmit power level
`due to the communications path between the
`communications tower and the portable cell
`phone.
`
`(Ex. 1001 at 7:34-40) (emphasis added). Again, the language in the excerpt above
`
`referring to embodiments pertains to the particular value of a network adjusted
`
`transmit power level relative to a cell phone’s maximum transmit power level, and
`
`not the statement that the “network adjusted transmit power level” is “due to the
`
`communications path between the communications tower and the portable cell
`
`phone.”
`
`
`
`Accordingly, each of these three instances support the first
`
`construction proposed by Petitioner and supported by Patent Owner. See Phillips,
`
`2 This book by William Lee is identified and incorporated by reference into the
`
`specification. (See Ex. 1001, 9-13.) Accordingly, this reference constitutes intrinsic
`
`evidence.
`
`
`
`9
`
`

`

`415 F.3d at 1320-21 (“[A] claim term may be clearly redefined without an explicit
`
`statement of redefinition” and “[e]ven when guidance is not provided in explicit
`
`definitional format, the specification may define claim terms by implication such
`
`that the meaning may be found in or ascertained by a reading of the patent
`
`documents.”) (citing and quoting Bell Atl. Network Servs., Inc. v. Covad Commc'ns
`
`Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001), and Irdeto Access, Inc. v.
`
`Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)) (establishing
`
`specification as single best guide to the meaning of a disputed term, and rejecting
`
`notion that any definition of claim language in the specification be express).
`
` Notably, both Petitioner’s representative and the Court confirmed this
`
`interpretation at the claim construction hearing in the district court litigation.
`
`Although the Court ultimately determined that the phrase “position to a
`
`communications tower” should be interpreted by its plain and ordinary meaning,
`
`such meaning was understood both by the Court and Petitioner as consistent with
`
`Patent Owner’s proposal:
`
`
`
`10
`
`

`

`THE COURT: Again,
`
`I don‘t know that someone wouldn't
`
`understand that when you're talking about the position of the
`
`tower, you're not only talking about distance but the path,
`
`the
`
`line of communications.
`
`MS. ZHANG: Right.
`
`THE COURT:
`
`I don't think that it needs more
`
`definition.
`
`MS. ZHANG: No. We absolutely agree, your Honor.
`
`
`
`10
`
`11
`
`13
`
`14
`
`15
`
`….
`
`
`15
`
`Then to the extent that this
`
`THE COURT: All right.
`
`16
`
`17
`
`18
`
`needs any further clarification,
`
`the Court will adopt
`
`the
`
`construction that:
`
`The position to the communications tower is
`
`the equivalent of the communications path between the
`
`communications tower and the portable cell phone device.
`
`MS. ZHANG: Your Honor, if we can just clarify? When
`
`you say "communications path," how much are you sort of going
`
`into the air and everything?
`
`THE COURT: What you just showed me. There is a
`
`signal that's coming from this tower or going to this tower
`
`that has a path to the device. That path and the strength of
`
`
`
`11
`
`11
`
`

`

` ….
`
`(Ex. 2023, CC Hearing Transcript 51-53, 57; Ex. 2024, 5-6).
`
`Patent Owner therefore agrees with and requests the Board to adopt
`
`Petitioner’s first construction of the phrase “position to a communications tower”
`
`
`
`
`
`12
`
`

`

`to mean “transmit signal strength of a communications path between the
`
`communications tower and the portable cell phone.”
`
`2.
`
`Petitioner’s Alternative Proposed Construction for “position to a
`communications tower”3
`
`Petitioner proposed an alternative construction for “position to a
`
`communications tower” that defines the term as “position of the portable cell
`
`phone relative to a communications tower.” (Pet., 12.) Patent Owner does not
`
`believe that this meaning is inconsistent with the first definition (and, according to
`
`statements made on behalf of Petitioner in the district court litigation, neither does
`
`Petitioner; see supra).
`
`
`3 Petitioner linked Grounds 1-4 solely to the first proposed construction. (Pet., 10-
`
`13) (“[I]f the Board adopts this first construction.…Grounds 1-4 demonstrate that
`
`the Challenged Claims are unpatentable…..if the Board adopts this alternative
`
`interpretation, Grounds 5-6 demonstrate that the Challenged Claims are
`
`unpatentable.”) As Grounds 1-4 do not make arguments that contemplate or
`
`account for the alternative construction (as evidenced by Petitioner’s use of
`
`additional art to accommodate the alternative construction that is absent from
`
`Grounds 1-4), if the Board adopts the alternative construction then Grounds 1-4
`
`should be ultimately disregarded and denied.
`
`
`
`13
`
`

`

`However, elsewhere in that section, Petitioner confusingly attempts to
`
`equate the term “position” as “simply a location or distance relative another
`
`object.” (Pet., 12). Not only is this definition completely inconsistent with
`
`Petitioner’s prior statements to the district court, it is also incorrect in the context
`
`of the ’435 Patent. The intrinsic record described above with respect to the first
`
`proposed construction firmly establishes that this definition is over-simplified and
`
`unsupported, particularly in view of the fact that the Applicant overcame prior art
`
`precisely because the invention’s “position” entails more than distance. Petitioner
`
`cites nothing in the patent or file history to support it contrary reading of the term.
`
`Further, the Petition’s focus on the alleged plain and ordinary uses within the
`
`specification of the term “position,” (Pet., 12) are unavailing, because these
`
`instances are not analogous to how the disputed phrase is used in claim 1—namely,
`
`as a function that defines network adjusted transmit power level. The extrinsic
`
`evidence (dictionary definitions) do not suggest that “position” is limited to
`
`distance—indeed, the word “distance” does not even appear in them. Instead, the
`
`two dictionary definitions identified by Petitioner (“a place or location” and “the
`
`place where a person or thing is, esp. in relation to others”), when used in the
`
`context of claim 1, are not limited solely to distance between two objects or
`
`locations—but rather contemplate more complex relationships between objects,
`
`such as the degree to which obstructions might be in between two objects in
`
`
`
`14
`
`

`

`question. Thus, while it is unclear precisely what construction Petitioner actually
`
`seeks, it would be unsupported and improper to adopt any construction that would
`
`limit position to a straight line between two objects, which does not take into
`
`account potential obstructions.
`
`V.
`
`PROSECUTION HISTORY OF THE ’435 PATENT
`
`The ‘435 Patent matured from application 09/967,140, filed on September
`
`28, 2001.
`
`In a first Office Action mailed on August 13, 2004, the Patent Office
`
`Examiner rejected pending Claim 19 (which corresponds to Claim 1 of the ’435
`
`Patent), based on an obviousness combination involving U.S. 6,456,856
`
`(“Werling”) and U.S. 6,498,924 (“Vogel”). In connection with the “network
`
`adjusted transmit power level as a function of a position to a communications
`
`tower” limitation in then claim 19, the examiner stated:
`
`Ex. 1002 (August 13, 2004 Office Action) at 84). The portion of the Vogel
`
`reference relied upon by the examiner related to measuring distance between a
`
`mobile station and a base station, and using this knowledge to control transmission
`
`
`
`
`
`15
`
`

`

`power of the mobile station as a function of distance between it and the base
`
`station to reduce interference levels:
`
`
`(Ex. 2025 (U.S. 6,498,924 (“Vogel”) at 1:10-37; Ex. 1002 (August 13, 2004 Office
`
`Action) at 84-85)).
`
`
`
`The applicant, in a response dated November 18, 2004, argued that the
`
`Vogel reference did not disclose “a power circuit that provides a network adjusted
`
`transmit power level as a function of a position to a communications tower.” While
`
`applicant acknowledged that Vogel taught that such distance measurements could
`
`be used for various purposes, applicant separately noted that Vogel did not teach or
`
`suggest the use of such distance measurements to specifically provide a transmit
`
`power level:
`
`
`
`16
`
`

`

`
`(Ex. 1002 (November 18, 2004 Response to August 13, 2004 Office Action) at 73.)
`
`The patent examiner agreed with the applicant, withdrew the rejection regarding
`
`Claim 19, and allowed Claims 19-27, which issued as Claims 1-9. (See Ex. 1002
`
`(August 8, 2005 Office Action) at 27.)
`
`
`
`After the November 18, 2004 Applicant response to the first Office Action,
`
`and approximately two and one half months prior to the next Office Action,
`
`Applicant submitted an Information Disclosure Statement (IDS) that the Patent
`
`Office received May 24, 2005 (Ex. 1002 at 30). This IDS disclosed and provided
`
`only a single reference, namely Published International Application WO
`
`02/05433 A2 to Irvin, which Petitioner presently relies upon for Grounds 3, 4, 5,
`
`and 6. (Ex. 1006).
`
`
`
`The Patent Office then examined the submitted Irvin reference (Ex. 1006) on
`
`July 30, 2005. (Ex. 1002 (IDS Form signed by Examiner showing consideration of
`
`
`
`17
`
`

`

`Irvin reference on July 30, 2005) at 30.) After reviewing it, just days later, the
`
`Examiner issued an Office Action mailed August 8, 2005, allowing the claims tha