Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: February 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC.,
`Petitioner,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`Before BRYAN F. MOORE, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`MOORE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`A. Background and Summary
`ZTE (USA) Inc. (“Petitioner”) filed a Petition (“Pet.,” Paper 1)
`pursuant to 35 U.S.C. § 311 to institute an inter partes review of claims 1–3
`and 6 of U.S. Patent No. 7,039,435 B2 (“the ’435 patent,” Ex. 1001). The
`Petition is supported by the Declaration of Jonathan Wells, Ph.D. (Ex.
`
`
`571-272-7822
`
`Paper 13
`Date: February 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC.,
`Petitioner,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`Before BRYAN F. MOORE, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`MOORE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`A. Background and Summary
`ZTE (USA) Inc. (“Petitioner”) filed a Petition (“Pet.,” Paper 1)
`pursuant to 35 U.S.C. § 311 to institute an inter partes review of claims 1–3
`and 6 of U.S. Patent No. 7,039,435 B2 (“the ’435 patent,” Ex. 1001). The
`Petition is supported by the Declaration of Jonathan Wells, Ph.D. (Ex.
`
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`IPR2019-01365
`Patent 7,039,435 B2
`1003). Bell Northern Research, LLC (“Patent Owner”) filed a Preliminary
`Response (“Prelim. Resp.,” Paper 8). Petitioner filed an authorized reply to
`the Preliminary Response. (“Reply,” Paper 10). Patent Owner filed an
`authorized sur-reply to the reply. (“Sur-Reply,” Paper 11).
`For the reasons set forth below, we institute an inter partes review of
`claims 1–3 and 6 of the ’435 patent.
`B. Real Parties in Interest
`Petitioner names ZTE Corporation, ZTE (USA) Inc., and ZTE (TX),
`Inc. as the real parties-in-interest. Pet. 3.
`C. Related Matters
`The parties advise us that the ’435 patent is asserted against Petitioner
`in Bell Northern Research, LLC v. ZTE Corp., 3:18-cv-01786 (S.D. Cal.
`Oct. 15, 2018). Pet. 3; Paper 3, 1. The parties advise us that the ’435 patent
`was asserted against other parties in Bell Northern Research, LLC v. Huawei
`Device (Dongguan) Co., Ltd., 3:18-cv-01784 (S.D. Cal. Nov. 13, 2018) and
`is currently asserted against other parties in Bell Northern Research, LLC v.
`LG Elecs., Inc., 3:18-cv-02864 (S.D. Cal. Dec. 20, 2018). Pet. 4; Paper 3, 1.
`The ’435 patent was also the subject of IPR2019-01186, which has been
`terminated due to settlement prior to institution.
`D. The ’435 Patent
`The ’435 patent generally describes techniques for reducing the
`transmit power level of a portable cell phone when located near a human
`body. Ex. 1001, 1:63–67. For example, the ’435 patent describes a cell
`phone device including a “typical power circuit” that provides a transmit
`power level. Id. at 3:31–34. A “proximity regulation system” is coupled to
`the “power circuit” and determines a “proximity transmit power level” based
`on “its location proximate the portable cell phone user.” Id. at 3:43–47. The
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`IPR2019-01365
`Patent 7,039,435 B2
`’435 patent discloses that a “network adjusted transmit power level may be
`reduced to a value determined by the proximity transmit power level when
`the location of the portable cell phone 200 is within the vicinity of the user’s
`head” or “just within the vicinity of a user’s body.” Id. at 5:29–36.
`E. Illustrative Claims
`Challenged claim 1 is an independent claim. Challenged claims 2, 3,
`and 6 depend directly from claim 1. Claim 1, reproduced below, is
`illustrative.
`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 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.
`
`Ex. 1001, 8:2–15.
`
`3
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`Patent 7,039,435 B2
`F. Evidence
`Petitioner relies on the following references. Pet. 13–66.
`Name
`Reference
`Baiker
`EP 1091498, filed Oct. 7, 1999, published Apr.
`11, 20011
`US 6,456,856 B1, filed July 26, 1999, issued
`Sept. 24, 2002
`WO 2002/05443 A2, filed June 20, 2001,
`published Jan. 17, 2002
`Myllymäki US 6,018,646, filed Aug. 22, 1997, issued Jan.
`25, 2000
`US 5,390,338, filed Apr. 11, 1994, issued Feb.
`14, 1995
`
`Werling
`
`Irvin
`
`Bodin
`
`
`
`Exhibit
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`G. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–3 and 6 would have been unpatentable
`on the following grounds:
`Claim(s) Challenged
`1–3
`1–3, 6
`1–3
`1–3, 6
`1–3
`6
`
`Reference(s)/Basis
`Baiker
`Baiker, Werling
`Irvin
`Irvin, Myllymäki
`Irvin, Bodin
`Irvin, Bodin, Myllymäki
`
`35 U.S.C. §
`102(a)
`103
`102(e)
`103
`103
`103
`
`
`
`II. ANALYSIS
`
`A. Discretionary Denial
`1. 325(d)
`Patent Owner argues the Petition should be denied institution under 35
`U.S.C. § 325(d), because Grounds 3–6 rely on the “same or substantially the
`
`
`1 This exhibit is a translation of the European Patent Application.
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`same prior art or arguments” previously presented to the PTO and it would
`not be an efficient use of the Board’s time and resources to institute on all
`grounds. Prelim. Resp. 38–42, 48–49, 53–54. Specifically, Patent Owner
`asserts that the Examiner considered Irvin (id. at 38–39) and that Myllymäki
`and Bodin are cumulative of a reference (Vogel) that was the basis for
`rejections by the Examiner (id. at 48–49, 53–54).
`In its Petition, Petitioner states that its grounds are “based on prior art
`that the U.S. Patent Office did not have before it or did not fully consider
`during prosecution.” Pet. 2. Specifically, Petitioner asserts the following:
`[A]ll references but Irvin and Werling were never before the
`examiner during prosecution. Irvin was not addressed in an office
`action and is not cumulative 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 challenged by
`Patent Owner. For at least these reasons, there is no basis for a
`determination under 35 U.S.C. § 325(d) that “substantially the
`same prior art or arguments” were presented to the Office.
`Id. at 8.
`The Board has enumerated non-exclusive factors to be considered in
`evaluating whether to exercise discretion under 35 U.S.C. § 325(d). Becton,
`Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at
`17–18 (PTAB Dec. 15, 2017) (Institution Decision) (“Becton, Dickinson”)
`(precedential as to § III.C.5, first paragraph). The non-exclusive Becton,
`Dickinson factors are:
`1. the similarities and material differences between the asserted art
`and the prior art involved during examination;
`2. the cumulative nature of the asserted art and the prior art evaluated
`during examination;
`
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`3. the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection;
`4. the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art or
`Patent Owner distinguishes the prior art;
`5. whether Petitioner has pointed out sufficiently how the Examiner
`erred in its evaluation of the asserted prior art; and
`6. the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments.
`Id.
`
`Here, Patent Owner has generally argued that the factors are met
`because the prior art before us in grounds 3–6 was “considered” by the
`Examiner either directly (by virtue of being on an IDS) or as being
`cumulative of a reference that was considered. Prelim Resp. 38–39 (citing
`Ex. 1002, 27, 30).
`Irvin was listed by itself on a signed IDS dated May 24, 2005 and
`signed by the Examiner on July 30, 2005. Ex. 1002, 30. About a week later,
`on August 8, 2005, a Notice of Allowance, which does not mention Irvin,
`issued for claims 1–9 stating the prior art failed to disclose, among other
`things, “a power governing subsystem coupled to [the] location sensing
`subsystem, that determines a proximity power level…and determines a
`transmit power…based on [the] network adjusted power level and [the]
`proximity transmit power level.” Ex. 1002, 30. Patent Owner does not
`direct us to, nor do we discern, that Irvin was the basis of a rejection during
`prosecution.
`As to Becton, Dickinson factors 1 and 2 (“the similarities and material
`differences between the asserted art and the prior art involved during
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`Patent 7,039,435 B2
`examination” and “the cumulative nature of the asserted art and the prior art
`evaluated during examination”), Patent Owner relies on its assertion that
`“the Examiner specifically considered Irvin during prosecution” and that
`Myllymäki and Bodin are cumulative of a reference (Vogel) considered by
`the Examiner to show these factors weigh in favor of denial. Prelim Resp.
`38–40, 48–49, 53–54. We disagree. Although the Examiner considered
`Irvin during prosecution, as indicated on the signed IDS, at least three of the
`specific grounds of unpatentability asserted by Petitioner in this
`proceeding—obviousness based on Irvin in combination with Myllymäki
`and/or Bodin—were not considered during prosecution of the ’435 patent.
`Thus, as an initial matter, Irvin in combination with Myllymäki and/or Bodin
`is not the same or substantially the same prior art previously presented to the
`Office. Moreover, even if Myllymäki and/or Bodin were deemed to disclose
`the same subject matter as a reference (Vogel) previously considered by the
`Examiner, we consider the error by the Examiner in considering Irvin, as
`discussed below, to outweigh the fact that the same or similar art was before
`the Examiner during prosecution.
`As to Becton, Dickinson factors 3 and 4 (“the extent to which the
`asserted art was evaluated during examination, including whether the prior
`art was the basis for rejection” and “the extent of the overlap between the
`arguments made during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguishes the prior art”), Patent
`Owner relies on its assertion that “there is overlap between the arguments
`Petitioner makes regarding the disclosure of Irvin and the limitations that the
`Examiner found lacking such that the Examiner has already considered the
`issues that Petitioner raises” to show this factor weigh in favor of denial.
`Prelim Resp. 41. We disagree. In fact, this assertion tends to support
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`IPR2019-01365
`Patent 7,039,435 B2
`institution because although the Examiner noted consideration of Irvin, the
`Examiner did not apply Irvin in a rejection despite Irvin’s disclosure of
`limitations that the Examiner found missing from the prior art. Each of
`Petitioner’s grounds 3–6 relies on Irvin, which was not the basis of a
`rejection by the Examiner. Thus, we determine factors 3 and 4 weigh
`against denial.
`As to Becton, Dickinson factors 5 and 6 (“whether Petitioner has
`pointed out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art,” and “the extent to which additional evidence and facts
`presented in the petition warrant reconsideration of prior art or arguments”),
`Patent Owner relies on its assertion that “Petitioner failed to explain or offer
`any reason why the Examiner’s Notice of Allowance after the IDS
`submission of Irvin was erroneous and failed to present any facts or
`evidence that would warrant reconsideration” to show these factors weigh in
`favor of denial. Prelim Resp. 41. We disagree. Apart from the Examiner
`initialing the IDS noting consideration of Irvin, the Examiner did not make
`any explicit analysis of Irvin on the record. We do not require the Petitioner
`to speculate from a silent record as to why the Examiner allowed the claims
`over Irvin. Rather, we are persuaded by Petitioner’s evidence that Examiner
`overlooked the disclosure in Irvin of the limitations that the Examiner stated
`were missing from the prior art. Thus, we determine factors 5 and 6 weigh
`against denial.
`Thus, based on the evidence cited by Patent Owner and for the
`reasons above, we decline to exercise our discretion under section 325(d) to
`deny institution here.
`
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`2. Advanced Stage of Related District Court Litigation
`Patent Owner argues we should exercise our discretion under
`Section 314(a) to deny institution because the related district court litigation
`is in advanced stages. See Prelim. Resp. 26–29; Sur-Reply 1–2. Patent
`Owner asserts the district court has issued its Claim Construction Order;
`discovery will be complete before the institution decision deadline; and the
`district court will schedule trial shortly after March 20, 2020. Prelim. Resp.
`26. Patent Owner asserts that “it is a near certainty” that the district court
`proceedings will have concluded before we issue our final written decision
`in this proceeding. Id. Patent Owner also asserts that Petitioner relies on the
`same prior art and arguments in the district court action. Id. at 28.
`The Director has discretion to institute an inter partes review under 35
`U.S.C. § 314(a). Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 at 15 (PTAB Set. 6, 2017) (Institution Decision)
`(precedential) (citing 35 U.S.C. § 314(a)). The Board will consider the
`advanced state of a district court proceeding as a “factor that weighs in favor
`of denying the Petition under § 314(a).” NHK Spring Co. v. Intri-Plex
`Techs., Inc., IPR2018-00752, Paper 8, (PTAB Sept. 12, 2018) (Institution
`Decision) (precedential).
`We agree with Petitioner that our exercise of discretion to deny
`institution under Section 314(a) is not warranted here. See Reply 1. In
`NHK, the trial in the district court proceeding was set to conclude six months
`before a final Board decision would be due. See NHK, Paper 8 at 20. Here,
`however, as acknowledged by Patent Owner, the trial date in the related
`district court proceeding has not yet been set and is not set to be scheduled
`until after the pre-trial conference of March 20, 2020. See Prelim. Resp.
`26. Furthermore, we agree with Petitioner that it is not a near certainty that
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`the district court will proceed to setting a trial date after institution of this
`proceeding. See Prelim. Reply 1–2. The district court denied Petitioner’s
`request for a stay without prejudice and specifically stated that the request
`may be renewed if institution is granted so it “can consider the efficiencies
`of proceeding, whether in whole or in part, in these litigations.” Ex. 1027,
`5. The district court further requested that the parties keep it informed if any
`IPRs get instituted as it is “rather loathe to go on parallel tracks with the
`Patent Office.” Ex. 1026, 120:25–121:2. In light of these statements by the
`district court, is not clear that a trial date will be set shortly after the March
`2020 pre-trial conference. Thus, it is not clear that the district court
`litigation will have concluded by the time our final decision is due. Rather,
`our decision here has the potential to impact the efficiencies of the district
`court litigation.
`In view of the foregoing, we decline to exercise our discretion under
`35 U.S.C. § 314(a).
`B. Irvin and Baiker’s Status as Prior Art
`Petitioner contends Irvin and Baiker qualify as a prior art, under
`102(e) and 102(a), respectively, to the challenged claims of the ’435 patent.
`Pet. 6. Patent Owner contends that Petitioner has not established that Baiker
`and Irvin are prior art. Prelim. Resp. 60. Specifically, Patent Owner relies
`on an invention date for the challenged claims of the ’435 patent of February
`28, 2001. Id. The application leading to the ’435 patent, U.S. Application
`No. 09/967,140, was filed on September 28, 2001. Ex. 1001 (22). However,
`Patent Owner asserts that the claimed inventions were conceived no later
`than February 28, 2001, which is earlier than the earliest dates Patent Owner
`asserts Petitioner can rely on for the Baiker (April 11, 2001) and Irvin (June
`20, 2001) references. Prelim. Resp. 60.
`
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`1. Purported Invention Date for the Challenged Claims of the ’435
`Patent
`To establish a conception date of February 28, 2001 for the challenged
`claims of the ’435 patent, Patent Owner relies on alleged metadata from, and
`the substance of, an Invention Submission document. Prelim. Resp. 60–64;
`Ex. 2010, 1; Ex. 2013.2 As an initial matter, Patent Owner does not provide
`an explicit analysis of Invention Submission document comparing it to the
`limitations of the challenged claims. See Prelim. Resp. 60–64.
`Patent Owner also relies on the testimony of named inventor Philip
`David Mooney from a deposition taken in some of the district court actions
`identified above by the parties as related matters. Prelim. Resp. 61 (citing
`various pages of Ex. 2009). For example, as to the limitation in claim 1 of
`“network adjusted power level as a function of a position to a
`communication tower,” Patent Owner relies on Mr. Mooney’s deposition
`testimony. Prelim. Resp. 61 (citing Ex. 2009, 109, 214–2163). In the cited
`testimony, Mr. Mooney testifies that the Invention Submission document
`refers to a standard way to “control power.” Ex. 2009, 215:19–216:4.
`However, when asked directly about setting “network adjusted power level
`as a function of a position to a communication tower,” he testifies “I don’t
`believe [the Invention Submission document] mentions [network adjusted
`power level] and when asked “You agree that there’s no description in this –
`in your invention submission form of setting a network adjusted transmit
`power level as a function of a position to a communications tower,” he
`
`
`2 Patent Owner cites to Ex. 2032, which is not an exhibit number in this IPR
`and appears to be a typo.
`3 Patent Owner apparently is citing to deposition transcript pages and not
`exhibit pages. We adopt this same convention for citing to this exhibit.
`
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`testifies “I don’t believe there’s anything in here addressing that.” Ex. 2009,
`215:7–17, 217:6–14. This testimony is not explained, and the testimony
`cited by Patent Owner in connection with other claim features is cited
`without adequate explanation or elaboration by Patent Owner in its
`Preliminary Response of how the testimony supports conception of the
`claimed inventions. Thus, at this preliminary stage, we are not persuaded
`that Patent Owner has established sufficiently a date of conception of
`February 28, 2001. Thus, for the purpose of this decision we rely on the
`filing date of the ’435 patent—September 28, 2001—as the earliest date of
`invention.
`2. Earliest Effective Date of Irvin
`Petitioner relies on Irvin’s claim of priority to U.S. Provisional
`Application 09/612,034 (Ex. 1010, “Irvin provisional”) filed July 7, 2000.
`Pet. 6. Petitioner maps one claim of Irvin to the provisional. Id. at 6–7.
`Patent Owner asserts that Petitioner must also separately establish that
`the portions of Irvin that Petitioner relies upon in support of its invalidity
`grounds are disclosed in the Irvin provisional and that Petitioner has not
`made such a showing. Prelim. Resp. 43–45. Thus, Patent Owner suggests
`Petitioner has failed to tie its contentions based on Irvin to the date of the
`Irvin provisional. Id. Nevertheless, Petitioner’s declarant asserts that the
`Irvin provisional is “substantially similar” to Irvin. Ex. 1003 ¶ 81 (cited at
`Pet. 6). We agree. We find that the Irvin provisional appears to be
`substantively identical to Irvin. See Exs. 1006, 1010. Thus, we determine
`that Petitioner has made a sufficient showing regarding the effective filing
`date of Irvin. Accordingly, we rely on an effective filing date of July 7,
`2000 for Irvin.
`
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`3. Summary
`Because the effective filing dates for Irvin (July 7, 2000) and Baiker
`(April 11, 2001) pre-date the earliest invention date upon which rely, we
`determine that Baiker and Irvin qualify as prior art for purposes of this
`Decision.
`C. Legal Standards
`A claim is anticipated if a single prior art reference either expressly or
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
`be arranged or combined in the same way as in the claim, “the reference
`need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
`Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1259, 1262 (Fed. Cir. 2007) (quoting
`KSR, 550 U.S. at 418).
`D. Level of Ordinary Skill in the Art
`In an obviousness analysis, prior art references must be “considered
`together with the knowledge of one of ordinary skill in the pertinent art.” In
`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
`F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account
`not only specific teachings of the reference but also the inferences which one
`skilled in the art would reasonably be expected to draw therefrom.” In re
`Preda, 401 F.2d 825, 826 (CCPA 1968). That is because an obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418 (Fed. Cir. 2007); In re Translogic Tech., Inc., 504 F.3d
`1249, 1259 (Fed. Cir. 2007).
`Petitioner asserts:
`[A] person of ordinary skill in the art at the time of invention []
`would have had at least a bachelor’s degree in electrical
`engineering, 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.
`Pet. 10 (citing Ex. 1003 ¶ 23–24). Patent Owner does not dispute this
`assertion. Prelim. Resp. 5. We adopt Petitioner’s articulation of the level of
`skill and determine that the level of ordinary skill in the art is also reflected
`by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
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`E. Claim Construction
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].”4 Under
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have to a person of
`ordinary skill in the art at the time of the invention, in light of the
`specification and prosecution history. See Phillips, 415 F.3d at 1312–13.
`Petitioner proposes two alternative constructions for the term
`“position to a communications tower,” which appears in the phrase “a power
`circuit that provides a network adjusted transmit power level as a function of
`a position to a communications tower” in claim 1 of the ’435 patent. Pet.
`10-13. Petitioner first proposes the term means “transmit signal strength of a
`communications path between the communications tower and the portable
`cell phone.” Pet. 11 (citing Ex. 1020, 63–71; Ex. 1009 [Joint Claim
`Construction from related District Court case], 63, 129). Petitioner asserts
`that, 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.” Id. Petitioner asserts
`that this interpretation “incorporates the embodiment described” in the ’435
`patent specification that “network adjusted transmit power level is based on
`
`
`4 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,343 (amending 37 C.F.R. § 42.100(b) effective November 13,
`2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
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`Patent 7,039,435 B2
`a transmit signal strength of a communications path between the
`communications tower 110 and the portable cell phone 120.” Pet. 11
`(quoting Ex. 1001, 3:39–42). Petitioner asserts that grounds 1–4 of the
`Petition are based on this first alternative construction. Pet. 12. Patent
`Owner asserts that this first alternative construction mirrors the one it
`proposed in related district court litigation and it is correct. Prelim. Resp. 5–
`13.
`
`Petitioner’s second alternative construction is that “position” retains
`its alleged plain meaning of location or distance to another object and that
`“position to a communications tower” describes a location or distance to a
`communications tower. Pet. 12. Petitioner asserts that “[t]his interpretation
`is consistent with the intrinsic evidence, as the ’435 patent includes use of
`this phrase in the specification, without any lexicographic definition or
`disclaimer that equates the term ‘position’ to ‘a transmit signal strength.’”
`Id. When Petitioner applies this construction to the Bodin reference,
`Petitioner relies on distance to a base station/communication tower. Id. at
`56–61. Petitioner asserts that grounds 5 and 6 of the Petition are based on
`this second alternative construction. Id. at 13. Patent Owner asserts that this
`second alternative construction mirrors Petitioner’s proposed construction in
`related litigation, that it is “over-simplified,” and that any construction “that
`would limit position to a straight line between two objects, which does not
`take into account potential obstructions, is unsupported.” Prelim. Resp. 15–
`16.
`
`Additionally, although the District Court in the related case construed
`this term to have its plain meaning, the District Court interpreted the plain
`meaning as broader than distance, including “the relationship to the phone to
`
`16
`
`
`
`IPR2019-01365
`Patent 7,039,435 B2
`the tower in all its aspects, whether it’s distance or obstructions or
`whatever.” Ex. 2004, 57 (emphasis added).
`Petitioner cites to places in the specification that use the words
`“positioned” and “position indicator” without being tethered to “signal
`strength.” Pet. 12–13 (citing Ex. 1001, 3:4–6, 6:33–37). Nevertheless,
`Petitioner does not point to disclosures in the specification that equate
`position with distance. Id. Petitioner relies on some dictionary definitions,
`i.e. “a place or location” and “the place where a person or thing is, esp. in
`relation to others”) which also do not mention distance. Id. at 13.
`As stated above and as is relevant to the larger claim phrase, the ’435
`patent describes that the network adjusted 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. Thus, when viewed in the larger claim phrase, the patent describes
`an embodiment in which the network adjusted transmit power level is a
`function of the transmit signal strength of a communication path between the
`tower and the cell phone.
`Petitioner’s also presents a modified second alternative construction
`which is that “position to a communications tower” means “position of the
`portable cell phone relative to a communications tower.” Pet. 13. We
`determine that the phase “position of the portable cell phone relative to a
`communications tower” is mostly redundant of the claim language and
`unhelpful.
`On the current record, we determine that the phrase “position to a
`communications tower” encompasses “transmit signal strength of a
`communications path between the communications tower and the portable
`cell phone” (Petitioner’s first construction). See Ex. 1001, 3:39–42
`
`17
`
`
`
`IPR2019-01365
`Patent 7,039,435 B2
`(describing an embodiment in which the “network adjusted transmit power
`level is based on a transmit signal strength of a communications path”). The
`phrase may also encompass how Petitioner applies it in supports of grounds
`5 and 6, namely distance between the cell phone and the communications
`tower, which appears to fall within the words of the claim. See Pet. 13
`(“The Bodin reference describes adjusting transmit power based on distance
`to a base station/communication tower.”), 56–57, 58–59. We will further
`consider the scope of this phrase during institution of this proceeding.
`For purposes of institution, and after review of the current record, we
`conclude that no express claim construction of any other claim term is
`necessary to determine whether to institute review of the challenged claims.
`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. &
`Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’”).
`F. Anticipation of Claims by Baiker – Ground 1
`Petitioner asserts that claims 1–3 are unpatentable under 35 U.S.C.
`§ 102(a) as anticipated by Baiker. Pet. 5. To support its contentions,
`Petitioner provides explanations as to how the prior art allegedly discloses
`each claim limitation. Id. at 13–26. Baiker is summarized below.
`1. Baiker (Ex. 1004)
`Baiker (Ex. 1004) describes a “hand-held mobile telephone” in which
`“the damage potential of the electromagnetic radiation emitted by the device
`can be efficiently reduced for the user.” Ex. 1004 ¶¶ 6–7, Abstract. Baiker
`describes this can be accomplished by controlling “the power of the RF
`
`18
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`
`
`IPR2019-01365
`Patent 7,039,435 B2
`transmitter . . . on the basis of a distance measured (e.g., to the user’s head).”
`Id.
`
`Baiker’s hand-held mobile telephone 1 includes “RF transmitter
`(10/6),” which includes “antenna 6” “RF amplifier 10,” “sensor (7) for
`measuring a distance between the hand-held [mobile telephone] and a body
`part of a user,” and “circuit (15) for controlling the power of the RF
`transmitter (10/6) depending on the measured distance.” Id. ¶¶ 19, 26,
`Abstract. Antenna 6 “forms the interface to the base station.” Id. ¶ 25.
`Baiker describes that “control 15,” which regulates RF amplifier 10,
`“has a first input for a distance signal, which is detected and processed by
`the distance sensor 7 and the sensor electronics 14,” and “a second input”
`that “is provided for a quality signal supplied by the base station.” Id. ¶ 28.
`For example, according to Baiker, the “the maximum output of the RF
`amplifier 10 is limited to the allowable range” and that “[d]epending on the
`current distance, the allowed maximum value is obtained from a stored
`table.” Id. ¶
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