UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA) INC.,
`Petitioner,
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
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`PTAB Case No. IPR2019-01365
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`Patent No. 7,039,435
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`
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,039,435
`Claims 1–3 and 6
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`

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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`I.
`
`V.
`
`TABLE OF CONTENTS
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ................................... 3
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .................................... 3
`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) ......................... 4
`D.
`Service Information ....................................................................................... 5
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ........................................................... 5
`II.
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .................................... 5
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 5
`B.
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested .................... 5
`IV. SUMMARY OF THE ’435 PATENT ..................................................................... 8
`A.
`Brief Description ........................................................................................... 8
`B.
`Summary of the Prosecution History ............................................................ 9
`C.
`Level of Ordinary Skill ................................................................................ 10
`Claim Construction Under 37 C.F.R. §§ 42.104(b)(3) C.F.R. .............................. 10
`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 .............................................................. 15
`VII. GROUND 2: CLAIMS 1, 2, 3, AND 6 ARE OBVIOUS IN VIEW OF BAIKER
`AND WERLING ................................................................................................... 26
`A.
`Predictable Combination of Baiker and Werling ........................................ 26
`B.
`Application to Challenged Claims .............................................................. 29
`VIII. GROUND 3: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY IRVIN .............. 35
`A. Overview of Irvin ........................................................................................ 35
`B.
`Application to Challenged Claims .............................................................. 38
`IX. GROUND 4: CLAIMS 1, 2, 3, AND 6 ARE OBVIOUS IN VIEW OF IRVIN
`AND MYLLYMÄKI ............................................................................................. 47
`A.
`Predictable Combination of Irvin and Myllymäki ...................................... 47
`B.
`Application to Challenged Claims .............................................................. 49
`X. GROUND 5: CLAIMS 1, 2, AND 3 ARE OBVIOUS IN VIEW OF BODIN AND
`IRVIN .................................................................................................................... 56
`A.
`Predictable Combination of Bodin and Irvin .............................................. 56
`B.
`Application to Challenged Claims .............................................................. 58
`XI. GROUND 6: CLAIM 6 IS OBVIOUS IN VIEW OF BODIN, IRVIN, AND
`
`i
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
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`MYLLYMÄKI ...................................................................................................... 64
`A.
`Predictable Combination of Bodin, Irvin, and Myllymäki ......................... 64
`B.
`Application to Challenged Claims .............................................................. 65
`XII. CONCLUSION ...................................................................................................... 66
`
`ii
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`
`Exhibit
`1001
`1002
`10031
`1004
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`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1011
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`1012
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`1013
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`1014
`1015
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`1016
`1017
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`EXHIBIT LIST
`
`Description
`U.S. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
`File History of the ’435 Patent
`Declaration of Dr. Jonathan Wells
`Certified English Translation of European Patent Publication EP 1091498
`by Baiker (“Baiker”)
`U.S. Patent No. 6,456,856 to Werling (“Werling”)
`PCT Patent Publication WO 2002/05443 by Irvin (“Irvin”)
`U.S. Patent No. 6,018,646 to Myllymäki (“Myllymäki”)
`U.S. Pat. No. 5,390,338 to Bodin (“Bodin”)
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in Bell
`Northern Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE
`(TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`U.S. Provisional Patent Application No. 09/612,034 by Irvin (“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”)
`Webster’s New World College Dictionary (Simon & Schuster, 1997)
`
`
`1 Exhibit 1003 is a verbatim copy of the Declaration of Jonathan Wells submitted on
`
`behalf of Petitioner Huawei in support of their Petition for Inter Partes Review of the
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`7,039,435 patent in IPR2019-01186.
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`
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`iii
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`

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`
`
`Exhibit
`1018
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`Description
`U.S. Patent No. 6,029,074 to Irvin (“Irvin ’074”)
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc.
`(Case No. 3:18-cv-1786) (S.D. Cal.)
`Plaintiff’s Opening Claim Construction Brief in Bell Northern Research,
`LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc. (Case No.
`3:18-cv-1786) (S.D. Cal.)
`Supplemental Joint Claim Construction Hearing Statement Pursuant to
`P.L.R. 4.2 in Bell Northern Research, LLC, v. ZTE Corporation, ZTE
`(USA) Inc., and ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Defendants’ Joint Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc.
`(Case No. 3:18-cv-1786) (S.D. Cal.)
`Plaintiff’s Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc.
`(Case No. 3:18-cv-1786) (S.D. Cal.)
`Redline Comparison of this Petition and Petition filed in IPR2019-01186
`(“Huawei IPR”)
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`
`
`iv
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`INTRODUCTION
`ZTE (USA) Inc. (“ZTE” or “Petitioner”) petitions for Inter Partes Review
`
`(“Petition”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. §42 of claims 1, 2, 3, and 6 (“the
`
`Challenged Claims”) of U.S. Patent No. 7,039,435 (“the ’435 patent”) assigned to Bell
`
`Northern Research, LLC (“BNR” or “Patent Owner”).
`
`On June 11, 2019, Huawei Technologies Co., Ltd. filed a petition for Inter Partes
`
`Review (“Huawei IPR Petition”), PTAB Case No. IPR2019-1186, of U.S. Patent No.
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`7,039,435. This Petition and the Huawei IPR Petition are identical in their invalidity
`
`grounds, prior art, analyses, and evidence. Both request review of the same claim, based
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`on the same references in the same combinations, rely on the same expert, and the same
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`expert declaration. At this time, the Huawei IPR Petition is waiting for the Board’s
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`decision on whether to institute an IPR trial.
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`This Petition shows, by a preponderance of the evidence, that there is a reasonable
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`likelihood that Petitioners will prevail on claims 1–3 and 6 of the ’435 patent based on
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`prior art that the U.S. Patent Office did not have before it or did not fully consider during
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`prosecution, and that renders this claim anticipated or obvious. Accordingly, Petitioners
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`request the Board institute inter partes review of claims 1–3 and 6.
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`The ’435 patent generally relates to cellular devices that regulate transmission
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`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
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`
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
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`that determines a transmit power level for a portable cell phone based on both a network
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`adjusted transmit power level (as a function of a position to a communications tower)
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`and a proximity transmit power level. EX1002, 19-27; 73-74; Infra, Section IV.B. The
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`claims were improperly granted, however, because the examiner had an incomplete
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`record of the prior art, and as detailed below, more pertinent prior art plainly disclosed
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`these exact features. If these teachings had been fully analyzed during prosecution, the
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`’435 patent never would have issued.
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`ZTE 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)
`ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc. are the real parties-in-
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`interest. No other parties had access to or control over the present Petition prior to the
`
`filing of IPR2019-1186 (“Huawei IPR”), 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
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`complaint in the U.S. District Court for the Southern District of California (Case No.
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`3:18-cv-1786) against ZTE Corporation, ZTE (USA) Inc., and ZTE (TX) Inc., asserting
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`6 patents. The initial complaint, which did not allege infringement of the ’435 patent,
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`was served on August 3, 2018. BNR did not allege infringement of the ’435 patent until
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`the first amended complaint served on October 15, 2018.
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`
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`3
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`
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
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`BNR also filed complaints in the Southern District of California alleging
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`infringement of the ’435 patent by other parties: Huawei Device (Dongguan) Co., Ltd.,
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`Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (3:18-cv-1784); and
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`LG Electronics Mobile Research U.S.A., LLC, LG Electronics U.S.A. Inc., LG
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`Electronics, Inc. (3:18-cv-2864). ZTE is not a real party-in-interest to any of these
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`above-listed district court proceedings. Also, none of the parties in these district court
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`proceedings is a real party-in-interest in the proceedings involving ZTE or in privity with
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`ZTE.
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`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`Lead Counsel
`Amol A. Parikh
`USPTO Reg. No. 60,671
`MCDERMOTT WILL & EMERY
`444 West Lake Street
`Chicago, IL 60606-0029
`Phone: 312-984-6477
`Fax: 312-984-7700
`amparikh@mwe.com
`jrbaker@mwe.com
`
`
`
`
`
`Back-Up Counsel
`Charles M. McMahon
`USPTO Reg. No. 44,926
`MCDERMOTT WILL & EMERY
`444 West Lake Street
`Chicago, Illinois 60606-0029
`Phone: 312-984-7641
`Fax: 312-984-7700
`cmcmahon@mwe.com
`
`Thomas M. DaMario
`USPTO Reg. No. 77,142
`MCDERMOTT WILL & EMERY
`444 West Lake Street
`Chicago, Illinois 60606-0029
`Phone: 312-984-7527
`Fax: 312-984-7700
`tdamario@mwe.com
`
`
`
`4
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`

`

`
`
`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`Jiaxiao Zhang
`USPTO Reg. No. 63,235
`MCDERMOTT WILL & EMERY
`18565 Jamboree Road, Suite 250
`Irvine, California 92612-2565
`Phone: 949-757-6398
`Fax: 949-851-9348
`jiazhang@mwe.com
`
`
`D.
`Service Information
`Please address all correspondence to the address above. Petitioners consent to
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`electronic service by email at ZTEBNR-PTAB@mwe.com (referencing No. IPR2019-
`
`01365)
`
`II.
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`PAYMENT OF FEES – 37 C.F.R. § 42.103
`The Patent and Trademark Office is authorized to charge Deposit Account No. 50-
`
`0417 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any additional 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 Petitioner is
`
`not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of the Challenged Claims on the grounds listed below. In
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`support, this petition includes a declaration of Jonathan Wells, Ph.D. (EX1003).
`
`Ground
`1
`
`Claims
`1, 2, 3
`
`§102 - Baiker
`
`Basis for Rejection
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`
`
`5
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`
`2
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`3
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`4
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`5
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`6
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
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`1, 2, 3, 6
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`§103 - Baiker and Werling
`
`1, 2, 3
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`§102 - Irvin
`
`1, 2, 3, 6
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`§103 - Irvin and Myllymäki
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`1, 2, 3
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`§103 - Bodin and Irvin
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`6
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`§103 - Bodin, Irvin, and Myllymäki
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`Baiker (published April 11, 2001) is prior art under at least § 102(a). Bodin
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`(issued Feb. 14, 1995) and Myllymäki (issued Jan 25. 2000) were published over a year
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`before the earliest possible priority date (Sep. 28, 2001), and are prior art under § 102(b).
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`Werling (filed July 26, 1999) is prior art under at least § 102(e).
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`Irvin (filed June 20, 2001) is prior art under at least § 102(e) based on its PCT
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`filing date of June 20, 2001. Although only relevant to the extent Patent Owner attempts
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`to establish a conception date prior to June 20, 2001, Irvin claims priority to U.S.
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`Provisional Application 09/612,034 (“Irvin Provisional”) filed July 7, 2000. Irvin thus
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`has a § 102(e) prior art date of July 7, 2000, because the Irvin Provisional supports at
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`least one claim of Irvin. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d,
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`1375, 1381-82 (Fed. Cir. 2015); Polaris Indus., Inc. v. Arctic Cat Inc., Case IPR2016-
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`01713, Paper 9, at 13 (PTAB Feb. 27, 2017) (“only one claim”). As demonstrated below
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`and confirmed by Dr. Wells (EX1003, ¶81), the Irvin Provisional provides support under
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`35 U.S.C. § 112 for at least claim 1 of Irvin:
`
`
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`6
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`Irvin Claim 1
`1. A portable communication device
`operable to limit transmitter power if
`proximate a human body, comprising:
`
`Exemplary Support in Irvin
`Provisional (EX1010)
`Cl. 1: “A portable communication
`device operable to limit transmitter
`power if proximate a human body,
`comprising:”;
`4: “This invention relates to a mobile
`terminal used in a wireless
`communication system and, more
`particularly, to a mobile terminal
`operable to limit transmitter 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.
`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
`accordance with a control program, as
`described more specifically below, to
`limit or cap transmitter power output if
`the antenna 12 is proximate a human
`body.”
`
`a control operatively connected to the
`transmitter and to the detector, the
`control controlling transmitter power an
`limiting transmitter power if the
`detector detects that the antenna is
`proximate a human body.
`
`
`an antenna;
`
`a detector for detecting if the antenna is
`proximate a human body; and
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`7
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`
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
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`Notably, all references but Irvin and Werling were never before the examiner
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`during prosecution. Irvin was not addressed in an office action and is not cumulative to
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`art applied in prosecution of the ’435 patent. Werling is applied here in a manner similar
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`to that by the Office during prosecution, which was not challenged by Patent Owner. For
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`at least these reasons, there is no basis for a determination under 35 U.S.C. § 325(d) that
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`“substantially the same prior art or arguments” were presented to the Office. To be sure,
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`none of the six factors identified in the PTAB’s Becton, Dickinson and Company
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`decision weigh in favor of such a finding. See IPR2017-01586, Paper 8 at 17-28 (PTAB
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`Dec. 15, 2017).
`
`IV. SUMMARY OF THE ’435 PATENT
`A. Brief Description
`The ’435 patent generally describes techniques for reducing the transmit power
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`level of a portable cell phone when located near a human body. EX1001, 1:63-67;
`
`EX1003, ¶¶28-29. For example, the ’435 patent describes cell phone devices including a
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`“typical power circuit” that provides a transmit power level. EX1001, 3:31-34; 4:31-61.
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`A “proximity regulation system” is coupled with the “power circuit” and determines a
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`“proximity transmit power level” based on “its location proximate the portable cell
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`phone user.” EX1001, 3:43-4:4. A “network adjusted transmit power level may be
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`reduced to a value determined by the proximity transmit power level when the location
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`
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`8
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
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`of the portable cell phone 200 is within the vicinity of the user's head,” and “just within
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`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
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`19 (corresponding to issued claim 1) based upon a combination of Werling (EX1005)
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`and Vogel (a secondary reference). EX1002, 84-85. In response, the applicant amended
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`the claim (Id., 69) and then argued that the cited combination did not teach a power
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`circuit that provides a network adjusted transmit power level “as a function of a position
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`to a communications tower.” Id., 73 (repeating this phrase three times). The applicant
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`then contended that, due to this alleged shortcoming, it followed that Werling and Vogel
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`failed to teach a power governing subsystem that determines “a transmit power level for
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`a portable cell phone based on a network adjusted transmit power level and a proximity
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`transmit power level as recited in Claim 19.” Id., 73-74.
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`In response, claims 19-27 were allowed, but claims 1-18 remained rejected. Id. at
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`20-27. The applicant canceled rejected claims 1-18, and a notice of allowance followed.
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`EX1002, 4-7; 15-18. Notably, the examiner provided reasons for their conclusion that
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`claims 19-27 were allowable, which emphasized the final element of issued claim 1.
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`EX1002, 27. As explained below, the Baiker, Irvin, and Bodin references—which were
`
`never considered by the examiner—plainly disclose these elements of issued claim 1,
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`
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`9
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
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`including the features emphasized in the examiner’s reasons for allowance. EX1003,
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`¶¶30-32.
`
`C. Level of Ordinary Skill
`The ’435 patent was filed September 28, 2001, and no claim of priority was made.
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`The evidence shows a person of ordinary skill in the art at the time of invention
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`(“POSITA”) would have had at least a bachelor’s degree in electrical engineering,
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`computer engineering, computer science, or a related technical field, and at least 1-2
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`years of experience in the field of wireless communication devices, or an equivalent
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`advanced education in the field of wireless communication devices. EX1003, ¶¶23-24.
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`V. Claim Construction Under 37 C.F.R. §§ 42.104(b)(3) C.F.R.
`Petitioner submits that all claim terms should be construed according to the
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`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 §42.100.
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`Although both parties have submitted briefing on claim construction in co-pending
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`district court litigation (EX1009, EX1019–EX1023), the litigation is in an early stage,
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`and the Court has not issued a claim construction order.
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`“position to a communications tower” (claim 1)
`1.
`For the phrase “position to a communications tower,” this Petition sets forth a first
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`claim construction and a second, alternative claim construction. The Board has
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`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
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`10
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
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`petitioner from submitting more than one construction”); Intel Corp. v Qualcomm Inc.,
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`IPR2018-01340, Paper No. 8, 11-13 (PTAB Jan. 15, 2019) (“the petitioner may offer
`
`alternative constructions and demonstrate unpatentability under each construction.”);
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`Hologic, Inc. v Enzo Life Sciences, Inc., IPR2018-00019, Paper No. 21, 7 (PTAB Nov.
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`28, 2018). As explained in detail below, the Petition sets forth alternative constructions
`
`along with an ample demonstration of the unpatentability of the Challenged Claims
`
`under each alternative interpretation, 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
`
`tower” means “transmit signal strength of a communications path between the
`
`communications tower and the portable cell phone.” EX1020, 63-71; EX1009, 63, 129
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`(citing ’435 patent, 3:39-42 and “Mobile Communications Engineering: Theory 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
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`“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
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`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
`
`
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`11
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`

`

`Petition for Inter Partes Review of U.S. Patent: 7,039,435 (IPR2019-01365)
`
`
`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
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`straightforward and literal language of “position to a communications tower.” In this
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`alternative, no formal construction is necessary because plain language of the claim
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`recites “position,” which does not carry any specialized meaning in the art and is not
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`lexicographically defined in the ’435 patent specification. EX1003, ¶35 In particular, the
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`commonly recognized meaning of a “position” is simply a location or distance relative
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`another object, and thus the phrase “position to a communications tower” plainly and
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`ordinarily describes a location or distance to a communications tower. Id. This
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`interpretation is consistent with the intrinsic evidence, as the ’435 patent includes use of
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`this phrase in the specification, without any lexicographic definition or disclaimer that
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`equates the term “position” to “a transmit signal strength.” See, e.g., EX1001, 2:18-21
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`(“the present invention provides a portable cell phone that includes a power circuit as a
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`function of a position to a communications tower and a proximity regulation system”
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`(emphasis added)).
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`Indeed, the specification uses the term “position” in several instances that are
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`consistent with its ordinary meaning, none of which are tethered to a “transmit signal
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`strength.” Id., 3:4-6 (“positioned”); 6:33-37 (“position indicator” and “positioned”);
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`EX1019, 46-51. Also, this ordinary meaning of “position” is confirmed by the extrinsic
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`evidence. EX1003, ¶35 (citing to EX1014 (“a place or location”); EX1017 (“the place
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`where a person or thing is, esp. in relation to others”). Alternatively, to the extent the
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`Board deems an explicit construction of this term to be required, this term should be
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`construed to mean “position of the portable cell phone relative to a communications
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`tower,” consistent with how this term would have been plainly and ordinarily understood
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`by a POSITA. EX1003, ¶35. The Bodin reference describes adjusting transmit power
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`based on distance to a base station/communication tower. Infra, Section X-XI. Thus, if
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`the Board adopts this alternative interpretation, Grounds 5-6 demonstrate that the
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`Challenged Claims are 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 damage
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`potential of the electromagnetic radiation emitted by the device can be efficiently
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`reduced for the user.” EX1004, Abstract, [0006]-[0007]. Baiker describes this can be
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`accomplished by controlling “the power of the RF transmitter… on the basis of a
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`distance measured (e.g., to the user’s head).” Id. Baiker provides a block diagram of the
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`“hand-held mobile telephone” in Figure 3 (annotated 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 (7) for
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`measuring a distance between the hand-held [mobile telephone] and a body part of a
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`user,” and “a circuit (15) for controlling the power of the RF transmitter (10/6)
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`depending on the measured distance.” EX1004, Abstract, [0019]. The antenna 6 “forms
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`the interface to the base station.” Id., [0025].
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`Baiker teaches the power of the RF transmitter is regulated based on both (1) the
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`measured distance (“distance signal”) between the device and body part of the user and
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`(2) a “quality signal supplied by the base station.” Id., [0028]; EX1003, ¶¶37-41. Baiker
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`expressly describes that “control 15,” which regulates RF amplifier 10, “has a first input
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`for a distance signal, which is detected and processed by the distance sensor 7 and the
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`sensor electronics 14,” and “a second input” that “is provided for a quality signal
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`supplied by the base station.” Id. For example, the measured distance can be used to
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`determine an “allowed maximum value” of the output of the RF amplifier 10, and the
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`quality signal, which “measures the strength of the signal received from the hand-held
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`mobile telephone,” is used to determine “by what value [the hand-held mobile telephone]
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`can reduce its transmission power or to what value [the hand-held mobile telephone]
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`may delimit the RF amplifier 10 without the connection being dropped.” Id., [0030]
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`(“allowed maximum 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 phone.
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`EX1003, ¶¶36, 42. For example, Baiker describes a “hand-held mobile telephone.”
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`EX1004, [0019]; see also id., Title, Abstract, [0017]. Moreover, Baiker provides explicit
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`description of operation that further confirms its “mobile telephone” is a cell phone. See,
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`e.g. EX1004, [0037] (“signal exchange occurs between the hand-held radio and the base
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`station, for example, when a switch occurs between one radio cell and the next.”
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`(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
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`amplifier,” 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 “associated
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`electrical connections.” EX1004, [0025]-[0026], [0028]; EX1003, ¶¶43-44. The “RF
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`amplifier” is “regulated by a control 15” and serves to amplify a modulated RF signal for
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`emission by the “antenna.” Id. In other words, the “RF amplifier” produces a transmit
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`power level for the outgoing transmission to be emitted by the “antenna.” Id.
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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 embodiment of
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`the ’435 patent, which describes “the power circuit 130 may be a typical power circuit in
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`the portable cellphone 120 that produces a transmit power level equivalent to, for
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`instance, a maximum transmit power level of one watt,” and that employs the “antenna
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`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 a
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`network adjusted transmit power level as a function of a position to a communications
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`tower (consistent with the first construction described above, supra, Section V). In
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`particular, Baiker discloses a network adjusted transmit power level that is the same as
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`an embodiment of the ’435 patent—namely, one that is “based on a transmit signal
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`strength of a communications path between the communications tower 110 and the
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`portable cell phone 120.” EX1001, 3:39-42. Because the scope of claim 1 encompasses
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`this embodiment of the ’435 patent under this first construction, it likewise encompasses
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`Baiker’s prior art teaching too. In more detail, Baiker describes that the “RF amplifier 10
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`is regulated by a control 15,” including an “input provided for a quality signal supplied
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`by the base station.” EX1004, [0028] (emphasis added). The “quality signal” is
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`indicative of a transmit signal strength of a communications path between the
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`communications tower (e.g., “base station”) and portable cell phone. EX1004, [0031];
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`EX1003, ¶¶45-47.
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`Indeed, Baiker describes “a circuit is provided in the base station that measures the
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`strength of the signal received from the hand-held mobile telephone 1 and transmits the
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`same (e.g. together with other control data) to the hand-held mobile telephone 1 in the
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`downlink. The quality signal may, for example, simply indicate whether the hand-held
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`mobile telephone 1 may reduce the current transmission power (further) or not.”
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`EX1004, [0031] (emphasis added); cl. 4 (“Hand-held radio according to any of claims 1
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`or 2, characterized in that the power of the RF transmitter (10/6) can be adjusted
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`depending on a signal characterized by a connection quality.”); cl. 9; see also [0009]
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`(“Preferably, the device controls its transmission power in accordance with the
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`requirements of the connection to the base station. The transmission power may, for
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`example, be reduced, when the signals from the base station (to which the connection has
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`been made) are strong.”); [0034] (“A quality signal may also be generated in the hand-
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`held mobile telephone 1 instead of in the base station.”). Baiker thus describes that the
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`“RF amplifier”/“antenna”/“control” may provide a transmit power level based on both
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`the “quality signal” and proximity to a user. When the transmit power level is not
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`adjusted based on proximity to a user (e.g., the transmit power level is based only on the
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`“qualit