UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`ZTE (USA), INC. AND
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`
`____________________
`
`Case: IPR2019-01365
`U.S. Patent No. 7,039,435
`
`____________________
`
`REBUTTAL DECLARATION OF JONATHAN WELLS, PH.D. IN
`SUPPORT OF PETITIONER’S REPLY
`
`
`
`
`SAMSUNG EXHIBIT 1030
`Samsung Electronics Co., Ltd. v. Bell Northern Research, LLC
`IPR2019-01365
`
`Page 1 of 35
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`

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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`
`I.
`II.
`
`ii.
`
`C.
`
`INTRODUCTION .......................................................................................... 1 
`RESPONSES TO DR. HORENSTEIN’S OPINIONS ................................... 3 
`A.
`Person of Ordinary Skill In the Art ...................................................... 3 
`B.
`Claim Construction .............................................................................. 4 
`a.
`“Position To A Communication Tower” ................................... 4 
`i.
`The Proper Construction Encompasses Both
`“Transmit Signal Strength” and “Location or
`Distance” .......................................................................... 4 
`Dr. Horenstein Wrongly Limits The Term
`“Position” to “Transmit Signal Strength”........................ 5 
`Baiker Discloses the Elements of Claims 1-3 ...................................... 8 
`a.
`Baiker Discloses the Claimed “Power Circuit that
`Provides a Network Adjusted Transmit Power Level as a
`Function of a Position to a Communication Tower” ................. 8 
`Baiker Discloses the Claimed “Power Governing
`Subsystem … that Determines a … Transmit Power
`Level … Based on Said Network Adjusted Transmit
`Power Level and Said Proximity Transmit Power Level”....... 12 
`Baiker and Werling Disclose the Elements of Claims 1-3 and 6 ....... 14 
`a.
`A Person of Ordinary Skill in the Art Would be
`Motivated to Combine Baiker and Werling ............................. 14 
`Irvin Discloses the Elements of Claims 1-3 ....................................... 19 
`a.
`Irvin Discloses the Claimed “Power Circuit that Provides
`a Network Adjusted Transmit Power Level as a Function
`of a Position to a Communication Tower” .............................. 19 
`Irvin Discloses the Claimed “Transmit Power Level …
`Based on Said Network Adjusted Transmit Power Level
`and Said Proximity Transmit Power Level” ............................ 22 
`Irvin and Myllymäki Discloses the Elements of Claims 1-3 and
`6 .......................................................................................................... 24 
`a.
`A Person of Ordinary Skill in the Art Would be
`Motivated to Combine Irvin and Myllymäki ........................... 24 
`Bodin and Irvin Discloses the Elements of Claims 1-3 ..................... 26 
`
`G.
`
`b.
`
`b.
`
`D.
`
`E.
`
`F.
`
`i
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`Page 2 of 35
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`
`
`a.
`
`A Person of Ordinary Skill in the Art Would be
`Motivated to Combine Bodin with Irvin .................................. 26 
`H. Additional Considerations .................................................................. 28 
`III. CONCLUSION ............................................................................................. 32 
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`ii
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`Page 3 of 35
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`

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`I, Jonathan Wells, Ph.D., of Pleasanton, California, declare as follows:
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`I.
`
`INTRODUCTION
`1.
`I have been retained as a technical expert by counsel on behalf of
`
`Samsung Electronics America, Inc. (“Samsung” or “Petitioner”), to provide an
`
`independent analysis on various issues regarding U.S. Patent No. 7,039,435 (“the
`
`’435 patent”) as part of inter partes review IPR2019-01365.
`
`2.
`
`On June 10, 2019, I submitted a “Declaration of Jonathan Wells, Ph.D.”
`
`(EX1003, “Wells Declaration” or “Wells”) on behalf of petitioner Huawei
`
`Technologies Co., Ltd. (“Huawei”), as part of inter partes review IPR2019-01186
`
`(now terminated). On July 24, 2019, ZTE (USA) Inc. (“ZTE”) submitted a verbatim
`
`copy of the Wells Declaration, in support of its petition for inter partes review of the
`
`’435 patent in IPR2019-01365 (also EX1003). On July 24, 2019, Samsung
`
`submitted a verbatim copy of the Wells Declaration, in support of its petition for
`
`inter partes review of the ’435 patent in IPR2019-00697 (also EX1003). I
`
`understand that Samsung has now been joined in inter partes review IPR2019-
`
`01365. I incorporate by reference the contents of the Wells Declaration herein.
`
`3.
`
`As with my previous work relating to this proceeding, no part of my
`
`compensation is contingent on the nature of my findings, the presentation of my
`
`findings in testimony, or the outcome of this or any other proceeding. I have no
`
`other interest in this proceeding. Relevant aspects of my educational background,
`
`1
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`Page 4 of 35
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`career history, and other qualifications were provided in my opening declaration.
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`(See Wells at ¶¶ 4-15.)
`
`4.
`
`I have been asked to review and consider the testimony provided by Dr.
`
`Mark Horenstein (EX2022, “Horenstein Declaration” or “Horenstein”) and provide
`
`my responses in rebuttal to Dr. Horenstein’s positions. My rebuttal opinions are set
`
`forth below, which reply to certain positions offered by Dr. Horenstein.1
`
`5. My opinions in this rebuttal declaration are based on the documents I
`
`reviewed and my knowledge and professional judgment, including the documents
`
`from the materials I reviewed in support of my previous declaration (Wells
`
`Declaration) and any materials I refer to in this rebuttal declaration. In forming my
`
`opinions in this rebuttal declaration, I considered the positions taken by Dr.
`
`Horenstein as well as any other materials I refer to in this declaration in support of
`
`my opinions. In providing my rebuttal opinions here, I do not change my opinions
`
`that I provided in my opening declaration.
`
`
`1 Although I respond to selected opinions offered by Dr. Horenstein, doing so does
`
`not mean that I agree with any of Dr. Horenstein’s testimony in his declaration that
`
`I do not respond to in this rebuttal declaration.
`
`2
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`Page 5 of 35
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`II. RESPONSES TO DR. HORENSTEIN’S OPINIONS
`A.
`Person of Ordinary Skill In the Art
`6.
`In my initial declaration, I opined that a person of ordinary skill in the
`
`art at the time of the ’435 patent, 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. Wells at ¶ 23.
`
`7.
`
`Dr. Horenstein provides a definition for a person of ordinary skill in the
`
`art that is generally similar to mine, but with more years of experience in the field,
`
`and also that person of ordinary skill in the art “would have also have been a cell-
`
`phone user at the time.” Horenstein at ¶ 25. While I do not believe these additional
`
`requirements are necessary, my previous analysis and the opinions offered here hold
`
`under both my and Dr. Horenstein’s definitions.
`
`
`
`
`
`3
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`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`B. Claim Construction
`a.
`“Position To A Communication Tower”
`i.
`The Proper Construction Encompasses Both
`“Transmit Signal Strength” and “Location or
`Distance”
`Claim 1 recites a “position to a communications tower.” ’435 patent at
`
`8.
`
`cl. 1. In my initial declaration, I addressed two interpretations for this term. Wells
`
`at Section VII.
`
`9.
`
`First, I showed in my initial declaration how certain prior art references
`
`disclose claims 1-6 when the phrase “position to a communications tower” recited
`
`in the claims of the ’435 patent is interpreted to mean “transmit signal strength of a
`
`communications path between the communications tower and the portable cell
`
`phone.” See my discussions in Wells at Section IX, X, XI, and XII. I also showed
`
`in my initial declaration how certain prior art references disclose claims 1-3 and 6
`
`under the literal language of “position to a communications tower.” See my
`
`discussions in Wells at Section XIII and XIV.
`
`10.
`
`In my opinion, the term “position to a communications tower”
`
`encompasses both “transmit signal strength of a communications path between the
`
`communications tower and the portable cell phone” and “location or distance to a
`
`communications tower.” This is consistent with the analysis I applied in my initial
`
`declaration. See my discussions in Wells at Section VII.
`
`4
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`Page 7 of 35
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`11. Dr. Horenstein opines that equating “position to a communications
`
`
`
`tower” to “distance” is, “in [his] opinion, incorrect[.]” Horenstein at ¶¶ 117-118. I
`
`disagree for the reasons below.
`
`ii.
`
`Dr. Horenstein Wrongly Limits The Term “Position”
`to “Transmit Signal Strength”
`12. Dr. Horenstein opines that the transmit signal strength and location or
`
`distance aspects of the claim term “position to a communications tower” are
`
`“different and competing definitions.” Horenstein at ¶ 38. I disagree that these
`
`aspects are competing based on the claim language and specification of the ’435
`
`patent, and other documentation reflecting understandings by a person skilled in the
`
`art at the relevant time, such as dictionary definitions, which I discussed in my
`
`opening declaration. See my discussions in Wells at Section VII (discussing
`
`EX1001, 2:18-21, 3:4-6, 6:33-37; EX1014; EX1017).
`
`13. Documentation identified by Dr. Horenstein confirms my opinion that
`
`a person of ordinary skill in the art at the relevant time for the ’435 patent would
`
`understood that these two aspects of “position to a communications tower” are not
`
`competing. For example, to support his argument that “position” in the term
`
`“position to a communications tower” be limited to signal strength, Dr. Horenstein
`
`cites to the Lee textbook, which appears to be incorporated by reference into the
`
`5
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`Page 8 of 35
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`’435 patent.2 Horenstein at ¶ 43 (citing to EX20033). Dr. Horenstein relies on
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`selected examples showing how the communications path is altered by obstructions
`
`and propagation loss, which can alter the signal strength of a communications path
`
`irrespective of specific position as measured only by distance. Id. at ¶¶ 43-44. While
`
`this may be true, the Lee textbook also provides disclosures that support the
`
`understanding that “position to a communications tower” relates to geographical
`
`distance and position. For example, Lee discloses how mobile cell sites are designed
`
`and cell areas are configured. In planning such cell sites, “cell boundaries are
`
`defined” around communication towers. EX2003 at 9. A person of ordinary skill in
`
`
`2 I provide no opinion as to whether the Lee textbook is properly incorporated by
`
`reference into the ’435 patent. My opinions as to the disclosures in the Lee textbook
`
`are based on Dr. Horenstein’s reliance on the textbook.
`
`3 Dr. Horenstein cites to “Ex. 2005, Mobile Communications Engineering: Theory
`
`and Applications by William C. Y. Lee, McGraw Hill (1997),” but this appears to
`
`be an error, as the Lee textbook is Exhibit 2003 and Exhibit 2005 is a copy of the
`
`District Court’s “CLAIM CONSTRUCTION ORDER AND ORDER ON
`
`MOTIONS FOR SUMMARY JUDGMENT.” I assume that Dr. Horenstein
`
`intended to refer to Exhibit 2003 and provide my rebuttal opinions under this
`
`assumption.
`
`6
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`the art would have understood that these cell boundaries are defined in terms of a
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`cell radius and a distance between two adjacent frequency-reuse cells. Id. Further,
`
`Lee shows how “[m]obile-telephone subscribers within a given cell” are assigned a
`
`particular channel frequency, but when the “mobile unit crosses a cell boundary,” a
`
`new channel frequency is assigned. Id. at 9-10. Based on such disclosures, it is my
`
`opinion that a person of ordinary skill in the art would have understood that the Lee
`
`textbook does not support the notion that the claimed “position” is limited to transmit
`
`signal strength to the exclusion of any relationship to location or distance. Instead,
`
`such a skilled person would have understood from the Lee textbook that “position”
`
`in the context of the ’435 patent and the claimed “position to a communications
`
`tower” is also related to location or distance to a communication tower. While this
`
`may include a relationship to other aspects, it is certainly would not have been
`
`understood to exclude location or distance aspects. Accordingly, I disagree with Dr.
`
`Horenstein’s conclusion that the Lee textbook shows that the “position” aspect of
`
`the claimed “position to a communications tower” would have been understood to
`
`be limited to signal strength.
`
`
`
`
`
`7
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`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`C. Baiker Discloses the Elements of Claims 1-3
`14. As I discussed in my opening declaration, Baiker discloses all the
`
`elements of claims 1, 2, and 3. See my discussions in Wells at Section IX.
`
`15. Dr. Horenstein suggests that Baiker does not disclose claims 1, 2, and
`
`3 because Baiker does not disclose two limitations of claim 1. Horenstein at Section
`
`IX.A and B. I disagree with Dr. Horenstein for the reasons below.
`
`a.
`
`Baiker Discloses the Claimed “Power Circuit that Provides
`a Network Adjusted Transmit Power Level as a Function of
`a Position to a Communication Tower”
`I showed in my opening declaration how Baiker discloses this
`
`16.
`
`limitation. See my discussion in Wells at ¶¶ 43-46. Dr. Horenstein disputes this for
`
`two reasons. I disagree with both of his reasons.
`
`17. First, Dr. Horenstein argues that because Baiker does not expressly
`
`disclose the implementation of its RF amplifier, it cannot provide the claimed
`
`network adjusted power-level. Horenstein at ¶ 67. To support this, Dr. Horenstein
`
`cites to several sections of my deposition testimony from a district court proceeding,
`
`which he claims support his argument. Id. at ¶¶ 68, 71. But, in my deposition, I was
`
`asked general questions about RF amplifiers, and was then asked a separate question
`
`about paragraph 1165 of my Expert Report in a related District Court case.
`
`Horenstein at ¶ 71; EX1032, “Opening Expert Report of Jonathan Wells, Ph.D.,
`
`M.B.A.,” October 25, 2019, Southern District of California, Case No. 3:18-cv-
`
`8
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`01783-CAB-BLM [Lead Case]. Paragraph 1165 of my Expert Report is relevant to
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`this proceeding, as it relates to my opinions that explain how Werling demonstrates
`
`the well-known use of an integrated circuit to embody some of the claimed circuitry
`
`in relation to claim 6. See my discussions in Wells at Section X. I explained that
`
`since “Baiker does not expressly provide implementation details of its construction,
`
`portable cell phones at the time normally used an ‘integrated circuit’ to control
`
`operation of the phone while maintaining portability of the device.” Id. at ¶ 1165
`
`(emphasis added). I disagree with Dr. Horenstein’s attempt to tie my statement about
`
`the lack of an explicit disclosure of an integrated circuit in Baiker, to support the
`
`position that Baiker allegedly fails to disclose the implementation of its RF
`
`amplifier. My discussions that Dr. Horenstein relies on are irrelevant to the
`
`teachings of Baiker regarding the limitations of claim 1. As I discussed in my
`
`opening declaration, a person of ordinary skill in the art would have understood that
`
`Baiker’s “RF amplifier,” alone or together with the “control” and “associated
`
`electrical connections” disclose the claimed “power circuit.” See my discussions in
`
`Wells at ¶ 43.
`
`18. Baiker’s “RF amplifier 10 is regulated by a control 15,” which includes
`
`an “input provided for a quality signal supplied by the base station,” where the
`
`“quality signal” serves to indicate a transmit signal strength of a communications
`
`path between the “base station” and “mobile telephone.” See my discussions in
`
`9
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`Wells at ¶ 46 (where I cite to Baiker [EX1004] at [0028] and [0031]). This is shown
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`in Figure 3, which I reproduce and annotate below. In my opinion, a person of
`
`ordinary skill in the art would have appreciated and understood that express
`
`detailing of the ordinary implementation details of Baiker’s electrical components is
`
`not necessary, as such features would have been commonly known to a person of
`
`ordinary skill in the art at the time of the ’435 patent. Id. at ¶ 62.
`
`EX1004 at FIG. 3 (annotated); Wells at ¶ 43.
`
`19. Therefore, Baiker teaches the claimed “power circuit,” with sufficient
`
`detail of its implementation such that a person of ordinary skill in the art would have
`
`
`
`10
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`understood that it discloses “a power circuit that provides a network adjusted
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`transmit power level as a function of a position to a communications tower,” as
`
`claimed.
`
`20. Second, Dr. Horenstein suggests that Baiker does not teach producing
`
`a power level adjusted by the network. Horenstein at ¶¶ 73-78. Dr. Horenstein
`
`appears to base his opinion on his belief that “[w]hile a quality signal may be one
`
`input that may be taken into account for the transmit power level provided by the
`
`power circuit, it alone is not sufficient to define the transmit power as ‘network
`
`adjusted.’” Id. at ¶ 74. I disagree with Dr. Horenstein.
`
`21. Dr. Horenstein states that “[i]n the ’435 Patent, the ‘network adjusted
`
`transmit power level is based on a transmit signal strength of a communications path
`
`between 40 the communications tower 110 and the portable cell phone 120.’
`
`Baiker’s RF amplifier and control never produce a power level based on this
`
`parameter.” Horenstein at ¶ 75 (citation omitted). I disagree. Baiker expressly
`
`discloses that the “quality signal” serves to indicate a transmit signal strength of a
`
`communications path between the base station and mobile telephone. See my
`
`discussions in Wells at ¶ 46 (citing to Baiker [EX1004] at [0031] showing that the
`
`“quality signal” is measured by “a circuit [] in the base station that measures the
`
`strength of the signal received from the hand-held mobile telephone[.]”).
`
`Accordingly, a person of ordinary skill in the art would have understood that Baiker
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`discloses producing a power level adjusted by the network as I have explained in my
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`opening declaration.
`
`b.
`
`Baiker Discloses the Claimed “Power Governing Subsystem
`… that Determines a … Transmit Power Level … Based on
`Said Network Adjusted Transmit Power Level and Said
`Proximity Transmit Power Level”
`I showed in my opening declaration how Baiker discloses this
`
`22.
`
`limitation. See my discussions in Wells at ¶¶ 50-52.
`
`23. Dr. Horenstein correctly states
`
`that
`
`this
`
`limitation
`
`requires
`
`“determining an ultimate ‘transmit power level based on’ both the ‘network adjusted
`
`transmit power level’ and the ‘proximity transmit power level.’” Horenstein at ¶ 81
`
`(emphasis in original). However, I disagree with Dr. Horenstein that Baiker does
`
`not describe both of these features, and that Baiker relies only on the claimed
`
`“proximity transmit power level.” Id. at ¶ 82 (Dr. Horenstein stating that “Baiker
`
`relies only on a proximity to a user determination.”).
`
`24. As I explained in my opening report, in Baiker, “control 15” regulates
`
`the RF amplifier 10 based on “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 … provided for a quality signal supplied by the base station.” See my
`
`discussion in Wells at ¶ 52 (citing to Baiker [EX1004] at [0028] (emphasis added)).
`
`Here I showed that the first input is the claimed “proximity transmit power level,”
`
`12
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`the second input is the claimed “network adjusted transmit power level,” and Baiker
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`uses both to determine the claimed “transmit power level.” Id.
`
`
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`13
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`D. Baiker and Werling Disclose the Elements of Claims 1-3 and 6
`25. As I discussed in my opening declaration, Baiker in combination with
`
`Werling discloses all the elements of claims 1, 2, 3 and 6. See my discussions in
`
`Wells at Section X.
`
`26. Dr. Horenstein suggests that Werling does not disclose what he claims
`
`are the missing limitations in Baiker. See Horenstein at Section X. I disagree with
`
`Dr. Horenstein for the reasons below.
`
`a.
`
`A Person of Ordinary Skill in the Art Would be Motivated
`to Combine Baiker and Werling
`27. As I explained in my opening declaration, a person of ordinary skill in
`
`the art would have been motivated to combine the disclosures and suggestions in
`
`Baiker and Werling in such a manner that would have resulted in a portable cell
`
`phone as claimed in claims 1, 2, 3, and 6. See my discussions in Wells at Section X.
`
`For example, I showed in my opening declaration how both Baiker and Werling are
`
`directed to radio telephones that include power regulation functions based on a
`
`location of the radio telephone proximate a user, and how a person of ordinary skill
`
`in the art would be motivated to combine the disclosures and suggestions provided
`
`by these references that would have rendered obvious all of the elements of claims
`
`1, 2, 3, and 6. Wells at ¶¶ 55-58, 62-63, 69-75. Dr. Horenstein’s suggestions in his
`
`declaration regarding this prior art combination do not change my opinion.
`
`14
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`28. Dr. Horenstein suggests that the two references “differ significantly,”
`
`
`
`and a “POSITA would have no motivation to combine” the two. Horenstein at ¶ 95.
`
`I disagree with Dr. Horenstein.
`
`29. First, Dr. Horenstein suggests that “the approaches of these two
`
`references to detect proximity are vastly different.” Id. at ¶ 96. However, a person
`
`of ordinary skill in the art would have recognized that both Baiker and Werling
`
`describe the use of proximity detectors. Baiker [EX1004] at [0001] (“sensor for
`
`measuring a distance between the hand-held radio and a body part of a user”);
`
`Werling [EX1005] at 2:1-6 (a “proximity detection device”). Further, a person of
`
`ordinary skill in the art would have recognized that claims 1, 2, 3, and 6 of the ’435
`
`patent do not include any language that require any particular type of proximity
`
`detector. Dr. Horenstein suggests that in Werling, “detection is a simple ‘yes-or-no’
`
`determination obtained by measuring humidity and temperature.” Horenstein at ¶
`
`96. Dr. Horenstein provides no citations to support his conclusion, and I have
`
`reviewed Werling and found nothing in the reference to support that conclusion.
`
`Werling does, however, disclose a proximity detector based on humidity or
`
`temperature. Werling [EX1005] at 2:17-24. In particular, both Werling and Baiker
`
`disclose using proximity detectors for detecting the presence of humans, and to limit
`
`emissions for the benefit of human health:
`
`15
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`
`
`According to two particular embodiments of the invention,
`the proximity detection device comprises a temperature
`detector and/or a humidity detector enabling
`to
`distinguish, among the various obstacles to the radio
`propagation, the presence of a human being in any
`obstacle. As it is an object of the invention to limit the
`emission of noxious radiation for the benefit of the user's
`health, it is very advantageous to use such proximity
`detectors.
`Werling [EX1005] at 2:17-24.
`
`Technical Field
`[0001] The invention relates to a hand-held radio with a
`listening/speaking device, an RF transmitter and a sensor
`for measuring a distance between the hand-held radio and
`a body part of a user. Furthermore, the invention relates to
`a method for the operation of such a hand-held radio.
`Accordingly, what is needed in the art is a system and
`method to automatically reduce the transmit power level
`of a portable cell phone when located near a human body
`thereby decreasing
`the perception of health risks
`associated with the use thereof.
`…
`Description of the Invention
`[0006] The task of the invention is to configure a hand-
`held radio of the type described above in which the
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`damage potential of the electromagnetic radiation emitted
`by the device can be efficiently reduced for the user.
`
`Baiker [EX1004] at [0001], [0005].
`
`30. Second, Dr. Horenstein suggests there is no motivation to combine
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`because Werling and Baiker allegedly have “significant” and “different strategies
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`for the management of RF radiation.” Horenstein at ¶ 97. I disagree. First, these
`
`supposed differences are immaterial to the context of the claims at issue. Also,
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`Werling and Baiker describe radio telephones that adjust transmit power when
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`proximate a human, so as to avoid unwanted health consequences, as I discussed in
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`my opening declaration and above. See my discussions in Wells at ¶¶ 56-58; Baiker
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`[EX1004] at [0001], [0005]; Werling [EX1005] at 2:17-24; see also Werling
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`[EX1005] at 2:7-12 (reproduced below); 4:26-35 (reproduced below).
`
`According to an important characteristic feature of the
`invention, the antenna structure comprises a plurality of
`directional antennas which have each a transmit power in
`a given direction and the power regulation device
`comprises power control means for regulating the
`transmit power of the directional antennas.
`
`Werling [EX1005] at 2:7-12 (emphasis added).
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`According to another embodiment, each antenna is
`connected to its own transmitting circuit and the switches
`are replaced by attenuators controlled by the control
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`17
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`element to adjust the transmit power of each antenna
`as a function of the result of the proximity detection.
`This embodiment requires that each antenna be connected
`to an adjustable power amplifier.
`
`Werling [EX1005] at 4:26-35 (emphasis added).
`
`31. Therefore, consistent with my opinions in my original declaration, it is
`
`my opinion that a person of ordinary skill in the art would have had reason to
`
`consider Werling when contemplating the implementation of Baiker’s system and
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`thus would have been motivated to implement the combination as I explained in my
`
`original declaration. See my discussions in Wells at Section X.
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`
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`18
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`Page 21 of 35
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`
`
`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`E.
`Irvin Discloses the Elements of Claims 1-3
`32. As I discussed in my opening declaration, Irvin discloses all the
`
`elements of claims 1, 2, and 3. See my discussions in Wells at Section XI.
`
`33. Dr. Horenstein suggests that Irvin does not disclose claims 1, 2 and 3,
`
`based on his view that Irvin does not disclose two limitations of claim 1. Horenstein
`
`at Section XI.A and B. I disagree with Dr. Horenstein for the reasons below.
`
`a.
`
`Irvin Discloses the Claimed “Power Circuit that Provides a
`Network Adjusted Transmit Power Level as a Function of a
`Position to a Communication Tower”
`I showed in my opening declaration how Irvin discloses this limitation.
`
`34.
`
`See my discussions in Wells at ¶¶ 84-89.
`
`35. Dr. Horenstein disputes this for two reasons. I disagree with both these
`
`reasons.
`
`36. First, I disagree with Dr. Horenstein’s issues with the Mobile
`
`Attenuation Code (MAC) taught by Irvin. Horenstein at ¶¶ 98-104. As I explain in
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`my opening declaration, this MAC identifies one of eight power levels, and is
`
`transmitted by the base station to the mobile station. See my discussions in Wells at
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`¶ 87. The processor within the mobile station uses this MAC to control a power
`
`control loop so that the output power satisfies the power level indicated by the MAC.
`
`Id. Dr. Horenstein suggests that the “power circuit ‘provides’ the network transmit
`
`power level” and “Irvin’s MAC codes are provided by the base station.” Horenstein
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`19
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`Page 22 of 35
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`at ¶ 100 (emphasis in original). I agree, and this is entirely consistent with my
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`opinion that the base station transmits the MAC to the mobile station, and the mobile
`
`station uses this to provide a network adjusted power level. See my discussions in
`
`Wells at ¶¶ 84-89. Dr. Horenstein also suggests that the MAC is not the claimed
`
`network adjusted power level. Horenstein at ¶ 101. Again, I agree, and do not opine
`
`that it is. Once again, the MAC is sent to the mobile station, and the mobile station
`
`uses this to provide a network adjusted power level. See my discussions in Wells at
`
`¶¶ 84-89.
`
`37. As I have explained, Irvin provides an example where the eight MACs
`
`could be the three-digit values 000, 001, 010, 011, 100, 101, 110 and 111. See my
`
`discussions in Wells at ¶¶ 79, 87; Irvin [EX1006] at 6-7. In this example, a MAC
`
`value of “100” represents a power of 100 milliwatts. Irvin [EX1006] at 6-7. When
`
`the MAC value of “100” is sent to the mobile terminal, the power control loop in the
`
`mobile terminal will adjust the output power so that it equals 100 mW. Id. Thus,
`
`Irvin discloses a “power circuit that provides a network adjusted transmit power
`
`level,” i.e., the output power indicated by the MAC (e.g., 100 mW), which is
`
`adjusted by the base station in the network. See my discussions in Wells at ¶ 87-89;
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`Irvin [EX1006] at 6-7.
`
`38. Dr. Horenstein also suggests that Irvin does not disclose that the MAC
`
`is based on a characteristic of the signal path, i.e., a signal strength. Horenstein at
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`20
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`Page 23 of 35
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`¶¶ 101-104. Dr. Horenstein’s appears to suggest that the disclosures in Irvin’s
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`Rebuttal Declaration of Dr. Jonathan Wells
`U.S. Patent No. 7,039,435
`
`“Background” section cannot apply to later sections in Irvin. I disagree.
`
`39. The Background section in Irvin describes the “BACKGROUND TO
`
`THE INVENTION” discussed in Irvin. See Irvin [EX1006] at 1 (emphasis added).
`
`A person of ordinary skill in the art would have understood such disclosures describe
`
`what was known by such a skilled person at the time. See my discussions in Wells
`
`at ¶ 87-89. Among such conventional features, Irvin explains to such skilled persons
`
`that “[i]n a cellular communication system” “the base station instructs the mobile
`
`terminal to use the least power” and the base station “does so by measuring the signal
`
`strength and returning instructions to the mobile terminal to modify transmitter
`
`power output.” Irvin [EX1006] at 1. Irvin discloses that in the Advanced Mobile
`
`Phone System (AMPS) cellular system (a first generation phone system introduced
`
`in the 1980s, many years before the filing of Irvin), this was done by “the base station
`
`with which the mobile terminal 10 is communicating transmits a mobile attenuation
`
`code (MAC) identifying one of eight power levels.” Id. at 6. Accordingly, a person
`
`of ordinary skill in the art reading Irvin in the context of the knowledge of such a
`
`person at the time of the ’435 patent would have understood and appreciate that the
`
`disclosures of conventional and known features in Irvin’