Paper No. ____
`Filed: September 8, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA), INC. AND
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
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`Case: IPR2019-01365
`U.S. Patent No. 7,039,435
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PUBLIC VERSION
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`Filed: September 8, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA), INC. AND
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
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`
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`Case: IPR2019-01365
`U.S. Patent No. 7,039,435
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PUBLIC VERSION
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`Case IPR2019-01365
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`II. CLAIM CONSTRUCTION ........................................................................... 1
`III. THE ’435 PATENT IS NOT ENTITLED TO AN EARLIER
`INVENTION DATE ....................................................................................... 5
`IV. CLAIMS 1-3 AND 6 ARE UNPATENTABLE ............................................ 9
`A. Ground 1: Baiker Anticipates Claims 1-3 ............................................ 9
`B. Ground 2: The Baiker-Werling Combination Renders Obvious
`The Challenged Claims ...................................................................... 14
`C. Ground 3: Irvin Anticipates Claims 1-3 ............................................. 17
`D. Ground 4: The Irvin-Myllymäki Combination Renders Obvious
`The Challenged Claims ...................................................................... 20
`Ground 5: The Bodin-Irvin Combination Renders Obvious The
`Challenged Claims ............................................................................. 22
`V. BNR’S EVIDENCE OF SECONDARY CONSIDERATIONS IN
`SUPPORT OF NON-OBVIOUSNESS FAILS ............................................ 24
`VI. CONCLUSION ............................................................................................. 27
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`E.
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`I.
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`INTRODUCTION
`Bell Northern Research, LLC’s (“BNR”) arguments in its Response (Paper
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`19) should be rejected and the claims found unpatentable for at least the reasons set
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`forth in the record, including the additional reasons and evidence discussed below.
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`II. CLAIM CONSTRUCTION
`Petitioner proposed two possible interpretations of the term “position to a
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`communications tower,” recited in claim 1.
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`First interpretation
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`Second interpretation
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`“transmit signal strength of a communications path
`between the communications tower and the portable cell
`phone.” (Petition, 10-12; Ex. 1003, ¶¶33-34.)1
`Plain and ordinary meaning, where a “position” is
`simply a location or distance relative to another object.
`(Petition, 12-13; Ex. 1003, ¶35.)
`The Petition demonstrates the unpatentability of claim 1 under both the first
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`interpretation (Grounds 1-4) and the second interpretation (Ground 5). (Petition, 5-
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`6, 11-13; Ex. 1003, ¶¶34-35.)
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`1 All citations, unless otherwise noted, are to this IPR2019-01365 record initiated by
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`ZTE (USA), Inc. (termination pending), to which Petitioner was joined. (Paper 25,
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`5-7.) Petitioner Samsung’s petition and supporting evidence are substantially
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`identical to those submitted in this proceeding. See IPR2020-00697, Paper 1 at 1.
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`The Board agreed that this term encompasses the first interpretation and “may
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`also encompass [the second interpretation] . . . which appears to fall within the words
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`of the claim.” (Paper 13 (“Decision”), 17-18.) The Board added, “[w]e will further
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`consider the scope of this phrase during institution of this proceeding.” (Id., 18.)
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`BNR agrees with Petitioner’s first interpretation (Response, 2) but disagrees with
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`both Petitioner and the Board with respect to the second interpretation (id., 3-5, 8).
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`As explained below, BNR’s position is misplaced and should be rejected. (Ex. 1030,
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`¶¶8-10.)2
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`BNR’s arguments do not overcome the intrinsic and extrinsic evidence
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`supporting Petitioner’s position that the subject claim term encompasses the second
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`interpretation. (Petition, 12-13; Ex. 1003, ¶135; Ex. 1001, 2:18-21, 3:4-6, 6:33-37;
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`Ex. 1019, 46-51; Ex. 1014, 4; Ex. 1017, 3; Ex. 1030, ¶¶11-12.) Indeed, the evidence
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`supplied by BNR and relied upon by Dr. Horenstein confirms that the (i) transmit
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`signal strength and (ii) location or distance aspects of “position to a communications
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`tower” (Response, 3-5; Ex. 2022, ¶¶38, 43-45) fall within the scope of this term.
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`2 While Petitioner does not agree with BNR’s slightly different definition of a
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`POSITA (Response, 1), Dr. Wells’ opinions are equally applicable under both
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`definitions. (Ex. 1031, ¶¶6-7.)
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`For example, to support BNR’s argument that “position” be limited to signal
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`strength, Dr. Horenstein selects certain examples from the Lee textbook (Ex. 2003).
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`(Response, 4-5; Ex. 2022, ¶¶43-44.) But Dr. Horenstein ignores the disclosures in
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`Lee that show that “position to a communications tower” is related to geographical
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`distance and position. For instance, Lee teaches how mobile cell sites are designed
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`and cell areas are configured. In planning such cell sites, “cell boundaries are
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`defined” around communication towers. (Ex. 2003, 9.) These boundaries are
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`defined in terms of a cell radius and a distance between two adjacent frequency-
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`reuse cells. (Id., 9-10.) As such, Lee does not support the notion that the claimed
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`“position” is limited to transmit signal strength to the exclusion of any relationship
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`to location or distance as advocated by BNR. Rather, Lee informs a POSITA that
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`the term also relates to location or distance to a communication tower.3 (Ex. 1030,
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`3 BNR’s attempt to limit any interpretation of the term to “account[] for obstructions
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`between the phone and the tower” (Response, 8) should also be rejected as it
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`impermissibly attempts to further narrow the first interpretation by adding unclaimed
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`subject matter. (Ex. 2023, 89:16-90:2.) Continental Circuits LLC v. Intel Corp.,
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`915 F.3d 788, 797-98 (Fed. Cir. 2019) (finding that importing a limitation from the
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`specification into the claim is improper).
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`¶13.)
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`Additionally, Dr. Horenstein has previously testified that “position” relates to
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`“location or distance” (or related terms such as proximity or vicinity) within a
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`communication system, which contradicts his positions here. For example, in other
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`IPR proceedings related to the same District Court matter as this IPR, Dr. Horenstein
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`opined as follows:
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`Given the close proximity of base stations in a cellular
`telephone network, the latter are designed with the
`assumption that the user’s phone will typically be
`located in the vicinity of a base station (comprising the
`existence of a “cell”) . . . In contrast, a satellite phone must
`communicate with a distant, orbiting satellite. The
`position of the satellite (compass bearing and
`elevation) relative to the phone must be ascertained
`using the global positioning system (GPS), then the rf
`beam must be directed toward the satellite.
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`(IPR2019-01319, Ex. 2053, ¶121 (emphasis added); IPR2019-01320, Ex. 2053,
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`¶121.) Dr. Horenstein’s testimony above compares “[t]he position of the satellite”
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`(emphasis added) to “compass bearing and elevation” (i.e., location). Dr. Horenstein
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`also testified that this “position of the satellite” (emphasis added) is “relative to the
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`phone” (emphasis added), and that such “position” “must be ascertained using the
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`global positioning system (GPS).” Thus, Dr. Horenstein agrees that the term
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`“position” is “related to distance or location.”
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`And contrary to BNR’s suggestions (Response, 7-8), the Board’s analysis is
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`consistent with the District Court’s interpretation. As the Board noted, the District
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`Court “construed this term to have its plain meaning, [but] the District Court
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`interpreted the plain meaning as broader than distance, including ‘the relationship to
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`the phone to the tower in all its aspects, whether it’s distance or obstructions or
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`whatever.’” (Decision, 16-17 (emphasis in original) (quoting Ex. 2004, 57:20-24).)
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`Thus, the Board recognized the Court’s view that the term be construed broader than
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`what BNR advocates. (Id.; see also Ex. 2004, 50:4-12, 55:8-10, 55:18-56:1, 56:13-
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`25; Ex. 2023, 89:29-90:2.) Indeed, the Board added some clarity to the District
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`Court’s understanding by recognizing that the term appears to encompass both
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`interpretations. (Decision, 17-18; Ex. 2004, 55:8-10, 57:20-24.)
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`Regardless of the dispute over the first and second interpretations, the record
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`shows that the challenged claims are unpatentable under both interpretations.
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`III. THE ’435 PATENT IS NOT ENTITLED TO AN EARLIER
`INVENTION DATE
`In an effort to antedate Baiker, BNR ignores the Board’s guidance and submits
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`essentially the same arguments that the Board preliminarily rejected. (Response, 17-
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`24; Decision, 10-12; Paper 8 (POPR), 60-64.)
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`For instance, BNR ignores the Board’s caution that “Patent Owner does not
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`provide an explicit analysis of [the] Invention Submission document comparing it to
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`the limitations of the challenged claims.” (Decision, 11 (emphasis added).)
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`BNR’s table does not show that “that no later than February 28, 2001, the inventors
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`possessed the subject-matter as used within the claimed invention” (Response, 18-
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`20) because it does not include all the claim limitations. Specifically, BNR omits at
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`least the following claim limitations from its table:
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` “power circuit” (Ex. 1001, 8:3 (emphasis added)); and
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` “[a power governing subsystem,] coupled to said location sensing
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`subsystem that determines a proximity transmit power level of said
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`cell phone based on said location and determines a [transmit power
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`level for said portable cell phone . . .]” (id., 8:9-13 (emphasis added)).
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`(Response, 18-20.) Thus, BNR cannot prove conception as to at least those missing
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`limitations, as BNR acknowledges. (Response, 24 (citing to Coleman v. Dines, 754
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`F.2d 353 (Fed. Cir. 1985)).)
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`BNR’s table also fails to support conception of other features. For example,
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`the two portions of the Invention Submission document that allegedly support
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`conception of “a network adjusted transmit power level as a function of a position
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`to a communications tower” (Response, 18) do not describe any “network adjusted”
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`power level or a “position to a communication tower,” let alone their relationship.
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`(Ex. 2013, 1.) Named inventor Philip Mooney of the ’435 patent agreed. (Ex. 2009,
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`215:7-14, 217:6-14; see also Decision, 11-12.)
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`To overcome this issue, BNR now points to Mr. Mooney’s testimony
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`regarding “the standard way in which a cell phone would control the power,” which
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`contradicts his previous testimony, to allege he simply acknowledged “a well-known
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`cellular concept.” (Response, 21 (quoting Ex. 2009, 215:15-216:4).) BNR’s shift
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`shows Mr. Mooney’s testimony should be afforded little or no weight. First, Mr.
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`Mooney acknowledged that “he is not familiar enough with the industry” (Ex. 2009,
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`215:21-216:4) and so he is unqualified to opine on what BNR alleges. Further, he
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`admits that the Invention Submission document fails to address that standard way of
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`controlling the transmission power. (Id., 217:13-14.)
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`BNR’s reliance on Mr. Mooney’s testimony (Response, 18-20 (citing to Ex.
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`2009)) should also be rejected as it remains unexplained. Despite the Board faulting
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`BNR for citing to essentially the same testimony “without adequate explanation or
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`elaboration . . . of how the testimony supports conception,” BNR provides nothing
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`to help further evaluate the same evidence considered pre-institution. (Decision, 12;
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`Response, 18-20; POPR, 61.)
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`Accordingly, BNR failed to establish earlier conception to antedate Baiker as
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`prior art in this proceeding.
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`The Board need not reach BNR’s arguments regarding diligence since the
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`perquisite showing of conception is not met. But even if conception is found, BNR’s
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`attempt to antedate Baiker fails because BNR has not met its burden to show
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`diligence.
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`BNR’s “diligence” timeline (Response, 26) actually shows several lengthy
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`periods of inactivity rendering it insufficient to demonstrate reasonably continuous
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`diligence. Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004,
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`1007, 1009 (Fed. Cir. 2017).
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`BNR’s timeline and associated arguments fail to explain at least three long
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`periods of inactivity: (1) from March 2001 to April 2001, (2) from April 2001 to
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`July 27, 2001, and (3) from August 15, 2001 to September 28, 2001, all of which
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`span more than a month. (Response, 26.) Lesser periods of inactivity have been
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`found inadequate to support diligence. See In re Mulder, 716 F.2d 1542, 1545 (Fed.
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`Cir. 1983) (finding two-day period of inactivity as fatal); Fitzgerald v. Arbib, 268
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`F.2d 763, 766 (CCPA 1959) (finding lack of diligence with less than one month of
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`inactivity). Further, BNR’s overgeneralization of its cited testimony is far too
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`speculative to support a finding that BNR was diligent through its constructive
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`reduction of practice date. (Response, 27.) GEP Power Products, Inc. v. Arctic Cat
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`Inc., IPR2016-01388, Paper 31 at 16 (PTAB Dec. 5, 2017) (citing Kendall v. Searles,
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`173 F.2d 986, 993 (CCPA 1949) (holding that testimony of a general nature is not
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`sufficiently corroborative)).
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`Thus, the evidence of diligence is insufficient to antedate Baiker as prior art.
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`IV. CLAIMS 1-3 AND 6 ARE UNPATENTABLE
`A. Ground 1: Baiker Anticipates Claims 1-3
`Contrary to BNR’s suggestions (Response, 27-29) preliminarily rejected by
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`the Board (Decision 21), the phrase “network adjusted” in the term “network
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`adjusted transmit power level” is clearly an adjective describing transmit power level
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`and thus cannot be considered a verb requiring an active action by the network.
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`BNR’s citation to the specification (Response, 28 (citing Ex. 1001, 3:31-42)) fails
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`as the cited portion does not explicitly state the purpose of “communications” with
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`the network, let alone mention that it is for setting the network adjusted transmit
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`power level. (Ex. 1001, 3:31-42.) It also fails to indicate what specific affirmative
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`action the network performs during the “communications.” (Id.)
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`As Petitioner explained (and the Board preliminarily agreed), “[t]he claim
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`requires a ‘network adjusted’ transmit power level [and] Baiker discloses that the
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`quality signal reflects to the signal strength of the network path to the cell tower
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`(base station), and is used to adjust the power level.” (Decision, 21 (emphasis
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`added); Petition, 18; Ex. 1003, ¶¶45-56; Ex. 1004, ¶34.) This reading is consistent
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`with the portion of the ’435 patent that immediately follows BNR’s cited portion,
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`which states that the network adjusted transmit power level is merely based on a
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`transmit signal strength of a communications path. (Ex. 1003, ¶¶45, 87; Ex. 1001,
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`3:39-41.)
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`BNR is misplaced that “there is no explanation of how the RF amplifier
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`functions to provide a network adjusted power-level.” (Response, 29; id., 30-32.)
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`To support its position, BNR sets up a straw man by relying on selected deposition
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`testimony by Dr. Wells (Ex. 2023). (Response, 30-32.) In reality, Dr. Wells was
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`asked general questions about RF amplifiers, and was then asked a separate question
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`about paragraph 1165 of his Expert Report (Ex. 1032) in a related District Court
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`case. (Ex. 2023, 81:24-83:6.) Paragraph 1165 relates to the analysis of claim 6
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`under Ground 2 in this IPR, where Dr. Wells demonstrated that Werling provides
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`the well-known teaching of using an integrated circuit to embody some of the
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`claimed circuitry. In this regard, Dr. Wells opined that since “Baiker does not
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`expressly provide implementation details of its construction, portable cell phones
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`at the time normally used an ‘integrated circuit’ to control operation of the
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`phone while maintaining portability of the device.” (Ex. 1032, ¶1165 (emphasis
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`added); Ex. 1030, ¶¶14-17.)
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`BNR impermissibly attempts to tie Dr. Wells’ testimony about the lack of an
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`explicit disclosure of an integrated circuit in Baiker, to an argument that Baiker fails
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`to disclose the implementation of the RF amplifier. (Response, 31-32.) This
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`misdirection is irrelevant to the teachings of Baiker regarding the limitations of claim
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`1. As Petitioner demonstrated, the claimed “power circuit” is Baiker’s “RF
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`amplifier,” alone or together with the “control” and “associated electrical
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`connections.” (Petition, 16; Ex. 1003, ¶43.)
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`BNR’s suggestion that “Baiker does not produce a power level adjusted by a
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`network as required by the claim” because a “POSITA would have understood that,
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`given the same input, an ordinary RF amplifier will always produce the same power
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`output” (Response, 30) ignores the extensive record contradicting this point.
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`Baiker’s “RF amplifier 10 is regulated by a control 15,” which includes an “input
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`provided for a quality signal supplied by the base station,” where the “quality signal”
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`serves to indicate a transmit signal strength of a communications path between the
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`“base station” and “mobile telephone.” (Petition, 14, 16-17; Ex. 1003, ¶¶40, 46; Ex.
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`1004, ¶¶[0028], [0031]).4 This is shown in Figure 3, reproduced and annotated
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`4 During deposition, Dr. Wells explained that an amplifier with a fixed gain would
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`have the same output given the same inputs and objected to BNR’s suggestion that
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`ordinary RF amplifiers have fixed gain. (Ex. 2023, 82:12-18; see also id., 82:5-11
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`(clarifying that variable gain RF amplifiers produce different output power given the
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`same input).) But this distinction is irrelevant to Baiker’s disclosure regarding the
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`limitation at issue.
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`(Ex. 1004, FIG. 3 (annotated); Ex. 1003, ¶43.) Given the well-known
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`implementation details of Baiker’s electrical components, express disclosure of the
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`same would have been unnecessary. (Ex. 1003, ¶ 62; Ex. 1030, ¶¶18-19; see also
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`Decision at 20-21.)
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`BNR’s argument that Baiker does not teach producing a power level adjusted
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`by the network (Response, 32-33) similarly lacks merit. First, the claim does not
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`require that the network adjust the power level as discussed above. Second, just like
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`the ’435 patent, Baiker discloses that the “quality signal” is indicative of a transmit
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`signal strength of a communications path between the base station and mobile
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`telephone. (Petition, 17-18; Ex. 1003, ¶46; Ex. 1004, ¶[0031]; Ex. 1030, ¶¶20-21.)5
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`Moreover, Baiker’s power level does not depend only on the measured
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`distance (Response, 35-37) because as explained, Baiker’s “control 15” regulates the
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`RF amplifier 10 based on “a first input for a distance signal, which is detected and
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`processed by the distance sensor 7 and the sensor electronics 14” and “a second
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`input … provided for a quality signal supplied by the base station.” (Ex. 1004,
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`¶[0028] (emphasis added); Ex. 1003, ¶52; Petition, 23-24.) The first input is the
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`claimed “proximity transmit power level,” the second input is the claimed “network
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`adjusted transmit power level,” and Baiker uses both to determine the claimed
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`“transmit power level.” (Ex. 1030, ¶¶22-24.)6
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`5 Contrary to BNR’s assertions (Response, 33-34), the file history does not establish
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`a distinction between providing data to a cell phone for general-purpose use and
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`transmit power level data (Ex. 1002, 73) nor did the Examiner recognize such a
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`distinction (id., 27).
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`6 And contrary to BNR’s suggestion (Response, 37), Baiker’s control 15 further
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`reduces the transmit power level with good connection quality. (Ex. 1003, ¶¶50-52;
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`Ex. 1004, ¶[0032], Petition, 24.)
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`Given BNR makes no separate argument for claims 2-3 with respect to Baiker,
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`claims 2-3 are anticipated by Baiker for the previously provided reasons. (Petition,
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`24-26.)
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`B. Ground 2: The Baiker-Werling Combination Renders Obvious
`The Challenged Claims
`BNR mostly reargues its previously failed arguments with respect to the
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`Baiker-Werling combination. (Response, 38-47; POPR, 33-38; Decision, 25-28.)
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`The Board should affirm its preliminary findings, for the reasons discussed below.
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`Werling discloses a “power circuit” comprising a “transmitting circuit”
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`coupled to “an antenna” that includes a “power amplifier.” (Petition, 29-30; Ex.
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`1003, ¶¶60-61; Ex. 1005, 3:58-4:3.)
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` Notwithstanding BNR’s
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`irrelevant
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`categorization that the “power circuit” in Werling being “basically an antenna-
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`switching network,” and that “a POSITA would have understood that the ‘power
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`regulation device’ disclosed in Werling is really a power redistribution device[.]”
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`(Response, 38-40 (emphasis in original)), BNR does not dispute Werling discloses
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`a “power circuit” that includes a power amplifier coupled to an antenna (id.).
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`BNR’s assertions regarding a lack of motivation to arrive at the Baiker-
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`Werling combination (Response, 41-47) are similarly unavailing.
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`First, as BNR acknowledges, under Ground 2 Petitioner relies on Werling’s
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`teachings of a “power circuit” (claim 1) and “integrated circuit” (claim 6).
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`(Response, 38 (citing Petition, 29-35).) Indeed, the Petition explains in detail why
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`it would have been obvious to implement the functionality disclosed and relied upon
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`in Baiker utilizing a power circuit or integrated circuit as disclosed by Werling.
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`(Petition, 30-31, 32-35; Ex. 1003, ¶¶62-63, 70-75.) Rather than focusing on this
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`proposed combination, BNR touts alleged differences between Baiker and Werling
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`with respect to the manner in which they disclose power regulation. (Response, 44-
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`47.) But given that Baiker (not Werling) is relied upon for the functionality carried
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`out by the claimed power circuit (Petition, 29-31; Ex. 1003, ¶¶60-64), BNR’s
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`arguments simply miss the mark. (Ex. 1030, ¶¶25-27.) Indeed, the ’435 patent itself
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`discloses that the arrangement of its power circuit was “typical” in the art. (Ex.
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`1001, 3:31-42; Ex. 1003, ¶¶61-62; Petition, 29-31; Ex. 1031, 295:2-17 (Dr.
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`Horenstein acknowledging that an integrated circuit or a microprocessor would have
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`been used for RF circuitry in cell phones at the relevant time), 296:12-17, 304:23-
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`305:8.)
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`Second, BNR’s postulated significant differences between Baiker and
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`Werling (Response, 44-45) boil down to minor variations between the references.
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`For example, BNR provides no support for the assertion that unlike Baiker,
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`“detection [in Werling] is a simple ‘yes-or-no’ determination obtained by measuring
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`humidity and temperature.” (Response, 44-45.) And in any event, both Baiker and
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`Werling include proximity detectors, and there is nothing in the claims at issue that
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`require any particular type of proximity detector. Thus, such differences are
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`immaterial, since both references disclose using proximity detectors for detecting
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`the presence of humans, and to limit emissions for the benefit of human health. (Ex.
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`1030, ¶¶28-29; Ex. 1004, ¶¶[0001], [0005]; Ex. 1005, 2:17-24; see also Petition, 30-
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`31, 32-35; Ex. 1003, ¶¶62-63, 70-75; Decision, 26.)
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`BNR’s assertion that Werling and Baiker have “significant” and “different
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`strategies for the management of RF radiation” (Response, 45) is factually incorrect,
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`and these differences are also irrelevant in the context of the claims at issue. Both
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`Werling and Baiker provide teachings of radio telephones that adjust transmit power
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`when proximate a human, so as to avoid unwanted health consequences, as discussed
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`above. (Ex. 1004, ¶¶[0001], [0005]; Ex. 1005, 2:17-24; Ex. 1030, ¶¶30-31; see also
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`Ex. 1003, ¶¶56-58.) Thus, BNR’s arguments for not combining Baiker and Werling
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`have no merit.7
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`BNR’s suggestion that a showing of “how Baiker’s technology . . . would be
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`incorporated into Werling’s systems” is required (Response, 45-46 (emphasis in
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`7 BNR’s generic arguments regarding the motivation to combine (Response, 40-41)
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`ignore that Petitioner’s framework is consistent with obviousness case law. (See,
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`e.g., Petition, 30-31, 33-35; Ex. 1003, ¶¶63, 70-74; see also Decision, 26-27
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`(preliminary finding that the “combination is consistent with KSR[]”).)
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`original)) has no legal basis. Indeed, a showing of obviousness does not require the
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`details of an exact implementation. Facebook, Inc. v. Windy City Innovations, LLC,
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`No. 2018-1400, 2020 WL 526797, 36 (Fed. Cir. Sept. 4, 2020) (affirming Board’s
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`obviousness finding and noting it was unnecessary to show that the prior art
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`references could be physically combined because a skilled artisan is also a person of
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`ordinary creativity, “so the fact that it would take some creativity to carry out the
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`combination does not defeat a finding of obviousness.”) (citing KSR Int'l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007)). Petitioner demonstrated why a POSITA
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`would have been motivated to configure Baiker’s device to incorporate the teachings
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`of Werling, and BNR failed to present evidence as to why a POSITA could not have
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`applied such techniques. (See, e.g., Petition, 30-31, 32-35; Ex. 1003, ¶¶62-63, 70-
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`75.)
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`C. Ground 3: Irvin Anticipates Claims 1-3
`BNR’s issue with Irvin’s Mobile Attenuation Code (MAC) taught by Irvin
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`(Response, 47-48) is misplaced. The MAC identifies one of eight power levels, and
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`is transmitted by the base station to the mobile terminal. (Petition, 36-37, 40-41; Ex.
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`1003, ¶¶79, 87-89; Ex. 1006, 1, 6-7.) The processor within the mobile station uses
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`this MAC to control a power control loop so that the output power satisfies the power
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`level indicated by the MAC. (Id.) BNR’s argument that the MAC is not the claimed
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`network adjusted power level (Response, 47-48) is consistent with Petitioner’s
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`analysis, since the MAC is sent to the mobile terminal, and the mobile terminal uses
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`this to provide a network adjusted power level. (Petition, 40-41, Ex. 1003, ¶¶79, 84-
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`89; Ex. 1030, ¶¶32-37 (reiterating Irvin’s operation and its application to the claim);
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`see also Decision, 30-31.)
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`BNR’s attempt to undermine Irvin’s “Background” section—i.e., something
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`that was known in the art and is discussed to help frame Irvin’s disclosure—to
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`understand the MAC’s characteristics (Response, 47-50) also misses the mark. The
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`Background section
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`in Irvin describes
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`the “BACKGROUND TO THE
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`INVENTION.” (Ex. 1006 at 1 (emphasis added).) Irvin explains here that “[i]n a
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`cellular communication system” “the base station instructs the mobile terminal to
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`use the least power” and the base station “does so by measuring the signal strength
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`and returning instructions to the mobile terminal to modify transmitter power
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`output.” (Id.; see also Ex. 1003, ¶87; Petition, 40.) Irvin then teaches that in the
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`Advanced Mobile Phone System (AMPS) cellular system (a first generation phone
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`system introduced in the 1980s, many years before the filing of Irvin), this was done
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`by “the base station with which the mobile terminal 10 is communicating transmits
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`a mobile attenuation code (MAC) identifying one of eight power levels.” (Ex. 1006,
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`6; see also Ex. 1003, ¶¶79, 87; Petition, 37, 40.) There is a clear linkage between
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`these two disclosures, and a POSITA would have readily understood that the MAC
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`is based on a measurement of signal strength of a communications path between the
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`base station and the mobile device. (Ex. 1030, ¶¶38-39.)
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`Furthermore, contrary to BNR’s assertions (Response, 48-50), drawing from
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`separate portions of a reference’s disclosure to provide a fulsome analysis of a claim
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`limitation is permissible if it is “immediately apparent to one of ordinary skill in the
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`art.” Unified Patents Inc. v. Intellectual Ventures I LLC, IPR2016-01643, Paper 51
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`at 28-29 (PTAB March 26, 2018) (citing Kennametal, Inc. v. Ingersoll Cutting Tool
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`Co., 780 F.3d 1376, 1382 (Fed. Cir. 2015).) Here, since both statements address the
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`common feature discussed above, it would have been immediately apparent to a
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`POSITA to understand the latter description in light of the earlier portion. (Ex. 1030,
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`¶¶38-39; see also Decision at 31 (“even in an anticipation ground, Petitioner can rely
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`on what Irvin reasonably discloses to [a POSITA].”).)
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`BNR’s assertion that Irvin’s MAC does not take into account the proximity to
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`the user (Response, 50-51) is based on a misunderstanding of Irvin’s operation.
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`When Irvin’s proximity detector detects proximity to the user, a power cap of 100
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`mW is set, equivalent to the MAC value of 100. (Ex. 1006, 6-7; Petition, 37, 45, Ex.
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`1003, ¶¶79, 96; Ex. 1030, ¶¶40-42.) Thus, if during operation, MAC values of 000,
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`001, 010 or 011 are received by the mobile device, indicating output powers of
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`greater than the 100 mW power cap, the processor resets these to 100, to maintain
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`the 100 mW power cap. (Ex. 1006, 6-7.) Other received MAC values (indicating
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`output powers of 100 mW or less) “would be processed unaltered, regardless of
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`proximity to the user, as the power out amounts generated from these codes are less
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`than the cap.” (Id.; Petition, 37, 45; Ex. 1003, ¶¶79, 96.) Accordingly, Irvin teaches
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`the claimed “transmit power level … based on said network adjusted transmit power
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`level and said proximity transmit power level,” because Irvin’s processor provides a
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`transmit power level based on both a network adjusted transmit power level
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`determined from the MAC and measured proximity of the device to a user. (Ex.
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`1003, ¶96; Petition, 45; Ex. 1030, ¶¶42-43.)8
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`Given BNR makes no separate argument for claims 2-3 with respect to Irvin,
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`claims 2-3 are anticipated by Irvin for the previously provided reasons. (Petition,
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`45-47.)
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`D. Ground 4: The Irvin-Myllymäki Combination Renders Obvious
`The Challenged Claims
`Contrary to BNR’s allegations concerning Myllymäki (Response, 51),
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`Petitioner explained Myllymäki’s description of the base station controlling the
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`8 BNR’s allegation that “Petitioner cannot use the same disclosure to satisfy [two]
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`limitations” (Response, 50-51) is unsubstantiated. Aside from misunderstanding
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`Petitioner’s application of Irvin, neither BNR nor its declarant demonstrate how the
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`“network adjusted power level limitation as well as the ‘level’ part of the ultimate
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`transmit power level” are distinct. (Id.; see also Decision, 33.)
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`mobile communication device’s transmitted power based on the received signal level
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`discloses the “power circuit that provides a network adjusted transmit power level
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`as a function of a position to a communications tower.” (Petition, 50-51 (citing Ex.
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`1003, ¶¶107-108; Ex. 1007, 1:9-17; Ex. 1001, 3:31-34).)
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`BNR’s argument that the “[received signal level] does not necessarily take
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`into account position—or the communications path—of the device relative to the
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`communications tower” ignores Myllymäki’s cited portion which explains the
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`received signal level in the context of “place in which the device is used” and the
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`distance between a mobile communication means and base station. (Ex. 1007, 1:9-
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`17; Ex. 1003, ¶¶101, 107.) BNR’s attempt to distinguish “level” in “received signal
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`level” with “strength” (Response, 51-52) should be rejected, as it overlooks the cl
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