IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: McDowell et al.
`Attorney Docket No.: 18768-0183IP1
`U.S. Patent No.:
`7,039,435
`
`Issue Date:
`May 2, 2006
`
`Appl. Serial No.: 09/967,140
`
`Filing Date:
`September 28, 2001
`Title:
`PROXIMITY REGULATION SYSTEM FOR USE WITH A
`PORTABLE CELL PHONE AND A METHOD OF OPERATION
`THEREOF
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 7,039,435
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`TABLE OF CONTENTS
`
`V. 
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 2 
`A. 
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 2 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 2 
`C. 
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................. 3 
`D. 
`Service Information ............................................................................... 3 
`II. 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 3 
`III.  REQUIREMENTS FOR IPR .......................................................................... 3 
`A.  Grounds for Standing ............................................................................ 3 
`B. 
`Challenge and Relief Requested ........................................................... 4 
`IV.  SUMMARY OF THE ’435 PATENT ............................................................. 6 
`A. 
`Brief Description ................................................................................... 6 
`B. 
`Prosecution History ............................................................................... 6 
`C. 
`Level of Ordinary Skill ......................................................................... 7 
`Claim Construction .......................................................................................... 7 
`A. 
`“position to a communications tower” (claim 1) .................................. 8 
`VI.  GROUND 1A: CLAIMS 1, 2, 3, AND 8 – LUXON AND IRVIN .............. 11 
`A.  Overview of Luxon ............................................................................. 11 
`B. 
`Overview of Irvin ................................................................................ 13 
`C. 
`Predictable Combination of Luxon and Irvin ...................................... 15 
`D.  Application to Challenged Claims ...................................................... 21 
`VII.  GROUND 1B: CLAIM 6 – LUXON, IRVIN, MYLLYMÄKI .................... 33 
`A.  Overview of Myllymäki ...................................................................... 33 
`B. 
`Predictable Combination of Luxon, Irvin and Myllymäki .................. 33 
`C.  Application to Challenged Claims ...................................................... 35 
`VIII.  GROUND 2: CLAIMS 1, 2, 3, 6, AND 8 – IRVIN AND MYLLYMÄKI .. 37 
`A. 
`Predictable Combination of Irvin and Myllymäki .............................. 37 
`B. 
`Application to Challenged Claims ...................................................... 38 
`IX.  GROUND 3: CLAIMS 1, 2, 3, 6, AND 8 – STEER AND IRVIN ............... 52 
`A.  Overview of Steer ................................................................................ 52 
`B. 
`Predictable Combination of Steer and Irvin ........................................ 53 
`C.  Application to Challenged Claims ...................................................... 56 
`THE PETITION SHOULD BE CONSIDERED ON THE MERITS
`NOTWITHSTANDING ANY PRIOR PETITION FOR IPR AGAINST
`THE ’453 PATENT: ...................................................................................... 63 
`
`X. 
`
`i
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`A. 
`§314(a) ................................................................................................. 63 
`B. 
`§325(d) ................................................................................................ 69 
`XI.  CONCLUSION .............................................................................................. 70 
`
`
`
`ii
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`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`
`EXHIBIT LIST
`
`Exhibit Description
`1001
`U.S. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
`1002
`File History of the ’435 patent
`1003
`Declaration of Matthew C. Valenti, Ph.D.
`1004
`U.S. Pat. No. 6,095,820 (“Luxon”)
`1005
`PCT Patent Publication WO 2002/05443 (“Irvin”)
`1006
`U.S. Pat. No. 6,018,646 (“Myllymäki”)
`1007
`U.S. Pat. No. 6,845,246 (“Steer”)
`1008
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in Bell
`Northern Research, LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei
`Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (Case No. 3:18-
`cv-1784) (S.D.Cal., filed 4/19/19)
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern Re-
`search, LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei Device (Shen-
`zhen) Co., Ltd., and Huawei Device USA, Inc. (Case No. 3:18-cv-1784) (S.D.
`Cal.)
`Plaintiff’s Opening Claim Construction Brief in Bell Northern Research,
`LLC, v. Huawei Device (Dongguan) Co., Ltd., Huawei Device (Shenzhen)
`Co., Ltd., and Huawei Device USA, Inc. (Case No. 3:18-cv-1784) (S.D. Cal.)
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`Claim Construction Order and Order on Motions for Summary Judgement in
`Bell Northern Research, LLC, v. Huawei Device (Dongguan) Co., Ltd.,
`Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc. (Case
`No. 3:18-cv-1784) (S.D. Cal.)
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in Bell
`Northern Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-CV-
`2864 (S.D. Cal.)
`Joint Motion for Entry of Prior Claim Construction Order in Bell Northern
`Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-CV-2864 (S.D.
`Cal.)
`
`iii
`
`

`

`1014
`
`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`Order Granting Joint Motion for Entry of Prior Claim Construction Order in
`Bell Northern Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-
`CV-2864 (S.D. Cal.)
`1015 Webster’s II New College Dictionary (Houghton Mifflin Co, 1999)
`1016 Webster’s New World College Dictionary (Simon & Schuster, 1997)
`1017
`Harry Newton, Newton’s Telecom Dictionary (Miller Freeman, Inc., 1999)
`1018 Martin H. Weik, Fiber Optics Standard Dictionary (Chapman & Hall, 1997)
`1019
`U.S. Pat. No. 6,029,074 (“Irvin ’074”)
`1020
`U.S. Provisional Patent Application No. 09/612,034 (“Irvin Provisional”)
`1021 Michael Barr, Programming Embedded Systems in C and C++ (O’Reilly &
`Associates, 1999)
`Rudolf F. Graf, Modern Dictionary of Electronics (Butterworth-Heinemann,
`1999)
`U.S. Pat. No. 6,456,856 (“Werling”)
`U.S. Pat. No. 6,498,924 (“Vogel”)
`Defendants’ Motion For Summary Judgement On Indefiniteness in Bell
`Northern Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-CV-
`2864 (S.D. Cal.)
`
`1022
`
`1023
`1024
`1025
`
`
`
`iv
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`
`INTRODUCTION
`
`LG Electronics, Inc. (“LG” or “Petitioner”) petitions for IPR of claims 1-3,
`
`6, and 8 (“Challenged Claims”) of U.S. Patent No. 7,039,435 (“the ’435 patent”).
`
`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)
`LG Electronics, Inc., LG Electronics U.S.A. Inc., and LG Mobile Research
`
`U.S.A., LLC are the real parties-in-interest. No other parties had access to or con-
`
`trol over the present Petition, 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
`
`complaint in the U.S. District Court for the Southern District of California (Case
`
`No. 3:18-cv-2864) against LG Electronics Mobile Research U.S.A., LLC, LG
`
`Electronics U.S.A. Inc., LG Electronics, Inc., asserting 6 patents, including the
`
`’435 patent. The complaint was served on December 27, 2018.
`
`BNR also filed complaints in the Southern District of California alleging in-
`
`fringement of the ’435 patent by other parties: Huawei Device (Dongguan) Co.,
`
`Ltd., Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA, Inc., (3:18-
`
`cv-1784); and ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc., (3:18-cv-
`
`1786). LG is not a real party-in-interest to any of these above-listed district court
`
`proceedings. Also, none of the parties in these district court proceedings is a real
`
`party-in-interest in the proceedings involving LG or in privity with LG.
`2
`
`
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`Lead Counsel
`Timothy W. Riffe, Reg. No. 43,881
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax 877-769-7945
`riffe@fr.com
`IPR18768-0183IP1@fr.com
`
`Backup counsel
`Christopher C. Hoff, Reg. No. 67,738
`Tel: 612-335-5070
`PTABInbound@fr.com
`
`R. Andrew Schwentker, Reg. No. 59,402
`Tel: 202-783-5070
`PTABInbound@fr.com
`
`D.
`Service Information
`Please address all correspondence to the address listed above. Petitioners
`
`consent to electronic service by email at IPR18768-0183IP1@fr.com (referencing
`
`No. 18768-0183IP2) and cc’ing riffe@fr.com, hoff@fr.com, schwentker@fr.com,
`
`and PTABInbound@fr.com.
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any addi-
`
`tional fees.
`
`III. REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Petitioner certifies the ’435 Patent is available for IPR and Petitioner is not
`
`barred or estopped from requesting IPR.
`
`
`
`3
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`
`B. Challenge and Relief Requested
`Petitioner requests IPR on the below grounds. Additional support provided
`
`in EX1003.
`
`Ground
`1A
`
`Claims
`1-3, 8
`
`§103 – Luxon, Irvin
`
`Basis
`
`1B
`
`2
`
`3
`
`6
`
`§103 – Luxon, Irvin, Myllymäki
`
`1-3, 6, 8
`
`§103 – Irvin, Myllymäki
`
`1-3, 6, 8
`
`§103 – Steer, Irvin
`
`Luxon(issued Aug. 1, 2000) and Myllymäki(issued Jan. 25. 2000) were pub-
`
`lished over a year before the earliest proclaimed priority date(Sep. 28, 2001), and
`
`are prior art under §102(b). Steer(filed Jun. 15, 2000) is prior art under at least
`
`§102(e).
`
`Irvin is prior art at least under §102(e) based on its PCT filing date of June
`
`20, 2001, more than a year earlier than the proclaimed priority date of the ’435 pa-
`
`tent. Additionally, to the extent Patent Owner attempts to establish a prior concep-
`
`tion date, Irvin claims priority to U.S. Provisional Application 09/612,034(“Irvin
`
`Provisional”) filed July 7, 2000. All portions of Irvin relied upon herein are car-
`
`ried forward from the Irvin Provisional, and parallel citations are provided.
`
`EX1003, ¶40. Moreover, as the text of Irvin and the Irvin Provisional are nearly
`
`
`
`4
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`identical, the Irvin Provisional supports at least one claim of Irvin. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d, 1375, 1381-82(Fed. Cir. 2015);
`
`Polaris Indus., Inc. v. Arctic Cat Inc., IPR2016-01713, Paper 9, 13(PTAB Feb. 27,
`
`2017)(“only one claim”).
`
`Irvin - Claim 1
`1. A portable communication device op-
`erable to limit transmitter power if
`proximate a human body, comprising:
`
`an antenna;
`
`Exemplary Support Irvin Provi-
`sional
`Cl.1: “A portable communication de-
`vice operable to limit transmitter power
`if proximate a human body, compris-
`ing:” p.4-24, FIGS.1-10.
`Cl.1: “an antenna”, p.8: “antenna”,
`FIG. 1.
`a transmitter connected to the antenna; Cl.1: “a transmitter connected to the
`antenna”, 8: “transmitter”, FIG.1.
`Cl.1: “a detector for detecting if the an-
`tenna is proximate a human body;
`and”, p.10: “proximity detector”,
`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.”, p.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 detector for detecting if the antenna is
`proximate a human body; and
`
`a control operatively connected to the
`transmitter and to the detector, the con-
`trol controlling transmitter power an
`limiting transmitter power if the detec-
`tor detects that the antenna is proxi-
`mate a human body.
`
`
`
`
`
`5
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`
`IV. SUMMARY OF THE ’435 PATENT
`A. Brief Description
`The ’435 patent describes a “proximity regulation system for use with a
`
`portable cell phone” for reducing the transmit power level when located near a hu-
`
`man body. EX1001, Abstract; 1:63-67; EX1003, ¶¶27-28. A “typical power cir-
`
`cuit” provides a transmit power level. EX1001, 3:31-34, 4:31-61, cl.1. In order to
`
`reduce the transmit power level when located near a human body, a “proximity
`
`regulation system” is coupled with the “power circuit” that determines a “proxim-
`
`ity transmit power level” based on “its location proximate the portable cell phone
`
`user.” EX1001, 3:43-4:4, 5:24-36, 6:44-54, cl.1.
`
`B.
`Prosecution History
`An initial office action rejected claim 19 (corresponding to issued claim 1)
`
`in view of Werling and Vogel. EX1002, 84-85; EX1003, ¶¶29-30. Applicant pre-
`
`sented amendments, and argued that these references did not teach a power circuit
`
`that provides a network adjusted transmit power level “as a function of a position
`
`to a communications tower.” EX1002, 73-74.
`
`Claims 19-27 were subsequently allowed. EX1002, 20-27; EX1003, ¶31-32.
`
`Claims 1-18 remained rejected, and were subsequently canceled. EX1002, 4-7;
`
`15-18. A notice of allowance followed, emphasizing the final element of issued
`
`claim 1 as reasons for allowance. EX1002, 27. As discussed herein, Luxon, Irvin,
`
`
`
`6
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`and Steer disclose the elements of issued claim 1, including the features empha-
`
`sized in the reasons for allowance, and were never applied in an office action dur-
`
`ing prosecution.
`
`C. Level of Ordinary Skill
`A person of ordinary skill in the art at the time of invention (“POSITA”)
`
`would have had at least a bachelor’s degree in electrical engineering, computer sci-
`
`ence, 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. EX1003, ¶¶22-23.
`
`V. Claim Construction
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard.1 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`
`1 Although Petitioner applies plain and ordinary meaning of other terms, Pe-
`
`titioner notes that a question exists as to whether “location of said portable cell
`
`phone proximate a user” (claim 1) and “designated sensor” (claim 8) are indefinite.
`
`However, because claim construction in district court remains unresolved and be-
`
`cause Petitioner is unable to raise indefiniteness here, Petitioner relies on Patent
`
`Owner’s position (EX1012) that the terms are not indefinite and applies prior art to
`
`the ordinary meaning of this language. Samsung Electronics Co. LTD., et al. v.
`
`
`
`7
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`§42.100. The parties have submitted claim construction briefing in district court
`
`litigation involving the ’435 patent, and claim construction remains ongoing. See
`
`EX1012; EX1025. A claim construction order was previously entered in litigation
`
`involving Patent Owner and other defendants, and this order was incorporated into
`
`the record in the litigation involving Petitioner. EX1008-10; EX1011; EX1013-14;
`
`EX1003, ¶47.
`
`A.
`“position to a communications tower” (claim 1)
`In the claim construction order, the district court declined to adopt the con-
`
`struction advanced by Patent Owner in which “position to a communications
`
`tower” means “transmit signal strength of a communications path between the
`
`communications tower and the portable cell phone.” EX1011, 5-6. The court indi-
`
`cated that “Defendants offered that the network adjusted transmit power level as a
`
`
`Seven Networks, LLC, IPR2018-01124, paper 29, p. 17 (“[] Petitioner’s argument
`
`about indefiniteness in the related district court case does not warrant denying the
`
`Petition because Petitioner cannot raise indefiniteness in this case.”). Notably,
`
`when determining validity, “claim terms need only be construed to the extent nec-
`
`essary to resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`
`1355, 1361 (Fed. Cir. 2011). Here, the prior art discloses these features consistent
`
`with embodiments described in the ’435 patent, and validity can be resolved.
`
`
`
`
`
`8
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`function of the position of the cell phone to a communications tower is unambigu-
`
`ous to one in the art and required no construction or explanation. The Court agrees
`
`and declines to construe, or explain, the claim term.” Id.
`
`This Petition sets forth first and second alternative claim constructions, in
`
`the event Patent Owner continues to advance its construction of “position to a com-
`
`munications tower.” The Board has authorized the use of alternative constructions
`
`in IPR petitions. 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 peti-
`
`tioner from submitting more than one construction”); Intel Corp. v Qualcomm Inc.,
`
`IPR2018-01340, Paper No. 8, 11-13 (PTAB Jan. 15, 2019) (“the petitioner may of-
`
`fer alternative constructions and demonstrate unpatentability under each construc-
`
`tion.”); Hologic, Inc. v Enzo Life Sciences, Inc., IPR2018-00019, Paper No. 21, 7
`
`(PTAB Nov. 28, 2018). Notably, the Challenged Claims are unpatentable under
`
`either alternative construction, as set forth below, and thus institution is appropri-
`
`ate. 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.” EX1010, 63-71; EX1008, 63,
`
`129 (citing EX1001, 3:39-42 and “Mobile Communications Engineering: Theory
`
`and Applications”); EX1003, ¶48-49. Under this interpretation, the claim language
`
`
`
`9
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`incorporates the embodiment described in column 3 of the ’435 patent in which the
`
`“network adjusted transmit power level is based on a transmit signal strength of a
`
`communications path between the communications tower 110 and the portable cell
`
`phone 120.” EX1001, 3:39-42.
`
`Luxon and Irvin each disclose a network adjusted transmit power level based
`
`on a transmit signal strength of a communications path between a communications
`
`tower and mobile device, and thus Grounds 1A-2 demonstrate that the Challenged
`
`Claims are unpatentable under the first interpretation.
`
`According to a second, alternative construction, no formal construction is
`
`necessary because the straightforward and literal language of “position to a com-
`
`munications tower” is applied. EX1011, 6 (“unambiguous to one in the art and re-
`
`quired no construction or explanation.”). “Position” does not carry any specialized
`
`meaning in the art and is commonly understood to refer to location. EX1003,
`
`¶¶50-52. Nor does the ’435 patent lexicographically define this term. Id. Accord-
`
`ingly, the phrase “position to a communications tower” plainly describes a location
`
`to a communications tower. Id. This is consistent with the ’435 patent’s use of
`
`this phrase, without any lexicographic definition or disclaimer linking the term
`
`“position” to “a transmit signal strength.” EX1001, 2:18-21 (“the present inven-
`
`tion provides a portable cell phone that includes a power circuit as a function of a
`
`position to a communications tower and a proximity regulation system”). The ’435
`
`
`
`10
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`patent specification uses the term “position” consistent with its ordinary meaning,
`
`without redefining the term to be “transmit signal strength.” EX1001, 3:4-6 (“con-
`
`ventional communications tower that is positioned to communicate with the porta-
`
`ble cell phone”); 6:33-37 (“position indicator” and “positioned”). Extrinsic evi-
`
`dence also supports the ordinary meaning of “position” as referring to a location,
`
`especially in the context of “position to” a communications tower. EX1003, ¶52
`
`(citing to EX1015 (“a place or location”); EX1016 (“the place where a person or
`
`thing is, esp. in relation to others”). Notably, nothing limits the plain language of
`
`the claim according to the second interpretation to using “position to a communica-
`
`tions tower” as the exclusive parameter that determines network adjusted transmit
`
`power level. EX1003, ¶¶51-52. The “network adjusted transmit power level” is
`
`thus provided as a function of at least location to a communications tower.
`
`The Steer reference describes adjusting transmit power based on geographic
`
`location relative to a base station/communication tower, and thus Ground 3 demon-
`
`strates that the challenged claims are unpatentable under the first and second inter-
`
`pretations.
`
`VI. GROUND 1A: CLAIMS 1, 2, 3, AND 8 – LUXON AND IRVIN
`A. Overview of Luxon
`Luxon describes a “hand-held radio telephone . . . for communication via a
`
`remote receiver, such as a ground-based cell site.” EX1004, 6:40-43; 7:8-13; see
`
`
`
`11
`
`

`

`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`also 1:18-4:3; 5:31-8:67; 35:10-14; EX1003, ¶¶33-36. The radio telephone in-
`
`cludes “an antenna assembly capable of preventing unwanted exposure of the user
`
`to potentially harmful radiation, while providing an enhanced and extended trans-
`
`mission signal to enable improved communication.” Id.
`
`Luxon describes that a signal power transmitted from the radio telephone is
`
`controlled based on a “power level signal” received from the terrestrial cell site.
`
`EX1004, 40:65-41:3 (“instructs the radio signal transmitting device 602 as to what
`
`transmission signal strength is required”); 41:28-31. The “power level signal”
`
`communicated by the terrestrial cell site, and thus the signal power transmitted
`
`from the radio telephone based on the “power level signal,” accounts for “distance
`
`or interference” between the radio telephone and the cell site. EX1004, 41:28-33
`
`(“a greater transmittable signal power will be called for when radio communication
`
`is hampered due to distance or interference.”); 41:42-45; EX1003, ¶34.
`
`Luxon further describes that a maximum signal power transmitted from the
`
`hand-held radio telephone can be adjusted based on whether the antenna is in a
`
`“stowed” or “deployed” position to maintain the signal power “at a safe level” for
`
`the user. EX1004, 41:15-42:4; 38:15-40:61; EX1003, ¶35. The radio telephone
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`includes a “controlling means 638,” and a “signal generation circuit 644.”
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`EX1004, 40:62-64; 41:37-42; 41:55-42:11; FIGS. 55(h)-(i). The controlling means
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`is “provided for controlling a maximum signal power transmittable” from the radio
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`12
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`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`telephone and includes “a power level circuit” that is “typical” of prior cellular tel-
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`ephones. EX1004, 40:62-64; 42:7-10; EX1003, ¶36.
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`
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`EX1004, FIGS. 55(h) and 55(i)
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`B. Overview of Irvin
`Irvin discloses a “mobile terminal that caps or limits RF power output when
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`the mobile terminal is very close to the user.” EX1005, 2; EX1020, 2; EX1003,
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`¶¶37-40. The mobile terminal includes a “housing” and a “detector” that “detects
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`if the housing is proximate a human body.” EX1005, 2; EX1020, 2. A “control”
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`comprising a “programmed processor” is “operatively connected to the transmitter
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`and to the detector” and “controls transmitter power and limits transmitter power if
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`the detector detects that the housing is proximate a human body.” EX1005, 2; 6;
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`EX1020, 2-3; 7.
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`Irvin describes use of its mobile terminal in different locations relative to the
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`user, and the power level of the mobile terminal is controlled based on both a
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`power level signal transmitted from the base station and detected proximity to the
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`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`user. EX1003, ¶38. Irvin explains that “the base station with which the mobile
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`terminal 10 is communicating transmits a mobile attenuation code (MAC) identify-
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`ing one of eight power levels,” and the mobile terminal processor “controls the
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`power control loop 40 so that power output satisfies the MAC.” EX1005, 6;
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`EX1020, 8. Additionally, power level may be reduced when the mobile device is
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`proximate the user, reducing potential radiation exposure to the user. EX1005, 2
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`(“to provide psychological comfort regarding RF transmitters being very close to a
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`human body, there is a need to control RF power output under such situations.”);
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`EX1020, 2. “[I]f the proximity detector 38 senses that the antenna 12 is proximate
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`the user, then the processor 22 establishes a power level cap that the power ampli-
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`fier 46 is not permitted to exceed.” EX1005, 6-7 (“For example, in an [] mobile
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`terminal, mobile attenuation codes 000, 001, 010 and 011 could be reset to 100 if
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`the antenna 12 is near the user,” and “other mobile attenuation codes would be pro-
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`cessed unaltered, regardless of proximity to the user, as the power output amounts
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`generated from these codes are less than the cap.”); EX1020, 8; EX1019, 4:27-48
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`(“The power control signals transmitted by the base station to the mobile terminal
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`10 are in the form of a mobile attenuation code (MAC).”).
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`Irvin describes various sensors for implementing the “proximity detector,”
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`including a “touch-sensitive detection circuit.” EX1005, 3; 10 (“metallic ring”);
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`cls. 7; 8; 17; 18; EX1020, 3; 13; cls. 7; 8; 17; 18; EX1003, ¶39.
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`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`C.
`Predictable Combination of Luxon and Irvin
`A POSITA would have been motivated to implement transmit power regula-
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`tion based on proximity of the device to a user, in accordance with Irvin’s teach-
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`ings, in Luxon’s cell phone to more precisely manage potential radiation exposure
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`of a user and to enhance transmission quality. EX1003, ¶¶53-67, 87. Luxon de-
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`scribes the risk of exposure of “potentially harmful radiation to the user of the
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`hand-held radio telephone,” and limits the maximum transmit power based on an-
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`tenna position (e.g., stowed vs. deployed) to reduce this risk. EX1004, 1:28-35;
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`1:40-2:28; 3:16-54; 40:62-42:20. Irvin provides details of how to determine prox-
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`imity of the mobile device to a user, and to selectively limit transmit power based
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`on proximity to a user. EX1003, ¶54; EX1005, 5-7; EX1020, 7-10.
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`In the combined system, Luxon’s telephone that manages radiation exposure
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`of the user would have been enhanced by Irvin’s proximity detection and proxim-
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`ity regulation features. EX1003, ¶¶55-57. The combined device would be usable
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`in various locations relative to a user, determine the location of the telephone prox-
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`imate the user, and regulate the transmit power based on the location, as taught by
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`Irvin. Id. A POSITA would have been prompted to incorporate Irvin’s proximity
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`regulation functionality in at least two ways. EX1003, ¶¶58-60. First, a POSITA
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`would have been prompted to adjust Luxon’s “maximum signal powers” based on
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`the telephone’s location proximate the user, in accordance with Irvin’s teachings
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`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`(e.g., “power level cap”). EX1005, 2, 5-7; EX1020, 2, 5-7. One or both of
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`Luxon’s “maximum signal powers” allowed when the telephone is detected to be
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`proximate the user (e.g., in a talk position proximate a user’s head, as contemplated
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`by Luxon), may be lower as compared to “maximum signal powers” when the de-
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`vice is not used proximate the user. EX1003, ¶58. For example, the “maximum
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`signal power” when the antenna is in the stowed position and the device is detected
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`to be proximate a user would be lower than a “maximum signal power” when the
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`antenna is in the stowed position but the device is not detected to be proximate the
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`user. Id. In other words, consistent with Irvin’s teachings, a higher “maximum
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`signal power” would be available when the device is not proximate a user, as there
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`would be limited or no risk of radiation exposure to the user when the telephone is
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`not proximate the user. Id.
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`Second, a POSITA would have selectively reduced the “maximum signal
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`power” (e.g., to a reduced maximum associated with the “stowed” antenna posi-
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`tion) only when the telephone was used proximate a user. EX1003, ¶59. Luxon
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`contemplates use of its phone in a talk position proximate a user’s head, and re-
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`duces the “maximum transmit level” to a relatively lower level when the antenna is
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`in the “stowed” position. EX1004, 1:45-61(“When using a hand-held cellular tele-
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`phone, the user holds the phone with his hand and places the phone to his head so
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`that his ear is in contact with the ear piece of the telephone.”); 3:16-4:3(“head and
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`16
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`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`hand are typically disposed very close to the antenna during use of the telephone”);
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`7:54-8:21; 15:16-24 (“head will be adjacent to the speaker portion 32 during
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`use.”); 40:62-42:36. A POSITA would have recognized, based on Luxon’s de-
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`scription of use of the phone at the user’s ear and Irvin’s description of reducing
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`transmit power when the device is proximate the user, that there is less reason to
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`reduce the “maximum transmit level” when the telephone is not proximate a user.
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`EX1003, ¶59. Thus, when the telephone is detected to be proximate a user accord-
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`ing to Irvin’s teachings, the “maximum transmit power” is limited exactly as de-
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`scribed by Luxon (e.g., to have a reduced “maximum transmit power” when the
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`antenna is in the “stowed” position). Id. When the telephone is not detected to be
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`proximate user, the “maximum transmit power” is not reduced based on antenna
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`position, or is reduced less (e.g., because the telephone is not used in the “talk” po-
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`sition contemplated by Luxon and the risk of radiation exposure is already limited
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`or prevented). Id.
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`In both the first and second ways of combining Luxon and Irvin, the combi-
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`nation includes a reduced/capped “maximum transmit power” based on user prox-
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`imity (e.g., when the telephone is detected to be in a location proximate the user
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`and the antenna is in the “stowed” position). EX1003, ¶60.
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`Attorney Docket No. 18768-0183IP1
`IPR of U.S. Patent No. 7,039,435
`A POSITA would have been prompted to use a “proximity detector” and as-
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`sociated control components (e.g., “control”/“processor”) in Luxon’s mobile tele-
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`phone, in accordance with Irvin’s teachings. EX1003, ¶61. For example, a
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`POSITA would have recognized that power regulation functions described by Irvin
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`would be beneficially implemented using Luxon’s existing “controlling means,”
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`which is likewise involved in controlling transmit power. Id. Alternatively or ad-
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`ditionally, a POSITA would have been motivated to implement Luxon’s “control-
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`ling means” using a “control”/“processor” in accordance with Irvin’s teachings,
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`and would have had a reasonable expectation of success in doing so, especially be-
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`cause Irvin describes this architecture is effective in a similar cell phone. Id. Mul-
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`tiple reas