UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
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`Patent No. 7,039,435
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`
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,039,435
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`

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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`V.
`
`TABLE OF CONTENTS
`INTRODUCTION ................................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ................................... 1
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .................................... 1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 1
`C.
`Lead And Back-Up Counsel And Service Information ................................ 2
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .................................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 3
`B.
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested .................... 3
`IV. SUMMARY OF THE ’435 PATENT ..................................................................... 6
`A.
`Brief Description ........................................................................................... 6
`B.
`Summary of the Prosecution History ............................................................ 6
`C.
`Level of Ordinary Skill .................................................................................. 7
`Claim Construction Under 37 C.F.R. §§ 42.104(b)(3) ............................................ 8
`1. “position to a communications tower” (claim 1) ....................................... 8
`VI. GROUND 1: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY BAIKER .......... 11
`A. Overview of Baiker ..................................................................................... 11
`B. Application to Challenged Claims .............................................................. 13
`VII. GROUND 2: CLAIMS 1, 2, 3, AND 6 ARE OBVIOUS IN VIEW OF BAIKER
`AND WERLING ................................................................................................... 25
`A.
`Predictable Combination of Baiker and Werling ........................................ 25
`B. Application to Challenged Claims .............................................................. 28
`VIII. GROUND 3: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY IRVIN .............. 35
`A. Overview of Irvin ........................................................................................ 35
`B. Application to Challenged Claims .............................................................. 37
`IX. GROUND 4: CLAIMS 1, 2, 3, AND 6 ARE OBVIOUS IN VIEW OF IRVIN
`AND MYLLYMÄKI ............................................................................................. 48
`A.
`Predictable Combination of Irvin and Myllymäki ...................................... 48
`B. Application to Challenged Claims .............................................................. 50
`X. GROUND 5: CLAIMS 1, 2, AND 3 ARE OBVIOUS IN VIEW OF BODIN AND
`IRVIN .................................................................................................................... 57
`A.
`Predictable Combination of Bodin and Irvin .............................................. 57
`B. Application to Challenged Claims .............................................................. 59
`XI. GROUND 6: CLAIM 6 IS OBVIOUS IN VIEW OF BODIN, IRVIN, AND
`MYLLYMÄKI ...................................................................................................... 67
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`Predictable Combination of Bodin, Irvin, and Myllymäki ......................... 67
`A.
`B. Application to Challenged Claims .............................................................. 67
`XII. CONCLUSION ...................................................................................................... 69
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`ii
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`Petition for Inter Partes Review of US. Patent: 7,039,435
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`EXHIBIT LIST
`
`Exhibit
`
`Description
`
`1001
`
`US. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
`
`File History of the ’435 Patent
`
`Declaration of Dr. Jonathan Wells
`
`Certified English Translation of European Patent Publication EP 1091498
`b Baiker “Baiker”
`
`US. Patent No. 6,456,856 to Werling (“Werling”)
`
`PCT Patent Publication WO 2002/05443 by Irvin (“Irvin”)
`
`US. Patent No. 6,018,646 to Myllyméiki (“Myllymaki”)
`
`US. Pat. No. 5,390,338 to Bodin (“Bodin”)
`
`
`
`1002
`
`10031
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in Bell
`Northern Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE
`(TX), Inc. Case No. 3:18-cv-1786 S.D. Cal.
`
`US. Provisional Patent Application No. 09/612,034 by Irvin (“Irvin
`Provisional”
`
`Michael Barr, Programming Embedded Systems in C and CH-
`O’Reill & Associates, 1999
`
`Rudolf F- Graf, Modern Dictionary of Electronics (Butter- worth-
`Heinemann, 1999
`
`Harry Newton, Newton ’5 Telecom Dictionary (Miller Freeman, Inc.,
`1 999
`
`Webster’s H New College Dictionary (Houghton Mifflin Co, 1999)
`
`Martin H. Weik, Fiber Optics Standard Dictionary (Chapman & Hall,
`1 997
`
`European Patent Publication EP 1091498 (“Baiker”)
`
`Webster’s New World College Dictionary (Simon & Schuster, 1997)
`
`US. Patent No. 6,029,074 to Irvin (“Irvin ’074”)
`
`1 Exhibit 1003 is a verbatim copy of the Declaration of Jonathan Wells submitted in
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`IPR2019—01365.
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`iii
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`Petition for Inter Partes Review of US. Patent: 7,039,435
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`1019
`
`1020
`
`1021
`
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TAO, Inc.
`Case No. 3: 18-cv—1786 S.D. Cal.
`
`Plaintiff‘ 5 Opening Claim Construction Brief in Bell Northern Research,
`LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc. (Case No.
`3:18-cv—1786 S.D. Cal.
`
`Supplemental Joint Claim Construction Hearing Statement Pursuant to
`P.L.R. 4.2 in Bell Northern Research, LLC, v. ZTE Corporation, ZTE
`(USA) Inc., and ZTE TD, Inc. Case No. 3: 18-cv-1786 S.D. Cal.
`
`Defendants’ Joint Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (T117, Inc.
`Case No. 3: 18-cv—1786 S.D. Cal.
`
`Plaintiff’ s Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TM, Inc.
`Case No- 3: 18-cv-1786 S.D. Cal.
`
`Redline Comparison of this Petition and Petition filed in IPR2019-01365
`“ZTE IPR”
`
`
`
`Claim Construction Order and Order on Motions for Summary Judgment
`in Bell Northern Research, LLC, v. ZTE Corporation, ZTE (USA) Inc.,
`and ZTE (T20, Inc. Case No. 3:18-cv—1786 S.D. Cal.
`Transcript of June 20, 2019 Hearing in Bell Northern Research, LLC, v.
`ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc. (Case No. 3:18-cv-
`1786 SD. Cal.
`
`Order on Request for Pre-Institution Stay of the Litigation (August 12,
`2019) in Bell Northern Research, LLC, v. ZTE Corporation, ZTE (USA)
`Inc., and ZTE TX), Inc. Case No. 3: 18—cv—1786 S.D. Cal.
`
`Order on Confirming Settlement and Setting Deadline to File Joint Motion
`for Dismissal (October 24, 2019) in Bell Northern Research, LLC, v. Bell
`Northern Research, LLC, v. Huawei Technologies Co., Ltd. et a]. (Case
`No. 3: 18-cv-1784 S.D. Cal.
`
`Claim Construction Order in Bell Northern Research, LLC, v. LG
`
`Electronics, Inc. et al., Case No. 3:18-cv-02864 S-D. Cal.
`
`2 Exhibits 1025-1028 were submitted in IPR2019-01365 after the petition was filed.
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`iv
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`I.
`
`INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”) respectfully requests inter
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`partes review of claims 1-3, and 6 of U.S. Patent No. 7,039,435 (“the ’435
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`patent”). This petition is being submitted concurrently with a motion for joinder.
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`Specifically, Petitioner requests institution and joinder with ZTE (USA), Inc. v. Bell
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`Northern Research, LLC, IPR2019-01365 (“the ZTE IPR” or “the ZTE
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`proceeding”), which the Board instituted on February 11, 2020. This petition is
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`substantially identical to the petition in the ZTE IPR; it contains the same grounds
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`(based on the same prior art combinations and supporting evidence) against the
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`same claims. (See Ex. 1024, illustrating changes between the instant petition and
`
`the petition in IPR2019-01365.)
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`II. 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)
`The real parties-in-interest are Samsung Electronics America, Inc. and
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`Samsung Electronics Co., Ltd.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’435 patent is at issue in an infringement action against Samsung in the
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`Eastern District of Texas, Case No. 2:19-cv-00286. The ’435 patent is also at issue
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`in other patent infringement actions: Case Nos. 3:18-cv-02864 (S.D. Cal.); and
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`3:18-cv-01786 (S.D. Cal). The ’435 patent is currently at issue in IPR2019-01365
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`and IPR2019-00319, and was at issue in IPR2019-01186, which was terminated on
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`December 13, 2019.
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`C. Lead And Back-Up Counsel And Service Information
`Lead Counsel: Naveen Modi (Reg. No. 46,224). Backup Counsel: (1) Joseph
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`E. Palys (Reg. No. 46,508), (2) Quadeer A. Ahmed (Reg. No. 60,835), and Arvind
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`Jairam (Reg. No. 62,759). Service Information: Paul Hastings LLP, 875 15th
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`Street NW, Washington, DC 20005, Tel: (202) 551-1700, Fax: (202) 551-1705, E-
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`mail: PH-Samsung-BNR-IPR@paulhastings.com. Petitioner consents to electronic
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`service.
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`Petition for Inter Partes Review of US. Patent: 7,039,435
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`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
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`A.
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`Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner certifies that
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`the ’435 Patent
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`is available for IPR and that
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`Petitioner is not barred or estopped from requesting IPR.
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`B.
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`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
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`Petitioner requests IPR of the Challenged Claims on the grounds listed
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`below.
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`Ground
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`Claims
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`Basis for Rejection
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`1, 2, 3, 6
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`§103 - Baiker and Werling
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`
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`1, 2, 3, 6
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`§103 - Irvin and Myllyméiki
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`Baiker (published April 11, 2001) is prior art under at least § 102(a). Bodin
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`(issued Feb. 14, 1995) and Myllymaki (issued Jan 25. 2000) were published over a
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`year before the earliest possible priority date (Sep. 28, 2001), and are prior art
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`under § 102(b). Werling (filed July 26, 1999) is prior art under at least § 102(e).
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`Petition for Inter Partes Review of US. Patent: 7,039,435
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`Irvin (filed June 20, 2001) is prior art under at least § 102(e) based on its
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`PCT filing date of June 20, 2001. Although only relevant to the extent Patent
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`Owner attempts to establish a conception date prior to June 20, 2001, Irvin claims
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`priority to US. Provisional Application 09/612,034 (“Irvin Provisional”) filed July
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`7, 2000. Irvin thus has 3 § 102(e) prior art date of July 7, 2000, because the Irvin
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`Provisional supports at least one claim of Irvin. Dynamic Drinkware, LLC v. Nat ’1
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`Graphics, Inc., 800 F.3d, 1375, 1381-82 (Fed. Cir. 2015); Polaris Indus, Inc. v.
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`Arctic Cat Inc., Case IPR2016-01713, Paper 9, at 13 (PTAB Feb. 27, 2017) (“only
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`one claim”). As demonstrated below and confirmed by Dr. Wells (EX1003, 1]81),
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`the Irvin Provisional provides support under 35 U.S.C. § 112 for at least claim 1 of
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`Irvin:
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`.
`.
`1' ”n Clan“ 1
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`Exemplary Support in Irvin
`Provisional X1010
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`1. A portable communication device
`operable to limit transmitter power if
`proximate a human body, comprising:
`
`
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`Cl. 1: “A portable communication
`device operable to limit transmitter
`power if proximate a human body,
`comprising”;
`4: “This invention relates to a mobile
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`terminal used in a wireless
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`communication system and, more
`particularly, to a mobile terminal
`operable to limit transmitter power if
`roximate a human bod
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`Cl. 1: “an antenna”;
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`8: “antenna 12”;
`FIG. 1-
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`a detector for detecting if the antenna is
`proximate a human body; and
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`a control operatively connected to the
`transmitter and to the detector, the
`control controlling transmitter power an
`limiting transmitter power if the
`detector detects that the antenna is
`proximate a human body.
`
`
`a transmitter connected to the antenna; Cl. 1: “a transmitter connected to the
`antenna”;
`8: “transmitter 18”;
`FIG. 1.
`Cl. 1: “a detector for detecting if the
`antenna is proximate a human body;
`and”
`10: “proximity detector 38”;
`FIG. 1.
`Cl. 1: “a control operatively connected
`to the transmitter and to the detector, the
`control controlling transmitter power
`and limiting transmitter power if the
`detector detects that the antenna is
`proximate a human body.”
`10: “The processor 22 operates in
`accordance with a control program, as
`described more specifically below, to
`limit or cap transmitter power output if
`the antenna 12 is proximate a human
`body.”
`
`
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`Notably, all references but Irvin and Werling were never before the
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`examiner during prosecution. Irvin was not addressed in an office action and is not
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`cumulative to art applied in prosecution of the ’435 patent. Werling is applied here
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`in a manner similar to that by the Office during prosecution, which was not
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`challenged by Patent Owner. For at least these reasons, there is no basis for a
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`determination under 35 U.S.C. § 325(d) that “substantially the same prior art or
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`arguments” were presented to the Office. To be sure, none of the six factors
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`identified in the PTAB’s Becton, Dickinson and Company decision weigh in favor
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`of such a finding. See IPR2017-01586, Paper 8 at 17-28 (PTAB Dec. 15, 2017).
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`IV. SUMMARY OF THE ’435 PATENT
`A. Brief Description
`The ’435 patent generally describes techniques for reducing the transmit
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`power level of a portable cell phone when located near a human body. EX1001,
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`1:63-67; EX1003, ¶¶28-29. For example, the ’435 patent describes cell phone
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`devices including a “typical power circuit” that provides a transmit power level.
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`EX1001, 3:31-34; 4:31-61. A “proximity regulation system” is coupled with the
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`“power circuit” and determines a “proximity transmit power level” based on “its
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`location proximate the portable cell phone user.” EX1001, 3:43-4:4. A “network
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`adjusted transmit power level may be reduced to a value determined by the
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`proximity transmit power level when the location of the portable cell phone 200 is
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`within the vicinity of the user's head,” and “just within the vicinity of a user’s
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`body.” EX1001, 5:24-36.
`
`B.
`Summary of the Prosecution History
`During prosecution of the ’435 patent, the first office action rejected original
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`claim 19 (corresponding to issued claim 1) based upon a combination of Werling
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`(EX1005) and Vogel (a secondary reference). EX1002, 84-85. In response, the
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`applicant amended the claim (Id., 69) and then argued that the cited combination
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`did not teach a power circuit that provides a network adjusted transmit power level
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`“as a function of a position to a communications tower.” Id., 73 (repeating this
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`phrase three times). The applicant then contended that, due to this alleged
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`shortcoming, it followed that Werling and Vogel failed to teach a power governing
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`subsystem that determines “a transmit power level for a portable cell phone based
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`on a network adjusted transmit power level and a proximity transmit power level as
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`recited in Claim 19.” Id., 73-74.
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`In response, claims 19-27 were allowed, but claims 1-18 remained rejected.
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`Id. at 20-27. The applicant canceled rejected claims 1-18, and a notice of
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`allowance followed. EX1002, 4-7; 15-18. Notably, the examiner provided reasons
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`for their conclusion that claims 19-27 were allowable, which emphasized the final
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`element of issued claim 1. EX1002, 27. As explained below, the Baiker, Irvin, and
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`Bodin references—which were never considered by the examiner—plainly
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`disclose these elements of issued claim 1, including the features emphasized in the
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`examiner’s reasons for allowance. EX1003, ¶¶30-32.
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`C. Level of Ordinary Skill
`The ’435 patent was filed September 28, 2001, and no claim of priority was
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`made. The evidence shows a person of ordinary skill in the art at the time of
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`invention (“POSITA”) would have had at least a bachelor’s degree in electrical
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`engineering, computer engineering, computer science, or a related technical field,
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`and at least 1-2 years of experience in the field of wireless communication devices,
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`or an equivalent advanced education in the field of wireless communication
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`devices. EX1003, ¶¶23-24.
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`V. Claim Construction Under 37 C.F.R. §§ 42.104(b)(3)
`Petitioner submits that all claim terms should be construed according to the
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`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
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`C.F.R. §42.100. While no briefing on claim construction has taken place in the
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`Samsung litigation, the district court previously issued Orders on Claim
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`Construction in other litigations involving the ’435 patent (3:18-cv-01786 (S.D.
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`Cal.) and 3:18-cv-02864 (S.D. Cal.)). See Exs. 1025, 1029.
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`“position to a communications tower” (claim 1)
`1.
`For the phrase “position to a communications tower,” this Petition sets forth
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`a first claim construction and a second, alternative claim construction. The Board
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`has previously authorized the use of alternative constructions in IPR petitions, and
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`Petitioner should be treated no differently here. General Electric Co. v Vestas
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`Wind Systems A/S, IPR2018-00928, Paper No. 9, 12-16 (PTAB Nov. 5, 2018) (“the
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`rule does not prohibit a petitioner from submitting more than one construction”);
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`Intel Corp. v Qualcomm Inc., IPR2018-01340, Paper No. 8, 11-13 (PTAB Jan. 15,
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`2019) (“the petitioner may offer alternative constructions and demonstrate
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`unpatentability under each construction.”); Hologic, Inc. v Enzo Life Sciences, Inc.,
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`IPR2018-00019, Paper No. 21, 7 (PTAB Nov. 28, 2018). As explained in detail
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`below, the Petition sets forth alternative constructions along with an ample
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`demonstration of the unpatentability of the Challenged Claims under each
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`alternative interpretation, which is sufficient for institution of review. General
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`Electric, Paper 9, 12-16; Intel, Paper 8, 11-13.
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`According to a first construction, the phrase “position to a communications
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`tower” means “transmit signal strength of a communications path between the
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`communications tower and the portable cell phone.” EX1020, 63-71; EX1009, 63,
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`129 (citing ’435 patent, 3:39-42 and “Mobile Communications Engineering:
`
`Theory and Applications”). Under this construction, the term “position” does not
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`take on its ordinary meaning and is instead equated with a “signal strength”—
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`namely, a transmit signal strength of a communications path. Based on this
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`interpretation, the claim language incorporates the embodiment described in
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`column 3 of the ’435 patent in which the “network adjusted transmit power level is
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`based on a transmit signal strength of a communications path between the
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`communications tower 110 and the portable cell phone 120.” EX1001, 3:39-42
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`(emphasis added); EX1003, ¶¶33-34. As detailed below, Baiker and Irvin each
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`disclose a network adjusted transmit power level based on a transmit signal
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`strength of a communications path between a communications tower and mobile
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`device. Infra, Section VI-IX. Thus, if the Board adopts this first construction of
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`“position to a communications tower,” Grounds 1-4 demonstrate that the
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`Challenged Claims are unpatentable.
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`This Petition presents a second, alternative construction based upon the
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`straightforward and literal language of “position to a communications tower.” In
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`this alternative, no formal construction is necessary because plain language of the
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`claim recites “position,” which does not carry any specialized meaning in the art
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`and is not lexicographically defined in the ’435 patent specification. EX1003, ¶35
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`In particular, the commonly recognized meaning of a “position” is simply a
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`location or distance relative another object, and thus the phrase “position to a
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`communications tower” plainly and ordinarily describes a location or distance to a
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`communications tower. Id. This interpretation is consistent with the intrinsic
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`evidence, as the ’435 patent includes use of this phrase in the specification, without
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`any lexicographic definition or disclaimer that equates the term “position” to “a
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`transmit signal strength.” See, e.g., EX1001, 2:18-21 (“the present invention
`
`provides a portable cell phone that includes a power circuit as a function of a
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`position to a communications tower and a proximity regulation system”
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`(emphasis added)).
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`Indeed, the specification uses the term “position” in several instances that
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`are consistent with its ordinary meaning, none of which are tethered to a “transmit
`
`signal strength.” Id., 3:4-6 (“positioned”); 6:33-37 (“position indicator” and
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`“positioned”); EX1019, 46-51. Also, this ordinary meaning of “position” is
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`confirmed by the extrinsic evidence. EX1003, ¶35 (citing to EX1014 (“a place or
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`location”); EX1017 (“the place where a person or thing is, esp. in relation to
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`others”). Alternatively, to the extent the Board deems an explicit construction of
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`this term to be required, this term should be construed to mean “position of the
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`portable cell phone relative to a communications tower,” consistent with how this
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`term would have been plainly and ordinarily understood by a POSITA. EX1003,
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`¶35. The Bodin reference describes adjusting transmit power based on distance to
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`a base station/communication tower. Infra, Section X-XI. Thus, if the Board adopts
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`this alternative interpretation, Grounds 5-6 demonstrate that the Challenged
`
`Claims are unpatentable.
`
`VI. GROUND 1: CLAIMS 1, 2, AND 3 ARE ANTICIPATED BY BAIKER
`A. Overview of Baiker
`Baiker (EX1004) describes a “hand-held mobile telephone” in which “the
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`damage potential of the electromagnetic radiation emitted by the device can be
`
`efficiently reduced for the user.” EX1004, Abstract, [0006]-[0007]. Baiker
`
`describes this can be accomplished by controlling “the power of the RF
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`transmitter… on the basis of a distance measured (e.g., to the user’s head).” Id.
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`Baiker provides a block diagram of the “hand-held mobile telephone” in Figure 3
`
`(annotated below on p. 16). EX1003, ¶39.
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`As shown in Figure 3, the hand-held mobile telephone 1 includes an “RF
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`transmitter (10/6)” that includes an “antenna 6” and “RF amplifier 10,” “a sensor
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`(7) for measuring a distance between the hand-held [mobile telephone] and a body
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`part of a user,” and “a circuit (15) for controlling the power of the RF transmitter
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`(10/6) depending on the measured distance.” EX1004, Abstract, [0019]. The
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`antenna 6 “forms the interface to the base station.” Id., [0025].
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`Baiker teaches the power of the RF transmitter is regulated based on both (1)
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`the measured distance (“distance signal”) between the device and body part of the
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`user and (2) a “quality signal supplied by the base station.” Id., [0028]; EX1003,
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`¶¶37-41. Baiker expressly describes that “control 15,” which regulates RF
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`amplifier 10, “has 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” that “is provided for a quality signal supplied by the base station.” Id. For
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`example, the measured distance can be used to determine an “allowed maximum
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`value” of the output of the RF amplifier 10, and the quality signal, which
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`“measures the strength of the signal received from the hand-held mobile
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`telephone,” is used to determine “by what value [the hand-held mobile telephone]
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`can reduce its transmission power or to what value [the hand-held mobile
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`telephone] may delimit the RF amplifier 10 without the connection being
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`dropped.” Id., [0030] (“allowed maximum value…”); [0031] (“can determine by
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`what value…”).
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`B. Application to Challenged Claims
`[1.P] A portable cell phone, comprising:
`To the extent the preamble is a limitation, Baiker discloses a portable cell
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`phone. EX1003, ¶¶36, 42. For example, Baiker describes a “hand-held mobile
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`telephone.” EX1004, [0019]; see also id., Title, Abstract, [0017]. Moreover, Baiker
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`provides explicit description of operation that further confirms its “mobile
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`telephone” is a cell phone. See, e.g. EX1004, [0037] (“signal exchange occurs
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`between the hand-held radio and the base station, for example, when a switch
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`occurs between one radio cell and the next.” (emphasis added)).
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`EX1003, ¶42; EX1004, FIG. 1 (annotated).
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`[1.1] a power circuit that provides a network adjusted transmit power level as a
`function of a position to a communications tower; and
`Baiker’s mobile telephone includes a power circuit provided by the “RF
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`amplifier,” alone or together with the “control” (e.g., at least a portion of the
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`“control” that affects the transmit power level produced by the “RF amplifier”) and
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`the “associated electrical connections.” EX1004, [0025]-[0026], [0028]; EX1003,
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`¶¶43-44. The “RF amplifier” is “regulated by a control 15” and serves to amplify a
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`modulated RF signal for emission by the “antenna.” Id. In other words, the “RF
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`amplifier” produces a transmit power level for the outgoing transmission to be
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`emitted by the “antenna.” Id.
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`EX1003, ¶43; EX1004, FIG. 3 (annotated), [0025] (“a circuit configuration for the
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`performance of the control”).
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`The evidence here confirms Baiker’s “RF amplifier” is just like the
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`embodiment of the ’435 patent, which describes “the power circuit 130 may be a
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`typical power circuit in the portable cellphone 120 that produces a transmit power
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`level equivalent to, for instance, a maximum transmit power level of one watt,”
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`and that employs the “antenna 125” for transmission. EX1001, 3:31-42; EX1003,
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`¶45.
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`Baiker further discloses that its power circuit (e.g., “RF amplifier”) provides
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`a network adjusted transmit power level as a function of a position to a
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`communications tower (consistent with the first construction described above,
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`supra, Section V). In particular, Baiker discloses a network adjusted transmit
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`power level that is the same as an embodiment of the ’435 patent—namely, one
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`that is “based on a transmit signal strength of a communications path between the
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`communications tower 110 and the portable cell phone 120.” EX1001, 3:39-42.
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`Because the scope of claim 1 encompasses this embodiment of the ’435 patent
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`under this first construction, it likewise encompasses Baiker’s prior art teaching
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`too. In more detail, Baiker describes that the “RF amplifier 10 is regulated by a
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`control 15,” including an “input provided for a quality signal supplied by the base
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`station.” EX1004, [0028] (emphasis added). The “quality signal” is indicative of a
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`transmit signal strength of a communications path between the communications
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`tower (e.g., “base station”) and portable cell phone. EX1004, [0031]; EX1003,
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`¶¶45-47.
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`Indeed, Baiker describes “a circuit is provided in the base station that
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`measures the strength of the signal received from the hand-held mobile telephone
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`1 and transmits the same (e.g. together with other control data) to the hand-held
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`mobile telephone 1 in the downlink. The quality signal may, for example, simply
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`indicate whether the hand-held mobile telephone 1 may reduce the current
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`transmission power (further) or not.” EX1004, [0031] (emphasis added); cl. 4
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`(“Hand-held radio according to any of claims 1 or 2, characterized in that the
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`power of the RF transmitter (10/6) can be adjusted depending on a signal
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`characterized by a connection quality.”); cl. 9; see also [0009] (“Preferably, the
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`device controls its transmission power in accordance with the requirements of the
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`connection to the base station. The transmission power may, for example, be
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`reduced, when the signals from the base station (to which the connection has been
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`made) are strong.”); [0034] (“A quality signal may also be generated in the hand-
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`held mobile telephone 1 instead of in the base station.”). Baiker thus describes that
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`the “RF amplifier”/“antenna”/“control” may provide a transmit power level based
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`on both the “quality signal” and proximity to a user. When the transmit power level
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`is not adjusted based on proximity to a user (e.g., the transmit power level is based
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`only on the “quality signal”), the “RF amplifier” provides the network adjusted
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`transmit power level. See, e.g. EX1004, [0021] (describing that the transmit power
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`is not limited based on user proximity when the distance to the user is greater than
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`a “second distance d2.”).
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`Accordingly, the “RF amplifier,” which provides a transmit power level
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`based on a “quality
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`signal,” alone or
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`together with
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`its electrical
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`connections/conductors and/or portions of the “control,” as described by Baiker,
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`discloses a power circuit that provides a network adjusted transmit power level as a
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`function of a position to a communications tower.
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`[1.2] a proximity regulation system, including:
`Baiker discloses a proximity regulation system. EX1003, ¶¶47-48. For
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`example, Baiker describes that “[a]ccording to the invention, the power of the RF
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`transmitter is controlled on the basis of a distance measured (e.g. to the user’s
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`head).” EX1004, [0007]. Indeed, Baiker describes “distance-dependent regulation
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`of the RF power emitted by the antenna” as “the core of the invention.” EX1004,
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`[0021].
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`Baiker describes that “control 15” regulates transmit power based on
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`proximity to a user. EX1004, [0028] (“the RF amplifier 10 is regulated by a control
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`15 according to the invention.”). A “distance signal” is “detected and processed by
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`the distance sensor 7 and the sensor electronics 14” and input to the “control 15.”
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`Id.; see also Abstract (“a circuit (15) for controlling the power of the RF
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`transmitter (10/6) depending on the measured distance [is] provided]”). In other
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`words, the transmit power output by the RF amplifier is limited to an allowable
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`range depending on a distance of the device to a user. EX1004, [0030]
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`(“Principally, the maximum output of the RF amplifier 10 is limited to the
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`allowable range explained in Fig. 2. Depending on the current distance, the
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`allowed maximum value is obtained from a stored table and supplied to the RF
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`amplifier 10.”); see also id., Abstract; [0024] (“the RF power may be maintained
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`on the curve capped at the allowed power range.”); FIG. 2; EX1003, ¶48.
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`Accordingly, the “distance sensor 7”/“sensor electronics 14,” and at least
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`portions of “control 15” used to regulate transmit power based on the distance
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`signal, as described by Baiker, disclose the claimed proximity regulation system,
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`as described further below.
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`[1.3] a location sensing subsystem that determines a location of said portable
`cell phone proximate a user; and
`Baiker discloses a location sensing subsystem provided by “sensor
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`electronics 14,” alone or together with “distance sensor 7.” EX1003, ¶49. The
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`“distance sensor 7” and “sensor electronics 14” are used to determine a location of
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`said portable cell phone proximate a user. For example, Baiker describes “distance
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`sensor 7 is intended and formed to measure the distance to the body (e.g. the
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`head) of the user,” thereby indicating that “distance sensor 7”/“sensor electronics
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