`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent No. 7,039,435
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,039,435
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent: 7,039,435
`
`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) ............................................. 2
`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 ..................................................................... 5
`A.
`Brief Description ........................................................................................... 5
`B.
`Summary of the Prosecution History ............................................................ 6
`C.
`Level of Ordinary Skill .................................................................................. 7
`Claim Construction Under 37 C.F.R. §§ 42.104(b)(3) ............................................ 7
`1. “position to a communications tower” (claim 1) ....................................... 8
`VI. GROUND 1: CLAIM 8 IS ANTICIPATED BY BAIKER................................... 11
`A. Overview of Baiker ..................................................................................... 11
`B. Application to Challenged Claim ................................................................ 12
`VII. GROUND 2: CLAIM 8 IS OBVIOUS IN VIEW OF BAIKER AND
`WERLING ............................................................................................................. 26
`A.
`Predictable Combination of Baiker and Werling ........................................ 26
`B. Application to Challenged Claim ................................................................ 28
`VIII. GROUND 3: CLAIM 8 IS ANTICIPATED BY IRVIN ...................................... 32
`A. Overview of Irvin ........................................................................................ 32
`B. Application to Challenged Claim ................................................................ 34
`IX. GROUND 4: CLAIM 8 IS OBVIOUS IN VIEW OF IRVIN AND
`MYLLYMÄKI ...................................................................................................... 47
`A.
`Predictable Combination of Irvin and Myllymäki ...................................... 47
`B. Application to Challenged Claim ................................................................ 48
`X. GROUND 5: CLAIM 8 IS OBVIOUS IN VIEW OF BODIN AND IRVIN ....... 52
`A.
`Predictable Combination of Bodin and Irvin .............................................. 52
`B. Application to Challenged Claim ................................................................ 53
`XI. CONCLUSION ...................................................................................................... 61
`
`i
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`
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
`
`1010
`
`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`Petition for Inter Partes Review of US. Patent: 7,039,435
`
`EXHIBIT LIST
`
`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 (“Myllyméiki”)
`
`US. Pat. No. 5,390,338 to Bodin (“Bodin”)
`
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in
`Bell Northern Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and
`ZTE T20, Inc. Case No. 3: 18—cv-l786 S.D. Cal.
`
`US. Provisional Patent Application No. 09/612,034 by Irvin (“Irvin
`Provisional”
`
`Michael Barr, Programming Embedded Systems in C and C++
`O’Reill & Associates, 1999
`
`Rudolf F. Graf, Modern Dictionary of Electronics (Butter- worth-
`Heinemann, 1999
`
`Harry Newton, Newton ’s Telecom Dictionary (Miller Freeman, Inc.,
`1999
`
`Webster’s II New College Dictionary (Houghton Mifflin Co, 1999)
`
`Martin H. Weik, Fiber Optics Standard Dictionary (Chapman & Hall,
`1997
`
`European Patent Publication EP 1091498 (“Baiker”)
`
`Webster’s New World College Dictionary (Simon & Schuster, 1997)
`
`US. Patent No. 6,029,074 to Irvin (“Irvin ’074”)
`
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (T117,
`Inc. Case No. 3: 1 8-cv-l786 S.D. Cal.
`
`Plaintiff's Opening Claim Construction Brief in Bell Northern Research,
`LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc. (Case
`No. 3:18-cv—1786 S.D. Cal.
`
`
`
`ii
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`Petition for Inter Partes Review of US. Patent: 7,039,435
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`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`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 T , Inc. Case No. 3:18—cv—l786 SD. Cal.
`
`Defendants’ Joint Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc.
`Case No. 3: l8-cv—1786 SD. Cal.
`
`Plaintiffs Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), Inc.
`Case No. 3: 18-cv-1786 SD. 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 T , Inc. Case No. 3:18-cv—1786 SD. 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—l786 SD. Cal.
`
`Order on Request for PIC-Institution Stay of the Litigation (August 12,
`2019) in Bell Northern Research, LLC, v. ZTE Corporation, ZTE (USA)
`Inc., and ZTE TAO, Inc. Case No. 3: 18-cv-1786 SD. 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: l8-cv—l784 SD. Cal.
`
`1029
`
`Claim Construction Order in Bell Northern Research, LLC, v. LG
`
`Electronics, Inc. et al., Case No. 3: 18-cv-02864 SD. Cal.
`
`
`
`
`
`iii
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`
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
`
`I.
`
`INTRODUCTION
`Samsung Electronics Co., Ltd. (“Petitioner”) respectfully requests inter partes
`
`review of claim 8 of U.S. Patent No. 7,039,435 (“the ’435 patent”). This petition is
`
`substantially identical to the petition in ZTE (USA), Inc. v. Bell Northern Research,
`
`LLC, IPR2019-01365 (“the ZTE IPR” or “the ZTE proceeding”), which the Board
`
`instituted on February 11, 2020. The ZTE IPR challenged claims 1-3 and 6, but not
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`claim 8. This petition addresses claim 8 based on the same grounds (i.e., based on
`
`the same prior art combinations) as grounds 1-5 in the ZTE IPR petition (claim 8
`
`depends from claim 1) and excludes the analysis of claims 2-3 and 6 which are not
`
`challenged in this Petition. (See Ex. 1024, illustrating changes between the instant
`
`petition and the petition in IPR2019-01365.) Thus, the substantive difference
`
`between this petition and the ZTE IPR petition is the inclusion of the claim 8
`
`challenge and its associated analysis. Because claim 8 depends from claim 1
`
`Petitioner includes the same positions for claim 1 as presented in the ZTE IPR before
`
`addressing challenged claim 8.
`
`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
`
`Samsung Electronics Co., Ltd.
`
`
`
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`1
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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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
`
`Eastern District of Texas, Case No. 2:19-cv-00286. The ’435 patent is also at issue
`
`in other patent infringement actions: Case Nos. 3:18-cv-02864 (S.D. Cal.); and 3:18-
`
`cv-01786 (S.D. Cal). The ’435 patent is currently at issue in IPR2019-01365 and
`
`IPR2019-00319, and was at issue in IPR2019-01186, which was terminated on
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`December 13, 2019.
`
`C. Lead And Back-Up Counsel and Service Information
`Lead Counsel: Naveen Modi (Reg. No. 46,224). Backup Counsel: (1) Joseph
`
`E. Palys (Reg. No. 46,508), (2) Quadeer A. Ahmed (Reg. No. 60,835), and Arvind
`
`Jairam (Reg. No. 62,759). Service Information: Paul Hastings LLP, 875 15th Street
`
`NW, Washington, DC 20005, Tel: (202) 551-1700, Fax: (202) 551-1705, E-mail:
`
`PH-Samsung-BNR-IPR@paulhastings.com. Petitioner consents
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`to electronic
`
`service.
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`2
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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
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’435 Patth is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR.
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Petitioner requests IPR of challenged claim 8 (“Challenged Claim”) on the
`
`grounds listed below.
`
`Ground
`
`Claims
`
`Basis for Rejection
`
`-— §103 - Baiker and Werling
`
`
`
`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 under
`
`§ 102(b). Werling (filed July 26, 1999) is prior art under at least § 102(e).
`
`Irvin (filed June 20, 2001) is prior art under at least § 102(e) based on its PCT
`
`filing date of June 20, 2001. Although only relevant to the extent Patent Owner
`
`attempts to establish a conception date prior to June 20, 2001, Irvin claims priority
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`Petition for Inter Partes Review of US. Patent: 7,039,435
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`to US. Provisional Application 09/612,034 (“Irvin Provisional”) filed July 7, 2000.
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`Irvin thus has a § 102(e) prior art date of July 7, 2000, because the Irvin Provisional
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`supports at least one claim of Irvin. Dynamic Drinkware, LLC v. Nat ’1 Graphics,
`
`Inc., 800 F-3d, 1375, 1381-82 (Fed. Cir. 2015); Polaris Indus., Inc. v. Arctic Cat
`
`Inc., Case IPR2016-01713, Paper 9, at 13 (PTAB Feb. 27, 2017) (“only one claim”).
`
`As demonstrated below and confirmed by Dr. Wells (EX1003, 1176), the Irvin
`
`Provisional provides support under 35 U.S.C. § 112 for at least claim 1 of Irvin:
`
`.
`.
`1““ Clam" 1
`
`Exemplary Support in Irvin
`Provisional
`x1010
`
`1. A portable communication device
`operable to limit transmitter power if
`proximate a human body, comprising:
`
`an antenna;
`
`Cl. 1: “A portable communication
`device operable to limit transmitter
`power if proximate a human body,
`comprising”;
`4: “This invention relates to a mobile
`
`terminal used in a Wireless
`
`communication system and, more
`particularly, to a mobile terminal
`operable to limit transmitter power if
`
`“an antenna”;
`
`8:‘‘antenna 12”;
`FIG. 1.
`
`
`
`a transmitter connected to the antenna;
`
`Cl. 1: “a transmitter connected to the
`
`antenna”;
`
`8: “transmitter 18”;
`
`FIG. 1.
`
`a detector for detecting if the antenna is Cl. 1: “a detector for detecting if the
`proximate a human body; and
`antenna is proximate a human body;
`and”
`
`10: “proximity detector 38”;
`FIG. 1.
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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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.
`
`
`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.”
`Notably, all references but Irvin and Werling were never before the examiner
`
`during prosecution. Irvin was not addressed in an office action and is not cumulative
`
`to art applied in prosecution of the ’435 patent. Werling is applied here in a manner
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`similar to that by the Office during prosecution, which was not challenged by Patent
`
`Owner. For at least these reasons, there is no basis for a determination under 35
`
`U.S.C. § 325(d) that “substantially the same prior art or arguments” were presented
`
`to the Office. To be sure, none of the six factors identified in the PTAB’s Becton,
`
`Dickinson and Company decision weigh in favor of such a finding. See IPR2017-
`
`01586, Paper 8 at 17-28 (PTAB Dec. 15, 2017).
`
`IV. SUMMARY OF THE ’435 PATENT
`A. Brief Description
`The ’435 patent generally describes techniques for reducing the transmit
`
`power level of a portable cell phone when located near a human body. EX1001,
`
`1:63-67; EX1003, ¶¶28-29. For example, the ’435 patent describes cell phone
`
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`5
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`devices including a “typical power circuit” that provides a transmit power level.
`
`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
`
`location proximate the portable cell phone user.” EX1001, 3:43-4:4. A “network
`
`adjusted transmit power level may be reduced to a value determined by the proximity
`
`transmit power level when the location of the portable cell phone 200 is within the
`
`vicinity of the user's head,” and “just within the vicinity of a user’s body.” EX1001,
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`5:24-36.
`
`B.
`Summary of the Prosecution History
`During prosecution of the ’435 patent, the first office action rejected original
`
`claim 19 (corresponding to issued claim 1) based upon a combination of Werling
`
`(EX1005) and Vogel (a secondary reference). EX1002, 84-85. In response, the
`
`applicant amended the claim (Id., 69) and then argued that the cited combination did
`
`not teach a power circuit that provides a network adjusted transmit power level “as
`
`a function of a position to a communications tower.” Id., 73 (repeating this phrase
`
`three times). The applicant then contended that, due to this alleged shortcoming, it
`
`followed that Werling and Vogel failed to teach a power governing subsystem that
`
`determines “a transmit power level for a portable cell phone based on a network
`
`adjusted transmit power level and a proximity transmit power level as recited in
`
`Claim 19.” Id., 73-74.
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`6
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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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 allowance
`
`followed. EX1002, 4-7; 15-18. Notably, the examiner provided reasons for their
`
`conclusion that claims 19-27 were allowable, which emphasized the final element
`
`of issued claim 1. EX1002, 27. As explained below, the Baiker, Irvin, and Bodin
`
`references—which were never considered by the examiner—plainly disclose these
`
`elements of issued claim 1, including the features emphasized in the examiner’s
`
`reasons for allowance. EX1003, ¶¶30-32.
`
`C. Level of Ordinary Skill
`The ’435 patent was filed September 28, 2001, and no claim of priority was
`
`made. The evidence shows 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 engineering, computer science, or a related technical field,
`
`and at least 1-2 years of experience in the field of wireless communication devices,
`
`or an equivalent advanced education in the field of wireless communication devices.
`
`EX1003, ¶¶23-24.
`
`V. Claim Construction Under 37 C.F.R. §§ 42.104(b)(3)
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R.
`
`§42.100. While no briefing on claim construction has taken place in the Samsung
`
`
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`7
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`litigation, the district court previously issued Orders on Claim Construction in other
`
`litigations involving the ’435 patent (3:18-cv-01786 (S.D. Cal.) and 3:18-cv-02864
`
`(S.D. Cal.)). See Exs. 1025, 1029.
`
`“position to a communications tower” (claim 1)
`1.
`For the phrase “position to a communications tower,” this petition sets forth a
`
`first claim construction and a second, alternative claim construction. The Board has
`
`previously authorized the use of alternative constructions in IPR petitions, and
`
`Petitioner should be treated no differently here. General Electric Co. v Vestas Wind
`
`Systems A/S, IPR2018-00928, Paper No. 9, 12-16 (PTAB Nov. 5, 2018) (“the rule
`
`does not prohibit a petitioner 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 offer alternative constructions and demonstrate unpatentability
`
`under each construction.”); Hologic, Inc. v Enzo Life Sciences, Inc., IPR2018-00019,
`
`Paper No. 21, 7 (PTAB Nov. 28, 2018). As explained in detail below, the petition
`
`sets forth alternative constructions along with an ample demonstration of the
`
`unpatentability of the Challenged Claim under each alternative interpretation, which
`
`is sufficient for institution of review. General Electric, Paper 9, 12-16; Intel, Paper
`
`8, 11-13.
`
`According to a first construction, the phrase “position to a communications
`
`tower” means “transmit signal strength of a communications path between the
`
`
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`8
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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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 take on its
`
`ordinary meaning and is instead equated with a “signal strength”—namely, a
`
`transmit signal strength of a communications path. Based on this interpretation, the
`
`claim language incorporates the embodiment described in column 3 of the ’435
`
`patent in which the “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 (emphasis added); EX1003,
`
`¶¶33-34. As detailed below, Baiker 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. Infra, Section VI-IX. Thus, if
`
`the Board adopts this first construction of “position to a communications tower,”
`
`Grounds 1-4 demonstrate that the Challenged Claim is unpatentable.
`
`This petition presents a second, alternative construction based upon the
`
`straightforward and literal language of “position to a communications tower.” In this
`
`alternative, no formal construction is necessary because plain language of the claim
`
`recites “position,” which does not carry any specialized meaning in the art and is not
`
`lexicographically defined in the ’435 patent specification. EX1003, ¶35. In
`
`particular, the commonly recognized meaning of a “position” is simply a location or
`
`
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`
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`9
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`distance relative another object, and thus the phrase “position to a communications
`
`tower” plainly and ordinarily describes a location or distance to a communications
`
`tower. Id. This interpretation is consistent with the intrinsic evidence, as the ’435
`
`patent includes use of this phrase in the specification, without any lexicographic
`
`definition or disclaimer that equates the term “position” to “a 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 position to a
`
`communications tower and a proximity regulation system” (emphasis added)).
`
`Indeed, the specification uses the term “position” in several instances that 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 “positioned”);
`
`EX1019, 46-51. Also, this ordinary meaning of “position” is confirmed by the
`
`extrinsic evidence. EX1003, ¶35 (citing to EX1014 (“a place or location”); EX1017
`
`(“the place where a person or thing is, esp. in relation to others”). Alternatively, to
`
`the extent the Board deems an explicit construction of this term to be required, this
`
`term should be construed to mean “position of the portable cell phone relative to a
`
`communications tower,” consistent with how this term would have been plainly and
`
`ordinarily understood by a POSITA. EX1003, ¶35. The Bodin reference describes
`
`adjusting transmit power based on distance to a base station/communication tower.
`
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`
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`10
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`Infra, Section X. Thus, if the Board adopts this alternative interpretation, Ground 5
`
`demonstrates that the Challenged Claim is unpatentable.
`
`VI. GROUND 1: CLAIM 8 IS ANTICIPATED BY BAIKER
`A. Overview of Baiker
`Baiker (EX1004) describes a “hand-held mobile telephone” in which “the
`
`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 transmitter… on the
`
`basis of a distance measured (e.g., to the user’s head).” Id. Baiker provides a block
`
`diagram of the “hand-held mobile telephone” in Figure 3 (annotated below on p. 16).
`
`EX1003, ¶¶36-39.
`
`As shown in Figure 3, the hand-held mobile telephone 1 includes an “RF
`
`transmitter (10/6)” that includes an “antenna 6” and “RF amplifier 10,” “a sensor (7)
`
`for measuring a distance between the hand-held [mobile telephone] and a body part
`
`of a user,” and “a circuit (15) for controlling the power of the RF transmitter (10/6)
`
`depending on the measured distance.” EX1004, Abstract, [0019]. The antenna 6
`
`“forms the interface to the base station.” Id., [0025].
`
`Baiker teaches the power of the RF transmitter is regulated based on both (1)
`
`the measured distance (“distance signal”) between the device and body part of the
`
`user and (2) a “quality signal supplied by the base station.” Id., [0028]; EX1003,
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`
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`11
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`Petition for Inter Partes Review of U.S. Patent: 7,039,435
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`¶¶37-41. Baiker expressly describes that “control 15,” which regulates RF amplifier
`
`10, “has a first input for a distance signal, which is detected and processed by the
`
`distance sensor 7 and the sensor electronics 14,” and “a second input” that “is
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`provided for a quality signal supplied by the base station.” Id. For example, the
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`measured distance can be used to determine an “allowed maximum value” of the
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`output of the RF amplifier 10, and the quality signal, which “measures the strength
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`of the signal received from the hand-held mobile telephone,” is used to determine
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`“by what value [the hand-held mobile telephone] can reduce its transmission power
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`or to what value [the hand-held mobile telephone] may delimit the RF amplifier 10
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`without the connection being dropped.” Id., [0030] (“allowed maximum value…”);
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`[0031] (“can determine by what value…”).
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`B. Application to Challenged Claim
`Challenged claim 8 depends from independent claim 1. Thus, Petitioner
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`demonstrates below how Baiker discloses the limitations of claim 1 before
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`addressing the limitations of claim 8. As noted above, the analysis of claim 1 under
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`ground 1 is identical to the analysis provided in the instituted ZTE IPR petition under
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`ground 1. See, e.g., Ex. 1024.
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`[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, ¶¶37, 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 occurs
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`between one radio cell and the next.” (emphasis added)).
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`EX1003, ¶42; EX1004, FIG. 1 (annotated).
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`[1.1] a power circuit that provides a network adjusted transmit power level as a
`function of a position to a communications tower; and
`Baiker’s mobile telephone includes a power circuit provided by the “RF
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`amplifier,” alone or together with the “control” (e.g., at least a portion of the
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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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`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,” and
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`that employs the “antenna 125” for transmission. EX1001, 3:31-42; EX1003, ¶44.
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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 power
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`level that is the same as an embodiment of the ’435 patent—namely, one that 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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`Because the scope of claim 1 encompasses this embodiment of the ’435 patent under
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`this first construction, it likewise encompasses Baiker’s prior art teaching too. In
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`more detail, Baiker describes that the “RF amplifier 10 is regulated by a control 15,”
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`including an “input provided for a quality signal supplied by the base station.”
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`EX1004, [0028] (emphasis added). The “quality signal” is indicative of a transmit
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`signal strength of a communications path between the communications tower (e.g.,
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`“base station”) and portable cell phone. EX1004, [0031]; EX1003, ¶¶45-46.
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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 power
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`of the RF transmitter (10/6) can be adjusted depending on a signal characterized by
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`a connection quality.”); cl. 9; see also [0009] (“Preferably, the device controls its
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`transmission power in accordance with the requirements of the connection to the
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`base station. The transmission power may, for example, be reduced, when the signals
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`from the base station (to which the connection has been made) are strong.”); [0034]
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`(“A quality signal may also be generated in the hand-held mobile telephone 1 instead
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`of
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`in
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`the base
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`station.”). Baiker
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`thus describes
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`that
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`the
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`“RF
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`amplifier”/“antenna”/“control” may provide a transmit power level based on both
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`the “quality signal” and proximity to a user. When the transmit power level is not
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`adjusted based on proximity to a user (e.g., the transmit power level is based only
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`on the “quality signal”), the “RF amplifier” provides the network adjusted transmit
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`power level. See, e.g. EX1004, [0021] (describing that the transmit power is not
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`limited based on user proximity when the distance to the user is greater than a
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`“second distance d2.”).
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`Accordingly, the “RF amplifier,” which provides a transmit power level based
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`on a “quality signal,” alone or together with its electrical connections/conductors
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`and/or portions of the “control,” as described by Baiker, discloses a power circuit
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`that provides a network adjusted transmit power level as a function of a position to
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`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 head).”
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`EX1004, [0007]. Indeed, Baiker describes “distance-dependent regulation of the RF
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`power emitted by the antenna” as “the core of the invention.” EX1004, [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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`Id.; see also Abstract (“a circuit (15) for controlling the power of the RF transmitter
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`(10/6) depending on the measured distance [is] provided]”). In other words, the
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`transmit power output by the RF amplifier is limited to an allowable range depending
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`on a distance of the device to a user. EX1004, [0030] (“Principally, the maximum
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`output of the RF amplifier 10 is limited to the allowable range explained in Fig. 2.
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`Depending on the current distance, the allowed maximum value is obtained from a
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`stored table and supplied to the RF amplifier 10.”); see also id., Abstract; [0024]
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`(“the RF power may be maintained on the curve capped at the allowed power
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`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 signal,
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`as described by Baiker, disclose the claimed proximity regulation system, as
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`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 electronics
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`14,” alone or together with “distance sensor 7.” EX1003, ¶49. The “distance sensor
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`7” and “sensor electronics 14” are used to determine a location of said portable cell
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`phone proximate a user. For example, Baiker describes “distance sensor 7 is intended
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`and formed to measure the distance to the body (e.g. the head) of the user,”
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`thereby indicating that “distance sensor 7”/“sensor electronics 14” determine a
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`location proximate a user. EX1004, [0020] (emphasis added); [0021] (de