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`EXHIBIT 22
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`Case 5:19-cv-00036-RWS Document 451-3 Filed 07/27/20 Page 2 of 80 PageID #: 25162
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`MAXELL, LTD.
`Patent Owner
`____________
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`
`Case No. IPR2020-00203
`U.S. Patent No. 6,408,193
`____________
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`
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,408,193
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`Case 5:19-cv-00036-RWS Document 451-3 Filed 07/27/20 Page 3 of 80 PageID #: 25163
`U.S. Patent No. 6,408,193
`IPR2020-00203
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`Table of Contents
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`I. Introduction ...................................................................................................... 1
`II. Summary Of The ’193 Patent .......................................................................... 1
`A. Description of the Alleged Invention of the ’193 Patent ................. 1
`B. Summary of the Prosecution History of the ’193 Patent ................ 5
`III. Requirements for Inter Partes Review under 37 C.F.R. § 42.104 ................ 6
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ....................... 6
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested ................................................................................. 7
`1. The Grounds for Challenge .............................................................. 7
`C. The Board’s Discretion Under § 314(a) ........................................... 7
`1. Application of the General Plastic Factors ...................................... 7
`2. Apple Has Not Delayed in Filing This Petition ............................. 10
`D. Claim Construction Under 37 C.F.R. § 42.104(b)(3) .................... 11
`1. “a cellular telephone adapted to be used in a CDMA system” ...... 11
`2. “variable amplitude amplifier” ...................................................... 12
`3. “a function defining a relation between bias data and gain data
`stored in said memory” .................................................................. 13
`4. “voice signal code” / “voice code signal” ...................................... 14
`E. Level of Skill of a Person Having Ordinary Skill in the Art ........ 15
`IV. The Challenged Claims Are Unpatentable ................................................... 16
`A. Waldroup in View of Nakayama Renders Claims 1, 6, and 7
`Obvious ............................................................................................. 16
`1. The Proposed Combination of Waldroup and Nakayama ............. 17
`2. Waldroup in view of Nakayama renders claim 1 obvious ............. 25
`3. Waldroup/Nakayama renders claim 6 obvious .............................. 58
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`4. Waldroup/Nakayama renders claim 7 obvious .............................. 61
`V. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1) ........................................ 69
`A. Real Party-In-Interest and Related Matters ................................. 69
`B. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3-4) ........ 69
`C. Payment of Fees Under 37 C.F.R. § 42.103 ................................... 70
`VI. Conclusion ....................................................................................................... 71
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`U.S. Patent No. 6,408,193
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`Table of Authorities
`Cases:
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`Statutes:
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`35 U.S.C. §
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`Regulations:
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`37 C.F.R. §
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`Case 5:19-cv-00036-RWS Document 451-3 Filed 07/27/20 Page 6 of 80 PageID #: 25166
`U.S. Patent No. 6,408,193
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`I.
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`INTRODUCTION
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`Petitioner Apple Inc. (“Petitioner”) requests an Inter Partes Review (“IPR”)
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`of claims 1, 6, and 7 (“Challenged Claims”) of U.S. Patent No. 6,408,193 (“the ’193
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`Patent”), issued on June 18, 2002 to Makoto Katagishi, et al. (“Applicant”). Ex.
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`1001, ’193 Patent at (45), (75). As demonstrated below, the purportedly
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`distinguishing feature of the ’193 Patent of using bias and gain data stored in a
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`memory to efficiently control cellular transmissions was present in the prior art.
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`II.
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`SUMMARY OF THE ’193 PATENT
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`A. Description of the Alleged Invention of the ’193 Patent
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`The ’193 Patent “generally relates to a cellular telephone, and more
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`specifically, relates to a cellular telephone used in Code Division Multiple Access
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`(CDMA) system.” Id. at 1:5-8. The ’193 Patent admits that CDMA cellular
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`technology was known in the art, but claims that CDMA handsets suffered from
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`“large current consumption,” leading to reduced battery life and increased battery
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`weight to compensate. Id. at 1:60-2:14.
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`According to the ’193 Patent, prior art handsets utilized transmitters that were
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`compliant with the IS-95 standard1 and used two separate amplifiers in series—a
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`
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`1 IS-95 was, at the time of filing of the ’193 Patent, “the typical standard for the CDMA
`cellular telephone system enacted in the U.S.” Id. at 1:24-25.
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`variable amplitude amplifier and a power amplifier. Id. at 1:24-32. One such
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`transmitter is illustrated in Fig. 11, reproduced below:
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`
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`In these prior art transmitters, “controller 380 supplies a gain control signal to
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`the variable amplitude amplifier 230 in order to adjust the gain such that the power
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`transmitted from the antenna 450 will satisfy the required value of transmitting
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`power.” Id. at 1:32-35. The ’193 Patent explains that a rough adjustment was also
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`performed to the output of the power amplifier. Namely, when the level detecting
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`means 390 detects that the gain control signal input to variable amplitude amplifier
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`230 is above a threshold, it outputs bias value B2 to power amplifier 250. And when
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`the gain control signal is below that threshold, “the level detecting means 390
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`changes the bias abruptly from B2 to Bl.” This mapping of multiple gain values to
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`only two discrete bias values is depicted in FIG. 12:
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`Case 5:19-cv-00036-RWS Document 451-3 Filed 07/27/20 Page 8 of 80 PageID #: 25168
`U.S. Patent No. 6,408,193
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`The ’193 Patent purports to improve upon the prior art with a controller (1)
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`that controls both the gain of the variable amplitude amplifier and the bias of the
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`power amplifier and (2) that stores discrete bias values for each gain value. Id. at
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`5:66-6:15. The benefit, according to the ’193 Patent, is that it allows for a power
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`curve that “satisfies both the maximum value of the required transmitting power at
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`the maximum output power and small current of the power amplifier means at the
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`minimum output power.” Id. at 6:32-35. This approach is depicted in Fig. 2,
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`reproduced below:
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`The function mapping discrete gain values to each discrete bias value is shown
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`in FIG. 4:
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`
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`Comparing the admitted prior art transmitter and bias/gain approach to the
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`alleged invention, the ’193 Patent admits (1) that CDMA transmitter designs existed
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`that arranged variable amplitude amplifiers in series with power amplifiers, (2) that
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`these series amplifiers were adjusted with pre-defined bias and gain values to
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`accommodate required transmit power, and (3) that controllers were known for
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`adjusting the pre-defined values. The alleged advancement of the ’193 Patent, then,
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`is simply that a larger number of bias values can be pre-defined to increase system
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`efficiency. As set forth below, this concept preexisted the ’193 Patent.
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`U.S. Patent No. 6,408,193
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`Summary of the Prosecution History of the ’193 Patent
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`B.
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`The ’193 Patent issued from U.S. Patent Application No. 09/436,502 (“the
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`’502 Application”), which was filed on November 9, 1999 and which claims priority
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`to Japanese Patent Application No. JP10-318689, filed on November 10, 1998 and
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`subsequently published as Japanese Laid-Open Patent Application No.
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`JP2000151317(A) (“the ’689 Application”). Id. at (30); Ex. 1003, Certified
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`Translation of Japanese Unexamined Patent Application Publication No.
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`JP2000151317(A) at (21), (11).
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`For purposes of this Petition, Petitioner applies November 10, 1998 as the
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`priority date for the Challenged Claims, but reserves the right to challenge this
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`priority claim in this or any other proceeding. For example, both prior art references
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`relied upon in the proposed ground below are either 102(a) or 102(e), assuming a
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`November 10, 1998 priority date. In the event that Patent Owner attempts to swear
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`behind either reference, Petitioner reserves the right to demonstrate the ’689
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`Application does not in fact support the Challenged Claims.
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`The independent claims presented in the ’502 Application were subject to a
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`single Office Action rejecting them as invalid under 35 U.S.C. § 103(a) as obvious
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`over U.S. Patent No. 5,129,098 to McGirr, et al. in view of U.S. Patent No. 5,732,334
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`to Miyake. Ex. 1002, File History of U.S. Patent 6,408,193 at p. 53. Responsive to
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`these rejections, Applicant explained that the prior art of record did not teach “a
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`cellular phone adapted for use in a CDMA system” and did not teach “stor[ing]
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`correlated bias and gain data, or a function defining a relation therebetween, in a
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`memory.” Id. at 101. Applicant amended both independent claims to reflect these
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`(and other) aspects of the disclosed invention. Id. at 104-107. A Notice of Allowance
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`issued on January 31, 2108 (id. at 118), and the ’193 Patent issued on June 18, 2002.
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`Ex. 1001, ’193 Patent at (45).
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`Each requirement for IPR of the ’193 Patent is satisfied under § 42.104.
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Petitioner certifies that the ’193 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the Challenged
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`Claims of the ’193 Patent. Specifically, Petitioner states: (1) Petitioner is not the
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`owner of the ’193 Patent; (2) Petitioner has not filed a civil action challenging the
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`validity of any claim of the ’193 Patent; and (3) this Petition is not filed one year or
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`more after Petitioner was served with a complaint alleging infringement of the ’193
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`Patent.
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`U.S. Patent No. 6,408,193
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`In view of the prior art, evidence, and claims mappings below, the Challenged
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`B.
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`Claims of the ’193 Patent are unpatentable and should be cancelled. 37 C.F.R.
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`§ 42.104(b)(1).
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`1.
`The Grounds for Challenge
`Based on the prior art references identified below, IPR of the Challenged
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`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
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`Proposed Statutory Rejections for the ’193 Patent
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`Claims 1, 6, and 7 are obvious under § 103(a) over U.S. Patent No.
`6,236,863 to Waldroup et al. (“Waldroup”) in view of Japanese
`Unexamined Patent Application Publication No. JP H10-285059 to
`Nakayama (“Nakayama”).
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`Reference
`Exhibit No.
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`1004, 1005
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`Section IV identifies where each element of the Challenged Claims is found
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`in the prior art references. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the
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`supporting evidence relied upon to support the challenges are provided above and
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`the relevance of the evidence to the challenges raised are provided in § IV. 37 C.F.R.
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`§ 42.104(b)(5). Exs. 1001–1008 are also attached.
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`C. The Board’s Discretion Under § 314(a)
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`1.
`Application of the General Plastic Factors
`An IPR was previously filed by another, unrelated petitioner challenging
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`claims 1-7 of the ’193 Patent. ZTE Corp., et al. v. Maxell, Ltd., IPR2018-00237,
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`Paper 2 (“the ’237 IPR”). The Board declined to institute the IPR. Id. at Paper 10 at
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`2. Application of the General Plastic factors weighs in favor of institution of the
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`present IPR. General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
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`01357, slip op. at 16 (PTAB Sept. 6, 2017) (Paper 19) (precedential as to § II.B.4.i).
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`Factor 1: Apple has not previously filed a petition against the ’193 Patent.
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`Maxell asserted the ’193 Patent against ZTE in a lawsuit filed November 18, 2016.
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`(’237 IPR at Paper 2 at 4). In a separate lawsuit filed 28 months later on March 15,
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`2019, Maxell asserted the ’193 Patent against Petitioner Apple Inc. (Ex. 1009,
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`Maxell v. Apple, Complaint for Patent Infringement). Other than both ZTE and
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`Apple being defendants in different litigation matters involving the ’193 Patent,
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`there is no relationship between ZTE and Apple. Therefore, factor 1 favors
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`institution.
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`Factor 2: The references forming the basis for the grounds of unpatentability
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`in the present IPR were located by Apple’s counsel since the March 15, 2019, filing
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`of the Maxell v. Apple litigation. Therefore, factor 2 favors institution.
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`Factor 3: The patent owner preliminary response in the ’237 IPR had been
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`filed at the time of filing the present IPR. However, because the present IPR applies
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`completely different art than used in the ’237 IPR, the preliminary response is
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`irrelevant to the present IPR, and Apple does not gain any tactical advantage.
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`Therefore, factor 3 favors institution.
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`Factor 4: Apple and its counsel commenced prior-art searches no earlier than
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`approximately May 2019 and continued to perform prior art searching as late as
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`August/September 2019. The references applied in this IPR were located in the May-
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`September timeframe. Apple then immediately proceeded to prepare the present
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`IPR, which the Board can appreciate takes a certain amount of time to prepare. There
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`has been no delay between the time of locating the presently-applied references and
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`filing of this IPR. Therefore, factor 4 favors institution.
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`Factor 5: Apple was not sued by Maxell until March 15, 2019, approximately
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`28 months from filing of the ZTE litigation. With respect to the timing of filing of
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`this IPR from when Apple was sued, Apple has been diligently engaged in prior art
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`searching and preparation of this IPR. Therefore, factor 5 favors institution.
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`Factors 6 and 7: The Board’s finite resources will not be adversely affected
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`by this IPR, as the present IPR applies different art than previously considered by
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`the Board in the ’237 IPR. Therefore, the Board will not be repeating work or
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`engaging in duplicative efforts. Regarding factor 7, the ’237 IPR was not instituted.
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`The present IPR therefore does not affect the statutory one-year period for a final
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`determination. These factors also favor institution.
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`Because all General Plastic factors favor institution, Apple respectfully
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`requests the Board not exercise its discretion under § 314(a) to deny this Petition.
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`U.S. Patent No. 6,408,193
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`2.
`Apple Has Not Delayed in Filing This Petition
`While there is a parallel district court proceeding involving the ’193 Patent,
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`no preliminary injunction motion has been filed, the district court has not been
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`presented with or invested any time in the analysis of prior art invalidity issues, and
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`no Markman hearing has been held. (Ex. 1010, Maxell v. Apple Docket Control
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`Order). Apple also timely filed this Petition within the statutorily prescribed 1-year
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`window. Declining to institute IPR here in view of the co-pending district court
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`litigation would essentially render nugatory the 1-year filing period of § 315(b).
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`Notably, § 315(b) originally contained only a 6-month filing window, which was
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`amended to 1-year prior to passage of the America Invents Act to “afford defendants
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`a reasonable opportunity to identify and understand the patent claims that are
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`relevant to the litigation” before having to file an IPR petition. 157 Cong. Rec. S5429
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`(daily ed. Sept. 8, 2011) (statement of Sen. Kyl). Moreover, making the status of the
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`district court litigation a threshold consideration before institution also ignores the
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`common scenario, contemplated by Congress, of obtaining a district court stay based
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`on institution. Cf. 157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Chuck Schumer); H. Rep. No. 112-98, Part I, at 48 (2011). For these reasons, and
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`those explained below, the instant Petition should be instituted.
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`U.S. Patent No. 6,408,193
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`D. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
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`In this proceeding, claims are interpreted under the same standard applied by
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`Article III courts (i.e., the Phillips standard). See 37 C.F.R. § 42.100(b); see also 83
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`Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
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`Cir. 2005) (en banc). Under this standard, words in a claim are given their plain
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`meaning, which is the meaning understood by a person of ordinary skill in the art in
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`view of the patent and file history. Phillips, 415 F.3d 1303, 1312-13. Dictionaries or
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`other extrinsic sources may assist in determining the plain and ordinary meaning but
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`cannot override a meaning that is unambiguous from the intrinsic evidence. Id.
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`Unless addressed below, Petitioner proposes all claim terms should be accorded their
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`plain and ordinary meaning for purposes of this proceeding.
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`1.
`“a cellular telephone adapted to be used in a CDMA system”
`Independent claims 1 and 7 contain the preamble, “[a] cellular telephone
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`adapted to be used in a CDMA system.” In the context of the ’193 Patent, these
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`preambles should be limiting. “[C]lear reliance on the preamble during prosecution
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`to distinguish the claimed invention from the prior art transforms the preamble into
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`a claim limitation because such reliance indicates use of the preamble to define, in
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`part, the claimed invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
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`F.3d 801, 808 (Fed. Cir. 2002); see also Arctic Cat Inc. v. GEP Power Products,
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`Inc., No. 18-1520, slip op. at 16 (Fed. Cir. 2019) (affirming this rule). Here,
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`U.S. Patent No. 6,408,193
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`Applicant amended the preambles during prosecution to overcome a reference
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`teaching a “radio telephone” Ex. 1002, File History of U.S. Patent 6,408,193 (“’193
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`Patent File History”) at pp. 104, 106. Additionally, “[w]hen a patent ... describes
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`the features of the ‘present invention’ as a whole, this description limits the scope of
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`the invention.” GPNE CORP. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016)
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`(quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed.
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`Cir. 2007)). The Applicant did just this during prosecution, characterizing the
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`“present invention” as “relate[ed] to CDMA cellular phones using the IS-95
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`standard.” Ex. 1002, ’193 Patent File History at 101.
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`Finally, Patent Owner agreed in prior litigation involving the ’193 Patent that
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`the preamble should be limiting. Maxell Ltd. v. Huawei Device USA Inc. et. al., 297
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`F.Supp.3d 668, 687 (E.D. Tex. 2018). Patent Owner has also agreed in litigation
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`involving Petitioner (cited below in section §V.A.) that the preamble is limiting. Ex.
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`1008, Joint Claim Construction Statement at p. 3.
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`2.
`“variable amplitude amplifier”
`Claims 1, 6, and 7 contain the term “variable amplitude amplifier.” Because
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`the term “variable amplitude amplifier” is not a commonly used term in the art, a
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`clarifying construction is helpful. Ex. 1006, Redman-White Declaration at ¶43. For
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`the purposes of the current litigation involving Petitioner (disclosed below in §
`
`V.A.), Petitioner and Patent Owner have agreed to apply the construction from
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`Maxell v. Huawei: “an amplifier whose output amplitude may be varied and that
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`provides a variable gain in response to a control signal.” Ex. 1008, Joint Claim
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`Construction Statement at p. 3 (adopting construction set forth in Maxell, 297 F.
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`Supp.3d at 736).
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`For continuity, given the party agreement, and in light of evidence that a
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`POSITA would have understood this phrase to require clarification, “variable
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`amplitude amplifier” should be construed as “an amplifier whose output amplitude
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`may be varied and that provides a variable gain in response to a control signal.”
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`3.
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`“a function defining a relation between bias data and gain data
`stored in said memory”
`Independent claim 7 includes the term “a function defining a relation between
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`bias data and gain data stored in said memory.” Patent Owner agreed to construe this
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`term in Maxell v. Huawei as “a relationship between bias data and gain data such
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`that each gain data value has a corresponding bias data value.” Maxell, 297 F. Supp.
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`3d at 684.
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`For the purposes of the litigation involving Petitioner (disclosed below in §
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`V.A.), in order “give[] meaning to all the terms of the claim” (SimpleAir v. Sony
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`Ericsson Mobile Commc’ns AB, 820 F.3d 419, 429 (Fed. Cir. 2016) (quoting Merck
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`& Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005))), Petitioner
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`and Patent Owner agreed that this claim limitation should include “a relationship
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`between bias data and gain data stored in memory such that each gain data value has
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`U.S. Patent No. 6,408,193
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`a corresponding bias data value.” Ex. 1008, Joint Claim Construction Statement at
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`3 (emphasis added). Dr. Redman-White also opines that, upon reviewing the ’193
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`Patent, he would understand the function to be stored in memory. Ex. 1006, Redman-
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`White Declaration at ¶¶44-45.
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`For continuity, given the party agreement, and in light of evidence of a
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`POSITA’s understanding of the term, the claim term “a function defining a relation
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`between bias data and gain data stored in said memory” should be construed as “a
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`relationship between bias data and gain data stored in said memory such that each
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`gain data value has a corresponding bias data value.”
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`4.
`“voice signal code” / “voice code signal”
`Independent claims 1 and 7 both recite “voice signal code” and “[input] voice
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`code signal.” These terms should be construed in the same way (modified as
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`appropriate by “input” where it appears).
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`Although an applicant’s use of different claim terms can be interpreted to
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`mean those terms were intended to have distinct meanings, there is no mandate that
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`such terms must be ascribed distinct meanings. See Innova/Pure Water, Inc. v. Safari
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`Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (noting “when an
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`applicant uses different terms in a claim it is permissible to infer that he intended his
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`choice of different terms to reflect a differentiation in the meaning of those terms”)
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`(emphasis added). Here, however, the specification uses “voice signal code” and
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`“[input] voice code signal” interchangeably, and they should accordingly be ascribed
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`the same meaning. See, e.g. Ex. 1001, ’193 Patent at 4:56-65 (noting the
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`“demodulated signal is supplied to the DEM 160 and converted into a voice signal
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`code” and, continuing to describe the same processing path and changing the word
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`order of this phrase, stating that the “voice code signal is supplied to the
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`encoder/decoder”); Ex. 1006, Redman-White Declaration at ¶46 (concluding that a
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`POSITA would have understood
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`the ’193 Patent
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`to use
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`these phrases
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`interchangeably). The ’193 patent does not draw any distinction between these
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`claims terms and therefore, as in Innova, “we must conclude that this is simply a
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`case where the patentee used different words to express similar concepts, even
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`though it may be confusing drafting practice.”
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`Additionally, for the purposes of the litigation disclosed below in § V.A.,
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`Petitioner and Patent Owner have agreed that these claim terms should be given the
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`same meaning. Ex. 1008, Joint Claim Construction Statement, at 3 For continuity,
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`given the party agreement, and in light of evidence that a POSITA would have
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`understood this phrase to require clarification, the terms “voice signal code” and
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`“voice code signal” should be construed to have the same meaning.
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`E.
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`Level of Skill of a Person Having Ordinary Skill in the Art
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`A person of ordinary skill in the art at the time of the ’193 Patent would have
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`been a person having at least a master’s degree in electrical engineering, or in a
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`closely related field, with at least 2-4 years of industry experience in designing or
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`developing radio-frequency integrated circuits. Additional industry experience or
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`technical training may offset less formal education, while advanced degrees or
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`additional formal education may offset lesser levels of industry experience. See Ex.
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`1006, Redman-White Declaration at ¶30.
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`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Waldroup in View of Nakayama Renders Claims 1, 6, and 7 Obvious
`Waldroup was filed on March 17, 1998 and issued on May 22, 2001. Ex. 1004,
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`Waldroup at (22), (45). Accordingly, Waldroup qualifies as prior art under 35 U.S.C.
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`§ 102(e) (pre-AIA).2 Waldroup was not cited during the prosecution of the ’193
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`Patent.
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`Nakayama was published on October 23, 1998 and therefore qualifies as prior
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`art with regard to the ’193 Patent under 35 U.S.C. § 102(a) (pre-AIA). Ex. 1005,
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`Nakayama at (43). Should the claims of the ’193 Patent not be entitled to the priority
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`date of the Japanese priority document, Nakayama is additionally prior art under 35
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`U.S.C. § 102(b) (pre-AIA). Nakayama was not cited during the prosecution of the
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`’193 Patent.
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`2 In the event that Patent Owner attempts to swear behind Waldroup’s March 17, 1998
`102(e) date, Petitioner reserves the right to demonstrate that Waldroup should be
`considered prior art as of its provisional filing date of March 31, 1997.
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`1.
`The Proposed Combination of Waldroup and Nakayama
`Like the ’193 Patent, Waldroup is concerned with output power control in
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`CDMA telephones. Compare Ex. 1004, Waldroup at 1:13-16 (“The present
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`invention relates generally to the field of radio communication, and more
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`specifically, to the field of output power control in code division multiple access
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`(CDMA) wireless telephones…”) with Ex. 1001, ’193 Patent at 1:5-17 (“The
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`present invention generally relates to a cellular telephone, and more specifically,
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`relates to a cellular telephone used in Code Division Multiple Access (CDMA)
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`System. […] In this example [of a CDMA cellular telephone system], a cellular
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`telephone has transmit power control circuitries […] so as to control and adjust a
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`power level of transmission power.”).
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`Also like the ’193 Patent, Waldroup recognizes the relationship between its
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`disclosed technology and the IS-95 standard. Compare Ex. 1004, Waldroup at 1:24-
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`27 (“Standard specifications relevant to the present invention include TIA/EIA/IS-
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`95-A Mobile Station-Base Station Compatibility Standard for Dual-Mode Wideband
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`Spread Spectrum Cellular System…”) with Ex. 1001, ’193 Patent at 1:24-25 (“The
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`typical standard for the CDMA cellular telephone system enacted in the U.S. is TIA
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`IS-95 (hereinafter IS-95).”).
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`Finally, Waldroup is directed to solving the same fundamental problem as the
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`’193 Patent—minimizing transmission power in order to maximize battery life of
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`the mobile terminal. Compare Ex. 1004, Waldroup at 1:32-46 (“Precise mobile
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`station power control is a very important requirement for proper and efficient
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`operation of a CDMA wireless telephone system. […] Thus, in addition to
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`preserving battery reserves, the use of as little mobile station output power as is
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`necessary to maintain a strong communication link at all times is a requirement to
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`ensure proper operation of a CDMA cellular telephone system.”) with Ex. 1001,
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`’193 Patent at 3:21-27 (“As explained above, […] a cellular telephone capable of
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`reducing current consumption is available. In addition, small current consumption
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`enables prolongation of battery life, or use of small-size battery, by which a cellular
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`phone having a long service life or that having a small size is available.”).
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`Accordingly, Waldroup is analogous art to and is within the field of endeavor of the
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`’193 Patent. Ex. 1006, Redman-White Declaration at ¶¶50-51.
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`As described below, Waldroup discloses all of the conventional components
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`of a CDMA telephone that are present in the Challenged Claims, including
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`controlling the gain condition of an adjustable amplifier. But Waldroup does not
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`teach controlling the bias condition of the power amplifier and the gain of the
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`adjustable amplifier such that there is a discrete bias value that corresponds to each
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`discrete gain value. Redman-White Declaration at ¶56 (confirming that Waldroup
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`uses a fixed-bias power amplifier). It would have been obvious to modify Waldroup
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`to do so, however—adjusting the bias condition of a power amplifier based on a
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`U.S. Patent No. 6,408,193
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`change in the transmit gain was well understood before the ’193 Patent. See Ex.
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`1006, Redman-White Declaration at ¶¶34, 38 (establishing that use of a controller to
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`jointly control the gain and bias of an amplifier chain predates the ’193 Patent by
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`more than a decade and that the ’193 Patent concedes such functionality was known
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`in the prior art). One such example is Nakayama, which teaches a “level control
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`circuit capable of being suitably used in a communicator” that employs a controller
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`to adjust the bias of the power amplifier responsive to adjusting the transmission
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`power. Ex. 1005, Nakayama at ¶¶ [0010], [0048]. Nakayama further teaches that a
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`discrete gain value is used for each discrete bias values. Id. at ¶ [0029]. Nakayama
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`accomplishes this control with the circuity illustrated in Fig. 1 and annotated below
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`to denote the controller (red), memory for storing bias and gain values (orange),
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`controlled variable attenuator (which is equivalent to the explicitly discussed
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`alternative of a variable gain amplifier; id. at ¶ [0056]; see also Redman-White
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`Declaration at ¶71) (blue), and controller power amplifier (green):3
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`3 All colored box annotations added throughout.
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