Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 31
`Entered: January 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC, LG ELECTRONICS, INC.,
`LG ELECTRONICS, U.S.A., INC., LG ELECTRONICS MOBILECOMM
`U.S.A., INC., SAMSUNG ELECTRONICS CO., LTD, SAMSUNG
`ELECTRONICS AMERICA, INC., and HUAWEI DEVICE USA, INC.
`Petitioner,
`
`v.
`
`RYUJIN FUJINOMAKI,
`Patent Owner.
`____________
`
`Case IPR2016-015221
`Patent 6,151,493
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`DANIEL N. FISHMAN, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Case IPR2017-01017 has been joined with this proceeding.
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`I. INTRODUCTION
`
`A. Background
`
`Google LLC. 2, LG Electronics U.S.A., Inc., LG Electronics
`
`Mobilecomm U.S.A., Inc., and LG Electronics, Inc. (collectively,
`
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes
`
`review of claims 1–6 and 8–10 of U.S. Patent No. 6,151,493 (Ex. 1001, “the
`
`’493 patent”). Ryujin Fujinomaki (“Patent Owner”) filed a Preliminary
`
`Response (Paper 7, “Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314, in our Institution Decision (Paper 8,
`
`“Dec.”), we instituted this proceeding as to claims 1–6 and 8–10.
`
`On March 6, 2017, Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., and Huawei Device USA Inc. filed a petition
`
`challenging claims 1–6 and 8–10 of the ’493 patent, along with a Motion for
`
`Joinder with this proceeding. IPR2017-01017, Papers 3–4. On May 26,
`
`2017, we instituted a trial in IPR2017-01017 and joined it to this proceeding.
`
`Paper 19.
`
`Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
`
`Resp.”), and Petitioner filed a Reply to the Patent Owner’s Response
`
`(Paper 21, “Reply”).
`
`An oral argument was held on November 28, 2017 (Paper 30, “Tr.”).
`
`
`2 Google Inc. originally was named as Petitioner. Petitioner subsequently
`filed updated Mandatory Notices informing the Board that Google Inc.
`converted from a corporation to a limited liability company and changed its
`name to Google LLC. Paper 26.
`
`2
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`Petitioner relies on the Declarations of Schuyler Quackenbush, Ph.D.
`
`(Ex. 1003, “Quackenbush Decl.”; Ex. 1027, “Quackenbush Reply Decl.”3).
`
`Patent Owner relies on the Declaration of Christopher Jones, Ph.D.
`
`(Ex. 2003, “Jones Decl.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`
`written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–
`
`6 and 8–10. Based on the record before us, Petitioner has proved, by a
`
`preponderance of the evidence, that claims 1–6 and 8–10 are unpatentable.
`
`
`
`B. Related Matters
`
`The parties indicate that the ’493 patent has been asserted in
`
`Fujinomaki v. Google Inc., 3:16-cv- 03137-JSC (N.D. Cal.) (transferred
`
`from 2:15-cv-1381-RJG-RSP (E.D. Tex.)). Pet. 4; Paper 5, 2.
`
`
`
`C. Asserted Prior Art References
`
`Petitioner relies on the following prior art:
`
`Ex. 1004 (“Yamamoto”)
`
`US 5,327,482
`
`July 5, 1994
`
`Ex. 1005 (“Mardirossian”)
`
`US 5,796,338
`
`Aug. 18, 1998
`
`
`3 At the oral argument, Patent Owner argued that the Reply and the
`Quackenbush Reply Declaration improperly included new argument and
`evidence that should have been presented in the Petition, although Patent
`Owner acknowledged that it did not attempt to depose Dr. Quackenbush on
`his Reply Declaration or otherwise object to his testimony prior to the
`hearing. Tr. 40:24–42:2, 42:23–44:2. For each of our citations to the Reply
`and the Quackenbush Reply Declaration, below, we determine that the
`argument and evidence is properly responsive to the Patent Owner’s
`Response. See 37 C.F.R. § 42.23(b) (“A reply may only respond to
`arguments raised in the corresponding opposition, patent owner preliminary
`response, or patent owner response.”).
`
`3
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`Ex. 1006 (“Takeuchi”)
`
`Ex. 1007 (“Olah”)
`
`
`
`
`
`US 5,055,701
`
`Oct. 8, 1991
`
`US 5,396,218
`
`Mar. 7, 1995
`
`
`
`D. The Instituted Grounds
`
`We instituted a trial on the following grounds of unpatentability
`
`(Dec. 36):
`
`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`Yamamoto and Mardirossian
`
`§ 103(a)
`
`1–3, and 8
`
`Yamamoto, Mardirossian, and
`the knowledge of a person of
`ordinary skill in the art
`Yamamoto, Mardirossian, and
`Takeuchi
`Yamamoto, Mardirossian, and
`Olah
`
`
`E. The ’493 Patent
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`10
`
`4–6
`
`9
`
`The ’493 patent describes a use prohibition system that disables a
`
`device, such as a cellular phone, if the phone is separated from a user by
`
`more than a predetermined distance, and at the same time gives a warning to
`
`the user. Ex. 1001, Abstract. Figure 1 of the ’493 patent, reproduced below,
`
`illustrates an example:
`
`4
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`Figure 1 is a schematic view of a use prohibition system for a cellular phone.
`
`Id. at 3:20–21, 3:44–45.
`
`
`
`5
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`The system includes card-shaped identification signal transmission
`
`unit 10 and call prohibition mode canceling unit 20 mounted in or attached
`
`to cellphone 30. Ex. 1001, 3:45–50. A user keeps identification signal
`
`transmission unit 10 on his or her person, for example in a pocket, such that
`
`it is within the predetermined distance from cellphone 30. Id. at 3:53–56.
`
`Identification signal transmission unit 10 transmits an identification
`
`(ID) signal with a predetermined code signal to canceling unit 20 and
`
`receives a confirmation signal returned from canceling unit 20. Id. at 4:36–
`
`42. ID signal transmission unit 10 determines whether the confirmation
`
`signal coincides with the ID signal and determines whether the confirmation
`
`signal’s strength exceeds a predetermined threshold. Id. at 4:52–5:13. If the
`
`confirmation signal’s strength is below the threshold, ID signal transmission
`
`unit 10 generates an alarm, warning the user that cellphone 30 is outside the
`
`predetermined distance from ID signal transmission unit 10. Id. at 5:13–15.
`
`Similarly, canceling unit 20 receives the ID signal from ID signal
`
`transmission unit 10 and returns the confirmation signal upon confirmation
`
`of reception of the ID signal. Id. at 5:19–21, 5:36–42, 6:58–62. If the
`
`strength of the ID signal received by canceling unit 20 is above a
`
`predetermined threshold, canceling unit 20 produces a use prohibition
`
`canceling signal to cellphone 30, keeping cellphone 30 in a usable mode.
`
`Id. at 8:50–65. If the strength of ID signal is less than the threshold (i.e.,
`
`cellphone 30 and canceling unit 20 are more than a predetermined distance
`
`from ID signal transmission unit 10), canceling unit 20 stops producing the
`
`use prohibition canceling signal to cellphone 30 and cellphone 30 is
`
`disabled. Id. at 9:8–16.
`
`6
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`Claim 1, reproduced below, is illustrative of the claimed subject
`
`matter:
`
`A device for prohibiting unauthorized use of an
`1.
`electronic device, the device comprising:
`
`an identification code transmission unit comprising:
`
`a first transmitter for transmitting an identification
`code signal at a constant level;
`
`a first receiver for receiving a confirmation signal;
`
`an alarm mechanism being activated when the
`confirmation signal received by said first
`receiver is below a predetermined value;
`
`a use prohibition canceling unit comprising:
`
`a
`
`transmitting
`for
`transmitter
`second
`confirmation signal at a constant level;
`
`the
`
`a second receiver for receiving the identification
`code signal; and
`
`said use prohibition canceling unit maintaining the
`electronic device in an operational state while
`the identification code signal received by said
`second
`receiver
`is at or above
`the
`predetermined value,
`and when
`the
`identification code signal
`is below the
`predetermined value, said use prohibition
`canceling unit at least partially disabling the
`electronic device
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`7
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`136 S. Ct. 2131, 2144–45 (2016). Nevertheless, the ’493 patent is expired.
`
`“[T]he Board’s review of the claims of an expired patent is similar to that of
`
`a district court’s review.” In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012) (citations omitted). District courts construe claims in accordance with
`
`their ordinary and customary meanings, as would be understood by a person
`
`of ordinary skill in the art, in the context of the specification. See Phillips v.
`
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`In the Institution Decision, we determined that “[a] device,” and “the
`
`device,” as recited in claim 1, refers to a system that includes (1) an
`
`identification code transmission unit and (2) a use prohibition unit coupled
`
`to “an electronic device” (and “the electronic device”) and remote from the
`
`identification code transmission unit. Dec. 8–9. The parties agree with this
`
`determination. PO Resp. 13; Reply 5.4
`
`The parties dispute the meaning of “identification code signal” and
`
`“confirmation signal.” PO Resp. 11–13; Reply 2–5. We address the
`
`constructions of those terms below.
`
`
`
`1. “identification code signal”
`
`Claim 1 recites “a first transmitter for transmitting an identification
`
`code signal at a constant level” and “a second receiver for receiving the
`
`identification code signal.” Patent Owner contends that:
`
`
`4 In the Institution Decision, we noted “[t]he ’493 patent likely will expire
`during the pendency of this proceeding,” but “neither party yet has requested
`a district court-type claim construction approach.” Dec. 8. Our
`determination in the Institution Decision regarding “[a] device,” and “the
`device,” recited in claim 1 (id. at 8–9) is the same using a district court-type
`approach.
`
`8
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`the term identification code signal should be construed as “a
`signal that contains information representing [] 1) the phone
`number of the electronic device, 2) an ID number or signal
`indicative of other information about the owner of the electronic
`device, or 3) any number or code peculiar to the electronic
`device, and that is transmitted regularly and periodically.”
`
`PO Resp. 12. Patent Owner’s proposed construction has two aspects. First,
`
`the signal contains information representing a phone number, ID number, or
`
`code peculiar to the device. Second, the signal is transmitted “regularly and
`
`periodically.”
`
`As to the first aspect, Patent Owner does not dispute that the signal in
`
`Yamamoto identified by Petitioner as the identification code signal satisfies
`
`at least one of the three types of numbers or codes in Patent Owner’s
`
`proposed construction. Tr. 27:5–9 (“Is it your position that Yamamoto does
`
`or does not disclose at least one of those three? Mr. Cecil: Some of their
`
`signals do contain those elements. The ones mentioned in columns 6 and 7
`
`do . . . .”), 35:15–16 (“There is an ID that is included on those particular
`
`control signals.”). Rather, Patent Owner’s patentability arguments turn on
`
`the second aspect, whether the identification code signal must be transmitted
`
`regularly and periodically.
`
`At the oral argument, Patent Owner clarified that “regular” and
`
`“periodically” mean different things, with “regular” meaning, essentially,
`
`transmitted all the time, as distinguished from the identified signal in
`
`Yamamoto, which is transmitted at call setup and during a call, but not when
`
`the phone is idle. Tr. 29:21–22 (“Regular means that it’s sent consistently,
`
`so it’s more than just being periodic. It has to be consistently sent.”).
`
`“Periodically,” then, means transmitted at predetermined intervals. PO
`
`9
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`Resp. 12; Tr. 29:16–17 (“Periodic means sent at specific time intervals. It
`
`could also be the term intermittent.”).
`
`In support of its contention that the signal must be transmitted
`
`regularly, Patent Owner points to the description in the specification of an
`
`identification code signal that Patent Owner contends is always transmitted.
`
`PO Resp. 12 (citing Ex. 1001, 5:30–42). Here, the ’493 patent states that
`
`power is always supplied to parts of canceling unit 20 because:
`
`in order for the canceling unit 20 to be able to always receive the
`ID signal from the transmission unit 10 and return, upon
`confirmation of reception of the ID signal, the confirmation
`signal at predetermined intervals in response to the command
`from the transmit-receive control timer 23a, the canceling unit 20
`has to be kept turned on.
`
`Ex. 1001, 5:30–42. As to its contention that the signal must be transmitted
`
`periodically, Patent Owner cites description in the specification of an
`
`identification code signal transmitted intermittently, rather than
`
`continuously. PO Resp. 12 (citing Ex. 1001, 2:58–59, 5:58–62). Here, the
`
`’493 patent states that “[t]he ID signal, made up of the M-sequence signal
`
`and the phone number signal, is transmitted, not continuously, but
`
`intermittently at intervals S (e.g. 2000 ms) to save electric power and, thus,
`
`to prolong the interval between recharges of the battery.” Ex. 1001, 5:58–
`
`62. The testimony of Dr. Jones essentially repeats these arguments.
`
`Ex. 2003 ¶ 59. Patent Owner argues that “the identification code signal and
`
`the confirmation signal cannot be naked signals of themselves—to
`
`read the terms as mere signals would read out the words ‘identification code’
`
`and ‘confirmation’ from the claims.” PO Resp. 12–13.
`
`Petitioner argues that “identification code signal” need not be
`
`construed; rather, it should take its plain and ordinary meaning. Reply 2. In
`
`10
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`the alternative, Petitioner contends that the term means “a signal that
`
`includes a predetermined code.” Id. Petitioner contends that Patent Owner’s
`
`construction improperly reads extraneous limitations into the claims from
`
`permissive examples in the specification. Id. at 2–3. Rather, Petitioner
`
`would have us read “identification code signal” in light of the specification’s
`
`description that “a signal containing a predetermined code signal is used as
`
`the ID signal.” Id. at 2 (quoting Ex. 1001, 5:50–51 (emphasis Petitioner’s)).
`
`Petitioner contends that the patent’s description of particular types of
`
`predetermined codes (phone number, ID number, etc.) are non-limiting
`
`examples. Id. at 2–3. As to a requirement that the signal be transmitted
`
`regularly and periodically, Petitioner argues that such a requirement is
`
`introduced in dependent claims 3, 6, and 8, giving rise to a presumption,
`
`under the doctrine of claim differentiation, that these limitations are not
`
`required in independent claim 1. Id. at 3–4.
`
`The Federal Circuit states:
`
`The claims themselves provide substantial guidance as to the
`meaning of particular claim terms. In addition, the person of
`ordinary skill in the art is deemed to read the claim term not only
`in the context of the particular claim in which the disputed term
`appears, but in the context of the entire patent, including the
`specification. But while we read claims in view of the
`specification, of which they are a part, we do not read limitations
`from the embodiments in the specification into the claims.
`
`MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1310 (Fed.
`
`Cir. 2017) (internal citations and quotation marks omitted). In this case,
`
`“identification code signal” has an ordinary meaning that does not require a
`
`code to take a particular numerical form or to be broadcast all the time or at
`
`predetermined intervals. Ex. 1027 ¶ 13. Rather, the claim language itself
`
`includes no recitation of particular types of codes, intermittent transmission,
`
`11
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`or transmission all the time. For example, “regular and periodic” does not
`
`appear in the claims.
`
`In the related District Court litigation, Patent Owner agreed that
`
`“identification code signal” should be given its plain and ordinary meaning.
`
`Specifically, Patent Owner proposed construing “transmitting an
`
`identification code signal at a constant level” to mean “[o]rdinary meaning;
`
`this term, as a whole, does not require construction,” and proposed a
`
`construction only for the portion of the term reciting “constant level.”
`
`Ex. 1020 (Joint Claim Construction and Prehearing Statement), Ex. A
`
`(Disputed Claim Constructions for the ’493 Patent) at 2. Thus, in District
`
`Court, Patent Owner proposed a construction substantially the same as
`
`Petitioner proposes in this proceeding. In the Preliminary Response, Patent
`
`Owner stated that “Patent Owner believes that its litigation constructions are
`
`correct.” Prelim. Resp. 5. Patent Owner does not explain sufficiently why it
`
`now disagrees with the construction it proposed to the District Court.
`
`Rather, Patent Owner argues that “we ended up with additional elements
`
`because we looked harder at the patents, thanks to this proceeding so, you
`
`know, we refined our definition.” Tr. 33:25–27.
`
`Claims that depend from claim 1 reinforce the view that identification
`
`code signal does not carry with it the requirements Patent Owner now would
`
`add. For example, claim 3 recites that:
`
`said identification code transmission unit further comprises a
`first
`transmit-receive control
`timer for
`transmitting
`the
`identification code signal and receiving the confirmation code
`signal as intermittent signals and said use prohibition canceling
`unit further comprises a second transmit-receive control timer for
`transmitting the confirmation code signal and receiving the
`identification code signal as intermittent signals.
`
`12
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`Here, claim 3 adds structure for the express purpose of transmitting and
`
`receiving intermittent signals. This implies that an identification code
`
`signal, in claim 1, is not necessarily intermittent.
`
`We recognize that the specification describes examples of intermittent
`
`identification code signals that include certain types of codes and are
`
`transmitted whenever canceling unit 20 is on. We agree with Petitioner,
`
`however, that the examples cited by Patent Owner are just that—examples.
`
`Specifically, in the described example, power is always supplied to portions
`
`of canceling unit 20 because, in that embodiment, canceling unit 20 always
`
`receives an ID signal and returns a confirmation signal. Ex. 1001, 5:30–42.
`
`Patent Owner, however, does not point to description requiring that
`
`canceling unit 20 always receive and transmit signals. The patent’s
`
`description of intermittent signals, likewise, is presented as an example,
`
`rather than a requirement. Id. at 5:58–62. We agree with Petitioner that an
`
`identification code signal includes a predetermined code. However, as to the
`
`three specific types of predetermined numbers or codes in Patent Owner’s
`
`proposal, we agree with Petitioner that they are described as examples rather
`
`than requirements. Id. at 5:63–68 (“The M-sequence signal may be a C/A
`
`code, P code or linear FM signal. The phone number as the code signal may
`
`be any other ID number or signal indicative of other information about the
`
`owner or person in charge in the case of devices other than cellphones.”),
`
`6:11–13 (“In the embodiment, the code signal represents the phone number
`
`but may represent any other number or code peculiar to the particular
`
`phone.”). Adding these examples to identification code signal, as recited in
`
`claim 1, would be importing limitations from the specification into the
`
`claims improperly.
`
`13
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`In sum, the plain and ordinary meaning of “identification code
`
`signal,” in light of the specification, is “a signal that includes a
`
`predetermined code.” We decline to add the remaining language proposed
`
`by Patent Owner because to do so would be to import limitations from the
`
`specification into the claims.
`
`
`
`2. “confirmation signal”
`
`Claim 1 recites “a first receiver for receiving a confirmation signal”
`
`and “a second transmitter for transmitting the confirmation signal at a
`
`constant level.” Patent Owner contends that
`
`[t]he term confirmation signal should be construed to mean “a
`signal that contains information representing [] 1) the phone
`number of the electronic device, 2) an ID number or signal
`indicative of other information about the owner of the electronic
`device, or 3) any number or code peculiar to the electronic
`device, and that is transmitted regularly and periodically.”
`
`PO Resp. 12. Patent Owner argues “identification code signal” and
`
`“confirmation signal” together, proposing essentially the same construction
`
`for each and citing to the same evidence. Id. at 12–13. Patent Owner points
`
`to description in the specification that the identification codes and
`
`confirmation signals can include the same information. Id. at 12 (citing
`
`Ex. 1001, 6:16–20); see also Ex. 1001, 6:60–62 (“[T]he canceling unit 20
`
`recognizes its identity and returns the ID signal to the unit 10 as a
`
`confirmation signal.”). In the related district court litigation, Patent Owner
`
`proposed construing “confirmation signal” to include the three types of
`
`numbers or codes it proposes now, but, contrary to its construction here, did
`
`not advocate for a construction that includes “transmitted regularly and
`
`periodically.” Ex. 1020, Ex. A, at 2.
`
`14
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`

`

`IPR2016-01522
`Patent 6,151,493
`
`Petitioner argues that “confirmation signal” needs no construction but
`
`that if construed, it should mean “a signal returned in response to the
`
`identification signal.” Reply 4 (quoting Ex. 1001, Abstract (“[T]he
`
`canceling unit receives an ID code signal from the transmission unit. . . .
`
`The canceling unit returns a confirmation signal.”), 4:36–42 (“a
`
`confirmation signal returned from the transmitter of the canceling unit 20”)
`
`(emphases Petitioner’s)). Otherwise, Petitioner reiterates its arguments that
`
`reading a confirmation signal to require particular types of numbers or
`
`codes, or regular and periodic transmission, would be to import limitations
`
`from the specification improperly. Id. at 4–5.
`
`For the reasons given above for “identification code signal,” we agree
`
`with Petitioner that we should not import from the specification
`
`requirements that a confirmation signal include particular numbers or codes,
`
`or that the signal must be regular and periodic.
`
`As to Petitioner’s argument that the ordinary meaning of confirmation
`
`signal, in light of the specification, is a signal that is returned in response to
`
`receipt of an identification signal, Patent Owner argues that this is not
`
`supported by the specification. Tr. 34:26–35:5. The specification describes
`
`the confirmation signal as confirming the receipt of the identification code
`
`signal. Ex. 1001, 6:17–21, 6:58–62. Patent Owner admits that “the
`
`confirmation signal does confirm the presence of the use prohibition
`
`canceling unit to the identification code transmission unit.” Tr. 34:21–23.
`
`However, Patent Owner argues that it does not describe sending the
`
`confirmation signal in response to the identification signal. Id. at 35:3–5.
`
`We need not reach that issue, however, to resolve the parties’ dispute. On
`
`15
`
`

`

`IPR2016-01522
`Patent 6,151,493
`
`the complete record, we construe “confirmation signal” to mean “a signal
`
`confirming receipt of the identification signal.”
`
`
`
`B. Asserted Grounds of Unpatentability
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are “such that the
`
`subject matter as a whole would have been obvious at the time the invention
`
`was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” We resolve the question of obviousness on the basis of
`
`underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`
`nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere
`
`Co., 383 U.S. 1, 17–18 (1966).
`
`In an obviousness analysis, some reason must be shown as to why a
`
`person of ordinary skill would have combined or modified the prior art to
`
`achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
`
`F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
`
`art may be found explicitly or implicitly in market forces; design incentives;
`
`the “interrelated teachings of multiple patents”; “any need or problem
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`known in the field of endeavor at the time of invention and addressed by the
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`patent”; and the background knowledge, creativity, and common sense of
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`the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
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`5 The record does not include arguments or evidence regarding objective
`indicia of nonobviousness.
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`Patent 6,151,493
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`F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 418–21 (2007)).
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`1. Level of Ordinary Skill
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`Petitioner contends that a person of ordinary skill in the art would
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`have had a bachelor’s degree in electrical engineering, computer
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`engineering, computer science, or a related field, and approximately two
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`years of professional experience with signal processing or wireless
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`communications, or, in the alternative, additional graduate education.
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`Pet. 12; Ex. 1003 ¶¶ 21–23. Patent Owner does not dispute Petitioner’s
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`contention. PO Resp. 13–14. We adopt Petitioner’s statement of the level
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`of skill in the art and find that this level of skill is reflected in the prior art of
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`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
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`2. Scope and Content of the Prior Art
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`a. Overview of Yamamoto
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`Yamamoto describes a public cordless telephone system. Ex. 1004,
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`Abstract. Figure 1 of Yamamoto, reproduced below, illustrates an example:
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`Figure 1 is a schematic diagram of a public cordless telephone system. Id. at
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`2:63–64.
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`Public telephone line 1 is connected to base unit 100, which includes
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`card reader 111 and antenna 101. Id. at 4:18–21. Branch unit 200, with
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`antenna 201, sits in charger 300, which is plugged into a commercial power
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`supply. Id. at 4:22–25. A user inserts a payment card into card reader 111,
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`picks up branch unit 200 from charger 300, and pushes a calling switch to
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`establish a radio link between base unit 100 and branch unit 200, after which
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`the user can place a telephone call. Id. at 4:26–37.
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`Base unit 100 receives a signal from branch unit 200, demodulates the
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`received signal, and collates an identification signal (“ID code”) determined
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`by a combination of base unit 100 and branch unit 200. Id. at 5:7–13.
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`18
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`Similarly, branch unit 200 receives a signal from base unit 100, demodulates
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`that received signal, and collates the ID code. Id. at 5:37–39. According to
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`Yamamoto,
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`Control signals to be so far transmitted and received between the
`base unit 100 and branch unit 200 are transmitted through the
`control channel. Each of the control signals is attached with an
`ID so that collation of this ID enables positive control of
`interconnection between the base unit 100 and branch unit 200.
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`Id. at 7:5–10. Yamamoto further describes that “signal transfer between the
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`base unit 100 and branch unit 200 is carried out based on the frame format
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`shown in FIG. 18.” Id. at 12:33–35. Figure 18 is reproduced below:
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`Figure 18 is an example frame structure of a digital transmission frame
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`format. Id. at 3:61–63. The frame structure shows synchronizing signal 21,
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`control signal 22, and digitized voice signal 23 transmitted at periodic
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`intervals. Id. at 12:35–37. “The control signal 22 contains various types of
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`control signals for setting of a radio link, charging data, battery charging
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`data, theft-proof data, etc.” Id. at 12:37–40.
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`Yamamoto also describes theft detection, or steal detection, circuitry.
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`Figure 19 of Yamamoto is reproduced below:
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`19
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`Figure 19 is a block diagram of a theft detecting structure of branch unit 200.
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`Id. at 3:64–66. Theft detector 54 (labeled “steal detector” in Figure 19)
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`receives signal 55, which is proportional to the intensity of the signal
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`received from base unit 100, and receives signals 56 and 57, which are
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`indicative of errors detected in the signal received from base unit 100. Id. at
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`12:50–62. Theft detector 54 generates a theft signal under certain
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`circumstances. Id. at 12:63–64. Specifically, when branch unit 200 is
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`moved far enough away from base unit 100, the received signal intensity
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`becomes weak, the error rate becomes high, and theft detector 54 generates
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`the theft signal based on one or more of signals 55, 56, and 57. Id. at 12:50–
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`64, 13:1–10. A controller of branch unit 200 receives the theft signal and
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`drives a loudspeaker or lights to issue an alarm. Id. at 13:11–20. If this
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`condition lasts long enough, the controller inhibits all transmission
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`operations of branch unit 200, and continues to inhibit transmission even if
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`the user returns to the predetermined service area. Id. at 13:24–30.
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`
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`b. Overview of Mardirossian
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`Mardirossian describes a system for reducing the risk of cellular
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`phone loss, misplacement, or theft. Ex. 1005, Abstract. Figure 2 of
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`Mardirossian, reproduced below, illustrates an example:
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`21
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`Figure 2 is a schematic/block diagram of a security system for preventing
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`the loss, misplacement, or theft of a cell phone. Id. at 2:60–62, 3:25–27.
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`The security system includes cell phone 3 and pager 29, both of which
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`include additional security transmitter/receiver circuitry for communicating
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`with each other without the need for cellular network 5. Id. at 3:20–24.
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`Pager 29 includes receiver 28 for receiving low power security signals
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`from cell phone transmitter 26. Ex. 1005, 3:67–4:2. The pager’s controller
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`41 and pager circuitry 40 determine the strength of the low power signal and
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`the point in time when the last such signal was received. Id. at 4:50–56.
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`When the pager’s controller 41 or pager circuitry 40 determines that the
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`pager has not received a low power signal from cell phone 3, or that a
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`received low power signal is so weak such that cell phone 3 must be beyond
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`a predetermined threshold distance away from pager 29, the pager’s
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`alert/alarm 42 is commanded to sound. Id. at 4:15–24, 4:56–63.
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`Additionally, the pager’s transmitter 43 sends a signal to cell phone 3 that
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`causes the cell phone’s controller 20 to actuate phone alarm 22 (e.g., causing
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`cell phone 3 to beep, vibrate, or make other audible or visual signals). Id. at
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`4:26–35.
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`
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`c. Overview of Takeuchi
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`Takeuchi describes a keyless entry system for unlocking a door (e.g.,
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`a car door or house door). Ex. 1006, Abstract, 3:15–20. The system
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`includes a transmitting circuit for transmitting a request signal that includes
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`an identification code and a sequence of random numbers, such as M series
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`signals, to a door lock controller. Id. at 3:19–36, 3:55–62.
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`d. Overview of Olah
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`Olah describes a portable security system based on maintaining
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`wireless communication between two or more plastic cards (e.g., credit card
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`sized) within a defined range. Ex. 1007, Abstract, 1:5–8. According to
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`Olah, it would be desirable to sound an alarm when a valuable object, such
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`as a wallet, is taken fr