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`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 U.S.A., INC.
`Petitioner,
`
`v.
`
`RYUJIN FUJINOMAKI
`Patent Owner.
`_____________
`
`Case IPR2016-01522 **
`Patent 6,151,493
`____________
`
`Record of Oral Hearing
` Held: November 28, 2017
`____________
`
`AMENDED ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`____________
`
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and DANIEL N.
`FISHMAN, Administrative Patent Judges.
`
`
`
`* Updated Mandatory Notices, Google, Inc., indicates that it has converted from a corporation to a
` limited liability company, Google LLC, and that Google LLC is now the real party in interest. Paper
` 26. The caption is amended accordingly.
`
` ** Case IPR2017-01017 has been joined with this proceeding.
`
`
`
`IPR2016-01522
`Patent 6,151,493
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`GABRIELLE E. HIGGINS, ESQUIRE
`
`KATHRYN N. HONG, ESQUIRE
`
`Ropes & Gray
`
`1900 University Avenue, 6th floor
`
`East Palo Alto, CA 94303
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`TOM CECIL, ESQUIRE
`BRENT BUMGARDNER, ESQUIRE
`Nelson Bumgardner
`3131 West 7th Street, Suite 300
`Forth Worth, TX 76107
`
`The above-entitled matter came on for hearing on Tuesday,
`November 28, 2017, at 2:11 p.m., at the U.S. Patent and Trademark
`Office, Madison Building East, 600 Delany Street, Alexandria, Virginia,
`before Chris Hofer, Notary Public.
`
`
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`IPR2016-01522
`Patent 6,151,493
`
`P R O C E E D I N G S
`- - - - -
`JUDGE PARVIS: Good afternoon everyone. This is an oral
`argument in IPR2016-01522 and IPR 2017-01017. The challenged
`patent is U.S. patent No. 6,151,493. Patent Owner is Ryujin Fujinomaki.
`Petitioners in IPR2016-01522 are Google LLC., LG Electronics, U.S.A.,
`Incorporated, LG Electronics Mobilecomm U.S.A., Incorporated, and LG
`Electronics Incorporated.
`The Petitioners in IPR2017-01017 are Samsung Electronics
`Company Ltd., Samsung Electronics America Incorporated and Huawei
`Device U.S.A., Incorporated.
`I am Administrative Patent Judge Parvis. Judges McKone and
`Fishman are appearing remotely. As the parties are aware we’ve granted
`Petitioner’s Motion for Joinder and IPR2017-01017 was joined to
`IPR2016-01522. We then terminated IPR2017-01017.
`The scheduling order in IPR2016-01522 was unchanged. As set
`forth in that scheduling order which is Paper 9, and also our trial hearing
`order of October 2nd, the date -- that’s Paper 24 in the proceedings -- the
`date for oral argument in the instant proceedings was set for November
`1st, 2017. The parties jointly requested that we move argument by
`approximately one month and agreed to November 28th, 2017. On
`October 9th, 2017, we granted the parties’ request and issued an
`Amended Trial Order which is Paper 27, resetting the date for today. We
`also set the ground rules in that Amended Trial Order.
`At this time, we’d like counsel to introduce yourselves, your
`partners and your guests starting with Petitioner. Please use the
`microphone.
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`IPR2016-01522
`Patent 6,151,493
`MS. HIGGINS: Good afternoon, Your Honors. My name is
`Gabrielle Higgins and with me today is Kathryn Hong. We’re appearing
`on behalf of Petitioners Google and LG, and also with us is a
`representative from Google is Mr. Timur Engin.
`JUDGE PARVIS: Thank you. Patent Owner.
`MR. CECIL: Good afternoon, Your Honor. I’m Tom Cecil from
`the law firm of Nelson Bumgardner representing Patent Owner Ryujin
`Fujinomaki. With me today from Nelson Bumgardner is also Mr. Brent
`Bumgardner, who is lead counsel in this case, and also with us in the
`gallery is Mr. Barry Bumgardner who is also from the Nelson
`Bumgardner firm.
`JUDGE PARVIS: Thank you. Before we begin we want to
`remind the parties that this hearing is open to the public and a full
`transcript of it will become part of the record. As you know from our
`Amended Trial Hearing Order of October 19th, 2017, each side is
`allotted 45 minutes to present its case. As a reminder, Google LLC, LG
`Electronics U.S.A. Incorporated, LG Electronics Mobilecomm U.S.A.,
`Incorporated and LG Electronics Incorporated jointly filed a petition in
`IPR2016-01522 and will be expected to speak with one voice.
`Additionally, as noted in the Order, granting the Motion for
`Joinder filed by Petitioners Samsung Electronics Company, Ltd.,
`Samsung Electronics America Incorporated, and Huawei Device U.S.A.,
`Incorporated in IPR2017-01017 which is Paper 19, the Samsung and
`Huawei Petitioners agreed that Samsung and Huawei should not be
`permitted to make their own arguments jointly or individually at the oral
`argument if Google or LG is a party without prior authorization from us.
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`Patent 6,151,493
`If you think you should need to make arguments, please approach the
`microphone and request authorization.
`Because Petitioner has a burden to show unpatentability of the
`claims, Petitioner will proceed first followed by the Patent Owner.
`Petitioner will begin by presenting its case regarding the challenged
`claims and grounds in support of institution of review in the proceedings.
`Patent Owner will present its rebuttal to Petitioner’s case. Petitioner may
`reserve some time for rebuttal to Patent Owner’s presentation.
`Also, please keep in mind that whatever is projected on the screen
`will not be viewable by anyone reading the transcript or judges appearing
`remotely. When you refer to a demonstrative slide or other document on
`the screen, please state in the microphone information to identify the
`document you are referring to such as Petitioner’s demonstratives and the
`slide number or exhibit number, and page of the exhibit.
`Additionally, as you present your arguments please keep in mind
`that attorney speech away from the microphone cannot be heard by
`remote judges so please speak clearly into the microphone at the podium.
`The judges appearing remotely have copies of the parties’
`demonstratives. Any time you are ready counsel for the Petitioner, you
`may proceed.
`MS. HIGGINS: Thank you, Your Honor. Good afternoon, Your
`Honors. May it please the Board, at the outset we’d like to reserve 12
`minutes of our time for rebuttal. Petitioners have provided our positions
`and evidence and our briefing, but to assist the Board in considering the
`record we plan to address today in our opening discussion four topics,
`and they are here on slide 4 of our demonstratives along with any
`questions of course the Board may have.
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`Patent 6,151,493
`I will address the first three issues: identification code signal,
`confirmation signal, the maintaining/disabling limitation, and then with
`the Board’s permission my colleague, Ms. Hong, will address motivation
`to combine. But before we jump in I’d like to make two brief
`observations about the kinds of arguments and evidence that Patent
`Owner has put before this Board.
`First, Patent Owner rehashes arguments that have already been
`rejected by the Board in the Institution, and second Patent Owner
`repeatedly urges claim constructions that read limitations into the claims
`and even under those incorrect constructions, the claim limitations are
`still met. We ask the Board to bear these issues in mind as well as the
`principle that any argument not raised in Patent Owner’s response has
`been waived, and this is made clear in the Board’s Scheduling Order,
`Paper 9 at 3.
`So let’s turn to the first issue on slide 6, please. So claim 1 of the
`’493 patent recites an identification code signal. As shown in ’493
`patent, we see figure 1 and it shows that the identification code signal is
`transmitted from the identification code transmission unit on the right to
`the use prohibition canceling unit on the left.
`Slide 7, please. No construction is necessary for identification
`code signal as Yamamoto, the primary reference at issue here, expressly
`discloses this limitation. But if construed, identification code signal is a
`signal that includes a predetermined code. This is consistent with the
`’493 specification which states that, “A signal containing a
`predetermined code signal is used as the ID signal.”
`JUDGE PARVIS: Can I ask you to pause for just a second?
`MS. HIGGINS: Sure.
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`Patent 6,151,493
`JUDGE PARVIS: We’ve lost one of the judges.
`MS. HIGGINS: Understood.
`
`(Pause.)
`JUDGE PARVIS: Okay. Petitioner, you may proceed.
`MS. HIGGINS: Okay.
`JUDGE PARVIS: We had -- I think we lost about ten minutes.
`MS. HIGGINS: Okay, thank you, Your Honor. I’ll just back up
`and start with slide 7. So Petitioner’s position is that no construction is
`necessary for identification code signal as the primary reference
`Yamamoto expressly discloses this limitation. But if construed,
`identification code signal is a signal that includes a predetermined code.
`This is consistent with the specification which states that “A signal
`containing a predetermined code signal is the ID signal.” Patent Owner’s
`construction, on the other hand, should be rejected because it improperly
`reads limitations into the claims.
`Turning to slide 8, and focusing on the language in red under
`Patent Owner’s construction, Patent Owner’s construction reads in
`limitations from the specification that recite what may be the
`identification code signal, thus improperly --
`JUDGE MCKONE: This is Judge McKone. Is there any dispute
`that’s in the prior art discloses at least one of the three, setting aside the
`regularly and periodically argument, is there any dispute that it covers
`one, two or that it covers one, two, or three of Patent Owner’s options?
`MS. HIGGINS: I did not see one, Your Honor. The dispute that I
`saw in Patent Owner’s brief was specific to transmitted regularly and
`periodically.
`JUDGE MCKONE: Okay, thank you.
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`Patent 6,151,493
`MS. HIGGINS: So moving on to that additional limitation on slide
`9, Patent Owner additionally reads in the limitation that the identification
`code signal is transmitted regularly and periodically. This should be
`rejected because the plain and ordinary meaning of identification code
`signal has no such temporal requirements. The specification doesn’t
`define identification code signal to require regular and periodic
`transmission, indeed the specification never even uses those words and to
`the extent that Patent Owner relies on the specification’s disclosure of
`intermittent transmission to mean regular and periodic, this is a limitation
`of dependent claims 3, 6, and 8 and under the doctrine of claim
`differentiation intermittent transmission is not required by independent
`claim 1.
`Now turning to slide 10. Yamamoto expressly discloses an
`identification signal. We see in figure 2 that both the base unit on the left
`and the branch unit on the right have a box that’s called Identification
`Signal Detecting Circuit, and Yamamoto discusses transmitting control
`signals between the base unit 100 and branch unit 200 where each of the
`control signals is attached with an ID and Yamamoto further states that
`the identification signal is generally called ID code.
`Turning to slide 12. Now Patent Owner argues that Yamamoto
`does not disclose a signal used to identify the device that is sent regularly
`and periodically. But even under Patent Owner’s incorrect construction,
`Yamamoto discloses an identification signal. Yamamoto discloses that
`signal transfer between the base and branch units is carried out based on
`the frame format shown in figure 18 and we see in Yamamoto figure 18
`we’ve actually highlighted in red one of the frames that contains control
`signal 22 and we see in Yamamoto that right next door to it is the next
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`IPR2016-01522
`Patent 6,151,493
`frame, and we know from Yamamoto that we have multiple contiguous
`frames that are being transmitted between the base and the branch units,
`and as --
`JUDGE MCKONE: Now assuming that the Yamamoto’s signal is
`transmitted regularly and periodically some of the time, as I think we
`want to call them in this proceeding, isn’t the dispute here whether the
`claim requires that the signal be transmitted all the time including when
`you’re not making a phone call?
`MS. HIGGINS: Yes, Your Honor. That is part of the dispute and
`as the Board correctly cited in the Institution decision, the Board cited to
`the -- and turning to the next slide if we may -- we see at the bottom of
`slide 13 a cite to the Hewlett Packard v. Mustek Systems case where in
`that case the Federal Circuit found that a prior art product that sometimes
`but not always embodies a claimed method, nonetheless teaches that
`aspect of the invention.
`So in the first instance there is no requirement in claim 1 that there
`be regular and periodic transmission, and if you’re going to read that in
`under Patent Owner’s improper claim construction under the law the
`limitation is still met.
`JUDGE MCKONE: With this claim limitation there’s a little bit
`different problem in that, you know, Patent Owner makes the argument
`that it would be nonsensical to just rely on a signal that is only
`operational when you’re making a phone call. So you’re much more
`likely to steal a phone when you’re not making a phone call, and that has
`some force. Isn’t it the case that all of the, at least the thrust of the
`specification is a signal that is on even when you’re not making a phone
`call?
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`MS. HIGGINS: Your Honor, I’m going to skip ahead here. Just
`give me a minute. So first of all, while there are embodiments in the
`specification that do talk about the fact that the canceling unit may be on,
`we have to first focus on the claim language and independent claim 1 has
`no requirement of transmitting a signal regularly and periodically and we
`believe that it would be improper to read that signal into claim 1 because
`there just is no such disclosure. But beyond that --
`JUDGE MCKONE: We have been cautioned not to read claims in
`a manner that doesn’t make sense when you consult the specification. I
`think the In re Smith case is an example, a recent example.
`MS. HIGGINS: Yes.
`JUDGE MCKONE: In this case it would like the specification
`would merely describe, and pretty regularly, as the signal that would be
`on all the time so that even when you are not making a phone call the
`security feature is -- still works?
`MS. HIGGINS: And I’m going to respectfully disagree. While I
`agree with Your Honor that there are certain embodiments that are taught
`that talk about when the canceling unit is on, if you turn to slide 26 one
`of Patent Owner’s arguments is trying to require that the element
`function as claimed at all times and I think that’s what you’re getting at
`here, Your Honor, and Patent Owner is actually trying to read that
`limitation improperly into claim 1 through two vehicles. They’re trying
`to do it through identification code signal and they’re also trying to do it
`through the word “while” and “while” does not mean at all times and in
`fact, such a construction would contradict the ’493 patent specification.
`I am on slide 26 which actually talks about the fact that there are
`situations where the phone is off and not operational even while that
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`Patent 6,151,493
`canceling unit is receiving an identification code signal that, in this case,
`is at or above the predetermined value. So we believe that it would be
`incorrect to read into the claim a limitation that you have to have
`regularly and periodically transmitted signals, and as we said even under
`Patent Owner’s construction which we believe is improper you have
`those regular and periodic transmissions during call setup during the call
`and that situation, as you properly pointed out, there’s consistent support
`as far as we are aware coming out the Federal Circuit and as the Board
`already cited to the Hewlett Packard case.
`In addition to that, we believe the situation here is analogous to
`Power Integrations where the Federal Circuit in that case found that the
`term “during” did not require the prior art to function as claimed at all
`times. In the Power Integrations case there the claim language at issue
`was, “Current limit threshold that increases during the on time of a
`switch,” and in that case that the current threshold only increased during
`start up mode, not normal operation. The Federal Circuit found was
`irrelevant to the analysis and that’s Federal Circuit 843 F.3rd at 1336-37.
`The Unwired Planet v. Google case stands for the same proposition and
`they all cite back to the Hewlett Packard case that has been cited by the
`Board.
`JUDGE MCKONE: In a related question just as a factual matter,
`do you agree that the prior art discloses -- the Yamamoto reference
`discloses a control signal that only broadcasts at most during call setup
`and when the call is happening?
`MS. HIGGINS: And I would say, Your Honor, that in the
`Yamamoto disclosure those are the times that are relevant because we’re
`talking about a prior art reference where you actually, you have either a
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`calling card or you have coins. You put them in, you take the phone off
`of the mount, you make the call and then when the call is completed, the
`phone is switched off and then it is returned back to the base unit. It’s
`returned to the mount and in fact there’s other disclosures in Yamamoto
`that teach that if you don’t return the phone immediately to the mount,
`the phone frankly is going to yell at you because it wants you to put the
`phone back on the mount and charge the phone.
`So the answer to your question is yes, from the explicit disclosure
`in Yamamoto we have a control signal being transferred during call setup
`and during the call, and under the law and under the language of claim 1
`which has no requirement of regular and periodic, the claim limitation is
`met.
`
`JUDGE MCKONE: So the signal is not transmitted during idle
`time when there is no phone call?
`MS. HIGGINS: There is no explicit disclosure of that.
`JUDGE MCKONE: And you’re saying your expert has conceded
`that there is no signal, there’s no control signal that’s transmitted when
`there is no phone call. Is that correct?
`MS. HIGGINS: Our expert stated during his deposition that he
`didn’t consider that because he didn’t believe it was relevant and frankly,
`and respectfully, Your Honor, that is our position. Because it would be
`improperly as we said reading a limitation into claim 1 that is just not
`there and, as you said, it’s black letter law that if I take an identification
`code signal and I read it in regular and periodic which, by the way, as I
`said under claim differentiation as Patent Owner reads it, that’s a
`limitation of the dependent claim and that presumption of claim
`differentiation has not been rebutted here.
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`JUDGE MCKONE: But if we make a finding that Yamamoto’s
`control signal is not transmitted if there is no phone call, you’re not going
`to contest that finding, correct?
`MS. HIGGINS: Right now I cannot think of anything in
`Yamamoto.
`JUDGE MCKONE: Okay. Thank you.
`JUDGE FISHMAN: Counsel, this is Judge Fishman. Can you tell
`me in Yamamoto, since he has -- one of his purposes is anti-theft. If the
`hand set and base unit are sitting idle, how does it prevent theft if there’s
`no call? Can someone simply walk away with the hand set when there’s
`no call?
`MS. HIGGINS: Well, if there is no call being made the branch
`unit is actually locked to the mount and it requires you to, you know, put
`in a card or put in coins to remove it from the mount. Once it’s removed
`from the mount, there’s call setup, the call proceeds, and then upon the
`call ending the phone is actually shut off and so it’s not operational, and
`it’s returned to the mount. And there’s also a maxim of patent law that
`says that, and as the case law I’ve already discussed supports that you
`don’t have to infringe all the time, you don’t have to invalidate all the
`time, but the claim language -- Yamamoto discloses the claim language
`and also I think what Your Honors are getting at is, you know, it is also
`not the case that if you don’t have the best commercial embodiment
`disclosed that’s irrelevant in terms of showing invalidity, and invalidity
`has been shown here.
`JUDGE FISHMAN: One more question. Back to your figure 18
`in Yamamoto, Yamamoto sends out frames that start with a sync and
`then control, and then voice signal I presume digitized voices in there.
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`Are those frames sent continuously even if there happens to be no speech
`at some point in the call? If there is silence at some point in the call, does
`it stop sending for a period of time or do we not know that?
`MS. HIGGINS: I believe, Your Honor, that our expert, Dr.
`Quackenbush, testified that under Yamamoto figure 8’s disclosure we
`have these frames, and Dr. Quackenbush’s words were that we have
`these multiple contiguous frames that are being transmitted between the
`base and the branch unit and that each of those frames contain a control
`signal and that control signal is attached with an ID code and so that
`signal is being sent back and forth irrespective of whether a single frame
`might not have voice data on it.
`JUDGE PARVIS: Quick question. Is Petitioner’s position, or
`perhaps from the fallback position, a phone is more likely to be stolen
`when it’s separated from the base so to speak, and when that signal
`would be transmitted during the hand shaking or during the actual phone
`call?
`
`MS. HIGGINS: Absolutely, Your Honor.
`JUDGE PARVIS: Is there something in the intrinsic evidence that
`Petitioner is relying on in particular that says that that portion of the time
`is more relevant, I think it’s --
`MS. HIGGINS: Well certainly, Your Honor, we pointed to
`column 12 of Yamamoto where in column 12, and I’m looking at lines 5
`through 28, in Yamamoto it talks about the fact that when a call ends
`you’re going to shut off and then you’re going to be returned to the
`mount and in fact if you’re not returned to the mount there’s going to be
`a vocal notification issued. So Yamamoto has a theft -- it has an explicit
`theft detect function which is focused in on the time when that phone is
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`off the hook and being used for a call and it otherwise is in many ways
`encouraging the user to put the phone back on the mount so that the
`phone remains charged.
`So I would say that the overall disclosure of Yamamoto is teaching
`the theft-detect function for when it matters, and that’s when you’re using
`the phone during your call which frankly is the time when the phone’s off
`the mount.
`JUDGE PARVIS: Is there something in the intrinsic evidence of
`the challenged patent that -- an embodiment which you’re relying on or
`something that says that regular and periodic would be during that same
`time when the call is in progress or being set up?
`MS. HIGGINS: So first of all I already pointed out the fact that
`we have the fact that the phone is not always on when we’re sending that
`signal so that was the one place that I’ve already pointed to. In addition
`to that, the disclosure of the ID signal itself which is column 5, lines 58
`to 62, talks about that intermittent transmission and intermittent in the
`’493 it says it’s not continuously, so I don’t read intermittent to mean all
`of the time as Patent Owner alleges it should mean at all times.
`In addition to that, the theft-proof function, and I’m turning back to
`Yamamoto in column 12, lines 33 to 45, the theft-proof function as
`disclosed is used in conjunction with these control signals and the control
`signals and the theft-proof data is the data that’s being transmitted back
`and forth between the base and the branch unit, and to answer one of
`Judge Fishman’s questions, in addition to when the signals going back
`and forth and we have the frames, we do have other things going on, for
`instance, error correction and things of that nature.
`JUDGE PARVIS: Okay.
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`MS. HIGGINS: Okay. I’m going to -- so the issue is essentially
`the same for confirmation signal. The claim construction that was
`proposed by Patent Owner is exactly the same and we believe it’s
`incorrect for the same reasons. Turning to slide 16. Petitioner’s position
`is that no construction is necessary for confirmation signal. As
`Yamamoto discloses this limitation under the plain and ordinary
`meaning, this construction is consistent with the specification which
`states that the canceling unit receives an ID code signal and returns a
`confirmation signal.
`Turning to slide 17 –
`JUDGE MCKONE: Now is it the case that basically we should do
`with confirmation signal whatever we do with ID code signal?
`MS. HIGGINS: I believe that’s correct, Your Honor. If what you
`mean by that is rejecting the improper limitations that Patent Owner is
`attempting to read into the construction of confirmation signal just like it
`is with respect to identification signal. Does that answer your question?
`JUDGE MCKONE : I think so.
`MS. HIGGINS: Thank you. Moving on to slide 19. So there is
`also an express disclosure here. We have a disclosure of confirmation
`signal in Yamamoto where Yamamoto discloses transmitting control
`signals between the base and branch units where each of the control
`signals is attached with an ID to enable positive control of
`interconnection between the base and branch units and the identification
`detecting circuit on the base unit, as disclosed by Yamamoto, collates an
`identification signal determined by a combination of the base unit and
`branch units.
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`And then turning to slide 20, as Dr. Quackenbush explained the
`signals transmitted from Yamamoto’s branch to base unit are
`confirmation signals because they carry an identification signal
`determined by a combination of the base and branch units and
`transmitted in response to signals received from the base unit.
`Turning to slide 21. We’ve already covered this but I want to
`make sure that it’s clear that we have from the disclosure of figure 18 the
`fact that the control signal attached with the ID is being sent regularly
`and periodically from the base unit to the branch unit and that was Dr.
`Quackenbush’s confirmation of that in his rebuttal declaration, Exhibit
`1027 paragraph 20, and that opinion has not been rebutted by Patent
`Owner.
`Moving on to slide 23. To the third issue, we have the limitation
`maintaining the electronic device and in this case that’s the phone in an
`operational state while the identification code signal received by the
`second receiver is at or above the predetermined value, and then the
`condition that when the identification code signal is below the
`predetermined value, the canceling unit partially disables the device.
`Turning to slide 24. That limitation is disclosed by Yamamoto.
`Yamamoto discloses a theft-proof feature in which calling operation is
`disabled when a branch unit theft is detected and inhibiting subsequent
`calling operation of the branch unit. As Dr. Quackenbush explained, this
`teaches that the branch is operational prior to detecting theft.
`Moving on to slide 25. Now Patent Owner argues that Yamamoto
`does not meet the claim limitation because Yamamoto’s branch unit is
`not re-enabled when brought back within the service area. But claim 1
`does not require re-establishing an operational state. The claim term
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`“while” refers to the time period prior to disabling and the claim term
`“when” refers to the act of disabling.
`Turning to slide 26. We’ve already covered this but the term
`“while” as argued by Patent Owner is at all times. They haven’t pointed
`to any support for that in the specification and indeed as we have pointed
`out, the specification contradicts that because it talks about the fact that
`the phone is off and not operational at times when the ID code signal is at
`or above the predetermined value and as –
`JUDGE MCKONE: The way I understand it is the phone 30 may
`be off but the unit 20 is always on. Am I understanding this thing
`correctly?
`MS. HIGGINS: That is correct, Your Honor. But if we back up
`one slide, what the claim language is talking about is the use prohibition
`canceling unit maintaining the electronic device and that’s the phone as
`Your Honors have pointed out in the Institution decision when you dealt
`with the distinction between device and electronic device. So the
`electronic device is the phone and that’s what the claim is talking about
`being in an operational state. So it’s not talking in the claim about the
`canceling unit always being on, it’s talking about the phone.
`Moving to slide 27, and with respect to the “when” limitation,
`claim 1 recites the limitation and the condition that when the ID code
`signal is below the predetermined value said use prohibition canceling
`unit at least partially disabling the electronic device. Yamamoto teaches
`this same condition in column 15. Yamamoto discloses that detecting a
`branch unit theft when an intensity of an electric field of the
`electromagnetic wave received from the base unit is lower than the
`predetermined value and Yamamoto further discloses that when the theft
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`is detected inhibiting subsequent calling operation of the branch unit, and
`as Dr. Quackenbush explained this electromagnetic wave is the signal
`transmitted from the base to the branch that contains the identification
`code. The signal that includes the control signal attached with the ID.
`Moving to slide 28. Now Patent Owner makes the argument that
`Yamamoto’s theft detection means is not disclosed as making use of this
`specific control signal and that the signal input to the C detect box is the
`same identification code signal.
`But we have to look at the language of claim 1. Claim merely
`recites a condition that when the signal is received by the second
`receiver, when that signal is below a predetermined value you disable the
`electronic device. What Patent Owner is trying to do here is once again
`read limitations from the dependent claims into claim 1 by requiring
`internal components of the canceling unit to be read into claim 1. Claim
`does not recite a theft detector or any details regarding the internal
`operation of the theft detector. We see such limitations in claim 7, but
`they’re not in claim 1.
`Turning to slide 29. Now there is no requirement
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