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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`United States Patent No: 6,151,493
`Inventors: Toyoki Sasakura,
` Kenichi Miyamoto
`Formerly Application No.: 09/000,764
`Issue Date: November 21, 2000
`Filing Date: December 30, 1997
`Former Group Art Unit: 2749
`Former Examiner: Meless Zewdu
`Patent Owner: Ryujin Fujinomaki
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`Attorney Docket No.:
`108827-5007-651
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`Customer No.: 28120
`Petitioners: Google Inc.,
`LG Electronics, Inc.,
`LG Electronics U.S.A., Inc.,
`LG Electronics Mobilecomm
`U.S.A., Inc.
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`For: DEVICE FOR PROHIBITING UNAUTHORIZED USE OF ELECTRONIC
`DEVICES
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`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
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`DECLARATION OF DR. SCHUYLER QUACKENBUSH
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 6,151,493
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`TABLE OF CONTENTS
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`7.
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`8.
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`9.
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`Introduction ...................................................................................................... 1 
`I. 
`Background and Qualifications ....................................................................... 1 
`II. 
`Priority Date and One of Ordinary Skill .......................................................... 7 
`III. 
`IV.  Materials Relied Upon ..................................................................................... 9 
`Background on the State of the Art ................................................................. 9 
`V. 
`VI.  Analysis of the ’493 Patent ............................................................................ 15 
`Overview of the ’493 Patent ................................................................ 15 
`A. 
`Overview of the ’493 Patent Prosecution History .............................. 20 
`B. 
`Claim Construction of the ’493 Patent Claims ................................... 22 
`C. 
`VII.  The Challenged Claims are Invalid ............................................................... 23 
`Legal Standards ................................................................................... 23 
`A. 
`Claims 1-6 and 8-10 Are Obvious Under § 103 over Yamamoto
`B. 
`in View of Mardirossian, Takeuchi, Olah, and/or Bisak .................... 27 
`1.
`Overview of U.S. Patent No. 5,327,482 (“Yamamoto”) .......... 27 
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`2.
`Overview of U.S. Patent No. 5,796,338 (“Mardirossian”) ....... 30 
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`3.
`Overview of U.S. Patent No. 5,055,701 (“Takeuchi”) ............. 32 
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`4.
`Overview of U.S. Patent No. 5,396,218 (“Olah”) .................... 33 
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`5.
`Overview of U.S. Patent No. 5,021,779 (“Bisak”) ................... 34 
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`6.
`Invalidity of Claim 1 Over Yamamoto in view of
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`Mardirossian and/or the Knowledge of a POSITA ................... 35 
`Invalidity of Claim 2 Over Yamamoto in view of
`Mardirossian and/or the Knowledge of a POSITA ................... 64 
`Invalidity of Claim 3 Over Yamamoto in view of
`Mardirossian and/or the Knowledge of a POSITA ................... 67 
`Invalidity of Claim 4 Over Yamamoto in view of
`Mardirossian, Takeuchi, and/or the Knowledge of a
`POSITA ..................................................................................... 73 
`Invalidity of Claim 5 Over Yamamoto in view of
`Mardirossian, Takeuchi, and/or the Knowledge of a
`POSITA ..................................................................................... 75 
`Invalidity of Claim 6 Over Yamamoto in view of
`Mardirossian, Takeuchi, and/or the Knowledge of a
`POSITA ..................................................................................... 76 
`Invalidity of Claim 8 Over Yamamoto in view of
`Mardirossian, and/or the Knowledge of a POSITA .................. 76 
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`10.
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`11.
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`12.
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`13.
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`14.
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`C. 
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`Invalidity of Claim 9 Over Yamamoto in view of
`Mardirossian, Olah, and/or the Knowledge of a POSITA ........ 77 
`Invalidity of Claim 10 Over Yamamoto in View of
`Mardirossian, Bisak, and/or the Knowledge of a POSITA ...... 79 
`Claims 1-6 and 8-10 Are Obvious Under § 103 over
`Mardirossian in View of Sakakura, Takeuchi, and/or Olah ................ 83 
`1.
`Overview of U.S. Patent No. 5,796,338 (“Mardirossian”) ....... 84 
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`2.
`Overview of JP Patent Pub. No. H7-87559 (“Sakakura”) ........ 84 
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`3.
`Overview of U.S. Patent No. 5,055,701 (“Takeuchi”) ............. 85 
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`4.
`Overview of U.S. Patent No. 5,396,218 (“Olah”) .................... 85 
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`5.
`Invalidity of Claim 1 Over Mardirossian in View of
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`Sakakura and/or the Knowledge of a POSITA ......................... 85 
`Invalidity of Claim 2 Over Mardirossian in View of
`Sakakura and/or the Knowledge of a POSITA ....................... 113 
`Invalidity of Claim 3 Over Mardirossian in View of
`Sakakura and/or the Knowledge of a POSITA ....................... 114 
`Invalidity of Claim 4 Over Mardirossian in View of
`Sakakura, Takeuchi and/or the Knowledge of a POSITA ...... 117 
`Invalidity of Claim 5 Over Mardirossian in View of
`Sakakura, Takeuchi and/or the Knowledge of a POSITA ...... 120 
`Invalidity of Claim 6 Over Mardirossian in View of
`Sakakura, Takeuchi and/or the Knowledge of a POSITA ...... 121 
`Invalidity of Claim 8 Over Mardirossian in View of
`Sakakura and/or the Knowledge of a POSITA ....................... 121 
`Invalidity of Claim 9 Over Mardirossian in View of
`Sakakura, Olah and/or the Knowledge of a POSITA ............. 122 
`Invalidity of Claim 10 Over Mardirossian in View of
`Sakakura and/or the Knowledge of a POSITA ....................... 124 
`VIII.  Conclusion ................................................................................................... 130 
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`APPENDIX A (Curriculum Vitae)
`APPENDIX B (List of Publications)
`APPENDIX C (List of Testifying Experience)
`APPENDIX D (List of Materials Considered)
`APPENDIX E (Claim Charts)
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`13.
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`I.
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`I, Dr. Schuyler Quackenbush, hereby declare under penalty of perjury:
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`INTRODUCTION
`1.
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`I have been retained to provide assistance regarding U.S. Patent
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`No. 6,151,493 (“the ’493 patent”). Specifically, I have been asked to consider the
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`validity of claims 1-6 and 8-10 of the ’493 patent (the “Challenged Claims”). I
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`have personal knowledge of the facts and opinions set forth in this declaration, and,
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`if called upon to do so, I would testify competently thereto.
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`2.
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`I am being compensated for my time at my standard consulting rate of
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`$400 per hour. I am also being reimbursed for expenses that I incur during the
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`course of this work. My compensation is not contingent upon the results of my
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`study, the substance of my opinions, or the outcome of any proceeding involving
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`the challenged claims. I have no financial interest in the outcome of this matter or
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`on the pending litigation between Petitioners and Ryujin Fujinomaki.
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`3.
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`A table of contents and a list of exhibits referenced herein are includ-
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`ed above.
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`II. BACKGROUND AND QUALIFICATIONS
`4.
`I offer statements and opinions on behalf of Petitioners, Google Inc.
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`(“Google”), LG Electronics, Inc., LG Electronics U.S.A, Inc., and LG Electronics
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`Mobilecomm U.S.A., Inc. (collectively “LGE”) (all “Petitioners”), generally re-
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`garding the validity, novelty, prior art, obviousness considerations, and understand-
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`ing of a person of ordinary skill in the art (“POSITA”) as it relates to U.S. Patent
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`No. 6,151,493 (“’493 patent”). Attached hereto as Appendix A, is a true and cor-
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`rect copy of my Curriculum Vitae describing my background and experience.
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`5.
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`I received a B.S. in Electrical Engineering from Princeton University
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`in 1975, and M.S. and Ph.D. in Electrical Engineering from the Georgia Institute of
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`Technology in 1980 and 1985, respectively. While at the Georgia Institute of
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`Technology, I concentrated my research on signal processing.
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`6.
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`Between 1975 and 1978, I worked for Loral Electronics in Yonkers,
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`NY, where I was employed as a test engineer and was part of a team that designed
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`and built an aircraft-based RADAR (Radio Detection and Ranging) jamming sys-
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`tem. Loral Electronics produced airborne electronics systems for the U.S. Air
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`Force. My responsibilities in this position included: assisting the lead engineer in
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`setting up test equipment; assembling custom test equipment; and using this
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`equipment to test items from the production line.
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`7.
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`From 1978 to 1979, I worked for Diagnostic/Retrieval Systems (DRS),
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`Inc. in Oakdale, NJ, where I was a hardware design engineer. DRS produced elec-
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`tronic SONAR (sound navigation and ranging) systems for the U.S. Navy. My re-
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`sponsibilities in this position included: the design of the transceiver frontends used
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`in the sonar system, which included the processing of the analog signal received by
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`the microphone array, its conversion into a digitized signal, and subsequent filter-
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`ing to improve signal detection.
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`8.
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`Between 1986 and 2002, I worked for AT&T Bell Labs in Murray
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`Hill where I was Member of Technical Staff in the Signal Processing Research
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`Department, and subsequently at AT&T Labs in Florham Park, NJ, where I was
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`Principal Technical Staff and then Acting Supervisor of the Speech and Audio
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`Coding Group.
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`9.
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`During my time at Bell Labs and AT&T Labs, I developed significant
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`expertise in signal processing and system engineering. I developed and implement-
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`ed various audio and image coding/decoding algorithms that find widespread ap-
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`plication in today’s portable electronic devices, developed and implemented a cli-
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`ent/server streaming music system, worked on a large team that built a working
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`Digital Audio Broadcast system using AT&T’s Perceptual Audio Coding (PAC)
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`technology, proposed the PAC technology to the International Standards Organiza-
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`tion (ISO), and developed and evaluated techniques for error mitigation in stream-
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`ing audio systems.
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`10.
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`In 1994, I worked on a Digital Audio Broadcast (DAB) project that
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`proposed technology for standardization of digital audio broadcast, sponsored by
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`the National Association of Broadcasters (NAB) and the Electronics Industry As-
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`sociation (EIA). This was an over-the-air broadcast system that operated in the FM
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`band. I was responsible for all aspects of the design of the audio encoder and de-
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`coder: system engineering, including time, clock recovery and error robustness;
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`hardware design, including processor specification and custom interface circuits;
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`and software design, including real-time performance. I collaborated closely with
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`other engineers and was also familiar with the design issues in the modulation and
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`transmission sub-systems. Error correction was used so that clear reception was
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`possible up to the target reception distance, or within the desired coverage area. In
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`this effort I led a team of four engineers over a period of 18 months. The entire
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`DAB system had numerous successful field trials broadcasting in the FM band us-
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`ing the sidebands of the FM transmission signal.
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`11.
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`In 1995-97, I was the lead expert in the effort to promote AT&T’s
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`PAC technology in the International Standards Organization (ISO) MPEG stand-
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`ards group, which resulted in the MPEG Advanced Audio Coding standard, pub-
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`lished in 1997.
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`12.
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`In 2000, I developed algorithms and corresponding real-time imple-
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`mentations for a novel method of mitigating channel transmission errors when
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`streaming audio in MPEG-2 Advanced Audio Coding (AAC) format over cellular
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`telephone channels. Such channels can suffer degradation of signal strength due to
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`either the distance from cell phone to cell tower, or “fading channel” conditions,
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`and low signal strength can result in data transmission errors.
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`13.
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`In 2002, I founded Audio Research Labs, LLC (ARL) in Scotch
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`Plains, NJ, where I am President and CEO. ARL provides engineering consulting
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`services in the field of signal processing, including strategic advice on standardiza-
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`tion efforts. In my consulting work at ARL, I have performed an engineering
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`analysis of a commercial U.S. satellite radio music broadcast system. The engi-
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`neering analysis involved documenting the audio compression, error control, mod-
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`ulation, and transmission sub-systems in the broadcast and reception system. This
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`included the concept that synchronization and profile codes transmitted over the air
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`indicated how the signal should be decoded.
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`14. From 2006 to 2009, I was the Founder and VP of Audio Technology
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`for Lightspeed Audio Labs, Inc., located in Tinton Falls, NJ. During this time I
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`remained President of ARL, but the majority of my time was spent on Lightspeed
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`Audio Labs work. Lightspeed Audio Labs created an Internet-based system that
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`permitted users in different physical locations to interactively collaborate on-line to
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`make music as if they were in the same recording venue. This system operated
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`over wired or wireless channels (e.g. mobile phones) and made use of encryption
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`based on user identification codes to provide security. Interactive probe and con-
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`firmation signals assess channel link quality and set the appropriate system operat-
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`ing parameters.
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`15. Since 2013, I have been Adjunct Professor at New York University
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`(NYU), where I teach at the graduate level, and have created and taught the course
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`on Introduction to Perceptual Audio Coding and taught the course on Programming
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`in the C Language. At NYU, the course I teach on Perceptual Audio Coding has a
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`unit on streaming of compressed digital audio. This covers both Internet channels
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`and wireless channels. Wireless channels include cellular channels and also local,
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`short-distance channels such as are used with digital wireless microphones. As a
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`foundation for this unit, I present the theory of digital wireless communications,
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`including simple digital modulation schemes such as Frequency Shift Keying
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`(FSK). This includes the concept that interactive pilot and acknowledgement sig-
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`nals are used to determine channel link throughput and hence set system operating
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`parameters, e.g., encoded bit rate.
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`16. Since 1998, I have served as Chair of the MPEG Audio Subgroup
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`(subgroup of the Motion Picture Experts Group). As subgroup Chair, I am respon-
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`sible for recommending areas for possible standardization, delegating tasks to and
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`managing task completion by the group, forging consensus on group decisions and
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`reporting on the group’s work to the MPEG plenary. During my tenure, the group
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`has created and standardized many technologies that are commonly used in con-
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`sumer electronics products including: High-Efficiency Advanced Audio Coding
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`(HE-AAC), Enhanced Low Delay Advanced Audio Coding (AAC-ELD), MPEG
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`Surround, Spatial Audio Object Coding (SAOC), Unified Speech and Audio Cod-
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`ing (USAC) and MPEG-H 3D Audio.
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`17.
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`I am an inventor on 24 issued U.S. patents and an author of one book,
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`several book chapters, and dozens of peer-reviewed technical articles, including
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`publications in Journal of the AES, IEEE Multimedia Magazine, IEEE Communi-
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`cation Magazine, IEEE Journal on Selected Areas in Communications, and Pro-
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`ceedings of IEEE Conference on Acoustics, Speech and Signal Processing.
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`18.
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`I have been active in my professional organizations. I have been a
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`member of the Institute of Electrical and Electronic Engineers (IEEE) for more
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`than 30 years and have been a Senior Member for more than 15 years. I have au-
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`thored more than 15 IEEE journal or conference publications. I have been a mem-
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`ber of the Audio Engineering Society (AES) for more than 20 years, became a Fel-
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`low of AES in 2006, and have been co-chair of the AES Technical Committee on
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`Coding of Audio Signals since 2009.
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`19.
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`I have also performed services in patent disputes as an independent
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`technical expert and consultant and as an expert witness on matters involving sig-
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`nal processing and wireless communication technologies.
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`20. A complete listing of the papers that I have authored and co-authored
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`is attached as Appendix B and a list of my testifying experience is attached as Ap-
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`pendix C.
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`III. PRIORITY DATE AND ONE OF ORDINARY SKILL
`21.
`I understand that the factors considered in determining the ordinary
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`level of skill in a field of art include the level of education and experience of per-
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`sons working in the field; the types of problems encountered in the field; and the
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`sophistication of the technology at the time of the invention, which I understand is
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`asserted to be September 4, 1997. I understand that a person of ordinary skill in
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`the art is not a specific real individual, but rather is a hypothetical individual hav-
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`ing the qualities reflected by the factors above. I understand that a person of ordi-
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`nary skill in the art would also have knowledge from the teachings of the prior art,
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`including the art cited below.
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`22.
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`In my opinion, on or before September 4, 1997, a person of ordinary
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`skill in the art (“POSITA”) relating to the technology of the ’493 patent would
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`have a minimum of a bachelor’s in electrical engineering, computer engineering,
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`computer science, or a related field, and approximately two years of professional
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`experience with signal processing, wireless communications, or other relevant pro-
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`fessional experience. Additional graduate education could substitute for profes-
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`sional experience, or significant experience in the field could substitute for formal
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`education. A POSITA is presumed to have knowledge of all relevant prior art, and
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`would thus have been familiar with each of the references cited herein, as well as
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`the background knowledge in the art discussed in Section V, and the full range of
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`teachings they contain.
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`23. Well before September 4, 1997, my level of skill in the art was at least
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`that of a POSITA. I am qualified to provide opinions concerning what a POSITA
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`would have known and understood at that time, and my analysis and conclusions
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`herein are from the perspective of a POSITA as of September 4, 1997.
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`IV. MATERIALS RELIED UPON
`24.
`In reaching the conclusions described in this declaration, I have relied
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`on the documents and materials cited herein as well as those identified in Appendix
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`D attached to this declaration. Each of these materials is a type of document that
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`experts in my field would reasonably rely upon when forming their opinions.
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`25. My opinions are also based upon my education, training, research,
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`knowledge, and personal and professional experience.
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`V.
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`BACKGROUND ON THE STATE OF THE ART
`26. Security systems for disabling an electronic device (including cellular
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`telephones) and sounding an alarm were well-known and ubiquitous in the art long
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`before September 4, 1997 (the claimed priority date of the ‘493 patent). The con-
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`cept of monitoring the distance between an electronic device and a second device
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`(to prevent theft) was also developed decades ago and was well-known in the art
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`long before September 1997. It was further well-known in the art to monitor the
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`distance between an electronic device and second device by transmitting signals at
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`a constant level and comparing the level of the received signal to a predetermined
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`value. It is a fundamental principle and well-known that the “amplitude of the sig-
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`nal received…is…inversely proportional to the square of the distance between [the
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`two devices], and is directly proportional to the amplitude of the transmitted signal.”
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`E.g., EX1011 (Ballin), 1:50-54. Thus, as two devices are “moved farther apart, the
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`amplitude of the received signal…decreases.” E.g., EX1011 (Ballin), 1:54-56.
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`27.
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`In particular, it was well-known in the art to monitor the distance be-
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`tween an electronic device (such as a cellular phone) and a second device, and to
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`disable operation of the electronic device and/or sound an alarm upon exceeding a
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`certain distance between the two devices, to prevent theft of the device. E.g.,
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`EX1004 (Yamamoto), 12:45-13:30 (teaching disabling a phone and sounding an
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`alarm when a certain distance is exceeded between the phone and base unit to pre-
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`vent theft); EX1005 (Mardirossian), 1:4-13, 4:15-35 (teaching sounding an alarm
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`when a certain distance is exceeded to prevent theft of a cellular phone); EX1009
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`(Sakakura) ¶¶8, 16-19 (teaching disabling a mobile phone when a certain distance
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`is exceeded to prevent theft); EX1011 (Ballin), Abstract, 1:4-2:15 (teaching deac-
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`tuating a vehicle ignition system and sounding an alarm when a certain distance is
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`exceeded to prevent theft); EX1012 (Moreno), 2:8-34 (teaching immobilizing a
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`shopping cart and transmitting an alert signal when a certain distance is exceeded
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`to prevent theft); EX1013 (Murray), Abstract, 7:19-22 (teaching disabling opera-
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`tion of an engine and sounding an alarm to prevent theft); EX1014 (Buonavoglia),
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`Abstract, 1:5-8, 2:5-19, 3:6-42 (teaching deactivating an electronic device and
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`sounding an alarm to prevent theft); EX1016 (LaRosa), 1:22-29, 2:18-3:7 (teaching
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`sounding an alarm when a received signal falls below a threshold set by a sensitivi-
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`ty threshold potentiometer).
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`28. Security systems that both disable operation of an electronic device
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`and sound an alarm were also well-known in the art long before September 1997.
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`E.g., EX1004 (Yamamoto), 12:45-13:30 (teaching disabling a cordless phone and
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`sounding an alarm); EX1011 (Ballin), Abstract, 1:4-2:15 (teaching deactuating a
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`vehicle ignition system and sounding an alarm); EX1012 (Moreno), 2:8-34 (teach-
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`ing immobilizing a shopping cart and sounding an alarm); EX1013 (Murray), Ab-
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`stract, 7:19-22 (teaching disabling operation of an engine and sounding an alarm);
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`EX1008 (Bisak), Abstract, 7:17-40 (teaching disabling operation of an appliance
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`and sounding an alarm to prevent theft).
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`29.
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`It was also well-known in the art to monitor the distance between two
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`devices by transmitting a signal at a constant level. E.g., EX1005 (Mardirossian),
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`4:40-43, 4:15-24, Abstract (teaching transmitting a signal at a predetermined low
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`strength in monitoring the distance between two devices); EX1009 (Sakakura), ¶19,
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`Abstract (teaching transmitting a signal at a preset level of power in monitoring the
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`distance between two devices); EX1010 (Kuhnert), 6:26-30, 5:45-47, 6:47-51
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`(teaching transmitting a signal at a preset strength in monitoring the distance be-
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`tween two devices).
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`30.
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`It was further well-known in the art long before the claimed priority
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`date to monitor the distance between two devices by comparing the level of the re-
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`ceived signal to a predetermined value. EX1004 (Yamamoto), 15:32-45 (teaching
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`disabling a phone and sounding an alarm when the level of the received signal is
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`lower than a predetermined value); EX1005 (Mardirossian), 4:56-5:2 (teaching
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`sounding an alarm when the strength of the received signal has dropped below a
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`predetermined power or amplitude threshold); EX1010 (Kuhnert), 3:35-54 (teach-
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`ing sounding an alarm when a certain distance is exceeded, where the distance is
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`obtained by measuring the level of the received signal and calculating the differ-
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`ence with the value of a known transmission signal); EX1011 (Ballin), Abstract,
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`1:19-27(teaching deactuating a vehicle ignition system and sounding an alarm
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`when the signal strength of the received signal is less than a predetermined signal
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`level); EX1014 (Buonavoglia), 3:18-52 (teaching deactivating an electronic device
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`and sounding an alarm when the received signal reaches an electronic threshold
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`corresponding to a certain distance); EX1016 (LaRosa), 1:22-29, 2:18-3:7.
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`31. Furthermore, it was well-known in the art to transmit identification
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`code signals between two devices for the purpose of preventing theft. E.g.,
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`EX1004 (Yamamoto), Abstract, 7:5-10 (teaching transmitting signals including an
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`ID code between a base unit and branch unit of a cordless telephone system);
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`EX1009 (Sakakura), Constitution (teaching transmitting a signal including a pass-
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`word number from a personal identification transmitter and a mobile phone);
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`EX1006 (Takeuchi), Abstract, 3:21-32, 5:7-11, Fig. 2 (teaching transmitting sig-
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`nals including an identification code between a portable transmitter and electronic
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`device). In addition, it was well-known in the art to transmit an identification code
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`signal and confirmation signal comprising the same identification code between
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`two devices. E.g., EX1007 (Olah), Abstract, 3:51-4:2, 4:20-23, 4:56-59 (teaching
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`transmitting an identification code signal and confirmation signal having the same
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`identification code). It was also well-known in the art for an identification code
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`signal or confirmation signal to comprise a “binarized pseudo-irregular signal” (the
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`‘493 patent describes the “M-sequence signal” as a binarized pseudo-irregular sig-
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`nal at EX1001, 6:1-6) and a particular code signal (which the ‘493 patent describes
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`as an “ID number or signal indicative of other information about the owner or per-
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`son in charge” at EX1001, 5:50-67). E.g., EX1006 (Takeuchi), Abstract, 3:21-32,
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`5:7-11, Fig. 2 (teaching transmitting signals between a portable transmitter and
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`electronic device that include an I.D. code and M series signal); EX1015 (Fuentes),
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`1:4-13, 4:63-5:33, Fig. 3 (teaching transmitting an identification code that includes
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`a pseudo-random code and a fixed code). Simple circuits for generating pseudo-
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`random digital sequences (or Maximum Length Sequences or M-sequences) are
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`well-known in the art. For example, a circuit with “n” 1-bit storage units can gen-
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`erate a unique, non-repeating sequence of 2n-1 bits having random statistics.
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`EX1017 (Cinnaminson), 1:5-2:63, Figs. 4, 5 (teaching generation of digital pseu-
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`do-random or pseudo-irregular sequences).
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`32. Prior to the claimed priority date, it was further well-known in the art
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`to transmit identification code and confirmation signals as intermittent signals.
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`EX1004 (Yamamoto), 14:1-20, Fig. 21 (teaching transmitting signals between the
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`base unit and branch unit (phone) on a TDMA basis); EX1005 (Mardirossian),
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`4:36-56, 5:43-48 (teaching transmitting intermittent signals between a pager and
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`phone); EX1009 (Sakakura) ¶13 (teaching transmitting signals from personal iden-
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`tification transmitter to phone at predetermined intervals); EX1007 (Olah), 3:52-
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`4:2 (teaching transmitting intermittent signals between two cards) ); EX1018
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`(Umemoto), 2:35-50 (teaching a “timer circuit” used to enable “intermittent signal-
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`receiving operation” in a cordless phone system); EX1019 (Kojima), 6:33-42
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`(teaching a timer for synchronizing transmission times in a TDMA system).
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`33. Finally, it was also well-known in the art to transmit a signal to main-
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`tain an electronic device in an operational state and to stop transmitting such a sig-
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`nal to at least partially disable a device. E.g., EX1009 (Sakakura) ¶¶15-18 (teach-
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`ing transmitting a signal to a mobile phone to notify it that the state of use is nor-
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`mal, and stopping transmission of the signal to disable operation of the phone);
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`EX1008 (Bisak), 7:30-40 (teaching transmitting a low output signal to an appliance
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`and stopping transmission of the low output signal to disable operation of the ap-
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`pliance).
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`VI. ANALYSIS OF THE ’493 PATENT
`A. Overview of the ’493 Patent
`34. The ‘493 specification generally describes a “Device for Prohibiting
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`Unauthorized Use of Electronic Devices.” The ‘493 specification explains that the
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`“invention relates to a device for preventing or prohibiting the use of cellular
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`phones (or cellphones) or other devices by unauthorized individuals if they are left
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`behind or stolen.” EX1001, 1:6-9. The ‘493 specification thus describes “a use
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`prohibition system which can disable a cellular phone or any other object if it sepa-
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`rates more than a predetermined distance from the user, and at the same time give a
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`warning to the user.” Id. 2:19-23.
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`35. The ‘493 specification describes that “FIG. 1 is a block diagram of a
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`call prohibition device used for a cellular phone.” EX1001, 3:44-45. The “call
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`prohibition device” includes a “card-shaped identification signal transmission unit
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`10” and “a call prohibition mode canceling unit 20 mounted in a cellphone 30.”
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`EX1001, 3:45-49; see also Fig. 1 (excerpt reproduced below).
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`EX1001, Fig. 1 (excerpt); see also, e.g., EX1001, 2:26-3:13.
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`36. The ‘493 patent describes that the identification code transmission
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`unit transmits “[a]n ID code signal of a predetermined level” to the use prohibition
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`canceling unit. EX1001, 2:58-59. “The level of the ID signal received by the re-
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`ceiver of the canceling unit is inversely proportional to the square of the distance
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`between the canceling unit and the transmission unit.” EX1001, 2:66-3:2. Thus,
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`“if the signal level [received by the canceling unit] drops below a predetermined
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`value, the canceling unit judges that the cellphone and canceling unit have separat-
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`ed a predetermined distance from the user, and stops producing the use prohibition
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`canceling signal.” EX1001, 3:2-6. At this point, the cell phone will be disabled.
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`EX1001, 9:8-16.
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`37. The ‘493 patent further explains that the “use prohibition canceling
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`unit” transmits a “confirmation signal” to the “identification code transmission
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`unit.” EX1001, 7:7-8. “If the canceling unit separates more than a predetermined
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`distance from the transmission unit, the level of the confirmation signal from the
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`canceling unit also drops when it is received by the receiver of the [identification
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`code] transmission unit.” EX1001, 3:7-10. The identification code transmission
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`unit “detects this fact and produces a warning, notifying the user that the cellphone
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`has been left behind or stolen.” EX1001, 3:10-13; see also, e.g., EX1001, 9:17-18.
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`38. The ‘493 patent describes that the “ID signal may be one comprising
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`an M-sequence (maximum length null sequence) signal and a code signal particular
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`to the cellphone number.” EX1001, 5:51-55, Fig. 6 (reproduced below). The ‘493
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`patent explains that “[t]he M-sequence signal is a kind of binary pseudo-irregular
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`signal consisting of 1s and 0s….” EX1001, 6:1-3.
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`EX1001, Fig. 6.
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`39.
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`I have considered the Challenged Claims (claims 1-6 and 8-10) of
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`the ’493 Patent, which read as follows:
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`[1.pre] A device for prohibiting unauthorized use of an electronic de-
`vice, the device comprising:
`[1.A] an identification code transmission unit comprising:
`[1.B] a first transmitter for transmitting an identification code signal at
`a constant level;
`[1.C] a first receiver for receiving a confirmation signal;
`[1.D] an alarm mechanism being activated when the confirmation sig-
`nal received by said first receiver is below a predetermined value;
`[1.E] a use prohibition canceling unit comprising:
`[1.F] a second transmitter for transmitting the confirmation signal at a
`constant level;
`[1.G] a second receiver for receiving the identification code signal;
`and
`[1.H] said use prohibition canceling unit maintaining the electronic
`device in an operational state while the identification code signal re-
`ceived 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.
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`[2] The device as claimed in claim 1, wherein the electronic device
`comprises a cellular phone.
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`[3] The device as claimed in claim 2,wherein said identification code
`transmissi