Trials@uspto.gov
`571-272-7822
`
`Paper 18
`Entered: January 29, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COOLPAD TECHNOLOGIES, INC. and ZTE (USA), INC.,
`Petitioners,
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2019-01320
`Patent 7,319,889 B2
`
`
`
`
`
`
`
`
`
`Before MELISSA A. HAAPALA, STACY B. MARGOLIES, and
`SCOTT E. BAIN, Administrative Patent Judges.
`HAAPALA, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`

`

`IPR2019-01320
`Patent 7,319,889 B2
`Coolpad Technologies, Inc. and ZTE (USA), Inc. (collectively,
`“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319 to institute
`an inter partes review of claims 1, 2, 4–6, 8, 9, 11, and 12 of U.S. Patent No.
`7,319,889 B2 (Ex. 1001, “the ’889 patent”). Paper 3 (“Pet.”). Bell Northern
`Research, LLC (“Patent Owner”) filed a Preliminary Response. Paper 9
`(“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a
`Preliminary Reply (“Prelim. Reply,” Paper 11) to address Patent Owner’s
`Section 314(a) and 325(d) arguments and Patent Owner filed a Preliminary
`Sur-Reply (“Prelim. Sur-Reply,” Paper 15) to address issues raised in
`Petitioner’s Preliminary Reply.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we grant Petitioner’s request and
`institute an inter partes review of all challenged claims.
`BACKGROUND
`I.
`A. The ’889 Patent (Ex. 1001)
`The ’889 patent describes a mobile station “having a reduced power
`consumption under certain operating conditions.” Ex. 1001, 1:15–17.
`Specifically, the ’889 patent describes “reducing the power consumption of
`the display of an activated telephone set in case the display is not needed,
`i.e., in particular during a telephone call.” Id. at 1:47–49. The ’889 patent
`describes detecting that the telephone set is near an object, such as the user’s
`ear, and switching off the display if the display is in an on condition. Id. at
`1:55–58, 2:19–25. The patent also discloses that the display is switched on
`in response to detecting that the telephone set has moved away from an
`object, such as the user’s ear. Id. at 2:6–9.
`Figure 1 of the ’889 patent is reproduced below:
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`IPR2019-01320
`Patent 7,319,889 B2
`
`
`Figure 1 illustrates “a preferred embodiment of a mobile station having the
`inventive detection functionality.” Id. at 2:44–46. Mobile station 110
`includes proximity sensor 140 located near display 150. Id. at 2:56–59. In
`response to accepting an incoming call or automatically, proximity sensor
`140 is activated to monitor a proximity to an external object, for example a
`range of about five centimeters. Id. at 3:12–15. If proximity sensor 140
`detects an external object (such as the user’s ear) within the monitored
`range, the power consumption of the display 150 is reduced, most preferably
`by switching display 150 completely off to spare battery power during the
`telephone call. Id. at 3:20–25. When the telephone call is finished and the
`user moves mobile station 110 away from his ear, proximity sensor 140
`moves out of range of the external object and, in response thereto, display
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`IPR2019-01320
`Patent 7,319,889 B2
`150 is switched back on, enabling the user to look at information on display
`150. Id. at 3:26–32. Figure 1 includes additional components not described
`here.
`
`The ’889 patent further describes that the proximity sensor may be
`any kind of proximity sensor that is capable of observing a close range or
`small distance. Id. at 2:17–20. The proximity sensor is preferably “a
`standard low-cost proximity sensor, for example a thermal sensor” but
`“other proximity sensors, such as conventional mechanical proximity (load)
`sensors, optical sensors or range detecting sensors, fall within the broad
`scope of the present invention.” Id. at 3:15–20.
`B. Illustrative Claim
`Claims 1 and 8 are independent claims. Claim 1 is illustrative of the
`subject matter at issue:
`1. A mobile station, comprising:
`a display;
`a proximity sensor adapted to generate a signal indicative
`of proximity of an external object; and
`a microprocessor adapted to:
`(a) determine whether a telephone call is active;
`(b) receive the signal from the proximity sensor; and
`(c) reduce power
`to
`the display
`if (i)
`the
`microprocessor determines that a telephone call is active
`and (ii) the signal indicates the proximity of the external
`object; wherein:
`the telephone call is a wireless telephone call;
`the microprocessor reduces power to the display
`while the signal indicates the proximity of the external
`object only if the microprocessor determines that the
`wireless telephone call is active; and
`
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`IPR2019-01320
`Patent 7,319,889 B2
`the proximity sensor begins detecting whether an
`external object is proximate substantially concurrently
`with the mobile station initiating an outgoing wireless
`telephone call or receiving an incoming wireless telephone
`call.
`
`C. References
`Petitioner relies on the following references:
`1. Fukiharu, Japanese Unexamined Patent Application P 2000-
`106598A, published Apr. 11, 2000 (Ex. 1004; Ex. 10051).
`2. Giel, US 5,881,377, issued Mar. 9, 1999 (Ex. 1006).
`3. Numazawa, Japanese Unexamined Patent Application H11-
`220432, published Aug. 10, 1999 (Ex. 1007; Ex. 10082).
`4. Bradley, US 5,864,316, issued Jan. 26, 1999 (Ex. 1009).
`
`Petitioner further relies on testimony of Jonathan Wells, Ph.D. (Ex.
`1003).
`
`D. Grounds Asserted
`Petitioner challenges the patentability of claims of the ’889 patent
`over the following references:
`Claim(s) Challenged
`35 U.S.C. §
`1, 2, 4–6, 8, 9, 11, 12 102(b)
`1, 2, 4–6, 8, 9, 11, 12 103
`1, 2, 4–6, 8, 9, 11, 12 103
`
`
`Fukiharu
`Fukiharu, Giel
`Numazawa, Bradley
`
`Basis
`
`
`1 Exhibit 1005 is the certified English-language translation of Exhibit 1004.
`Patent Owner also submitted a translation (Ex. 2011), but did not submit a
`certification for the translation. Patent Owner does not provide any
`explanation why it submitted its own translation and does not assert there are
`any material differences between the translations. See generally Prelim.
`Resp. Our Decision refers to Exhibit 1005.
`2 Exhibit 1008 is the certified English-language translation of Exhibit 1007.
`
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`IPR2019-01320
`Patent 7,319,889 B2
`
`E. Related Proceedings
`Petitioner and Patent Owner identify the following district court
`litigation involving the ’889 patent: Bell Northern Research, LLC v.
`Coolpad Technologies, Inc., et al., Case No. 3:18-cv-01783 (S.D. Cal.); Bell
`Northern Research, LLC v. ZTE Corporation, et al., Case No. 3:18-cv-
`01786 (S.D. Cal.); Bell Northern Research, LLC v. Huawei Device
`(Dongguan) Co., Ltd., et al., Case No. 3:18-cv-01784 (S.D. Cal.); Bell
`Northern Research, LLC v. Kyocera Corporation, et al., Case No. 3:18-
`cv01785 (S.D. Cal.). See Pet. 2–3; Paper 8, 2. Patent Owner further states
`the ’889 patent is involved in these additional proceedings: Bell Northern
`Research, LLC v. LG Electronics, Inc., et al., Case No. 3:18-cv-02864 (S.D.
`Cal.); Bell Northern Research, LLC v. Samsung Electronics Co., Ltd., et al.,
`Case No. 2:19-cv-00286 (E.D. Tex.). Paper 8, 2.
`Patent Owner further identifies the following PTAB proceeding
`involving the ’889 patent: Coolpad Technologies, Inc., et al. v. Bell
`Northern Research, LLC, IPR2019-01175 (filed June 12, 2019).3 Paper 8, 2.
`Additionally, Petitioner identifies that the ’889 patent is related to
`U.S. Patent No. 8,204,554 B2 (“the ’554 patent”) and U.S. Patent No.
`7,113,811. Pet. 3. Petitioner concurrently filed a petition for inter partes
`review of the ’554 patent in IPR2019-01319. Id. Petitioner also states that
`other petitioners have filed petitions related to the ’889 patent in IPR2019-
`01172 and IPR2019-01175.4
`
`
`3 IPR2019-01175 was terminated on December 12, 2019.
`4 Both proceedings were terminated on December 12, 2019.
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`IPR2019-01320
`Patent 7,319,889 B2
`
`II. ANALYSIS
`A. Discretionary Denial
`1. § 314(a)
`Patent Owner argues we should exercise our discretion under
`Section 314(a) to deny institution because the related district court litigation
`is in advanced stages. See Prelim. Resp. 21–24; Prelim. Sur-Reply 1–2.
`Patent Owner asserts the district court has issued its Claim Construction
`Order; discovery will be complete before the institution decision deadline;
`and the district court will schedule trial shortly after March 20, 2020. Id. at
`21. Patent Owner asserts that “it is a near certainty” that the district court
`proceedings will have concluded before we issue our final written decision
`in this proceeding. Id.at 21. Patent Owner also asserts that Petitioner relies
`on the same prior art and arguments in the district court action. Id. at 24.
`The Director has discretion to institute an inter partes review under 35
`U.S.C. § 314(a). Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19, 15 (PTAB Sept. 6, 2017) (precedential) (citing 35
`U.S.C. § 314(a)). The Board will consider the advanced state of a district
`court proceeding as a “factor that weighs in favor of denying the Petition
`under § 314(a).” NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8, 20 (PTAB Sept. 12, 2018) (precedential).
`We agree with Petitioner that our exercise of discretion to deny
`institution under Section 314(a) is not warranted here. See Prelim. Reply 1.
`In NHK, the trial in the district court proceeding was set to conclude six
`months before a final Board decision would be due. See NHK, Paper 8, 20.
`Here, however, as acknowledged by Patent Owner, the trial date in the
`related district court proceeding has not yet been set and is not set to be
`scheduled until after the pre-trial conference of March 20, 2020. See Prelim.
`
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`IPR2019-01320
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`Resp. 21. Furthermore, we agree with Petitioner that it is not a near
`certainty that the district court will proceed to setting a trial date after
`institution of this proceeding. See Prelim. Reply 1–2. The district court
`denied Petitioner’s request for a stay without prejudice but specifically
`stated that the request may be renewed if institution is granted so it can
`“consider the efficiencies of proceeding, whether in whole or in part, in
`these litigations.” Ex. 1021, 5. The district court further requested that the
`parties keep it informed if any IPRs get instituted as it is “rather loathe to go
`on parallel tracks with the Patent Office.” Ex. 1020, 120:25–121:2. In light
`of these statements by the district court, is not clear that a trial date will be
`set shortly after the March 2020 pre-trial conference. Thus, it is not clear
`that the district court litigation will have concluded by the time our final
`decision is due. Rather, our decision here has the potential to impact the
`efficiencies of the district court litigation.
`In view of the foregoing, we decline to exercise our discretion under
`35 U.S.C. § 314(a).
`
`2. § 325(d)
`Patent Owner argues we should exercise our discretion under Section
`325(d) to deny institution because the Office has considered the same art or
`arguments as that presented in the Petition. See Prelim. Resp. 24–32. Patent
`Owner asserts that Fukiharu and Giel were considered during prosecution of
`the ’889 patent’s continuation application, which resulted in U.S. Patent No.
`8,204,554 (“the ’554 patent”). See id. at 14–16, 24–27, 30–31. Patent
`Owner further asserts the Examiner considered art cumulative of Fukiharu
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`Patent 7,319,889 B2
`during prosecution of the ’889 patent application.5 See id. at 25, 28–29.
`Patent Owner argues that we should decline to institute on Ground 1
`(Fukiharu) and Ground 2 (Fukiharu and Giel) because the same or
`substantially the same prior art and arguments were presented to the
`Examiner. Id. at 27, 31. Patent Owner argues that the Becton Dickinson
`factors weigh in favor of declining to review Fukiharu again. See id. at 28–
`30 (citing Becton Dickinson & Co. v. B Braun Melsungen AG, IPR2017-
`01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (§ III.C.5, first para.
`designated precedential)). Patent Owner argues that if we decline to institute
`on Grounds 1 and 2, we should exercise our discretion to deny institution
`altogether because it would not be an efficient use of our time and resources
`to institute on Ground 3 (Numazawa and Bradley). Id. at 31–32.
`Section 325(d) provides that in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” We consider several
`non-exclusive factors when determining whether to deny institution under
`Section 325(d), including: (a) the similarities and material differences
`between the asserted art and the prior art involved during examination; (b)
`the cumulative nature of the asserted art and the prior art evaluated during
`examination; (c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection; (d)
`the extent of the overlap between the arguments made during examination
`
`
`5 In its Preliminary Sur-Reply, Patent Owner further asserts that Fukiharu is
`on the cover of the patent as art of record. Prelim. Sur-Reply 3. However,
`the challenged patent in this proceeding (the ’889 patent) does not list
`Fukiharu as a cited reference. See Ex. 1001, 1–2.
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`IPR2019-01320
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`and the manner in which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently
`how the Examiner erred in its evaluation of the asserted prior art; and (f) the
`extent to which additional evidence and facts presented in the Petition
`warrant reconsideration of the prior art or arguments. Becton, Dickinson,
`Paper 8, 17–18.
`Other than the assertion that Fukiharu is cumulative to Perez, Patent
`Owner’s arguments that the same or substantially the same prior art and
`arguments were presented previously to the Office are primarily based on
`the prosecution history of the ’554 patent application, which is a
`continuation application of the ’889 patent challenged in this proceeding.
`See Prelim. Resp. 24–31. But the prior art and arguments in the ’554 child
`patent were presented after the ’889 patent issued. In particular, the ’889
`patent issued on January 15, 2008 and the prosecution history upon which
`Patent Owner relies all occurred in 2011 or later. See Ex. 1001, code (45);
`Prelim. Resp. 14–16, 25–27, 30. Thus, the prior art and arguments
`considered by the Office during the prosecution of the ’554 patent
`application were not previously presented to the Office, or considered by the
`Examiner, for the challenged ’889 patent.
`Moreover, we determine the Becton Dickinson factors do not favor
`denying institution. During prosecution of the ’889 patent application, the
`Examiner rejected the pending claims over Perez. Ex. 1002, 71–75. Patent
`Owner asserts that the Examiner considered Fukiharu during prosecution of
`the continuation application (the ’554 application) and found Fukiharu to be
`analogous in substance to Perez. Prelim. Resp. 28. We disagree for several
`reasons. First, during prosecution of the ’554 continuation application, the
`Examiner considered an English translation of the abstract of the Fukiharu
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`IPR2019-01320
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`reference, and not the complete translation of Fukiharu used by Petitioner in
`this proceeding to support the challenges based on Fukiharu. See Ex. 1002,
`136. We are persuaded by Petitioner’s argument that the Examiner did not
`fully understand Fukiharu based on consideration of the translated abstract.6
`See Prelim. Reply 3; see also Semiconductor Energy Lab. Co. v. Samsung
`Elect. Co., 204 F.3d 1368, 1377–78 (Fed. Cir. 2000) (“[W]hile the
`examiner’s initials require that we presume that he or she considered the []
`reference, this presumption extends only to the examiner’s consideration of
`the brief translated portion and the concise statement.”). Second, we note
`that, contrary to Patent Owner’s contentions, the Examiner did not make any
`specific statements regarding the relation of Fukiharu to Perez. Rather, in a
`Notice of Allowance for the ’554 continuation application, issued
`subsequent to consideration of an IDS that listed the Fukiharu abstract, the
`Examiner merely stated the claims were allowed for the reasons set forth in
`the previous action (prior Notice of Allowance) mailed December 29, 2010.
`See Ex. 2025, 152. This statement by the Examiner in the continuation
`
`
`6 The IDS also listed U.S. Patent No. 6,631,192 B1 (Ex. 1026), which
`Applicant asserted is the corresponding U.S. application to Fukiharu. See
`Ex. 1002, 136. The Examiner’s additional consideration of the U.S.
`application does not convince us that the full content of the Fukiharu
`Japanese application was evaluated during prosecution of the ’554 patent.
`Petitioner asserts the U.S. patent lacks critical teachings found in the full
`translation of Fukiharu. Prelim. Reply 3. This assertion appears supported
`by the evidence. Compare e.g., Ex. 1005, Fig. 3 with Ex. 1026, Fig. 3.
`Further, Patent Owner acknowledges Fukiharu and its U.S. counterpart
`disclose only “some of the same figures.” See Prelim. Resp. 42. Contrary to
`Patent Owner’s citation that Figures 2 and 3 of Fukiharu correspond to
`Figures 1 and 2 of the ’192 patent, we note that the two comparable figures
`are Figures 1 and 2 in both references. See Ex. 1005, Figs. 1, 2; Ex. 1026,
`Figs. 1, 2.
`
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`IPR2019-01320
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`application is insufficient to persuade us that the Examiner found Fukiharu
`analogous to Perez or that Perez is cumulative to the full translation of
`Fukiharu.
`With regard to Giel, Petitioner states that Giel was cited in an IDS
`during prosecution of the ’889 patent application. Pet. 7. However, as
`further noted by Petitioner, Giel was never addressed in any office action or
`response. Id.; see generally Ex. 1002. Additionally, in its challenge using
`Giel, Petitioner relies on the combination of Fukiharu and Giel, a
`combination of prior art that was not considered during prosecution of the
`’889 patent.
`In summary, we determine there are material differences between the
`art asserted in Petitioner’s challenges based on Fukiharu and the prior art
`involved during examination and the asserted art is not cumulative to the art
`involved during examination. Additionally, Fukiharu and the combination
`of Fukiharu and Giel were not used as a basis for any rejections during
`examination of the ’889 patent and the arguments made during examination
`do not overlap with the manner in which Petitioner relies on Fukiharu and
`Giel in the Petition. Accordingly, we determine the Petition does not present
`the same or substantially the same prior art or arguments that were
`previously presented to the Office and we decline to exercise our discretion
`to deny institution under 35 U.S.C. § 325(d).
`B. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, claims of a patent shall be construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`
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`IPR2019-01320
`Patent 7,319,889 B2
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2019); see also Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence. DePuy Spine, Inc. v.
`Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`1. “Proximity Sensor”
`“Proximity sensor” appears in independent claim 1, and claims 2, 4,
`
`and 6 by virtue of their dependency. Patent Owner contends we should
`construe “proximity sensor” as “a sensor capable of determining whether an
`object is within a close range or short distance without contacting the
`object.” See Prelim. Resp. 4–11. In support of its construction, Patent
`Owner argues that the specification of the ’889 patent establishes the
`proximity sensor must detect whether an object is near or within a certain
`range. Prelim. Resp. 5–7 (citing Ex. 1001, 2:13–17, 3:13–22, 3:33–39).
`Citing testimony of its declarant, Mark Horenstein, Ph.D., Patent Owner
`argues that its construction is also consistent with the understanding of a
`person of ordinary skill in the art. Id. at 7–8 (citing Ex. 2006 ¶ 27). Patent
`Owner further argues that numerous dictionary definitions and other
`references establish that the ordinary usage of “proximity sensor” requires
`nearness but not contact. Id. at 8 (citing Exs. 2007, 2008).
`
`Petitioner does not offer a specific construction for “proximity
`sensor,” but asserts that a “touch sensor is a type of proximity sensor that
`aligns with the ’889 patent’s ‘conventional mechanical proximity (load)
`sensors.’” Pet. 12, 27 (citing Ex. 1001, 3:15–20; Ex. 1003 ¶¶ 49, 85).
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`We are persuaded, based on the current record, that Patent Owner’s
`proposed construction is consistent with the ordinary and customary
`meaning of the term in the context of the entire disclosure of the ’889 patent.
`The ’889 patent states the following:
`[T]he proximity sensor is proposed to be a heat flow or
`temperature sensor, an optical or infrared sensor, or a load
`sensor. However, as a further advantage, basically any kind of
`proximity sensor which is capable of observing a close range or
`small distance may be used.
`Ex. 1001, 2:13–15 (emphasis added). The ’889 patent further describes that
`the proximity sensor is activated to monitor “a proximity [] to an external
`object [], for example a range of about five centimeters.” Id. at 3:13–15.
`Thus, the ’889 patent makes clear that the proximity sensor must be capable
`of observing a close range or small distance (proximity) to an object. As
`noted by Patent Owner, the Oxford English Dictionary defines proximity as
`“[t]he fact, condition or position of being near or close by in space.” Prelim.
`Resp. 8 (citing Ex. 2005). As further noted by Patent Owner, the Oxford
`Dictionary of Mechanical Engineering defines a proximity sensor as “[a]
`sensor that operates without making contact with the object being sensed.”
`Id. at 8 (citing Ex. 2007). Both definitions are consistent with the disclosure
`of the ’889 patent and support Patent Owner’s construction that the ordinary
`and customary meaning of a proximity sensor, as would have been
`understood by a person of ordinary skill in the art, is a sensor capable of
`determining whether an object is within a close range or short distance
`without contacting the object.
`
`The ’889 patent further states that “conventional mechanical
`proximity (load) sensors” fall within the scope of the invention. On the
`current record, we are persuaded by Dr. Horenstein’s testimony that a person
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`of ordinary skill in the art would have understood the ’889 patent’s reference
`to a “mechanical (load) sensor” to be a proximity type of mechanical (load)
`sensor, and not a touch sensor. See Ex. 2006 ¶ 35; see also Prelim. Resp.
`33–35 (Patent Owner’s assertions that the testimony of Dr. Horenstein
`shows the mechanical proximity (load) sensor is not a touch or contact
`sensor). We credit Dr. Horenstein’s testimony, supported by evidence, that
`micro-electro-mechanical proximity sensors capable of detection at a
`distance, such as those described by Luo, Gueissaz, and Hornung, were well
`known in the time frame of the ’889 patent. See Ex. 2006 ¶¶ 38–42 (citing
`Ex. 2018, 1709–10; Ex. 2019, 269; Ex. 2020). Petitioner’s declarant, Dr.
`Wells, does not provide explanation or evidence to support his assertion that
`a touch sensor is a mechanical proximity sensor (see Ex. 1003 ¶ 49);
`therefore, we give this testimony little weight (see 37 C.F.R. § 42.65(a)).
`
`Accordingly, based on the record before us, and for purposes of this
`Decision, we adopt Patent Owner’s construction and construe “proximity
`sensor” as “a sensor capable of determining whether an object is within a
`close range or short distance without contacting the object.”
`2. Other Terms
`Petitioner offers a claim construction for “a signal indicative of
`proximity of an external object.” Pet. 9–10. Patent Owner states that it
`“disagrees with Petitioner’s construction of this phrase [], but because its
`construction has no apparent impact on Petitioner’s arguments, Patent
`Owner does not challenge it for purposes of this Preliminary Response.”
`Prelim. Resp. 3. Patent Owner additionally offers a claim construction for a
`“microprocessor” as “a chip or chipset that implements the central
`processing unit of a computer.” Prelim. Resp. 11.
`
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`For purposes of this Decision, we do not find it necessary to expressly
`construe these terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that “we need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy’” (citation omitted)).
`C. Anticipation over Fukiharu and
`Obviousness over Fukiharu and Giel
`Petitioner contends that claims 1, 2, 4–6, 8, 9, 11, and 12 are
`unpatentable as anticipated under 35 U.S.C. § 102 over Fukiharu. Pet. 10–
`26. Petitioner further contends that claims 1, 2, 4–6, 8, 9, 11, and 12 are
`unpatentable under 35 U.S.C. § 103 as obvious over Fukiharu and Giel. Id.
`at 26–46.
`
`
`1. Overview of Fukiharu
`Fukiharu describes a mobile telephone device that enables an increase
`in talk time and standby time by controlling, through a touch sensor,
`operation of the backlight of the display. Ex. 1005, [57].
`Figure 1 of Fukiharu is reproduced below.
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`
`
`Figure 1 illustrates an external view of a mobile telephone with a touch
`sensor. Id. ¶ 11. Mobile telephone 1 includes touch sensor 2c, lighting
`device (backlight) 3a of liquid crystal display device 3, light device
`(backlight) 4a of keypad portion 4, and receiver 5. Id. ¶¶ 12, 13.
`
`Figure 2 of Fukiharu is depicted below.
`
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`
`
`Figure 2 is a block diagram depicting control of the lighting device in the
`mobile telephone. Id. ¶ 11. Lighting controlling means 2 includes
`controlling portion 2a, lighting device on/off circuit portion 2b, touch sensor
`2c, lighting device (backlight) 3a of liquid crystal display device 3, and
`lighting device (backlight) 4a of keypad portion 4. Id. ¶ 13. Touch sensor
`2c is disposed at the periphery of receiver 5 of mobile telephone 1. Id.
`
`Fukiharu discloses that, if in a voice communication mode, a touch
`sensor is placed into an operating state and “if a portion of a human body,
`such as an ear, makes contact with the touch sensor, a lighting-OFF signal is
`outputted to the light device ON/OFF circuit portion,” which causes the
`power supply of the lighting device (backlight) to go into the OFF state. Id.
`¶ 9; see also id. ¶ 15 (similarly describing that a touch sensor is placed into
`an operating state if in a voice communication mode and if the touch sensor
`2c contacts a portion of the human body, such as an ear, the power supplies
`to lighting devices 3a, 4a go to the OFF state). The lighting-OFF state is
`maintained until the touch sensor is no longer contacted. Id. ¶ 9. Fukiharu
`describes that the disclosed structure “enables a reduction in the
`consumption of battery power.” Id. ¶ 18.
`
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`IPR2019-01320
`Patent 7,319,889 B2
`
`2. Overview of Giel
`Giel describes a communication device which conserves battery
`power by blanking its display when the communication device is held
`adjacent to a user’s head. Ex. 1006, [57], 1:7–9. Figure 3 of Giel is
`reproduced below.
`
`
`
`Figure 3 is an operational block diagram of a radio communication
`system that includes communication device 100. Id. at 2:48–49.
`Communication device 100 includes controller 306 and earpiece sensor 312,
`along with other components not described here. Id. at 4:16–18. Earpiece
`sensor 312 transmits an indication to controller 306 that the communication
`device is located adjacent to the device user’s head. Id. at 6:20–23. Giel
`describes that any suitable sensor may be used, such as a heat-sensitive
`switch, a proximity detector, or optoelectronic switch. Id. at 5:5–7.
`Earpiece sensor 312 is coupled to controller 306 for providing the indication
`to controller 306. Id. at 5:9–11.
`
`19
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`

`IPR2019-01320
`Patent 7,319,889 B2
`
`3. Claim 1
`Petitioner asserts Fukiharu discloses the limitations recited in
`
`claim 1. Pet. 10–18. Petitioner also asserts the combination of
`Fukiharu and Giel teaches the limitations recited in claim 1. Id. at 26–
`36. A detailed analysis of Petitioner’s assertions, and Patent Owner’s
`preliminary response, is set forth below.
`a. a proximity sensor adapted to generate a signal indicative of
`proximity of an external object
`Petitioner asserts Fukiharu discloses this limitation through its
`description of a mobile telephone that includes a “touch sensor” that outputs
`a detection output indicating whether the touch sensor contacts a portion of
`the human body. Pet. 11. Petitioner asserts the touch sensor is a type of
`proximity sensor. Id. Petitioner further argues that if Fukiharu’s touch
`sensor does not expressly disclose a “proximity sensor,” Giel describes a
`communication device that includes an “earpiece sensor” that provides a
`conventional proximity detector that generates a signal indicative of
`proximity to a user’s head. Id. at 27. Petitioner asserts a person of ordinary
`skill in the art would have modified Fukiharu to implement Giel’s proximity
`sensor to achieve the known benefits of using a proximity detector,
`including the ability to detect when the mobile telephone is in proximity to a
`user’s head or ear without requiring the mobile telephone to directly contact
`the user’s head, and that the modification would have been a simple
`substitution of one known element (Fukiharu’s touch sensor) for another
`(Giel’s proximity detector) to obtain predictable results. Id. at 28–29.
`Patent Owner argues that Fukiharu does not disclose the claimed
`proximity sensor because it uses a “touch sensor” that does not sense unless
`physical contact is made. Prelim. Resp. 32. Additionally, Patent Owner
`
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`IPR2019-01320
`Patent 7,319,889 B2
`argues that, without using hindsight, a person of ordinary skill in the art
`would have no reason to modify Fukiharu because it already included a
`touch sensor and a person of ordinary skill had no reason to look for a
`different sensor. Id. at 49. Patent Owner argues that, contrary to Petitioner’s
`assertion, Giel does not recite the advantages of proximity sensors and does
`not discuss the benefits of detecting proximity over touch-based or contact
`detection. Id. at 50. Patent Owner argues that Petitioner’s assertion the
`proposed combination would be a simple substitution of one known element
`for another is insufficient to establish motivation to combine. See id. at 51–
`52. Patent Owner further argues Petitioner fails to show how Giel’s earpiece
`sensor would be incorporated into Fukiharu’s device. Id. at 53.
`
`We determine, at this stage of the proceeding and on the current
`record, that Petitioner does not show sufficiently that Fukiharu discloses a
`“proximity” sensor as