PTAB

IPR2019-00640

Huawei Technologies Co Ltd v. Maxell Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: PORTABLE MOBILE UNIT
  • Brief Description: The ’306 patent discloses techniques for generating ringing sounds on a portable mobile unit, such as a cellular phone, by using sounds from multiple distinct sources (e.g., FM, PCM, MIDI) or sound generation protocols.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lee and Huang - Claims 2 and 13 are obvious over Lee in view of Huang.

  • Prior Art Relied Upon: Lee (Patent 6,216,017) and Huang (Chinese Pub. CN 1190303A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lee disclosed the basic claimed "portable mobile unit," a cellular phone with a controller that activates a buzzer to generate a ring tone for an incoming call. To the extent Lee teaches only a single sound source, Petitioner asserted Huang supplied the missing limitation of "a plurality of sound sources" (claim 2) or "a plurality of sound generation protocols" (claim 13). Huang described a telephone that alerts a user with a combination of a traditional ring tone (from a ring tone generator) and a synthesized speech signal (from a digital sound generator). The petitioner contended that these two generators constitute distinct sound sources using different protocols (simple oscillation vs. voice synthesis).
    • Motivation to Combine: A POSITA would combine Lee's cellular phone with Huang's multi-source ringing system for several predictable benefits. These included: (1) creating more distinctive ringing sounds to distinguish one user's phone from another's, especially in a crowded environment like an office; (2) providing enhanced user information by verbally announcing caller ID or extension numbers; and (3) allowing for greater user customization of ringtones.
    • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success because the combination involved applying known ringing technologies (buzzers, speech synthesizers) to a standard mobile device using a conventional controller. These were common electronic components that were readily integrated.

Ground 2: Obviousness over Lee, Huang, and Miura - Claims 5, 6, 14, and 15 are obvious over Lee in view of Huang and Miura.

  • Prior Art Relied Upon: Lee (Patent 6,216,017), Huang (Chinese Pub. CN 1190303A), and Miura (Patent 6,763,105).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Lee and Huang combination by asserting that Miura taught the additional limitations of dependent claims 5, 6, 14, and 15. Miura disclosed a phone with a "timer" (a clock unit) and a "calendar function" that allowed a user to set "time zones" in advance to automatically adjust the phone's call handling settings. These settings included changing ring patterns, switching between audible ringing and vibration, or activating an answering function based on the time of day, day of the week, or date.
    • Motivation to Combine: A POSITA would incorporate Miura's time-based functions into the Lee/Huang phone to add user convenience and flexibility. This would allow a user to automatically silence the phone during pre-set times (e.g., meetings or overnight), use different ring patterns for work hours versus personal time, or automatically switch between audible and vibration alerts without manual intervention. This was a known technique for improving a known device.
    • Expectation of Success: The combination was argued to be a predictable integration of known features. Adding a clock unit and time-based control logic to a cellular phone's main controller was a straightforward task for a POSITA at the time.

Ground 3: Anticipation by Masaki - Claims 2 and 13 are anticipated by Masaki.

  • Prior Art Relied Upon: Masaki (Patent 4,330,780).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Masaki, which disclosed a radio paging receiver from the early 1980s, anticipated every element of independent claims 2 and 13. Masaki's pager was a "portable mobile unit" that generated an audible alert upon receiving a signal. This alert was a "ringing sound" comprising a sequence of two distinct sounds: a paging alert tone followed by a digitized voice signal (e.g., "Dial 501"). Petitioner asserted that the "paging tone generator" and the "tone decoder" (for the voice signal) constituted a "plurality of sound sources." Furthermore, these sources used fundamentally different "sound generation protocols"—the tone generator was a simple component emitting a pre-defined tone, while the tone decoder converted stored digital data into an analog voice waveform, thus satisfying the limitations of both independent claims. The pager's digital logic circuit served as the "controller" that controlled these sound sources upon receipt of a paging signal.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 5, 6, 14, and 15 were obvious over the combination of Lee, Huang, and Serby (Patent 4,924,499), which taught a programmable timer for silencing a ringer. Petitioner also argued claims 5, 6, 14, and 15 were obvious over Masaki in view of Davis (Patent 4,894,649), which added timer- and calendar-based silencing functions to a pager.

4. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 2, 5, 6, and 13-15 of the ’306 patent as unpatentable.