PTAB

IPR2019-00661

Huawei Technologies Co Ltd v. Maxell Ltd

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: PORTABLE MOBILE UNIT
  • Brief Description: The ’140 patent describes a portable mobile unit designed to alert a user when uplink communication quality degrades. It generates an alarm when the mobile unit must transmit at its maximum power for a predetermined period, even while the downlink signal from the base station is still being received normally, indicating a high probability of a dropped connection.

3. Grounds for Unpatentability

Ground 1A: Claims 1, 3, and 4 are obvious over Wheatley in view of Suzuki.

  • Prior Art Relied Upon: Wheatley (5,469,471) and Suzuki (EP0675609).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wheatley, which discloses portable transceivers in a CDMA system, taught the core limitations of the challenged claims. Wheatley’s system used a microprocessor to process power control commands from a base station. When continuous power-up commands caused the unit to operate at or near its maximum transmission power, Wheatley’s processor generated an “audible interference signal”—an alarm—to alert the user of poor link quality, all while the downlink signal was normally received. Petitioner asserted that Suzuki, which describes conventional mobile phone components, rendered obvious the inclusion of elements not explicitly detailed in Wheatley, such as a specific signal demodulator architecture and a microphone for voice communication.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to implement the conventional signal demodulation and voice input (microphone) functionalities described by Suzuki into Wheatley’s cellular telephone. This combination represented the application of known techniques to a known system (a portable phone) to achieve the predictable and necessary functions of signal processing and voice communication.
    • Expectation of Success: Integrating standard components like a demodulator and microphone into a cellular telephone was a routine practice at the time, and a POSITA would have had a high expectation of success in achieving a functional device with predictable results.

Ground 1B: Claims 1, 3, and 4 are obvious over Wheatley in view of Suzuki and Lindell.

  • Prior Art Relied Upon: Wheatley (5,469,471), Suzuki (EP0675609), and Lindell (5,524,275).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1A, specifically addressing the "predetermined period of time" limitation in claims 3 and 4. Petitioner argued that even if Wheatley’s disclosure of a "particular accumulation interval" for power-up commands was deemed insufficient, Lindell explicitly taught generating an alarm only after a power threshold is exceeded for a "predetermined period of time." Lindell’s system used this time delay to avoid issuing warnings for momentary power spikes that do not pose a significant problem.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Lindell's time-delay feature into the Wheatley/Suzuki system to improve its reliability and reduce the occurrence of false alarms. Lindell expressly stated that waiting for a suitable time before generating a warning allows for momentary power increases needed to maintain a link without triggering an unnecessary alert, thereby increasing the "quality and reliability of the radio link."
    • Expectation of Success: Implementing a time-delay function, as taught by Lindell, was a straightforward modification (e.g., via software) to an existing alarm trigger logic and would have predictably resulted in a more robust and less disruptive user alert system.

Ground 2: Claims 1, 3, and 4 are obvious over Lomp in view of Bartle.

  • Prior Art Relied Upon: Lomp (5,799,010) and Bartle (5,722,068).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Lomp disclosed a CDMA subscriber unit with all the necessary structural components of claim 1. Lomp’s unit monitored its own transmit power and, upon reaching a value near its maximum, sent an "alarm message" to the base station for capacity management. Petitioner acknowledged that Lomp's alarm was sent to the network, not the user. To bridge this gap, Petitioner cited Bartle, which addressed the problem of "abruptness of communication disconnection" in digital phones by teaching user-facing warnings. Bartle explicitly disclosed generating an "audible sound recognizable by the user" when communication quality degrades. Further, Bartle taught waiting for a "predetermined amount of time" before issuing a warning to reduce erroneous alerts.
    • Motivation to Combine: A POSITA would combine Bartle's user-centric, time-delayed alarm with Lomp's system to solve the well-known problem of sudden call drops without warning. The motivation was to improve the user experience by providing a direct, actionable alert, a clear benefit taught by Bartle. Modifying Lomp’s system to generate a user-audible alarm instead of only a network message was a logical and obvious improvement.
    • Expectation of Success: Both Lomp and Bartle described portable devices with control units capable of enabling alarms. Applying Bartle's teachings to Lomp's system was a predictable combination of known solutions to known problems, with a clear expectation of success.

4. Key Claim Construction Positions

  • "an alarm" (claims 1, 4): Petitioner proposed that the plain and ordinary meaning of this term is "producing sounds or displaying words on a display screen." This construction was asserted to be consistent with the ’140 patent’s specification and figures. Petitioner noted this construction was agreed upon by the parties in related district court litigation. This construction is critical for distinguishing Lomp’s network-facing "alarm message" from the user-perceptible alarm required by the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1, 3, and 4 of the ’140 patent as unpatentable under 35 U.S.C. §103.