U.S. International Trade Commission

Publication 4132 March 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-578

Certain Mobile Telephone Handsets, 

Wireless Communication Devices, and 

Components Thereof
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4132 March 2010

In the Matter of

Investigation No. 337-TA-578

Certain Mobile Telephone Handsets, 

Wireless Communication Devices, and 

Components Thereof

UNITED STATDi INTJ;RNATIOI'IAL TRAD~ C'OMMISSION 

W"'blr-, DA;. 

CERTAIN MOBILl. TI:LEf'HONl. 

H .. liD:StTS, WI\I:r,USS 

COMMUNICATION DtVlcu, A.''1D 

COMPONUmI THtJU:or 

NOTICE OFCOMM1SSlON D~ClS10N NOT TO ItXVltW AN INTTlA~ 

DETERMINATION OFTIIE ADMIN1STR.l.TIVE UW J UDGE Fl1IDING NO 

VIOUTION OF SEcnON lJ7, n:IlMI.';ATION OF INVESTIGATION 

"G&l'ICY: UJi. _""'"' Tn.de 0 ..... · 57·", 

.. cnON: Noti«. 

SIlMMARY: Noti« is hereby p ........ <be UJi. inial ' rim,' Tnde c-...itsion .... 

j. ""-I "'" 10 .... i<w ",,;Mia! _ (""lIT") 1_ by ""''' "''"'II: """' .. _ .. .... .iuds< ("ALJ")<k«rminiDa ..... """' ;, 110 Yiobtion <>f ...... ))7 of"'" Twilf Ae< of 1930. 

SUPPLl.M£/I;"TAR'i L"i"FORMATlON: Tho c-itsion inoIiWled this _ :m 

ion 1"." .,,, on 1\;11 I~ 2006, _ ... """""lin! fib! b7 QUALCOMM L_ ... 111«1 of Sao 

Di .... California ('"QuaI;:<Jmm,. 71 F<d. bt. 19J6l (IWy 1~:!006~ "","_lainl. .. 

~. oll<g<d \'lolaliono <>foooboo' ))7 of"'" Torifl" Act of 19)0 (19 U.s.c. f 1)37) in "'" 

..... _ into <be Uaitod S ...... "'" .10 fa- ............ and ""' .. wi1hio "'" U_ s..... 

""'" ___ of<cmi;l _101<1"" • ..,.,.-., ..mba """""""1«01 .... <kY1<es. and 

_b_br.....,..riDfiilq[cmentof ....... claimo.rJixU.s.pa ...... Tho 
complaint and notice of investigation named Nokia Corporation of Finland and Nokia Inc. of 

Irving, Texas (collectively, “Nokia”), as respondents. The complaint, as amended, further 

alleged that an industry in the United States exists as required by subsection 337(a)(2). Only 

claims 1 and 3 of U.S. Patent No. 5,452,473 (“the ‘473 patent”), claim 1 of U.S. Patent No. 

5,590,408 (“the ‘408 patent”), and claim 2 of U.S. Patent No. 5,655,220 (“the ‘220 patent”) 

remain in the investigation. 

On December 12,2007, the ALJ issued his final ID finding no violation of section 337 of 

the Tariff Act of 1930 (19 U.S.C. 8 1337). Specifically, the ALJ determined that there had been 

an importation of Nokia’s accused products, and that none of Nokia’s accused products infringe 

the asserted claims of the ‘473, ‘408, or ‘220 patents. With regard to claims 1 and 3 of the ‘473 

patent, the ALJ determined these asserted claims were not proven to be invalid under the best 

mode requirement of 35 U.S.C. 6 112 or anticipated under 35 U.S.C. tj 102. The ALJ also 

determined that claims 1 and 3 of the ‘473 patent were proven to be invalid as obvious under 35 

U.S.C. 6 103. With regard to claim 1 of the ‘408 patent and claim 2 of the ‘220 patent, the ALJ 

determined that these asserted claims were not proven to be invalid. The ALJ determined that a 

domestic industry exists that practices the ‘473, ‘408, and ‘220 patents. Finally, the ALJ made a 

recommendation that if the Commission finds a violation under section 337, a limited exclusion 

and cease and desist orders should issue with a bond set in the amount of 100 percent of entered 

value during the 60 day period of Presidential review. 

On January 9,2008, Qualcomm and Nokia each filed petitions for review. The 

Commission Investigative Attorney (“IA”) did not file a petition for review. 

On January 23,2008, Qualcomm and Nokia filed responses to each other’s petitions for 

review. The IA filed his response to both petitions on January 24,2008. 

On February 5,2008, Qualcomm filed a letter requesting that the Commission consider 

the recent Federal Circuit decision in Outey Co. v. IPS, Corp., Case No. 07-1214, slip op. (Fed. 

Cir. Jan. 30,2008). Nokia filed a responsive letter on February 6,2008. 

Having examined the record of this investigation, including the ALJ’s final ID and the 

submissions of the parties, the Commission has determined not to review the ALJ’s 

determination. 

2 
The authority for the Commission’s determination is contained in section 337 of the 

Tariff Act of 1930, as amended (19 U.S.C. $ 1337), and in section 210.42-45 of the 

Commission’s Rules of Practice and Procedure (19 C.F.R. $ 210.42-45). 

By order of the Commission. 

Marilyn Bbott 

Secretary to the Commission 

Issued: February 27,2008 

3 
CERTAIN MOBILE TELEPHONE HANDSETS, WIRELESS 337-TA-578 

COMMUNICATION DEVICES AND COMPONENTS 

THEREOF 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DECISION NOT TO REVIEW AN INITIAL DETERMINATION OF THE 

ADMINISTRATIVE LAW JUDGE FINDING NO VIOLATION OF SECTION 

337; TERMINATION OF INVESTIGATION has been served by hand upon the 

Commission Investigative Attorneys, David 0. Lloyd, Es 

the following parties as indicated, on February 27 ’ 

and Paulraj G. Christopher 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT 

OUALCOMM INCORPORATED: 

Cecilia H. Gonzalez, Esq. 

HOWREY LLP 

1299 Pennsylvania Avenue, NW 

Washington, DC 20004 

P-202-783-0800 

Edwin H. Wheeler, Esq. 

MCDERMOTT WILL & EMERY 

3 150 Porter Drive 

Palo Alto, CA 94304 

P-650-813-5000 

F-650-8 13-5 100 

ia Hand Delivery 1.3* Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

(ra Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 
Page 2 - Certificate of Service 

Richard J. Stark, Esq. 

Roger G. Brooks, Esq. 

CRAVATH SWAINE & MOORE LLP 

825 Eighth Avenue 

New York, NY 10019 

P-2 12-474- 1000 

F-212-474-3700 

Richard S. Taffet, Esq. 

BINGHAM MCCUTCHEN LLP 

399 Park Avenue 

New York, NY 10022 

P-212-705-7000 

F-212-752-5378 

Kathryn B. Riley, Esq. 

DLA Piper US LLP 

401 B Street, Suite 1700 

San Diego, CA 92 101 -4297 

P-619-699-2842 

F-619-699-2701 

Steven M. Straws, Esq. 

COOLEY GODWARD KRONISH LLP 

4401 Eastgate Mall 

San Diego, CA 92121 

P-858-550-6006 

F-858-550-6420 

ON BEHALF OF RESPONDENTS NOKIA 

CORPORATION AND NOKIA INC.: 

Louis S. Mastriani, Esq. 

ADDUCI MASTRIANI & SCHAUMBERG, LLP 

1200 Seventeenth Street, NW - Fifth floor 

Washington, DC 20036 

P-202-467-6300 

F-202-466-2006 

( a Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

(ra Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

( )$a Hand Delivery 

( ia Overnight Mail 

( ) Via First Class Mail 

( )Other: 

(?a Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

(ra Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: 
Page 3 - Certificate of Service 

Marshall M. Searcy, 111, Esq. 

William C. Price, Esq. 

Eric J. Bakewell, Esq. 

QUINN EMANUEL URQUHART OLIVER & 

HEDGES LLP 

865 South Figueroa Street, 1 O* Floor 

Los Angeles, CA 9001 7-2543 

P-2 13-443-3000 

F-213-443-3 100 

Charles K. Verhoeven, Esq. 

QUINN EMANUEL URQUHART OLIVER & 

HEDGES LLP 

50 California Street, 22"d Floor 

San Francisco, CA 941 11 

P-415-875-6600 

F-415-875-6700 

Paul F. Brinkman, Esq. 

ALSTON & BIRD LLP 

950 F Street, NW 

Washington, DC 20004- 1404 

P-202-756-3300 

F-202-756-3333 

Mark A. McCarty, Esq. 

Kristen L. Melton, Esq. 

Demetrius Tennell Lockett 

ALSTON & BIRD LLP 

One Atlantic Center 

1201 West Peachtree Street 

Atlanta, GA 30309 

P-404-88 1-7000 

F-404-88 1-7777 

Kenneth R. Adamo, Esq. 

Thomas E. Jackson, Esq. 

Michael J. Newton, Esq. 

JONES DAY 

2727 North Harwood Street 

Dallas, TX 75201-1515 

P-214-220-3939 

F-214-969-5 100 

( Via Hand Delivery 

( x Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

ia Hand Delivery LY Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

<&ia Overnight ail 

( ) Via First Class Mail 

( )Other: 

(y Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

(y Hand Delivery 

( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 
Page 4 - Certificate of Service 

Steven E. Adkins, Esq. 

Alan L. Whitehurst, Esq. 

JONES DAY 

5 1 Louisiana Avenue, NW 

Washington, DC 20001 -2 1 13 

P-202-879-3939 

F-202-626-1700 

ia Hand Delivery L? Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

I'tiBLIC , '[RSIO!\' 

IlN!J1'l) STATES ~A11ONAL 11I.AI>E COM.MISSION 

Wuhinp>n. D.C. 

) 

) 

CERTAL~MOBIlE1'IlUlPHON1l ) 

fIANOSE'TS, WI\lElESS ) 

COMMlIJ<,'JCA11Oli IJEVI(E. """0 ) 

JOOO""""" "-'''"C''""''' -"'''''-_________ , 

In""";pbon No. 117_TA_S1S 

en" IDiU .. rr' PZ'II'PYrYh' Do!CrmjnWi<m 

.-ioIotion of _000 JJ7 0( Iho Taiff Ac1 of 1930, .. _,Jed. 

_C, ponuant "" C<:tto., I ~ .... nt!oo 110.36(0) ortd ZIO.42(.)(I)(ii). If Iho C ....... _ r,ndo 

barriq <Dtry I."" lilt Uoited 5 ..... 0( infriroM mobile teloplt<tne _ .. ittle .. 

!tortd be ... iI! Iho"""""" <If 100 ~ <If """"'" valu< dttti", Iho Po " " ti'l """"" p<rio:od. 
APPEARANCES 

1 

1 

FOR COMPLAINANT QUALCOMM, INC.: 

Cecilia H. Gonzalez, Esq. 

Bert C. Reiser, Esq. 

Margaret D. Macdonald, Esq. 

HOWREY LLP 

1299 Pennsylvania Ave., NW 

Washington, DC 20004 

Terrance P. McMahon, Esq. 

Vera M. Elson, Esq. 

MCDERMOTT WILL 8z EMERY LLP 

3 150 Porter Dr. 

Palo Alto, CA 94304 

FOR RESPONDENTS NOKIA CORPORATION AND NOKIA, INC.: 

Louis S. Mastriani, Esq. 

ADDUCI, MASTRIANI & SCHAUBERG, L.L.P 

1200 Seventeenth Street, NW 

Washington, DC 20036 

A. William Urquhart, Esq. 

Frederick Lorig, Esq. 

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 

865 South Figueroa Street, 10* Floor 

Los Angeles, CA 90017-2543 

Keith E. Broyles, Esq. 

ALSTON & BIRD LLP 

One Atlantic Center 

1201 West Peachtree Street 

Atlanta, GA 30309-3424 

ITC STAFF: 

Christopher G. Paulraj, Esq. 

Office of Unfair Import Investigation 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

3 1 
TABLE OF CONTENTS 

PAGE 

OPINION ................................................................... 1 

1 . ProceduralHistory ....................................................... 1 

11 . Jurisdiction Including Parties And Importation ................................. 3 

III . Patents Including Claims In Issue ........................................... 4 

IV . Experts ................................................................ 8 

V . The Level Of Ordinary Skill In The Art ..................................... -8 

VI . BackgroundTechnology ................................................. 10 

VII . Claim Construction ..................................................... 12 

A . Prior Claim Constructions .......................................... 19 

B . ‘473Patent ...................................................... 23 

1 . Preamble (Claims 1 And 3) ................................... 23 

2 . The Claimed Term “Frequency Index” .......................... 24 

3 . The Claimed Term “Automatic Gain Control Setpoint” ............. 32 

4 . The Claimed Term “Calibration Value(s)” ....................... 47 

5 . The Claimed Term “Integrator” ................................ 55 

6 . The Claimed Term “Linearizer” ............................... 62 

C . ‘408 Patent And ‘220 Patent ........................................ 66 

Preamble (Claim 1 Of ‘408 Patent) ............................. 66 

Preamble (Claim 2 Of ‘220 Patent) ............................. 67 

The Claimed Term “Maximum Gain Setting” .................... -68 

1 . 

2 . 

3 . 

.. 

11 
4 . The Claimed Term “Open Loop Power Control Value .............. 73 

5 . The Claimed Term “Gain Adjust Signal” ........................ 74 

6 . The Claimed Term “Power Control Commands” .................. 78 

7 . The Claimed Term “Generating A Received Power 

Level Signal In Response To The Received Signal” ................ 83 

8 . The Claimed Term “Closed Loop Power Control 

Signal” ................................................... 85 

VIII . Validity Prior Art ....................................................... 91 

A . Claims 1 And 3 Of The ‘473 Patent ................................... 91 

1 . Anticipation ............................................... 91 

2 . Obviousness ............................................... 94 

B . Claim 1 Of The ‘408 Patent And Claim 2 Of The ‘220 Patent ............. 171 

1 . Anticipation .............................................. 171 

2 . Obviousness .............................................. 173 

C . Secondary Considerations ......................................... 179 

IX . Validity Best Mode .................................................... 186 

X . Infringement .......................................................... 190 

A . TheAccusedProducts ............................................ 192 

B . Claim 1 Of The ‘473 Patent ........................................ 194 

Preamble ............................................................ 194 

1 . The first element of claim 1 “receiving a first signal having 

a first gain. a first frequency of the plurality of frequencies. 

and the first frequency having a first frequency index” ............. 194 

... 

111 
2. The second element of claim 1 “determining a receive 

power value of the first signal” ............................... 196 

3. The third element of claim 1 “generating an automatic gain 

control setpoint in response to the receive power value and 

the reference voltage signal” ................................. 197 

4. The fourth element of claim 1 “selecting a first 

predetermined calibration value in response to the 

automatic gain control setpoint and the first frequency 

index” ................................................... 201 

5. The fifth element of claim 1 “adjusting the first gain in 

response to the first calibration value” .......................... 202 

6. The sixth element of claim 1 “transmitting a second signal 

having a second gain and a second frequency of the 

plurality of frequencies, the second frequency having a 

second frequency index” ................................... .203 

7. The seventh element of claim 1 “determining a transmit 

power value of the second signal” ............................ -204 

8. The eighth element of claim 1 “generating a second 

calibration value in response to the automatic gain control 

setpoint, the second frequency index, and the transmit 

power value; and” ........................................ .208 

9. The ninth element of claim 1 “adjusting the second gain in 

response to the second calibration value.” ...................... .209 

C. Claim 3 Of The ‘473 Patent ....................................... .210 

Preamble ............................................................ 210 

1. The first element of claim 3 “a power detector, coupled to 

the receive amplifier, for generating a first power value 

from a received signal having a first frequency” ................. .211 

2. The second element of claim 3 “an integrator, coupled to 

the power detector, for generating an automatic gain control 

setpoint from the first power value” .......................... .212 

1 

1 

iv 
3. The third element of claim 3 “a receive linearizer, coupled 

to the integrator and the receive amplifier, for generating a 

receive calibration value in response to the automatic gain 

control setpoint and a first frequency index corresponding 

to the first frequency, the receive calibration value being 

coupled to the receive amplifier control input for adjusting 

the gain of the receive amplifier” ............................. .213 

4. The fourth element of claim 3 “a second power detector, 

coupled to the transmit amplifier, for generating a second 

power value from a transmitted signal having a second 

frequency;and” ........................................... 214 

5. The fifth element of claim 3 “a transmit linearizer for 

generating a transmit calibration value in response to the 

automatic gain control setpoint, the second power value, 

and a frequency index corresponding to the second 

frequency, the transmit calibration value being coupled to 

the control input of the transmit amplifier for adjusting the 

gain of the transmit amplifier.” .............................. .215 

D. Claim 1 Of The ‘408 Patent ....................................... .216 

Preamble ............................................................ 216 

1. The first element of claim 1 “determining an open loop 

power control value in response to a signal received from 

the at least one base station” ................................ .217 

2. The second element of claim 1 “determining a gain adjust 

signal in response to the transmitted power control 

commands” .............................................. 218 

3. The third element of claim 1 “combining the open loop 

power control value and the gain adjust signal to produce a 

summationsignal” ......................................... 220 

4. The fourth element of claim 1 “comparing the summation 

signal to the maximum gain setting” .......................... .221 

3 V 
5. The fifth element of claim 1 “if the summation signal is 

greater than or equal to the maximum gain setting, 

adjusting the variable gain amplifier in response to the 

maximum gain setting; and” ................................ .223 

6. The sixth element of claim 1 “if the summation signal is 

less than the maximum gain setting, adjusting the variable 

gain amplifier in response to the summation signal.” .............. 224 

E. Claim 2 Of The ‘220 Patent ....................................... .225 

Testing .............................................................. 225 

Preamble ............................................................ 228 

1. The first element of claim 2 “receiving a signal from at 

least one of the plurality of base stations” ...................... .229 

2. The second element of claim 2, “generating a received 

power level signal in response to the received signal” ............. 229 

3. The third element of claim 2 “generating a closed loop 

power control signal in response to the received signal” ........... -230 

4. The fourth element of claim 2 “combining the received 

power level signal and the closed loop power control signal 

to produce a summation signal” .............................. .233 

5. The fifth element of claim 2 “comparing the summation 

signal to the maximum gain setting” .......................... .233 

6. The sixth element of claim 2 “adjusting the variable gain 

amplifier in response to the maximum gain setting if the 

summation signal is greater than or equal to the maximum 

gain setting; and” ......................................... .234 

7. The seventh element of claim 2 “adjusting the variable gain 

amplifier in response to the summation signal if the 

summation signal is less than the maximum gain setting,” .......... 235 

F. Indirect Infringement ............................................ .236 

XI. Domestic Industry .................................................... .236 

vi 

1 
A. Claim 3 Of The ‘473 Patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .238 

1. Preamble, First, Second, Fourth And Fifth Elements . . . . . . . . . . . . . -238 

2. The Third Element . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .243 

XII. Remedy .............................................................253 

Xm. Bond ................................................................... 

XIV. Additional Findings Of Fact . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .260 

A. Parties ............................................................ 

CONCLUSIONS OF LAW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .26 1 

ORDER ...........,.......................................................262 

APPENDICES ..............................................................264 

A. FIG. 1 Of PCT (RX-311) 

B. FIG. 5 Of PCT (RX-3 11) 

C. RDX-63110 

D. RDX-63:5 with highlighting (See RFF VI. 283) 

E. RDX-63~33 

F. 

G. 

FIG. 1 Of ‘098 Patent (JX-333) 

FIG. 3 Of ‘098 Patent ( JX-333) 

H. RDX-70 

I. 

J. 

K. 

L. 

FIG. 1 Of ‘091 Patent (RX-309) 

FIG. 5 Of Fujitsu (JX-256) 

FIG. 2 Of Motorola (RX-313) 

FIG. 1A & 1B (FIG. 1 Of Motorola (RX-313) 

1 

1 

1 

vii 
M. RDX-63~62 

N. RDX-63164 

0. RDX-63:65 

P. RDX63:66 

Q. RDX-63167 

R. RDX-63168 

s. RDX-63169 

3 

1 

... 

Vlll 
I 

CBr 

CDX 

CFF 

CORFF 

COSFF 

CRBr 

CRRFF 

CX 

JX 

RBr 

RDX 

RX 

RFF 

ROCFF 

RRBr 

RRCFF 

SBr 

SOCFF 

SRBr 

SRCFF 

SPFF 

ABBREVIATIONS 

Complainant’s Post-hearing Brief 

Complainant’s Demonstrative Exhibit 

Complainant’s Proposed Finding 

Complainant’s Objection To Respondents’ Proposed Finding 

Complainant’s Objection To Staff‘s Proposed Finding 

Complainant’s Post-hearing Reply Brief 

Complainant’s Proposed Rebuttal Finding to RFF 

Complainant’s Exhibit 

Joint Exhibit 

Respondents’ Post-hearing Brief 

Respondents’ Demonstrative Exhibit 

Respondents’ Exhibit 

Respondents’ Proposed Finding 

Respondents’ Objection To Complainant’s Proposed Finding 

Respondents’ Post-hearing Reply Brief 

Respondents’ Proposed Rebuttal Finding To CFF 

Staff‘s Post-hearing Brief 

Staff‘s Objection To Complainant’s Proposed Finding 

Staff‘s Post-hearing Reply Brief 

Staff‘s Proposed Rebuttal Finding To CFF 

Staff‘s Proposed Finding 

1 

1 

ix 
1 

Tr. Transcript Of Pre-hearing Conference and Hearing 

X 
1 

OPINION 

I. Procedural History 

On June 11,2007, the Commission issued a notice reassigning this investigation to the 

undersigned. Order No. 2, which issued on July 12,2006, had set a fourteen month target date of 

September 12,2007, which meant that any final initial determination on violation should have 

been filed no later than June 12,2007. However, the record as of June 12,2007 indicated that 

there had been no evidentiary hearing.' In Order No. 46, which issued on June 12,2007, the 

undersigned indicated that an evidentiary hearing should proceed as quickly as possible. Hence, 

Order No. 45, which also issued on June 12,2007, set aside July 9, 10, 12, 13, 16, 17, 18, 19 and 

20 for the prehearing conference and evidentiary hearing, and further scheduled a one day 

conference with all parties on June 25,2007. The undersigned in his Order No. 46 further 

extended the target date for six months, i.e. from September 12,2007 to March 12,2008 (a 

twenty (20) month target date).2 This new target date meant that any initial final determination 

(ID) on violation should have been filed no later than November 12, 2007.3 The Commission 

non-reviewed Order No. 46 on June 27. 

On June 19,2007, pursuant to Commission rule 210.15, complainant Qualcomm 

Incorporated (QUALCOMM) and respondents Nokia Corporation and Nokia, Inc. (Nolua) jointly 

moved in Motion No. 578-51 to modify the dates set forth by the administrative law judge in his 

Order No. 45. It was argued that additional time was needed for the following reasons: (1) key 

- See Order No. 35 which issued on February 26,2007 and which postponed the 

evidentiary hearing and stayed the proceedings. 

On June 27,2007, the Commission determined not to review Order No. 46. 

Said target date included a four (4) month period for Commission review. See 

Commission Rule 210.42(a)( l)(i). 

1 

I 
witness unavailability for both parties; and (2) the additional time for the parties to supplement 

1 

I 

expert witnesses’ testimony and, thereby, focus and streamline the issues, including the number 

of pending prehearing (in limine) motions. Hence, movants requested that the prehearing 

conference and evidentiary hearing take place on September 10, 11, 12,13, 14, 17, 18, 19 and 20. 

The administrative law judge in his Order No. 47, which issued on June 21,2007, granted 

Motion No. 578-51, to the extent that, inter alia, the prehearing conference and the evidentiary 

hearing were to take place on September 10, 11, 12, 13, 14, 19,20,21 and 24. 

In a telephone conference on September 7,2007, the administrative law judge denied No. 

13 of complainant’s Motion No. 578-46 in limine which involved precluding respondents from 

arguing or offering evidence of either active discouragement of infringement by customers or 

substantial non-infringing users. (See 9/7/07 Tr. at 101-04). Thereafter, Order No. 51, which 

issued on October 16,2007, extended the target date to Monday April 14,2008 which meant that 

the ID should be filed no later than December 12,2007. The Commission non-reviewed Order 

No. 5 1 on November 5,2007. 

An evidentiary hearing was conducted on the dates identified su~ra.~ In issue at the 

evidentiary hearing, inter alia, was whether the importation into the United States, the sale for 

importation, or the sale within the United States after importation by respondents of certain 

mobile telephone handsets, wireless communication devices, or components thereof involved 

infringement of claims 1 and 3 of U.S. Patent No. 5,452,473 (the ‘473 patent) (JX-I), claim 1 of 

U.S. Patent No. 5,590,408 (the ‘408 patent) (JX-2) and claim 2 of U.S. Patent No. 5,655,220 (the 

Order No. 50, which issued on September 24,2007, denied respondents’ motion to 

strike certain testimony and further admitted into evidence CX-185C and CX-186C. 

2 
‘220 patent) (JX-3) and whether an industry in the United States exists as required by subsection 

(a)(2) of Section 337. Posthearing submissions have been filed.5 

The matter is now ready for a final decision. 

The Final Initial and Recommended Determinations which includes Appendices A-S 

herein, are based on the record compiled at the hearing and the exhibits admitted into evidence. 

The administrative law judge has also taken into account his observation of the witnesses who 

appeared before him during the hearing. Proposed findings of fact submitted by the parties not 

herein adopted, in the form submitted or in substance, are rejected as either not supported by the 

evidence or as involving immaterial matters andor as irrelevant. Certain findings of fact 

included herein have references to supporting evidence in the record. Such references are 

intended to serve as guides to the testimony and exhibits supporting the finding of fact. They do 

not necessarily represent complete summaries of the evidence supporting said findings. 

II. Jurisdiction Including Parties And Importation 

The private parties in this investigation are QUALCOMM which does not manufacture 

cellular telephone or other mobile communication devices but does provide chips and chipsets 

for such devices manufactured by others, and Nokia which is a maker of telephone handsets and 

On October 15,2007, the staff moved for leave to accept the late filing of its proposed 

findings of fact and conclusion~s of law due to the complexity of the issues and word processing 

delays. (Motion Docket No. 578-59.) Said motion is granted. On October 11,2007, 

QUALCOMM filed an unopposed motion to de-designate and substitute CDX-5 land to reopen 

the record to admit the correct version of CDX-61C into evidence. (Motion Docket No. 578-58.) 

Said motion is also granted. 

Respondents, in their pre-hearing statement at 179 argued that the patents in issue are 

unenforceable. Respondents, however, did not assert this defense in their posthearing 

submissions. Hence, the administrative law judge finds that respondents have abandoned said 

defense. 

3 
the infrastructure for mobile telephones. See FF 1-6. The Commission has subject matter 

jurisdiction over this investigation, because QUALCOMM has alleged violation by Nolua of 

Section 337 in connection with the importation of certain Nokia products, pursuant to 19 U.S.C. 

0 1337. Amgen. Inc. v. U.S. Int’l Trade Comm’n, 902 F.2d 1532, 1536 (Fed. Cir. 1990). 

Moreover, the parties have further stipulated to the importation of certain Nolua products. (JX-7.) 

In addition, the Commission has personal jurisdiction over Nokia in this investigation because 

Nokia has participated fully in said investigation, including participation in discovery and motion 

practice, thereby submitting to the personal jurisdiction of the Commission. Certain Audible 

Alarm Devices For Divers, Inv. No. 337-TA-365, Initial Determination, 1995 ITC LEXIS 66, “3 

(Feb. 2, 1995) (“The Commission has personal jurisdiction over respondent IHK because IHK 

participated fully in discovery and the hearing.”) 

III. Patents Including Claims In Issue 

As agreed to by all parties in a document titled “Joint General Designation Of 

Technology,” dated September 10,2007 (DESCRIPTION) each of the ‘473 patent (JX-I), the 

‘408 patent (JX-2) and the ‘220 patent (JX-3) shares a common specification, is commonly 

assigned to QUALCOMM and has a priority date of February 28,1994. Moreover, during 

prosecution of the application that issued as the ‘473 patent, the U.S. Patent and Trademark 

Office (PTO) issued a restriction requirement pursuant to 35 U.S.C. 0 121. (JX-4 at 40-41.) As a 

result, two divisional applications were filed that ultimately issued as the ‘408 and ‘220 patents. 

(JX-5; JX-6.) 

The ‘473 patent, titled “Reverse Link, Transmit Power Correction and Limitation in a 

Radiotelephone System,’’ was issued on September 19, 1995, to Ana L. Weiland, Richard K. 

4 
Kornfeld, Richard J. Kerr, John E. Maloney and Nathaniel B. Wilson. (Joint Statement of 

Undisputed Facts, dated January 17,2007, p. 3 at D.l.) John E. Maloney was later removed as 

an inventor on the ‘473 patent by a Certificate of Correction dated November 11,2003. (Id) 

Claim 1 of the ‘473 patent in issue reads: 

1. A method for correcting transmit power of a radio device having a plurality of 

predetermined calibration values and a reference voltage signal, the radio device 

transmitting and receiving on a plurality of frequencies, each frequency having a 

frequency index, the method comprising the steps of 

receiving a first signal having a first gain, a first frequency of the 

plurality of frequencies, and the first frequency having a first 

frequency index; 

determining a receive power value of the first signal; 

generating an automatic gain control setpoint in response to the 

receive power value and the reference voltage signal; 

selecting a first predetermined calibration value in response to the 

automatic gain control setpoint and the first frequency index; 

adjusting the first gain in response to the first calibration value; 

transmitting a second signal having a second gain and a second 

frequency of the plurality of frequencies, the second frequency 

having a second frequency index; 

determining a transmit power value of the second signal; 

generating a second calibration value in response to the automatic 

gain control setpoint, the second frequency index, and the transmit 

power value; and 

adjusting the second gain in response to the second calibration 

value. 

(JX-1 at 7:9 -37.) 

Claim 3 of the ‘473 patent in issue reads: 

5 
3. A radio performing transmit power calibration, the radio transmitting and 

receiving signals having a plurality of frequencies, each frequency having a 

frequency index, the radio transmitting signals through a variable gain, transmit 

amplifier having a control input and receiving signals through a variable gain, 

receive amplifier having a control input, the radio comprising: 

a power detector, coupled to the receive amplifier, for generating a 

first power value from a received signal having a first frequency; 

an integrator, coupled to the power detector, for generating an 

automatic gain control setpoint from the first power value; 

a receive linearizer, coupled to the integrator and the receive 

amplifier, for generating a receive calibration value in response to 

the automatic gain control setpoint and a first frequency index 

corresponding to the first frequency, the receive calibration value 

being coupled to the receive amplifier control input for adjusting 

the gain of the receive amplifier; 

a second power detector, coupled to the transmit amplifier, for 

generating a second power value from a transmitted signal having a 

second frequency; and 

a transmit linearizer for generating a transmit calibration value in 

response to the automatic gain control setpoint, the second power 

value, and a frequency index corresponding to the second 

frequency, the transmit calibration value being coupled to the 

control input of the transmit amplifier for adjusting the gain of the 

transmit amplifier. 

(JX-1 at 7:43-8: 14.) 

The ‘408 patent has the same title as the ‘473 patent, and was issued on December 31, 

1996 to Ana L. Weiland, Richard K. Kornfeld and John E. Maloney. (Joint Statement of 

Undisputed Facts, dated January 17,2007, p. 3 at D.2.) Claim 1 of the ‘408 patent in issue 

reads: 

1. A method for limiting transmit power of a radio operating in a radio 

communications system, the radio communications system comprising at least one 

base station that transmits signals including power control commands to the radio, 

6 
the radio comprising a variable gain amplifier and a maximum gain setting, the 

method comprising the steps of: 

determining an open loop power control value in response to a 

signal received from the at least one base station; 

determining a gain adjust signal in response to the transmitted 

power control commands; 

combining the open loop power control value and the gain adjust 

signal to produce a summation signal; 

comparing the summation signal to the maximum gain setting; 

if the summation signal is greater than or equal to the maximum 

gain setting, adjusting the variable gain amplifier in response to the 

maximum gain setting; and 

if the summation signal is less than the maximum gain setting, 

adjusting the variable gain amplifier in response to the summation 

signal. 

(JX-2 at 6:58-7:ll.) 

The ‘220 patent has the same title as the ‘473 and ‘408 patents, and was issued on August 

5, 1997 to the same inventors as on the ‘408 patent. (Joint Statement of Undisputed Facts, dated 

January 17,2007, at pp. 3-4 at D.3.) Claim 2 of the ‘220 patent in issue reads: 

2. A method for limiting transmit power of a radio operating in a radio 

communications system, the radio communications system comprising a plurality 

of base stations that transmit power control commands to the radio, the radio 

comprising a variable gain amplifier and a maximum gain setting, the method 

comprising the steps of 

receiving a signal from at least one of the plurality of base stations; 

generating a received power level signal in response to the received 

signal; 

generating a closed loop power control signal in response to the 

received signal; 

7 
. 

combining the received power level signal and the closed loop 

power control signal to produce a summation signal; 

comparing the summation signal to the maximum gain setting; 

adjusting the variable gain amplifier in response to the maximum 

gain setting if the summation signal is greater than or equal to the 

maximum gain setting; and 

adjusting the variable gain amplifier in response to the summation signal if 

the summation signal is less than the maximum gain setting. 

(JX-3 at 7: 12-34.) 

IV. Experts 

QUALCOMM’s expert witness was Dr. Sergio Verdu, who is a professor of electrical 

engineering at Princeton University. (CX-373.) Verdu was qualified as an expert, in the area of 

mobile cellular telephonic communications. (Tr. at 1038.) 

Nokia’s expert witness on issues of claim construction, infringement, and domestic 

industry was Dr. Herman Helgert, who is a professor of electrical engineering at George 

Washington University. (Helgert, Tr. at 2285; RX-435.) Helgert was qualified as an expert in the 

area of mobile cellular telephonic communications. (Tr. at 2307.) 

Nokia’s expert witness on issues of invalidity was Dr. Steven Kenney, who is an 

associate professor of electrical engineering at Georgia Institute of Technology. (Kenney, Tr. at 

3120; RX-437C.) Kenney was qualified as an expert in the area of mobile cellular telephonic 

communications. (Tr. at 3123.) 

V. The Level of Ordinary Skill in the Art 

The level of ordinary slull in the art is a person who has a masters degree in electrical 

engineering with a specialization in communications engineering, and has at least two years of 

1 8 
1 

d 

experience in the field of wireless communication. (Helgert, Tr. at 2326-9, Verdu, Tr. at 1055-56, 

Kenney, Tr. at 3129-30.) On the matter of experience, complainant’s Verdu testified: 

Q. 

think you said, two years of relevant industrial experience. 

I believe you said in your opinion that person should have, I 

Correct? 

A. Correct. 

Q. 

industry of cellular telephony or something like that, right? 

And when you were asked, well, what industry, you said the 

A. I believe I said wireless. 

Q. Wireless, wireless what? 

A. Wireless telephony. 

Q. 

have two years of relevant industrial experience in wireless 

telephony, correct? 

Okay. So a person of ordinary skill in your opinion should 

A. Correct. 

Q. 

industrial experience in wireless teleDhonv, do you, sir? 

All right. You yourself personally do not have two years of 

Q. 

the art, sir, correct? 

So by your definition, you are not a person of ordinary skill in 

A. In ‘94, I had obtained my Ph.D. ten years before, but I didn’t 

have two years of industrial experience. 

Q. So under your definition, what you think is the appropriate 

definition of a person of ordinary skill in the art, the perspective 

from which we’re supposed to analyze whether something would 

be obvious or not, you don’t fit that definition, correct? 

A. Well, in some ways, I would be of extraordinary skill in the 

1 

1 

9 
art, but in some other ways, I certainly did not meet the two 

years of industrial experience. 

Q. 

what one of these industrial engineers would have been exposed to 

during those two years of industrial experience, do you, sir? 

Right. So you don’t have any firsthand personal knowledge of 

A. I wouldn’t put it that way. I have certainly been involved with 

the wireless industry. I have been in the technical advisory board 

of Flarion Technologies. And as part of my job, I had quite a bit of 

exposure to what they were doing. 

Q. 

relevant two years of industrial experience, your exposure to that is 

sort of secondhand, what you pick up, what your graduate students 

tell you or what you see when you go and consult with people; is 

that your testimony? 

So your exposure to what a person of ordinary skill with this 

A. I don’t think it has to do with what my graduate students tell 

me. My graduate students work for their Ph.D. and some of them 

have industrial experience. Some of them do not. 

Q. 

exuerience, correct? 

But YOU don’t have any personal first-hand industrial 

A. Correct. 

(Tr. at 3664-66 (emphasis added).) 

VI. Background Technology 

The claims in issue made reference to “base station,” “frequency,” andor “radio”. In the 

DESCRIPTION the following facts are admitted to: 

1. Mobile cellular phone systems, as related to cellular 

wireless telephone, are divided into geographic areas called “cells.” 

Each cell is serviced by a “base station.” 

2. The geographic size of a cell may vary. Rural areas 

generally have large cells, while urban environments may have 

more cells that are close together. 

10 
3. A base station is connected to the regular telephone 

network and communicates with “mobile stations.” Alternative 

names for mobile stations include: 

mobile phone, radiotelephone, user equipment (“UE”), cell phone, 

handset, and mobile device. Abbreviations for base station include 

“BS” and “BTS.” A common abbreviation for mobile station is 

“MS .” 

4. Communications sent from a base station to a 

mobile station are said to take place in the “forward link,” “forward 

direction,” or “downlink.” 

5. Communications sent from a mobile station to a 

base station are said to take place in the’keverse link,” “reverse 

direction,” or “uplink.” 

6. Base stations communicate with mobile stations 

over assigned radio frequencies. The radio frequencies available 

for use by a particular mobile station depends on the particular 

cellular system. The Federal Communication Commission (“FCC”) 

and relevant standards organizations specify ranges of frequencies 

that may be used in a particular system, 

7. The GMS specification recognizes a number of 

frequency bands including: 850,900, 1800, and 1900 MHz. The 

850 and 1900 MHz are the bands primarily used in the United 

States. The 900 and 1800 MHz bands are used elsewhere, 

including Europe. 

8. Various techniques exist to allow many mobile 

stations to communicate with one or more base stations within the 

available frequency bands. The three most relevant for this dispute 

are Frequency Division Multiple Access (“FDMA”), Time 

Division Multiple Access (TDMS”) and Code Division Multiple 

Access (“CDMA”). 

9. The first commercial wireless cellular systems used 

analog technology and are often referred to as “First Generation” or 

“IG’ systems. These systems focused generally on voice 

communications. They used analog, as opposed to digital, 

methods to transmit information between base stations and mobile 

stations. The principal 1G system used in the United States based 

11 

I 
on analog FDMA is sometimes referred to as “AMPS”. 

1 

10. Beginning in the 1990’~~ 1G system started being 

replaced by “Second Generation” or “2G’ systems. These systems 

used digital methods to transmit information between base stations 

and mobile stations. 

11. 2G systems used in the United States based on 

TDMA include the “GSM system” and a system sometimes called 

“D-AMPS,” “US-TDMA.” or “IS-54.” The principal 2G system 

used in the United States based on CDMA is sometimes referred to 

as “IS-95,” “cdmaOne,” or sometimes just CDMA. CDMA is 

sometimes referred to as spread spectrum technology. 

12. Currently, T-Mobile and AT&T (formerly Cingular) 

operate the largest GSM networks in the United States. Version 

Wireless and Sprint operate the largest CDMA networks in the 

United States. 

13. Earlier 2G systems have been improved 

subsequently to offer better data transmission capabilities. These 

systems are often dubbed “2.5F” systems. Two specific 2.5G 

improvements to the GSM system are called “GPRS” and 

“EDGE.” 

14. EDGE stands for Enhanced Data for the GSM 

Evolution. EDGE improves the data transmission capabilities of 

GPRS. One feature added in EDGE is the ability to use a different, 

more efficient form of “modulation” to transmit data at a faster 

rate. Modulation is the way in which digital data is converted into 

analog information and transmitted. The type of modulation used 

in GSM voice and GPRS transmission is called “GMSK.” The 

modulation introduced in EDGE, called 8-PSK, allows for data 

transmission rates three times higher than possible under GMSK. 

15. 2.5G systems are now being supplanted by “Third 

Generation” or 3G’ systems. These systems allow for highly 

efficient, high-speed data transmissions. 

VII. Claim Construction 

Claim interpretation is a question of law. Markman v. Westview Instruments, Inc., 52 

1 

12 
I 

F.3d 967,979 (Fed. Cir. 1995) (en banc), aff‘d, 517 U.S. 370 (1996) (Markman), see Cybor 

Corn. v. FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998). In construing claims, a court 

should look to intrinsic evidence consisting of the language of the claims, the specification and 

the prosecution history as it “is the most significant source of the legally operative meaning of 

disputed claim language.” Vitronics Corn. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 

1996) (Vitronics); see Bell Atl. Network Servs., Inc. v. Covad Corn. Group, Inc., 262 F.3d 

1258, 1267 (Fed. Cir. 2001). 

The claims themselves “provide substantial guidance as to the meaning of particular 

claim terms.” Phillips v. AWH Corn., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (Phillim), citing 

Vitronics, 90 F.3d at 1582. It is essential to consider a claim as a whole when construing each 

term, because the context in which a term is used in a claim “can be highly instructive.” Id. This 

requirement is consistent with the Federal Circuit’s guidance that a claim term can only be 

understood “with a full understanding of what the inventors actually invented and intended to 

envelop with the claim.” Phillips, 415 F.3d at 1316, citing Renishaw PLC v. Mamoss SocietB Der 

Azioni,l58 F.3d 1243, 1250 (Fed. Cir. 1998). Claim terms “are generally given their ordinary 

and accustomed meaning.” Vitronics, 90 F.3d at 1582. 

In Pause Technology, Inc. v. TIVD, Inc., 419 F.3d 1326 (Fed. Cir. 2005) the Court stated: 

. . . in clarifying the meaning of claim terms, courts are free to use 

words that do not appear in the claim so long as “the resulting 

claim interpretation . . . accord[s] with the words chosen by the 

patentee to stake out the boundary of the claimed property.” cf. 

Renishaw PLC v. Mamoss SocietB per Azioni, 158 F.3d 1243, 

1248 (Fed. Cir. 1998) (noting that “[wlithout any claim term 

susceptible to clarification . . . there is no legitimate way to narrow 

the property right”). 

13 
- Id. at 1333. Also, claim terms are presumed to be used consistently throughout the patent, such 

that the usage of the tern in one claim can often illuminate the meaning of the same term in other 

claims. Research Plastics, Inc. v. Federal Packaging Corn. 421 F.3d 1290, 1295 (Fed. Cir. 2005) 

(Research Plastics). 

The ordinary meaning of a claim term may be determined by reviewing a variety of 

sources, which may include the claims themselves, dictionaries and treatises, and the written 

description, the drawings and the prosecution history. Fermson Beauremdbgic Controls v. 

Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). The use of a dictionary, however, may 

extend patent protection beyond what should properly be afforded by a patent. Also, there is no 

guarantee that a term is used in the same way in a treatise as it would be by a patentee. Phillips 

415 F.3d at 1322. Moreover, the presumption of ordinary meaning will be “rebutted if the 

inventor has disavowed or disclaimed scope of coverage, by using words or expressions of 

manifest exclusion or restriction, representing a clear disavowal of claim scope.” ACTV, Inc. v. 

- Walt Disnev Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003). 

The presence of a specific limitation in a dependent claim raises a presumption that the 

limitation is not present in the independent claim. Phillips, 415 F.3d at 1315. This presumption 

is especially strong when the only difference between the independent and dependant claims is 

the limitation in dispute. SunRace Roots Enter. Co., Ltd v. SRAM Corn., 336 F.3d 1298, 1303 

(Fed. Cir. 2003). Differences between the claims are helpful in understanding the meaning of 

claim terms. Phillips, 415 F.3d at 1314. 

The preamble of a claim may be significant in interpreting a claim. Thus, “a claim 

preamble has the import that the claim as a whole suggests for it.” Bell Communications 

14 

1 
Research, Inc. v. Vitalink Communications Corn., 55 F.3d 615,620,34 U.S.P.Q.2nd 1816, 1820 

(Fed. Cir. 1995). If said preamble, when read in the context of an entire claim, recites limitations 

of the claim, or, if the claim preamble is “necessary to give life, meaning, and vitality” to the 

claim, then the claim preamble should be construed as if in the balance of the claim. Kropa v. 

Robie, 187 F.2d 150, 152 (CCPA 1951) (Kropa), see also Rowe v. Dror, 112 F.3d 473,478 (Fed. 

Cir. 1997) (Rowe), Corning Glass Works v. Sumitomo Elec. U.S.A.. Inc., 868 F.2d 1251, 1257 

(Fed. Cir. 1989) (Corning. Glass). Indeed, when discussing the “claim” in such a circumstance, 

there is no meaningful distinction to be drawn between the claim preamble and the rest of the 

claim, for only together do they comprise the “claim.” If, however, the body of the claim fully 

and intrinsically sets forth the complete invention, including all of its limitations, and the 

preamble offers no distinct definition of any of the claimed invention’s limitations, but rather 

merely states, for example, the purpose or intended use of the invention, then the preamble may 

have no significance to claim construction because it cannot be said to constitute or explain a 

claim limitation. See Rowe, 112 F.3d at 478; Corning Glass, 868 F.2d at 1257, Kropa, 187 F.2d 

at 152. In Pitnev Bowes Inc. v. Hewlett-Packard Co., 182 F.2d 1298,1306 (Fed. Cir. 1999) 

(Pinev Bowes), the preamble statement that the patent claimed a method of or apparatus for 

“producing on a photoreceptor an image of generated shapes made up of spots” was not merely a 

statement describing the invention’s intended field of use. Instead, the Court found said that 

statement was intimately meshed with the ensuing language in the claim; and that, for example, 

both independent claims concluded with the clause “whereby the appearance of smoothed edges 

are given to the generated shapes.” Because this was the first appearance in the claim body of the 

term “generated shapes,” the Court found that the term could only be understood in the context of 

1 

15 
the preamble statement “producing on a photoreceptor an image of generated shapes made up of 

spots.” Similarly, the Court found that the term “spots” was initially used in the preamble to 

refer to the elements that made up the image of generated shapes that were produced on the 

photoreceptor; that the term “spots” then appeared twice in each of the independent claims; and 

that the claim term “spots” referred to the components that together made up the images of 

generated shapes on the photoreceptor and was only discernible from the claim preamble. The 

Court concluded that in such a case, it was essential that the preamble and the remainder of the 

claim be construed as one unified and internally consistent recitation of the claimed invention. Id. 

The specification of a patent “acts as a dictionary” both “when it expressly defines terms 

used in the claims” and “when it defines terms by implication.” Vitronics, 90 F.3d at 1582. For 

example, the specification “may define claim terms by implication such that the meaning may be 

found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1323, quoting 

Iredto Access, Inc. v. Echostar Satellite Corn., 383 F.3d 1295, 1300 (Fed. Cir. 2004). 

Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in 

the context of the particular claim in which the disputed term appears, but in the context of the 

entire patent, including the specification. Phillips, 415 F.3d at 13 14. 

A patentee may deviate from the conventional meaning of a particular claim term by 

making the intended meaning of a particular claim term clear (1) in the specification or (2) during 

the patent’s prosecution history. Lear Siegler, Inc. v. Aeroaub Corn., 733 F.2d 881, 889 (Fed. 

Cir. 1984). If using a definition that is contrary to the definition given by those of ordinary skill 

in the art, however, the patentee’s specification must communicate a deliberate and clear 

preference for the alternate definition. Kumar v. Ovonic Batterv Co.. Inc., 351 F.3d 1364, 1368 

16 
(Fed. Cir. 2003), (citing Apple Computers, Inc. v. Articulate Svs., Inc., 234 F.3d 14,21 n.5 (Fed. 

Cir. 2000)). In ascribing an alternative definition than the ordinary meaning, the intrinsic 

evidence must “clearly set forth” or “clearly redefine” a claim term so as to put one reasonably 

skilled in the art on notice that the patentee intended to so redefine the claim term. Bell Atlantic 

Network Services, Inc. v. Covad Communications Group. Inc., 262 F.3d 1258, 1268 (Fed. Cir. 

2001). 

The prosecution history, including “the prior art cited,” is “part of the ‘intrinsic 

evidence.”’ Phillips, 415 F3d at 1317. The prosecution history “provides evidence of how the 

inventor and the PTO understood the patent.” Id. Thus, the prosecution history can often inform 

the meaning of the claim language by demonstrating how an inventor understood the invention 

and whether the inventor limited the invention in the course of prosecution, making the claim 

scope narrower than it would otherwise be. Vitronics, 90 F.3d at 1582-83; see also Chimi v. PPG 

Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution 

history in construing a claim is to exclude any interpretation that was disclaimed during 

prosecution”), quoting ZMI Cog. v. Cardiac Resuscitator Corn., 844 F.2d 1576, 1580 (Fed. Cir. 

1988); Southwall Techs., Inc. v. Cardinal IG Co., F.3d 1570, 1576 (Fed. Cir. 1995). The 

prosecution history includes any reexamination of the patent. Intermatic Inc. v. Lamson & 

Sessions Co., 273 F.3d 1355, 1367 (Fed. Cir. 2001). 

In addition to the intrinsic evidence, the administrative law judge may consider extrinsic 

evidence when interpreting the claims. Extrinsic evidence consists of all evidence external to the 

patent and the prosecution history, including inventor testimony and expert testimony. This 

extrinsic evidence may be helpful in explaining scientific principles, the meaning of technical 

I 

17 
terms, and terms of art. Vitronics, 90 F.3d at 1583; Markman, 52 F.3d at 980. However, 

“[e]xtrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose 

of varying or contradicting the terms of the claims.’’ Markman, 52 F.3d at 98 1. Also, the Federal 

Circuit has viewed extrinsic evidence in general as less reliable than the patent and its 

prosecution history in determining how to read claim terms. Phillips, 415 F.3d at 1318, In 

addition, while extrinsic evidence may be useful, it is unlikely to result in a reliable interpretation 

of patent claim scope unless considered in the context of the intrinsic evidence. Phillips, 415 

F.3d at 1319. 

In Nystrom v. Trex Company 424 F.3d 1136 (Fed. Cir. 2005), the Court stated: 

. . . as explained in Phillips, Nystrom is not entitled to a claim 

construction divorced from the context of the written description 

and prosecution history. The written description and prosecution 

history consistently use the term “board” to refer to wood decking 

materials cut from a log. Nystrom argues repeatedly that there is 

no disavowal of scope of the written description or prosecution 

history. Nystrom’s argument is misplaced. Phillips, 415 F.3d at 

1321 (“The problem is that if the district court starts with the broad 

dictionary definition in every case and fails to fully appreciate how 

the specification implicitly limits that definition, the error will 

systematically cause the construction of the claim to be unduly 

expansive.”). What Phillips now counsels is that in the absence of 

something in the written description and/or prosecution history to 

provide explicit or implicit notice to the public- i.e., those of 

ordinary skill in the art- that the inventor intended a disputed term 

to cover more than the ordinary and customary meaning revealed 

by the context of the intrinsic record, it is improper to read the term 

to encompass a broader definition simply because it may be found 

in a dictionary, treatise, or other extrinsic source. Id. 

- Id. at 1144, 1145. In Free Motion Fitness Inc. v. Cybex International, Inc. 423 F.3d 1343 (Fed. 

Cir. 2005), the Court concluded that: 

under Phillips, the rule that ‘a court will give a claim term the full 

18 
range of its ordinary meaning’, Rexnord Corn. v. Laitram Corn., 

274 F.3d 1336, 1342 (Fed.Cir. 2001), does not mean that the term 

will presumptively receive its broadest dictionary definition or the 

aggregate of multiple dictionary definitions. Phillips, 415 F.3d at 

1320- 1322. Rather, in those circumstances, where references to 

dictionaries is appropriate, the task is to scrutinize the intrinsic 

evidence in order to determine the most appropriate definition. 

- Id. at 1348,49. In Network Commerce. Inc. v. Microsoft COT. 422 F.3d 1353 (Fed. Cir. 2005), 

the Court concluded: 

As we recently reaffirmed in Phillips, “conclusory, unsupported 

assertions by experts as to the definition of a claim term are not 

useful to a court.” Phillips, 415 F.3d at 1318. Here [expert] 

Coombs does not support his conclusion [the “download 

component” need not contain the boot program] with any 

references to industry publications or other independent sources. 

Moreover, expert testimony at odds with the intrinsic evidence 

must be disregarded. Id. (“[A] court should discount any expert 

testimony that is clearly at odds with the claim construction 

mandated by . . . the written record of the patent.” (internal 

quotations and citation omitted). That is the case here. 

- Id. at 1361. 

Patent claims should be construed so as to maintain their validity. However, that maxim 

is limited to cases in which a court concludes, after applying all the available tools of claim 

construction, that the claim is still ambiguous. Phillips, 415 F.3d at 1327. If the only reasonable 

interpretation renders the claim invalid, then the claim should be found invalid. See, ex., Rhine 

v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). 

A. Prior Claim Constructions 

Complainant QUALCOMM argued that Nokia did not offer any justification to depart 

from prior claim constructions by U.S. District Court Judge Rudi Brewster in Oualcomm Inc. v. 

Conexant Systems. Inc., Case No. 02CV002-B (Conexant), Oualcomm Inc. v. Maxim Intesrated 

19 
Products, Inc.., Case No. 02CV2429-B (Maxim) and Oualcomm Inc. v. Broadcomm Corn., Case 

No. 05CV1392-B (Broadcom) and by the prior administrative law judge in his Order Nos. 33 and 

37.7 (CBr at 7.) 

Respondents argued that the administrative law judge should not give any deference to 

claim constructions issued in prior actions to which Nokia was not a party. (RBr at 6.) 

The staff argued that the administrative law judge may conduct his own claim 

construction in a Commission investigation, especially when the parties and issues at hand are 

not identical to those previously litigated in district court proceedings. (SBr at 9.) 

Although the claim constructions in Order Nos. 33 and 37 may be given deference,’ and 

Judge Brewster’s construction may be given some weight, the administrative law judge is not 

bound by the claim constructions by Order Nos. 33 and 37 because (1) the portion of Order No. 

33 that adopted the ‘473 claim constructions was not reviewed by the Commission since said 

adoption stemmed from a denial of summary determination and therefore was not an initial 

Order No. 33 at 9 agreed with Judge Brewster’s claims constructions, with respect to 

the ‘473 patent, in Conexant and Maxim. Order No. 37 at 8-13 adopted the claim constructions 

of Judge Brewster, with respect to the ‘408 and ‘220 patents, in Coexant and Broadcom. 

’ Despite any deference given to Order Nos. 33 and 37, the prior claim constructions may 

be reconsidered under the same standards applied to a motion for reconsideration of an 

administrative law judge’s order. &, a, 18 James Wm. Moore, Moore’s Federal Practice $0 

134.22[1][c], 134.22[3][a] (3d ed. 2006). Moreover, a prior claim construction should be 

modified if there has been a change of fact, a change of law, or if the prior orders were clearly 

erroneous or manifestly unjust. See Tor0 Co. v. White Consolidated Indus., Inc., 383 F.3d 1326, 

1336 (Fed. Cir. 2004) (“A departure from law of the case generally requires the discovery of new 

and material evidence not presented in the prior action or ‘an intervening change of controlling 

legal authority, or [a showing that] the prior decision is clearly incorrect and its preservation 

would work a manifest injustice.”’).) It should further be noted that Judge Brewster issued his 

claim constructions in the Conexant and Maxim cases prior to the Federal Circuit’s decision in 

Phillips. (RFF 11.634-637 (undisputed).) 

1 

20 
determination, and (2) Order No. 37 was not an initial determination and therefore similarly was 

not subject to the Commission’s review. Moreover, referring to the prior claim constructions 

issued by Judge Brewster, they were not final and hence were not reviewed by an appellate court. 

Also, they involved different accused products than the ones at issue in this investigation, and the 

constructions were made in litigation to which neither the respondents nor the staff were parties. 

(RFF 11.626-68 (undisputed).) In addition, notwithstanding the rule against tailoring a claim 

construction to fit the dimensions of the accused products or process, it may be necessary for the 

administrative law judge in his claim construction to consider the accused device in dispute. 

Wilson Sporting Goods Co. v. Hillerich & Bradsbv Co., 442 F.3d 1322, 133 1 (Fed. Cir. 2006) 

(Wilson); Pall Corn. v. Hemasure Inc., 181 F.3d 1305, 1308 (Fed. Cir. 1999).j In Wilson, the 

Federal Circuit stated: 

[I]f the litigants cannot themselves inform a trial court of the 

specific issues presented by the infringement inquiry - that is, the 

issues of the breadth of the claim construction analysis and the 

most useful terms to facilitate that defining process - then a trial 

court may refer to the accused product or process for that context 

during the process. For instance in this case, this court is puzzled 

by the relevance of “rigid” in this claim construction analysis. 

Without the full infringement context, including some record 

evidence about the accused devices, this court does not fully 

understand the necessity of inserting “rigid” into claims without 

that express language. Moreover, this court cannot assess the 

meaning of “rigid” in the context of this invention. 

Wilson at 133 1. The Federal Circuit then held that on remand the trial court may reconsider its 

previous claim construction “in the context of a detailed examination of the alleged infringement 

of particular claims by the accused devices.” Without knowledge about the accused products 

I 

or processes, a court may lack a “proper context for an accurate claim construction” and its 

21 
construction “takes on the attributes of something akin to an advisory opinion.” Lava Tradin% 

Inc. v. Sonic Trading Mgmt., LLC, 445 F.3d 1348, 1350 (Fed. Cir. 2006).) 

Said adoption of the prior constructions also did not take into account the differences in 

the dispute between the parties here and the parties in Conexant, Maxim and Broadcom, 

including a dispute between QUALCOMM and Nokia regarding the terms “maximum gain 

setting” and “automatic gain control setpoint.” (RFF II.630-633 (undisputed).) In the prior 

district court cases, the parties stipulated to the constructions of those terms and thus the terms 

were not a point of contention central to a dispute. (RFF II.630,632 (undisputed).) In other 

words, the construction of said terms was not material to resolution of the conflict, so any 

seemingly erroneous and improper construction would not have been challenged by the injured 

party because doing so would unnecessarily divert the focus of the dispute. Finally, the 

administrative law judge would deprive the respondents in this investigation of due process by 

adopting the prior constructions wholesale without considering the respondents’ or the staff‘s 

claim construction arguments. It is undisputed that respondents and the staff were not given an 

opportunity, during the prior litigations, to present their construction arguments because they 

were not parties to the prior litigations. (RFF II.626,627 (undisputed).) Moreover, the facts 

surrounding the investigation here and the facts surrounding the prior cases are divergent. For 

example, as stated, sum-a, different products are at issue. 

Based on the foregoing, this administrative law judge is not adopting outright the claim 

constructions of Judge Brewster and those of Order Nos. 33 and 37. 

I 22 
1 

B. ‘473 Patent 

1. Preamble (Claims 1 And 3) 

Complainant argued that none of the preambles of the asserted claims of the ‘473, ‘408 

and ‘220 patents are limiting. (See CRBr at 3.) 

Respondents argued that the preambles of claims 1 and 3 of the ‘473 patent are limiting, 

as are the preambles of claim 1 of the ‘408 patent and claim 2 of the ‘220 patent. (RBr at 9, 18, 

24,42.) 

The staff argued that the preambles of both claims 1 and 3 of the ‘473 patent as well as 

the preambles of the asserted claims of the ‘408 and ‘220 patents limit the scope of the claims. 

(SBr at 13-14,22.) 

The administrative law judge finds that the preambles of claim 1 and claim 3 of the ‘443 

patent, as well as the preambles of the asserted claims of the ‘408 and ‘220 patents, are limiting 

because they are essential in understanding the body of the claims. 

Corning Glass, suma. 

Pitney Bowes, supra; 

Referring to the preambles of the asserted claims of the ‘473 patent, both preambles recite 

elements that are referred to in the body of both claims. For example, the preamble of claim 1 

recites “plurality of frequencies” and “predetermined calibration values,” and both of those terms 

are recited again in the body of claim 1 of the ‘473 patent. (JX-1 at 7:lO-14, 16-17,22-24,28-29, 

36-37.) The preamble of claim 3 recites “a radio performing transmit power calibration,” and 

“transmitting signals through a variable gain, transmit amplifier . . . and receiving signals through 

a variable gain, receive amplifier,” and the body of claim 3 references back to the preamble for 

both transmit and receive amplifiers. (JX-1 at 7:43-49.) In order to give “life, meaning and 

i 

I 

I 

23 
vitality” to the claims, the administrative law judge finds that the recitations in the preambles 

must be accorded weight and construed consistently with the subsequent recitations in the bodies 

of the claims. See Pitnev Bowes, supra. 

The administrative law judge finds the context of the preamble of claim 1 provides 

meaning to certain claimed terms by describing the composition of a radio device and the method 

by which the radio transmits and receives data. (JX-1 at 7:9-14 (“a radio device having a plurality 

of predetermined calibration values . . . the radio device transmitting and receiving on a plurality 

of frequencies, each frequency having a freauencv index.”) (emphasis added.)) If said preamble 

were not held to be limiting, then the subsequent recitations of those terms in the body of claim 1 

would be deprived of the meaning attributed to them in the preamble. As for the preamble of 

claim 3 of the ‘473 patent, the preamble states ‘‘a variable gain, transmidreceive amplifier” (JX-1 

at 7:46-47,48) while the first mention of either amplifier in the body of said claim states ‘‘h 

receive amplifier” and ‘‘& transmit amplifier.” (JX-1 at 7:50,8:4-5.) Thus, the mentions in the 

preamble serve as the antecedent bases for the mentions in the claim body. 

. 

Based on the foregoing, the administrative law judge finds that the preambles of claim 1 

and claim 3 of the ‘473 patent limit the scope of the body of both claims. 

2. The Claimed Term “Frequency Index” 

The claim term “frequency index” appears in the preamble and the first, fourth, sixth, and 

eighth elements of asserted independent method claim 1 of the ‘473 patent, following “the 

method comprising the steps of,” as well as in the preamble and the third and fifth elements of 

asserted independent apparatus claim 3 of the ‘473 patent following “the ratio comprising”. 

- 

1 

1 

24 
Complainant argued that “frequency index”, as to each of claims 1 and 3,9 should 

properly be construed as “a value specifying the center frequencies on which receiver or 

transmitter is operating at a given moment.” (CBr at 14, citing CDX-06.) Complainant further 

argued that during the hearing, Nolua sought to limit the word “frequency” to a specific range of 

frequencies, corresponding to the small range of frequencies of a channel rather than a band, thus 

excluding a band; that the “channel” limitation advocated by Nokia is not in any of the parties’ 

constructions; and that Nokia’s belated effort during the hearing to re-write the proposed 

construction to a particular embodiment of the ‘473 patent is procedurally and substantively 

improper. (CBr at 14.) 

Respondents argued that the term “frequency index,” as to each of claims 1 and 3, should 

be construed as “a number or symbol representing the current center frequency on which the 

receive or transmit chains are operating.” (RFF II. 189.) Respondents further argued that 

complainant is confusing claim construction with the non-infringement analysis; that Nokia’ s 

proposed construction of “frequency index” is: “a number or symbol representing the current 

center frequency on which the receive or transmit chains are operating;” that while Nokia does 

not contend this construction should contain the word “channel,” Nokia contends that this 

construction can refer only to a particular channel because Nokia’s handsets “operate” on only 

one channel at any given moment.’” It is also argued that QUALCOMM has altered the language 

None of the parties argued that there should be different interpretations for “frequency 

index” in claim 1 as contrasted to claim 3. 

lo Nokia noted that QUALCOMM and the staff argued that while the specification does 

not expressly limit the frequency index to a particular “channel,” the “current center frequency on 

which the receive or transmit chains [of Nokia’s handsets] are operating” is necessarily a single 

channel because the receive and transmit chains can operate on only one channel at a time. 

25 
of the specification from an index that represents a single “center frequency” on which the phone 

is currently operating to include multiple “center frequencies” on which the phone is operating; 

and that there is no support for QUALCOMM’s modification of the express language. (RBr at 

14.) 

The staff argued that the term “frequency index” should be construed as “a value 

specifying the current center frequency on which the receive or transmit chains are operating, 

which is used to address the linearizer and access the proper calibration value.” (SBr at 19.) 

The asserted claims of the ‘473 patent associate each of the individual receive and 

transmit frequencies, with a separate frequency index. (JX-1 at 7:ll-13 (“the radio device 

transmitting and receiving on a plurality of frequencies, each freauency having a frequencv index 

. . .”) (emphasis added); JX-1 at 7:15-17 (“receiving a first signal having a first gain, a first 

frequency of the plurality of frequencies, and the first frequency having a first freauencv index . . 

.”) (emphasis added); JX-1 at 7:27-30 (“transmitting a second signal having a second gain and a 

second frequency of the plurality of frequencies, the second frequency having a second freauency 

-- index . . .”) (emphasis added).) Moreover the specification of the ‘473 patent states: 

In order to reduce the error in the receive and transmit chains 

versus frequency, the receive and transmit linearizers utilize the 

frequencv index that smcifies the current center frequency on 

which the receive and transmit chains are oDerating. 

(JX-1 at 3:59-61 (emphasis added).) As the parties have agreed, one of ordinary slull in the art as 

of the February 28, 1994 filing date of the ‘473 patent would have understood that a phone 

1 

I 

cannot transmit and receive at the same time on the same frequency. (CFF G36 (undisputed).) 

Moreover, the Background of the Invention section of the ‘473 patent defines the forward and 

26 
reverse links as operating on different bandwidths as follows: 

The 800 MHz cellular telephone system operates its forward link, 

the cell to radiotelephone transmission, in the bandwidth of 869.01 

MHZ to 893.97 MHz and the reverse link, the radiotelephone to 

cell transmission, in the bandwidth of 824.01 MHz to 848.97 MHz. 

(JX-1 at 1:24-28 (emphasis added).) Therefore, the administrative law judge finds that the 

receive and transmit chains operate on their own distinct center frequencies: one center 

frequency for the receive chain, and one center frequency for the transmit chain. Furthermore, 

HG. 2 of the ‘473 patent shows a different “frequency index” as an input to each of the receive 

and transmitter linearizers. (JX-1 at Fig. 2.) 

Additionally, with respect to the concept of frequencies and channels, the ‘473 patent 

explicitly states that the patented invention addresses the issue of power control in FDMA and 

CDMA systems. (JX-1 at 2: 17-19.) FDMA systems operate on only a single channel at a time, 

while CDMA systems utilize several channels at a time. (JX-1 at 1:41-44.) The specification 

also discloses that the bandwidths are split into channels: 

The forward and reverse link bandwidths are sulit up into channels 

each of which occuDies a 30 kHz bandwidth. A particular user of 

the cellular system may operate on one or several of these channels 

at a time. All users of the system must ensure that they are 

compliant with the level of radiated emissions allowable inside and 

outside of the channel or channels that they have been assigned. 

(JX-1 at 1:27-35 (emphasis added).) The parties do not dispute that a person of ordinary skill in 

the art as of the February 28, 1994 filing date would have understood that both a channel and a 

band comprise a plurality of frequencies. (CFF G25 (undisputed).) The parties likewise do not 

dispute that a band is comprised of a range of frequencies including multiple channels, and each 

I 

channel is a range of frequencies. (CFF G27 (undisputed).) As such, the administrative law 

27 

n 
judge finds that the term “frequency index” is not limited to a frequency within a single channel. 

Thus, he finds that the term encompasses frequencies within different channels because the 

specification discusses both FDMA and CDMA technologies and the output power level control 

problems associated with them. (JX-1 at 1:41-47; JX-1 at 2: 17-20.) For example, the 

specification of the ‘473 patent describes the power problems associated with CDMA 

technology: “For maximum system performance, users of the CDMA technique must carefully 

control the level of radiated power inside the channels in which they are operating.” (JX-1 at 

1:47-50.) Also, the Background of the Invention concludes by describing the focus of the present 

invention: 

Also, both the FDMA and CDMA based radios must 

operate on different channels while maintaining acceptable output 

power levels. Variation in output power level and input power 

detection versus frequency can cause an unacceptable amount of 

error in the amount of return link transmitted energy. 

These issues present significant problems to the designer of 

both FDMA and CDMA based radiotelephones. There is a 

resulting need for an effective, cost efficient means of correcting 

these problems. 

(JX-1 at 2:9-20 (emphasis added).) Those portions of the specification therefore indicate that the 

“frequency index” of the ‘473 invention can span several channels. Moreover, complainant’s 

expert Verdu testified: 

JUDGE LUCKERN: Let me ask you the next question. Am I 

correct that a person of ordinary skill in the art, again as of the 

filing date of this patent, would not find any limitation as to band 

or channel in the claim language? 

THE WITNESS: Correct. 

1 

JUDGE LUCKERN: All right. Now, am I correct that a person of 

28 
ordinary skill in the art as of the filing date of this patent, which 

of course is February 28th, 1994, would understand that bands are 

made up of channels? 

THE WITNESS: Yes. 

JUDGE LUCKERN: All right. Also would I be correct that a 

person of ordinary skill in the art as of February 28th, 1994 would 

understand that both bands and channels can be said to be made up 

of freauencies? 

THEWITNESS: Yes. 

JUDGE LUCKERN: All right. Let me ask you this question. 

Would, in your opinion, a Derson of ordinarv skill in the art as of 

the filing date of this patent conclude that the term "frequency 

index", as it is used in these claims, applies when the phone 

operates on any freauency band, not just on the more limited 

frequency channels? 

THE WITNESS: That's correct. 

JUDGE LUCKERN: All right. Let me ask you this question. 

Now, your construction that you like for frequency index is a value 

specifying the center frequencies on which receiver or transmitter 

is operating at a given moment. Correct? 

THE WITNESS: Correct. 

JUDGE LUCKERN: All right. Why -- the way I read it, why are 

you using this term "frequencies" in the plural in your claim 

construction? Is it critical to your claim construction as far as how 

a person of ordinary skill in the art would interpret frequency 

index as of the filing date of this patent? 

You have frequencies, in the plural. Is that sort of critical? Do you 

understand my question? 

THE WITNESS: Right. No, I don't think it is critical. And I think 

Judge Brewster came up with this language just to make sure -- 

JUDGE LUCKERN: Well, let's forget about Judge Brewster. I 

have already said that I would give deference to Judge Brewster, et 

29 
cetera, but I am going to look at the intrinsic evidence, and also I 

can give weight to the extrinsic evidence. I want to hear what you 

are -- you are testifying. You have been qualified as an expert. I 

want to hear from you, not Judge Brewster. I can read what Judge 

Brewster said if he wrote anything. 

THE WlTNESS: True. I was just responding to your question 

about why the term construction has the plural rather than the 

singular. 

JUDGE LUCKERN: Correct. 

THE WITNESS: And the reason is that when you transmit 

information, you cannot just transmit information with a signal that 

occupies just one frequency in the frequency spectrum. You have 

to have a bandwidth. Okay? 

Signals that occupy only one frequency have no 

information. You have to occupy a certain bandwidth. Okay? 

And that’s why the language is plural. 

JUDGE LUCKERN: That’s why you like frequencies. 

THE WITNESS: Frequencies. 

JUDGE LUCKERN: That’s how you feel a person of ordinary skill 

in the art as of the filing date of this patent would consider this 

phrase? 

THE WITNESS: Correct. 

(Tr. at 1088-91 (emphasis added).) 

Moreover, because the receive and transmit chains cannot operate on the same frequency 

at the same time, the administrative law judge finds that the values extracted from the “frequency 

index” must be different for the receive and transmit chains and they also do not have to be 

within the same channel. Thus, he finds that the term “frequency index” should be understood to 

consist of a set of frequency values in a table, with one frequency value serving as a reference 

30 
point for the receive chain linearizer and another frequency value serving as a reference point for 

the transmit chain linearizer. In this way, the value of the frequency index for the transmit chains 

represents the current center frequency on which the transmit chain is operating, while the value 

of the frequency index for the receive chain represents the current center frequency on which the 

receive chain is operating. 

Based on the foregoing, the administrative law judge construes the term “frequency 

index” as “a value specifying the current center frequency on which the receive chain is 

operating, the current center frequency on which the transmit chain is operating.” 

The staff argued that “frequency index” should be construed with the additional limitation 

of “which is used to address the linearizer and access the proper calibration value.” (SBr at 19.)” 

The first portion of the staff‘s added limitation imports into an independent method claim a 

requirement to use a specific component of an independent apparatus claim. No party, however, 

contests the fact that the “frequency index” is used to address the linearizer. Hence, the function 

is inherent in the “frequency index” recitation of claim 1. 

As for the second portion of the staff‘s proposed limitation dealing with the calibration 

value, the administrative law judge finds that it is redundant in light of the language of claim 1 

and claim 3 which explicitly describes how the “calibration values” are generated in response to 

the first frequency index and the second frequency index. (JX-1 at 7:22-24 (“selecting a first 

predetermined calibration value in response to the automatic gain control setpoint and the first 

frequency index”) (emphasis added); JX-1 at 7:33-35 (“generating a second calibration value in 

’’ The administrative law judge notes that “linearizer” is not claimed in method claim 1 

of the ‘473 patent, while apparatus claim 3 recites both a “receive linearizer” and a “transmit 

linearizer.” (JX-1 at 7:9-37; JX-1 at 756; JX-1 at 8:8.) 

31 
response to the automatic gain control setpoint, the second frequency index, and the transmit 

power value”) (emphasis added); JX-1 at 757-60 (“for generating a receive calibration value in 

response to the automatic gain control setpoint and a first frequency index corresponding to the 

first frequency. . .”) (emphasis added); JX-1 at 89-11 (“generating a transmit calibration value 

in response to the automatic gain control setpoint, the second power value, and a frequency index 

corresDonding to the second frequency . . .”) (emphasis added).) Thus, although the frequency 

index is used to “access the proper calibration value,” the administrative law judge finds that the 

staff‘s modifying clause incorporating the calibration value into the definition of “frequency 

index” is unnecessary because this limitation is explicitly stated in the claim language. 

3. The Claimed Term “Automatic Gain Control Setpoint” 

Complainant argued that the term “automatic gain control [AGC] setpoint” should be 

construed to mean “the setpoint generated by a control circuit that is used for automatically 

changing the gain of a transmitter or receiver.” (CBr at 16.) It is further argued that the 

fundamental claim construction question raised by said term is the meaning of the term, not how 

it is generated. (CBr at 16, citing CDX-9.) 

Respondents put in issue the phrase “generating an automatic gain control setpoint in 

response to the receive power value and the reference voltage signal” and argued that the phrase 

should be construed to mean “integrating the receive power value with respect to a reference 

voltage to generate a gain control value.” (RBr at 10.) It is also argued that how the AGC 

setpoint is generated is a “jugular” issue. (RRBr at 8.) 

The staff argued that the term “automatic gain control setpoint” should be construed to 

mean “the open loop power control signal for the radio.” (SBr at 22.) It further argued that to the 

32 
extent that additional clarification is needed, Nokia’s proposed construction is reasonable. (RBr 

at 23.) 

All parties agree that the term “automatic gain control setpoint” did not have a standard 

meaning to one of ordinary skill in the art as of the February 28, 1994 filing date of the ‘473 

patent. (RFF II.122 (undisputed).) The parties also agree that the term “setpoint” is loosely used 

by electrical engineers. (RFF II. 124 (undisputed).) 

Complainant’s expert Verdu testified that because a person of ordinary slull in the art 

would not understand what an AGC setpoint is, he or she would have to look to the claims and the 

specification and that Verdu was unable to find a different discussion of AGC setpoint than the 

one discussed in a preferred embodiment: 

JUDGE LUCKERN: Would it be reasonable to a person of 

ordinary skill in the art to interpret this phrase “automatic gain 

control setpoint” as the value generated by integrating the receive 

power value with respect to a reference voltage to automatically 

change the gain of a receiver or transmitter? 

THE WITNESS: That would be the specific embodiment, the 

preferred embodiment in the patent talks exactly in that way. That’s 

how -- that’s essentially what the preferred embodiment does. 

JUDGE LUCKERN: But you feel that a person -- 

THE WITNESS: But by lookinp at the patent, the whole patent and 

the claim language, I don’t think that one of ordinary skill in the art 

would understand that the claim language is meant to limit it in that 

way. 

JUDGE LUCKERN: Well, maybe you can just tell me how this 

other claim language would broaden it to come out the way you feel 

that a person of ordinary skill in the art would interpret it. 

You have made reference, of course, to certain sections of the 

specification, for example, what the staff has referred to, the AGC 

33 
setpoint, is the open loop power control signal for the radio. I am 

reading from column 3, around line 66 to 67. I think I can go back 

to realtime, where it was made reference here, but it is not clear to 

me what other parts of the specification you are relying on to 

broaden your definition as to how a person of ordinary skill in the 

art would interpret it. 

I am not prejudging you or anything right now. You are the expert. 

You are on the stand. I don’t have to have lawyers anymore, which 

I have heard in plenty of telephone conferences. You are under oath 

and you are an expert. Okay? 

THE WITNESS: Right. In the plain language -- of claim 1, the first 

time it talks about automatic gain control setpoint says generating 

an automatic gain control setpoint in resDonse to the receive power 

value and the reference voltage simal. 

So that’s very broad language, generating in response to. 

Then later on in claim 3. it says, an integrator. coupled to the power 

detector for generating an automatic gain control setpoint from the 

first power value. Claim 4, an integrator coupled to the power 

detector for generating an automatic gain control setpoint from the 

power value. 

So there in those passages, it does include the limitation of 

including an integrator, but not in claim 1. That language in claim 1 

is broader. 

*** 

THE WITNESS: Offhand I cannot cite a specific example where 

they would have a different discussion of AGC setpoint than the one 

they have when they discuss the preferred embodiment. 

JUDGE LUCKERN: Can you point to any literature reference or 

anything of that sort where, being around February 28, 1994, that 

would have this larger concept -- February 28th is what it is, 1994. 

THE WITNESS: Yes, not a specific one, but in 1994, as well as 

today, You know, it is common knowledge that YOU could generate 

these kind of AGC setpoints, not necessarily as the outDut of an 

intemator, but in other ways. 

34 
(Tr. at 1099-1 101, 1104 (emphasis added).) Verdu further testified that the term AGC setpoint 

alone, without any context, did not have an ordinary meaning to one of ordinary slull at the time 

the ‘473 patent was filed: 

Q. 

automatic gain control setpoint is not, would not have had any 

standard or ordinarv meaning. to one of skill in the art in 1994, 

correct? 

Thank YOU, Your Honor. Dr. Verdu, you agree - that the phrase 

A. I think that’s a fair statement. 

Q. And it is your testimony that in order to understand what that 

phrase means, automatic gain - control setpoint. you would have to 

look at the particular context in which it is used. correct? 

A. 

you look at a diagram like this, then one of ordinary skill in the art 

would not immediately be able to pinpoint, you know, a specific 

point in the diagram that says that, so -- 

In the sense that if you say automatic gain control setpoint, and 

Q. Goahead. 

A. 

on. 

So YOU would have to indeed look at the claim language and so 

- 

(Tr. at 1830-1831 (emphasis added).) Additionally, when one of the inventors, Ann Weiland, was 

questioned about the definition of AGC setpoint, she was not at all confident that the term in the 

early nineties was used in a consistent way: 

A. 

don’t have much confidence that throughout our developments, 

throughout our numerous, numerous discussions regarding this 

solution, our product development in this patent, I am not at all 

confident that that term was used in a consistent way. 

I remember that [AGC setpoint] was a term that was used. I 

I believe some ~eople might have a different definition in their mind 

of what an AGC setpoint is and that is the main reason why I am 

hesitant to use that term. 

35 
(Tr. at 559 (emphasis added).) Respondents’ expert Helgert testified as to the indefinite meaning 

of AGC setpoint prior to the February 28, 1994 filing date: 

Q. Okay. In your opinion, would a person of ordinary skill in the 

art, prior to February 28th, 1994 in the abstract, not even looking at 

the patent, would that person know that an automatic gain control 

setpoint would require a reference value? 

A. Well, there is a question of what was meant by the word 

automatic gain control setpoint in 1994 in the abstract, without 

reference to one of these patents. And the meaning of setpoint 

without reference to the patent would reallv be different. It would 

simply be a target value that an amplifier Pain would be set to, 

rather than the difference between a target value and an actual 

output of the amplifier. 

So there is this discrepancy here, and when we think of someone of 

ordinary skill in the art in 1994, we would have to refer that person 

to this particular patent in order to have an understanding - of 

automatic gain control setpoint in the context of the patent. 

Q. 

phrase automatic gain control setpoint is used in a way that’s 

different than it would be understood to mean to a person of 

ordinary skill in 1994 without even seeing the patent? 

As used in the context of the patent, and the specification, this 

A. Yes. 

(Tr. at 2442-2443 (emphasis added).) 

In light of the foregoing, the administrative law judge finds that the claim term “automatic 

gain control setpoint” did not have an ordinary meaning to a person of ordinary skill in the art as 

of the filing date of the ‘473 patent, which is consistent with undisputed proposed finding RFF 

II. 122. Therefore, he finds that the patentees’ definition of said term in the ‘473 patent governs. 

The “automatic gain control setpoint” is used in an automatic gain control loop. Unlike an 

AGC setpoint, an AGC loop does have meaning to a person of ordinary skill in the art, as of the 

36 
February 28, 1994 filing date (RFF II.127 (undisputed)) although the parties dispute what that 

meaning was. The ‘473 specification, however, under the subheading DETAILED 

DESCRIPTION OF THE PREFERRED EMBODIMENT, directly associates the AGC setpoint 

with a loop: “The AGC setpoint is the open loop Dower control signal for the radio” (JX-1 at 

3:66-45 (emphasis added)), which is the basis for the staff‘s proposed construction. The ‘473 

specification earlier under the same subheading, describes the automatic gain control section of 

the receive chain as follows: 

The receive linearization section includes an automatic gain 

control (AGO section. The signal input to the AGC section is 

received on the forward link and amplified by a low noise amplifier 

(LNA) (21 1). The output of the LNA (21 1) is input to a variable 

gain amplifier (212). The variable gain amplifier (212) produces a 

signal that is converted to a digital signal using an analog to digital 

converter (ADC ) (213). 

The power of the digitized received signal is next computed 

by a digital power detector (214). The power detector (214) 

includes an integrator that integrates the detected power with 

respect to a reference voltage. In the preferred embodiment, this 

reference voltape is provided bv the radio’s demodulator to indicate 

the nominal value at which the demodulator reauires the loo^ to 

lock in order to hold the power level constant. The demodulator 

requires this value for optimum performance since a power level too 

far out of the optimum range will degrade the performance of the 

demodulator. The power detector (214) performs the integration, 

thus generating an AGC setpoint. The setpoint and a receive 

frequency index are input to a receiver linearizing table (216). 

The AGC setpoint and the frequency index are used to 

address the linearizer (216), thus accessing the proper calibration 

value. This calibration value is then output to a digital to analog 

converter (215) that generates the analog representation of the 

receive AGC setting. 

The analog value adjusts the biasing of the variable gain 

amplifier (212). The control of the variable gain amplifier (212) 

37 
forces the receive AGC loop to close such that the input to the 

receiver linearizing table (2 16) follows a predetermined straight line 

with respect to RF input power. 

(JX-1 at 3:18-51 (emphasis added).) Significantly, what is disclosed, supra, is the first reference 

in the ‘473 patent to AGC setpoint. Thus, the earlier ABSTRACT, BACKGROUND OF THE 

INVENTION, SUMMARY OF THE INVENTION and BRIEF DESCRIPTION OF THE 

DRAWINGS sections do not reference AGC setpoint. 

Complainant’s expert Verdu directly associated the AGC setpoint with an AGC loop. (See 

Tr. at 1093, 1095-1096, 1833-1834.) For example he testified: 

JUDGE LUCKERN: If I went up to this person in February 24th, 

1994, he has never seen the patent, never seen the specification, 

nothing, and I say: Do you have an understanding of this phrase 

“automatic gain control set~oint” in your field, would he say yes, it 

means, this, this, this, this, or not? 

And he has no knowledge of this patent, no knowledge of the 

specification, nothing. But he is a person of ordinary skill in the art, 

and has some knowledge with respect to electrical -- you defined 

such a person the other day. Would he be able to give you an 

answer? 

THE WITNESS: They would be able to give you an answer. 

JUDGE LUCKERN: You are the expert. What type of answer 

would such a person give? 

THE WITNESS: The answer they would give you, you know, it is 

a signal that -- 

JUDGE LUCKERN: Go ahead, go ahead. 

THE WITNESS: Yeah, it is a signal that YOU are using in an 

automatic pain control loop, and YOU will be using that signal - in 

order to control the gain of a variable gain amplifier. That’s what a 

person of ordinary skill in the art, not having seen the patent, would 

understand. 

38 

I 
JUDGE LUCKERN: So he would have an understanding of this 

phrase “automatic gain control setpoint”? The whole phrase, he 

would have an understanding from something else? 

THEWITNESS: a. 

(Tr. at 1833-1834 (emphasis added).) Respondents’ expert Helgert, testified as to the well known 

meaning of AGC loop: 

Q. Let me start by aslung you about this person of ordinary skill. 

So this is the person that you described, it is prior to February 28, 

1994, and my question is, would that person have understood that 

the automatic gain control loo^ had a well-known meaning at the 

time? 

A. Yes, it would have. 

Q. And what would that meaning be? 

A. 

amplifier would be controlled by a gain control signal, that is to say, 

the gain of the variable gain amplifier would be controlled by a gain 

control signal. 

The meaning would be that the relationship through an 

And that gain control signal would be derived by comparing the 

actual output of this amplifier with a particular reference value, or 

let us say, a target value that the output of the amplifier should 

reach. 

Q. 

illustration that you prepared? 

Okay. If you turn to the slide, RDX-6lC-11, is that an 

*** 

A. Yes. Here we have again an amplifier that has the possibility 

of adjusting its gain by means of a signal, which is indicated there 

as coming out of this gain control adjustment box. 

Now, the idea here is that you have a certain input level which 

fluctuates over time, but you would like to have an output level 

from this amplifier that is equal to a reference level provided 

39 
externally. And so at any one time, you make a comparison 

between what the amplifier actually puts out and this reference 

level. which is the desired output from the amplifier. 

This comparator then is fed back into a gain control adjustment 

process, and the purpose of the gain adiustment is to change the 

gain of the amplifier in such a way as to bring the output level in 

line with the reference level. That’s the basic idea of what’s called 

an automated gain control loop. 

Q. So the purpose of an AGC loop is to make the difference 

between the output level and reference level as small as possible? 

A. Exactly. 

Q. 

understood that? 

And would a person of ordinary skill at the time have 

A. Yes. 

Q. 

a reference level? 

And would they have understood that an AGC loop must have 

A. Yes. 

Q. What would happen to the AGC loop if you removed the 

reference level? 

A. 

basis on which to make any kind of gain adiustment. 

There would be no point to it, because YOU would have no 

Q. 

reference level? 

In your opinion, can you have an AGC loop without a 

(Tr. at 2342-2345 (emphasis added).) Thus, the administrative law judge finds that the AGC 

setpoint is intertwined with the concept of an AGC loop. 

Claim 1 states that the automatic gain control setpoint is calculated with respect to two 

values: the receive power value and the reference voltage signal. (JX-1 at 7:19-21 (“[Glenerating 

40 
an automatic gain control setpoint in response to the receive Dower value and the reference 

voltage signal;”) (emphasis added).) The language of claim 3, however, only requires that the 

AGC setpoint be generated from a single power value. (JX-1 at 7:53-55 (“[Aln integrator, coupled 

to the power detector, for generating an automatic gain control setpoint from the first Dower 

value.”) (emphasis added).)” Nonetheless, claim 3 implements an integrat~r’~ forgenerating the 

AGC setpoint. (JX-1 at 7:53-55.) As seen, supra, claim 1 requires a reference voltage with respect 

to AGC setpoint but does not specifically require an integrator, while claim 3 has a requirement 

for an integrator with respect to AGC set point but does not specifically require a reference value. 

The phrases “in response to” in claim 1 and “from” in claim 3 indicate that there are 

reference values considered and factored into the calculation of the AGC setpoint. 

QUALCOMM’s expert testified that the fact that an AGC setpoint shows no functional 

dependence on the reference voltage does not mean that it is not generated as a function of the 

reference voltage level. (Verdu, Tr. at 1970.) However, the administrative law judge finds that 

the claim language as well as the specification’s teaching clearly indicate a relationship between 

the AGC setpoint and the reference voltage. As Nokia’s expert testified: 

If the word “in response to” means anything at all, there has to be a relationship 

between the quantity and the quantity that it is in response to. Otherwise the 

meaning of the word “in response to” has no meaning. So there has to be some 

kind of functional relationship between the automatic gain control setpoint and the 

reference voltage in this particular claim element. 

(Helgert, Tr. at 2445.) He further finds that the language “in response to” would have no 

meaning if there were no functional relationship required. Such an interpretation runs afoul of 

settled law. 

(Fed.Cir. 1996) (refusing plaintiffs “invit[ation] [I to read its ‘during staple firing’ limitation out 

of the claim” because the court must give meaning to all the words in a claim, noting: “Ethicon 

need not have included this limitation in its claims. Having done so, it must live with the 

language it chose.”). 

Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572, 1582 

l3 The term “integrator” is separately construed. However, analysis of the term AGC 

setpoint requires mention of “integrator” because the language of claim 3 explicitly states that the 

integrator generates the AGC setpoint. (See JX-1 at 7:53-55.) By understanding how the 

integrator generates the AGC setpoint, the term AGC setpoint can be appropriately defined. 

41 
The term “integrator” is defined in two locations within the specification of the ‘473 

patent. The first mention of integrator in the specification appears in the context of using an AGC 

setpoint in both the receive and transmit chains. As for the receive chain, it describes the 

automatic gain control setpoint as follows: 

The power detector (214) includes an integrator that integrates the 

detected Dower with respect to a reference voltage - . . . Jtlhe power 

detector (214) performs the integration, thus Penerating an AGC 

setpoint. The setpoint and a receive frequency index are input to a 

receiver linearizing table (216). The AGC setpoint and the 

frequency index are used to address the linearizer (216), thus 

accessing the proper calibration value. This calibration value is 

then output to a digital to analog converter (215) that generates the 

analog representation of the receive AGC setting. The analog value 

adiusts the biasing of the variable gain amplifier (212). 

(JX-1 at 3:27-29,37-47 (emphasis added).) The third element of claim 1 requires the AGC 

setpoint to be generated “in response to a receive power value [detected power] and the reference 

voltage signal. (JX-1 at 7:18-21 (emphasis added).) Said description (JX-1 at 3:27-29,27-47) is 

therefore consistent with the third element of claim 1. As for the transmit chain, the specification 

describes the automatic gain control setpoint as follows: 

As the power of the signal received from the cell increases, the 

radio decreases its transmit power. This output power control is 

accomplished by the AGC setpoint that is filtered by a low pass 

filter (217). 

The transmit section includes a digital summer (210) that 

combines the AGC setpoint and a closed loop power control setting 

(206). The output of the summer (210) is fed into a power control 

limiting section (205). 

*** 

The output of the Dower control limiting section (203, along 

with the transmit frequency index, are used to address values stored 

42 
in a transmitter linearizing - table (204). 

(JX-1 at 4:l-9,4:14-17.) The third element of claim 1 and the cited portions, supra, of the 

specification therefore support the finding that AGC setpoint is generated via an integration of the 

detected, or receive power value, with respect to a reference voltage; and that the setpoint is used 

in a sequence of steps to ultimately adjust the receive variable gain amplifier in the receive chain 

or address a transmit linearizing table in the transmit chain. As seen, supra, in the specification at 

JX-1 at 3:26-40, which is the only description in the specification regarding the generation of an 

AGC setpoint, the specification recites: 

The power detector (214) includes an integrator that integrates the 

detected power with respect to a reference voltage. . . . The power 

detector (214) performs the integration, thus generating an AGC 

setpoint. 

The second mention of “integrator” in the specification of the ‘473 patent appears in the 

context of Figure 8 which is “another embodiment.” (JX-1 at 6:21.) This portion of the 

specification describes an integrator (801) being used to generate a gain control signal according 

to the following equation: 

1/K * J(Setpoint - Detected)& 

where “detected” represents the digital measured output power of the power amplifier (808) and 

where “setpoint” represents a desired reference value. (See JX-1 at Fig. 8; 6:21-42.) Thus, even 

in this separate embodiment this equation for the integrator (801) requires integrating a detected 

power value (e.g., “detected”) with respect to a reference value (e.g, “setpoint”). 

Hence, the administrative law judge finds that the language of claim 1, claim 3, and of the 

specification support the construction that at least a detected power value and one reference value 

43 
are required to generate the AGC setpoint. Thus, the administrative law judge construes the term 

“automatic gain control setpoint,” as “the value generated by integrating a detected power value 

with respect to a reference value to automatically change the gain of a receiver or transmitter.” 

Complainant relies on dictionary definitions for its claim construction of AGC setpoint. 

(CBr at 17.) However, complainant’s cited definitions are for the phrase “automatic gain control,” 

not for the claim term “automatic gain control ~etpoint.”’~ Also one of those dictionaries is from 

1996. In the other dictionary, which did exist at the time of the February 28, 1994 filing of the 

patent application, that led to the ‘473 patent, the language immediately below what 

QUALCOMM quotes in its post-hearing brief clearly does require a reference value. Thus, the 

IEEE Standard Dictionary of Electrical and Electronics Terms (IEEE) includes two definitions of 

“automatic gain control”: 

(1) 

in a specified manner as a function of input or other specified 

parameters. 

A process or means by which gain is automatically adjusted 

(2) A method of automatically obtaining a substantially constant 

output of some amplitude characteristic of the signal over a range of 

variation of that characteristics at the input. 

(CDX-169.) The first definition of “automatic gain control” in the IEEE allows for the use of a 

l4 Leaving aside the fact that this “automatic gain control” is not the disputed claim term, 

complainant’s dictionary definitions simply indicate in the abstract that automatic gain control is 

a “process or means by which gain is adjusted in a specified manner as a function of input or 

other specified parameters.” One skilled in the art would have to look at the context in which the 

automatic gain control is used to determine what “specified manner,” “input,” or “other specified 

parameters” are needed. To the extent that one skilled in the art would look beyond the four 

corners of the patent to determine what this term means, other more relevant prior art references 

(including those cited in the asserted patents) teach AGC circuits specifically used for power 

control in cellular communications that integrate a reference level with respect to a received 

signal. See Wheatley U.S. Patent No. 5,367,262 (CX-40) and Wheatly PCT application. (RX311.) 

44 
reference voltage. (Helgert, Tr. at 2689-2690; CDX- 169.) The second definition of “automatic 

gain control” in the EEE requires the use of a reference voltage to indicate what the “substantially 

constant output” should be. (Helgert, Tr. at 2689; COX-169.) Moreover, the use of a dictionary 

may extend patent protection beyond what should properly be afforded by a patent. See Phillips, 

supra. 

Complainant also argued that the specification merely describes a preferred embodiment 

of the invention, and that as such, any excerpts taken from the specification regarding AGC 

setpoint are not limiting on the invention as a whole. However, as found, supra, it is clear from 

claim 1 itself that the AGC setpoint is based on the receive power value and the reference voltage 

signal. As for claim 3, because AGC setpoint has no ordinary meaning, the term cannot be 

understood in isolation and the description of AGC setpoint in the specification must govern. 

Moreover, the patentee cannot expand beyond what he has claimed as the AGC setpoint by 

characterizing the specification as referring to only a “preferred embodiment” of the invention. 

As discussed supra, the only embodiments in which AGC setpoint is disclosed in the specification 

require that the setpoint be generated by integrating some detected power with respect to a 

reference value. Merely using the words “preferred embodiment” in a subheading does not allow 

a patentee to expand a claim to what is not disclosed in the specification, especially when the 

language of claim 1 limits the term explicitly in requiring a reference voltage signal15 and when it 

is undisputed that the term “automatic gain control setpoint” did not have a standard meaning to 

one of ordinary skill in the art as of the February 28, 1994 filing date of the ‘473 patent, thus 

l5 The specification refers to “another embodiment” and “alternate embodiments.” (See, 

=, JX-1 at 5:47; 6:4,21,52.) The use of those terms signifies that the detailed description of 

the invention describes alternate embodiments and not just a preferred embodiment. 

45 
requiring said person to look to the patent itself to determine its meaning. Complainant focused 

on the fact that there is no disclaimer of alternate ways of generating the AGC setpoint, but the 

focus should instead be on the fact that there is not even a mention in the specification of the ‘473 

patent of any such alternate ways. The specific teachings of the ‘473 patent requires that the AGC 

setpoint be generated by integrating a detected power with respect to a reference voltage. There is 

no indication that any other alternative was contemplated. 

RY. Co., 121 U.S. 617,630 (1887) (embodiment described in the specification was found to be the 

actual invention because there was “nothing in the context to indicate that the patentee 

contemplated any alternative” embodiment to the one presented); Phillips, 415 F.3d at 1323 

(stating that the context in which a term is used will make it clear whether the patentee “intends 

for the claims and the embodiments in the specification to be strictly coextensive”). 

Snow v. Lake Shore & Mich. S. 

Complainant argued that claim 1 should limit AGC setpoint under a claim differentiation 

theory. Specifically, complainant argued that the term “integrator” appears in claim 3 and does 

not appear in claim 1, and therefore that claim 1 should not be limited to requiring an integrator. 

(CBr at 19.) The claim differentiation doctrine “normally refers to the presumption that an 

independent claim should not be construed as requiring a limitation added by a dependent claim.” 

Curtiss-Wright Flow Control Corp. v. Velan. Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (CurtissWright. However, when applied to two independent claims: “( 1) claim differentiation takes on 

relevance in the context of a claim construction that would render additional, or different, 

language in another independent claim superfluous; and (2) claim differentiation ‘can not broaden 

claims beyond their correct scope.”’ Id. at 138 I. In the context of independent claims, the Federal 

Circuit has cautioned that “claim differentiation is a guide, not a rigid rule.” Id. Moreover, as the 

46 
Federal Circuit recently stated: “claim differentiation takes on relevance in the context of a claim 

construction that would render additional, or different, language in another independent claim 

superfluous.” AllVoice Computing PLC v. Nuance Communications, Inc., 504 F.3d 1236,2007 

U.S. App. LEXIS 23949, at “23 (Fed. Cir. Oct. 12,2007). 

Claims 1 and 3 of the ‘473 patent are each independent claims and differ from each other, 

in other ways than just the recitation of “integrator.” Thus, unlike apparatus claim 3, claim 1 is a 

method claim and does not require the recitation of the structural components. It therefore is 

reasonable that a patentee may have recited the step of generating an AGC value without 

specifically referencing an integrator even though integration is inherently needed to perform that 

step. See Hormone Research Found. v. Genentech. Inc., 904 F.2d 1558, 1567 (Fed. Cir. 1990) (“It 

is not unusual that separate claims may define the invention using different terminology, 

especially where (as here) independent claims are involved.”). Furthermore, it is undisputed that 

claim 3 describes an apparatus that performs the method described in claim 1. That apparatus 

claim 3 expressly requires an integrator therefore supports a construction that integration is used 

to generate the automatic gain control setpoint in method claim 1, 

4. The Claimed Term “Calibration Value(s)” 

Complainant argued that the term “calibration value(s),” as found in claims 1 and 3 of the 

‘473 patent, means “corrected gain control settings.” (CBr at 20.) It is also argued that 

“predetermined calibration value” as used in the preamble, as well as the fourth element following 

the preamble, of claim 1 means calibration value “determined beforehand.” (CBr at 20.) 

Complainant further argued that there is no basis to limit “calibration value(s)” to a value 

generated during production. (CBr at 20,2 1 .) 

47 
Respondents argued that the term “calibration value(s)” means “a value in a correction 

table, determined during production or manufacturing, indexed by frequency, to linearize gain as a 

function of a gain control value(s).” (RBr at 14.) 

The staff argued that the term “calibration value(s)” means corrected gain control settings 

loaded into a look-up table during factory calibration or production testing of the radio.” (SBr at 

14.) 

As found supra, the preamble limits the body of claim 1, and more specifically, the 

administrative law judge finds that the plain language of the preamble, &. “a plurality of 

Eredetermined calibration values” limits the “calibration values” in the body to a plurality of 

predetermined calibration values. (JX-1 at 7: 10-1 1 (emphasis added).) The administrative law 

judge further finds that in the body of claim 1 following “comprising the steps of,” the fourth 

element of claim 1 recites “selecting a first medetermined calibration value in response to the 

automatic gain control setpoint and the first frequency index.” (JX-1 at 7:22-24 (emphasis 

added).) The fifth element of claim 1 then recites “adjusting the first gain in response to the first 

calibration value.” (JX-1 at 7:25-26 (emphasis added).) Thus, he finds that the claim language 

makes clear that the mention of the first calibration value in the fifth element refers back to the 

mention of a “predetermined” calibration value in the fourth element. 

In addition, the administrative law judge finds that the preamble language “a plurality of 

predetermined calibration values” (JX-1 at 7: 10-1 1 (emphasis added)) should apply to the second 

calibration value, as recited in the eighth and ninth elements of claim 1, because “plurality” 

means more than one value. If only the first calibration value were “predetermined,” then there 

would not be a “plurality” of “predetermined values” as the preamble requires. Thus, to make the 

48 
preamble consistent with the body of the claim, the administrative law judge finds that the plain 

language indicates that the “second calibration value” must be predetermined like the first. 

Moreover, with respect to the “second calibration value,” the administrative law judge 

finds that a claim construction requiring the value to be “predetermined” is further supported in 

light of the relationship between the words “first” and “second.” By using those words when 

referring to the “calibration values,’’ he finds that a person of ordinary skill in the art would 

conclude that the calibration values are related to one another by being part of a series of values, 

with each value sharing a common characteristic, and since the “first calibration value” is 

predetermined, the “second calibration value” must also be predetermined as well. 

Referring to the specification, it defines “calibration value(s)” as being predetermined 

even without the use of the “predetermined” language. The following excerpts from the ‘473 

specification demonstrate this point: 

[The power control correction of the present invention] is 

accomplished by real-time compensation utilizing a set of correction 

tables[’61 that are generated during the production testing of each 

radiotelephone. (JX-1 at 3:6-10) (emphasis added); 

The control of the variable gain amplifier (212) forces the receive 

AGC loop to close such that the input to the receiver linearizing 

table (216) follows a predetermined straight line with respect to RF 

input power. (JX-1 at 3:47-51) (emphasis added); 

During factory calibration of the radiotelephone, the linearizers are 

loaded with values, in addition to the previously mentioned 

calibration values, that are indexed by frequency to correct the 

errors related to the operating center frequency. (JX-1 at 3:61-65) 

(emphasis added); 

l6 The description of the invention equates “correction tables” with “look-up tables” and 

with “calibration tables.” (JX-1 at 6:68-7: 1 (“This power limitation is accomplished by a control 

loop including a calibration look-up table.”) (emphasis added).) 

49 
The transmitter linearizing table (204) contains values determined 

from production testing of the radiotelephone. (JX-1 at 4:17-20) 

(emphasis added); and 

The biasing of the variable gain amplifier (202) is adjusted by the 

analog calibration value to a point such that the input to the 

transmitter linearizing table (204) follows a predetermined straight 

- line with respect to transmitted RF output power. (JX-1 at 4:23-27) 

(emphasis added). 

The last paragraph of the specification, preceding the claims, further reinforces the predetermined 

nature of the invention by stating: "In summary, the process of the present invention ensures that 

the transmitted sidebands and synthesizer phase noise of a radio transmitter remains [sic] within a 

predetermined specification by limiting the maximum output power ..." (JX-1 at 6:64-68 

(emphasis added).) Moreover, respondents' expert Helgert has opined: 

Q. 

1994, looking at element D, would they understand that the 

calibration value was a value that was in a table that was put in 

there during manufacture? 

And a person of ordinary skill in the art prior to February 28th, 

A. Yes. 

Q, And why is that? 

A. 

preestablished, it has to be somehow an integral part of the phone. 

And the words calibration value indicate -- would indicate to 

someone of ordinary skill in the art that it is some kind of a table 

containing some discrete quantities. 

Well, the word predetermined means it has to be 

And so we would have then the idea that there is a table that's in 

the phone that has these calibration values in it. 

(Tr. at 2472-2473 .) Further, complainant's expert Verdu has testified: 

Q. Okay. Let's go back to claim 1, then. Now, the preamble is 

talking about a method and talks about a radio device that has, it 

says "having a plurality of predetermined calibration values." Do 

50 
you see that? 

A. Yes. 

Q. 

method claim. Do you see that? 

And then it goes on, and it talks about steps that occur in the 

A. Ido. 

Q. 

that there is a radio device and it says, “having a plurality of 

predetermined calibration values.” Do you see that? 

But before those method steps occur in the preamble, it says 

A. Ido. 

Q. A person of ordinary skill in 1994 would interpret that 

language to mean that before these method steps were performed, 

there has to be a radio device in existence, and that device has to 

have on it a plurality of predetermined calibration values, right? 

A. 

(Tr. at 1891-92.) 

All right. I don’t have any problem with that. 

Hence, based on the foregoing, the administrative law judge finds that the language of the 

claims and the specification use the term “calibration value” repeatedly and exclusively to 

describe predetermined values, viz. values being generated during production or manufacturing 

and stored onto the radio in correction tables. Thus, the administrative law judge finds that the 

term “calibration value(s)” means “corrected gain control settings loaded into a look-up table 

during factory calibration or production testing of the radio.” 

Complainant argued that although the specification describes a preferred embodiment as 

having linearizing tables loaded during factory calibration or production testing, the specification 

also describes calibration values as either the output of a linearizing table, or an analog signal for 

controlling the gain of the transmit amplifier. (CBr at 22, citing CFF G127; CFF G128.) Hence, 

51 
complainant argued that there is no basis to limit ”calibration value(s)” to a value generated 

during production. (CBr at 22.) The administrative law judge finds that complainant’s argument 

confuses the purpose and generation of the calibration values in the ‘473 patent. Thus, the 

calibration values recited in the ‘473 patent are used to affect the strength of the received or 

transmitted signals (e, the gain) and to achieve linearization. For example, the specification of 

the ‘473 patent states: 

The AGC setpoint and the frequency index are used to address the 

linearizer (216), thus accessing the proper calibration value. This 

calibration value is then output to a digital to analog converter (215) 

that generates the analog representation of the receive AGC setting. 

The analog value adiusts the biasing; of the variable gain amplifier 

/212). The control of the variable gain amplifier (212) forces the 

receive AGC loop to close such that the input to the receiver 

linearizing table (216) follows a predetermined straight line with 

respect to FW input power. 

(JX-1 at 3:41-51 (emphasis added).) Although the selection or generation of those calibration 

values may change during operation of the phone, they are all nonetheless stored on the phone 

during factory production. Thus, complainant’s witness Verdu testified: 

JUDGE LUCKERN: How does that change the fact that the phones 

don’t possess calibration values after they leave the 

manufacturing plant? How does that change that? Or it doesn’t 

change it, does it? I am not argumentative. I am just asking you 

how a person of ordinary skill in the art would interpret this patent. 

THE WITNESS: I don’t think there is any -- nobody is claiming 

here that the phone, when it leaves the factory, does not have 

calibration values, if I understand your question. 

JUDGE LUCKERN: So you would agree that the phone that is 

described here and is written here would have calibration values 

when it leaves the factory? 

THE WITNESS: Yeah, in this particular -- for that particular part 

52 
of the circuit I am talking about, the digital representation of 

those calibration values would indeed be stored in that table. 

(Tr. at 11 15-16.) 

The administrative law judge finds that the calibration values could not serve their purpose 

of adjusting the gain of the amplifier such that the output of the variable gain amplifier “follows a 

predetermined straight line with respect to RF input/output power” without being stored on the 

phone beforehand. (JX-1 at 3:47-51; 4:23-27.) In other words, even though the values are 

selected during operation of the handset, they must be stored on the phone prior to operation in 

order for them to function as they are intended. 

Complainant also argued that limiting “calibration value(s)” to those stored in a look-up 

table during factory testing or production excludes from the patent’s scope the embodiment 

disclosed in Figure 7 of the ‘473 patent. (CBr at 23-24.) The embodiment disclosed in Figure 7 

utilizes a closed loop power control mechanism in the transmit chain of the handset. (JX-1 at Fig. 

7.) The specification for this embodiment reads: 

In another alternate embodiment, illustrated in FIG. 7, a power 

limiting control system is employed that is based on the closed loop 

power control accumulator (702). The system operates by first 

measuring the output power of the power amplifier (705) using a 

power detector (706). The detected power is digitized (707) and 

compared to a maximum allowable setting by the comparator (701). 

If the output power is greater than the maximum setting, the closed 

loop power control accumulator (702) is modified to turn the 

amplifier (704) power down by one step each 1.25 ms until the 

output power is less than the maximum setting. If the output power 

is less than the maximum setting, the closed loop power control 

accumulator is not modified. The linearizing compensation tables, 

similar to the preferred embodiment, are added into the transmit 

gain control using a summer (703). 

(JX-1 at 6:4-20 (emphasis added).) This portion of the specification therefore does not refer to the 

53 
‘473 claims, but refers to claims of the ‘220 patent, which employ a closed loop power control 

system implementing a transmit gain control ~igna1.I~ The summer (703) adds the linearizing 

compensation tables into the transmit gain control, and does not access or generate any calibration 

value from a look-up table. (JX-1 at 6: 17-20.) In fact, claim 8 of the ‘220 patent uses the same 

language that is employed in the specification that describes the embodiment shown in Figure 7. 

The claim calls for “a summer for combining the received power level signal and the closed loop 

power control signal to produce a summation signal.” (JX-3 at 9:5-7 (emphasis added).) Thus, the 

output of summer (703) is a “summation signal” as claimed in the ‘220 patent. The administrative 

law judge finds that “summation signal” is not a “calibration value” as used in the ‘473 patent 

claims because Figure 7 employs a control loop mechanism, and such a mechanism is not claimed 

in the ‘473 patent. 

Complainant also argued that the calibration values are ilot predetermined since they are 

converted from digital to analog form. (See Tr. at 1128-29.) The administrative law judge finds 

that the patent requires “calibration value@)” be stored on the phone during testing and 

manufacturing, and their subsequent conversion from digital to analog or vice versa does not 

change the fact that the phones possess “calibration values” after the phones leave the 

manufacturing plant once testing is complete. (JX-1 at 3:7-10; Verdu, Tr. at 11 14-1 116, 1890; 

Helgert, Tr. at 2474-2475.) Thus, any subsequent conversion performed by the phone a, from 

digital to analog form) only manipulates the pre-stored value and does not generate any new nonl7 During prosecution of the application that led to the ‘473 patent, the PTO issued a 

restriction requirement which led to the issuance of the ‘408 and ‘220 patents. (JX-4 at 40-41; 

JX-5; JX-6.) Thus, the Examiner found that the so called “Group III claims (the ‘220 patent) 

were based on controlling the transmitter y& a close loop, classified in Class 455, subclass 127.” 

(JX-4 at QHITC002561; CFF JlO, CFF 15 (undisputed); CFF 16 (undisputed relevant part).) 

54 
predetermined value. 

5. The Claimed Term, “Integrator” 

Complainant argued that an “integrator” is “a device which generates a sum (over time) of 

an input and that the dispute between the parties about the term is whether the claimed 

“integrator” must integrate with respect to a “reference voltage.” (CBr at 25.) 

Respondents argued that “an integrator, coupled to the power detector, for generating an 

automatic gain control setpoint” is “a device that integrates a power value with respect to a 

reference voltage to generate an automatic gain control setpoint.” (RBr at 19.) 

The staff argued that an “integrator” is “a device that generates a sum (over time) of a 

detected power value with respect to a reference value.” (SBr at 26.) 

The term “integrator” is recited in the second element of asserted independent claim 3 and 

in the third element of unasserted independent claim 4 of the ‘473 patent following the preambles. 

The second element of claim 3 recites, “an integrator, coupled to the power detector, for 

generating an automatic gain control setpoint from the first power value.” (JX-1 at 7:53-55 

(emphasis added).) Thus, said claim 3 requires a specific type of integrator. The third element of 

claim 4 recites “an inteaator, coupled to the power detector, for generating an automatic gain 

control setDoint from the power value.” (JX-1 at 8:29-31 (emphasis added).) Thus, both mentions 

of “integator” in the claims of the ‘473 patent associate “integrator” with the generation of an 

AGC setpoint. Hence, the administrative law judge finds that the claim language is clear that the 

integrator component of the invention is intertwined with the generation of an automatic gain 

control (AGC) setpoint. Moreover, because the AGC setpoint does not have an ordinary meaning, 

- see Section VII.B.3, supra, the integrator’s function in the ‘473 patent must be limited to what is 

55 
described in the patent claims and specification. As such, the administrative law judge finds that 

the same limitations applied to the generation of the AGC setpoint must also apply to the 

description of “integrator” in order to maintain consistency within the claims and specification. 

- See Research Plastics, supra. 

The ‘473 specification discloses that the “[tlhe power detector (214) includes an integrator 

that integrates the detected power with respect to a reference voltage . . . [tlhe power detector 

(214) performs the integration, thus generating an AGC setpoint.” (JX-1 at 3:27-29,37-38 

(emphasis added).) As found, supra, an automatic gain control setpoint is “the value generated by 

integrating a detected power value with respect to a reference value to automatically change the 

gain of a receiver or transmitter.” Additionally, the specification states the disadvantages that may 

result if no reference value is used in the integrator: 

In an embodiment, this reference voltage is provided by the radio’s 

demodulator to indicate the nominal value at which the demodulator 

requires the loop to lock in order to hold the power level constant. 

The demodulator reauires this value for optimum performance since 

a power level too far out of the optimum range will degrade the 

performance of the demodulator. 

(JX-1 at 3:29-37 (emphasis added).) Kinik Co. v. ITC, 362 F.3d 1359, 1365 (Fed. Cir. 2004) 

(“The inventor’s discussion of the disadvantages of the low binder prior art sheds light on the 

scope of the invention.”); SciMed Life SYS. v. Advanced Cardiovascular Svs., 242 F.3d 1337, 

1342-44 (Fed. Cir. 2001) (claim to “lumen” limited by the single embodiment in the specification 

to mean coaxial lumen structure and not side-by-side structure because the written description 

described the disadvantages of using a side-by-side structure). 

Complainant’s expert Verdu, in his definition of “integrator,” relied on extrinsic evidence 

56 
to define how a person of ordinary skill would understand the term: 

Q. 

term integrator to be? 

What would one of ordinary skill in 1994 have understood the 

A. 

time. 

Just what I said, device that integrates or sums a signal over 

Q. 

Doctor? 

Is there any extrinsic support that supports your construction, 

A. Yes. I have selected some supporting -- 

Q. 

What is this, Doctor, what are we looking at? 

Could you please, could we please bring up Q-58. Next page. 

A. 

and Electronics Engineers. And the entry in the dictionary for 

integrator is a device producing an input -- excuse me, producing an 

output proportional to the integral of one variable or of a sum of 

variables, with respect to another variable, usually time. 

This is a dictionary of the IEEE. That’s Institute for Electrical 

Q. So can an integrator only have one variable as an input? 

A. It may. 

(Tr. at 1152 (emphasis added).) When asked about the description in the specification referring to 

the embodiment depicted in FIG. 2, s, JX-1 at 3:26-40, respondents’ expert Helgert however 

testified: 

A. Because I think a person of ordinary skill in the art in 1994 

would have had to consult the specifications in order to understand 

what was meant bv the term integrator - in the context of the patent. 

Without that, as I mentioned, he would have been able to come up 

with a mathematical definition of that term, but that would have not 

helped that person very far. 

So I look at this phrasing; here. and I first of all see that there 

is a digitized received signal, in other words, we’re not talking 

about an analog signal here anymore, but, rather, a digital signal. 

57 
And then we see that the Dower of this digital - signal is 

computed by a digital power detector. Therefore. the digital - power 

detector is going -- to put out digital power values, not an analog 

power signal, - but digital power values. 

And this power detector then says here. “includes an 

integrator that integrates the detected power with respect to a 

reference voltage.” And that tells me two things. The first thin? it 

tells me is that this integrator has to deal with discrete quantities, 

not continuous quantities. 

And the word integrator in the usual definition of that term 

would be looking for an analog auantitv, not a discrete auantity. 

That would lead me then to believe that the word integration 

here really has a different meaning from its mathematical meaning. 

And that would mean that it has to sum these power detector -- 

these digital power detector outputs over time. It has to sum these 

things, and it has to sum them over indefinite time. 

Now, the second part of that highlighted section talks about 

with respect to a reference voltage. And that means to me that the 

values produced by the power detector have to be compared with a 

reference voltage. And it is a result of this comparison that is 

actually integrated, or in this case, summed because we’re dealing 

with digital quantities. 

So that would be my reason for highlighting this particular 

section, because it would teach me what is meant by that particular 

claim. 

(Tr. at 2495-2497 (emphasis added).) Moreover, Ann Weiland, one of the named inventors of the 

‘473 patent, testified as to how an integrator in the embodiment in FIG. 2 would act: 

Q. 

highlighted, the only difference is I have highlighted the word 

integrator in that box. I have asked you about what a power 

detector did. Now I want to ask you just about the integrator. . . Is 

it true that the integrator in this box takes the difference between the 

detected power and a reference voltage and integrates that 

difference over time? 

Let’s go to slide, or the next slide in RDX-7. Now, I have 

58 
A. That is what an integrator would do. 

(Tr. at 550-5 1 (emphasis added).) Weiland also testified that at least with respect to the 

embodiment in FIG. 2, the function of the claimed integrator was distinct from the power detector 

to which it is coupled: 

Q. 

integrator, coupled to the power detector, for generating an 

automatic gain control setpoint from the first power value,” do you 

see that? 

This element we’re looking at that’s up on the screen, “an 

A. Yes. 

Q. 

reference voltage, correct? 

The function of the integrator in that phrase is to subtract the 

A. That is, yes, that’s part of what it does. 

Q. That’s what it does, right? 

A. It does do that. 

Q. 

over some period of time, doesn’t it? 

Okav. And the power detector alone just calculates power 

Q. 

adds the function of subtracting out the reference voltage. correct? 

And the integrator that gets added to the power detector, 

A. Repeat the question? 

JUDGE LUCKERN: And the integrator that gets added to the 

power detector, adds the function of subtracting out the reference 

voltage, correct? 

THEWITNESS: Yes. 

(Tr. at 696-7 (emphasis added).) Therefore, in order to generate an automatic gain control 

setpoint, the integrator disclosed with respect to FIG. 2 must integrate the receive power value 

59 
with respect to a reference value. 

Besides the portions of the ‘473 specification cited supra that associates an integrator with 

the generation of an AGC setpoint, the only other description of the process an “integrator” uses 

to integrate is given in the context of FIG. 8 of the ‘473 patent. The “integrator” described therein 

generates “a gain control signal,” a signal that is analogous to an AGC setpoint because both a 

reference value (e, setpoint) and a receive power value (e, detected) are similarly used to 

calculate the gain control signal. (See JX-1 at 6:25-42.) The relevant portion of the ‘473 

specification is as follows: 

The detected power is digitized (810) and input to an integrator - 

(801) that follows the equation: 

1/K * J(Setpoint - Detected)& 

The inteaator (801), generating: a gain control signal, 

saturates at 0 dB and -63 dB of correction. The gain control signal 

is thus limited within a range. If the output power is greater than 

the setpoint, the integrator turns down the output power of the 

amplifier (807) at a rate based on the integration - constant K until 

the setpoint is reached. The integrator is allowed to turn power 

down by as much as 63 dB. If the output power is less than the 

setpoint, the output of the integrator (801) will be forced to zero, 

thus not adjusting output power 

In this embodiment, a closed loop power control limiting 

function (803 and 804), similar to the preferred embodiment, is 

employed. The trigger for the closed loop power control limiting 

function, however, is a comparator (802) that detects when the 

power limiting integrator (801) is limiting the output power . . . 

(JX-1 at 6:25-48 (emphasis added); see also JX-1 at Fig. 8.) The equation used by the integrator 

of this embodiment utilizes both a setpoint, or reference value, and a detected value, or receive 

power value. Thus, both mentions of “integrator” in the specification require a reference value 

and a receive power value. 

60 
In light of the foregoing, the administrative law judge finds that the claim term 

“integrator” should be construed as “a device that generates a sum (over time) of a detected power 

value with respect to a reference value.” This construction is consistent with the construction of 

AGC setpoint, and the administrative law judge finds is further supported by the claims and the 

specification of the ‘473 patent. 

Furthermore, the unasserted claims from the ‘408 and ‘220 reciting “integrator” or 

“integrating” support the construction herein. As for the ‘408 patent, the sixth element of claim 7 

recites, “integrating the difference [between the digitized, detected Dower value and the maximum 

gain setting1 to generate a gain control signal, the gain control signal being limited to a 

predetermined range . . .” (JX-2 at 851-53 (emphasis added).) As for the ‘220 patent, the sixth 

element of claim 6 recites, “integratinp - the difference [between the digitized received Dower level 

signal and the maximum gain setting1 to generate a gain control signal, the gain control signal 

being limited to a predetermined range . . .” (JX-3 at 8:35-37 (emphasis added).) The second 

element of claim 9 recites, “an integrator, coupled to the analog to digital converter, for 

integratinp a difference between the received Dower level signal and a maximum gain - setting to 

generate the limiting gain control setting.” (JX-3 at 1058 (emphasis added).) Thus, all of those 

claim recitations require integrating a detected, or receive power value, with respect to a reference 

value b, a maximum gain setting). 

The administrative law judge finds that complainant’s construction of “integrator” 

attempts to broaden the claim term beyond what is specified in the claims. (CRBr at 12.) Thus, 

both claims 3 and 4 of the ‘473 patent associate the integrator with an AGC setpoint. (See JX-1 at 

7:53-55; 8:29-31.) Upon reading the claims, the administrative law judge finds that the reader 

61 
immediately understands that the integrator is being used to generate an AGC setpoint or another 

similarly calculated value. Hence, any construction of integrator must take into account the 

limitations of an AGC setpoint, which include the use of a reference value. Furthermore, as found 

supra, the only descriptions of integrator in the ‘473 specification support this construction. (See 

JX- 1 at 3:26-40; 6:21-42.) The specification describes the integrator as performing its calculation 

with at least two values: the detected or receive power value, and a reference value. (See id.) 

Complainant also argued that the doctrine of claim differentiation supports its 

construction. (CBr at 26.) Specifically, complainant argued that the term “reference voltage” 

appears in claim 1, but not in claim 3, and that there is nothing in the term “integrator” which 

requires a reference voltage or reference value. (CFF G144.) However, claim 1 and claim 3 are 

independent claims. As found in Section VII.B.3 supra, where two independent claims are 

involved, “claim differentiation is a guide, not a rigid rule.” Curtiss-Wright supra. Here, the 

administrative law judge finds that the claim differentiation doctrine does not aid in construing 

claim 3 because this claim would not be rendered superfluous to claim 1 merely because claim 3 

is interpreted to require a reference value. The claims remain distinct from each other because, at 

a minimum, claim 1 claims a method while claim 3 claims an apparatus. See Anderson Corn. v. 

Fiber Composites, LLC, 474 F.3d 1361, 1370 (Fed. Cir. 2007) (declining to apply the doctrine of 

claim differentiation because “there are numerous other differences varying the scope of the 

claimed subject matter”). 

6. The Claimed Term “Linearizer” 

Complainant argued that “linearizer”, which only appears in claim 3 of the ‘473 patent is 

“a device that supplies correction values used for making outputs approximately linear functions 

62 
of inputs.” (CBr at 26.) It is argued that the claim language does not support a limitation that the 

linearizer corrects for non-linearities in only the vauable gain amplifier, as opposed to other 

elements of the receive or transmit chain. (CBr at 28.) 

Respondents do not separately construe “linearizer,” but argued that the claim term “a 

receive linearizer . . . for generating a receive calibration value in response to the automatic gain 

control setpoint and a first frequency index” should be construed as “[a] device that supplies 

calibration values to account for known non-linearities of the receive variable gain amplifier using 

the automatic gain control setpoint and a frequency index of the received signal.” (RBr at 21.) 

Respondents further construed the claim term “a transmit linearizer for generating a transmit 

calibration value in response to the automatic gain control setpoint, the second power value, and a 

frequency index corresponding to the second frequency” as “[a] device that supplies calibration 

values to account for known non-linearities of the transmit variable gain amplifier using the 

automatic gain control setpoint, a frequency index of the transmit signal, and the power value of 

the transmit signal.” (RBr at 23.) 

The staff argued that the claim term “linearizer” should be construed as “a device that 

generates calibration values to account for non-linearities of the receive or transmit variable gain 

amplifier. (SBr at 30.) While the staff does not believe that the claimed linearizer only corrects 

for non-linearities of only the variable gain amplifier, the staff argued that the specification makes 

it clear that the receive and transmit linearizers “reduce the error in the receive and transmit chains 

versus frequency” (JX-1 at 3:57-59) and that at a minimum, the linearizers must account for nonlinearities in the receive and transmit variable gain amplifiers that are part of those chains. (SRBr 

at 17.) 

63 
The claim term “linearizer” appears in the third and fifth element, after the preamble, of 

asserted claim 3 of the ‘473 patent. The claim term “linearizer” or the related term “linearizing” 

is disclosed in the specification of the ‘473 patent in various locations. (See, e.%, JX-1 at 3:39-40, 

3:49,3:54,4: 16-17,4:26, 5:68,6: 17-18,6:48-49.) The specification provides that: 

The control of the variable gain amplifier (212) forces the receive 

AGC loop to close such that the input to the receiver linearizing 

table (216) follows a predetermined straight line with respect to the 

RF input power. This linearization removes the undesired linear 

and non-linear errors in addition to variations versus frequency that 

would otherwise be apparent at the input to the receiver linearizing 

table (2 16) in the receiver. 

(JX-1 at 3: 47-55 (emphasis added).) On the transmit side, the specification provides that: 

The biasing of the variable gain amplifier (202) is adjusted by the 

analog calibration value to a point such that the input to the 

transmitter linearizing table (204) follows a predetermined straight 

line with respect to transmitted RF output power. This linearization 

removes the undesired linear and non-linear errors along with 

variations versus frequency in the transmitter. 

(JX- 1 at 493-29 (emphasis added).) The specification therefore identifies the variable gain 

amplifier as one of the components affected by the linearizer whose output must follow a 

predetermined straight line with respect to its input. Also, the parties agree that the specification 

discloses that “[tlhe AGC setpoint and the frequency index are used to address the [receive] 

linearizer (216), thus accessing the proper calibration value.” (JX- 1 at 3:41-43; RFF 

II.321(undisputed).) The parties have likewise agreed that “[alddress the linearizer” means that 

the frequency index and AGC setpoint are used to look up in the table the calibration value for the 

frequency index and the AGC setpoint. (CFF G182 (undisputed).) The language of asserted claim 

3, regarding a receive linearizer, requires that: 

64 
a receive linearizer, coupled to the integrator and the receive 

amplifier, for generating a receive calibration value in response to 

the automatic gain control setpoint and a first frequency index 

corresponding to the first frequency, the receive calibration value 

being coupled to the receive amplifier control input for adjusting the 

gain of the receive amplifier; 

(JX-1 at 756 to 8:3 (emphasis added).) Regarding the transmit linearizer, claim 3 states: 

a transmit linearizer for generating - a transmit calibration value in 

response to the automatic gain control setpoint, the second power 

value, and a frequency index corresponding to the second 

frequency, the transmit calibration value being coupled to the 

control input of the transmit amplifier for adjusting the gain of the 

transmit amplifier. 

(JX-1 at 8:8-14 (emphasis added).) The term “amplifier” in said language of claim 3 refers to the 

“variable gain amplifier” disclosed in the specification. Therefore, the administrative law judge 

finds that the term “linearizer,” in the context of the asserted claims, is construed to mean “a 

device that generates calibration values to account for non-linearities of the receive or transmit 

variable gain amplifier.” Further, the administrative law judge has found, in Section VII.B.4, 

supra, that the term “calibration value(s)” is a “corrected gain control settings loaded into a lookup table during factory calibration or production testing of the radio.” Therefore, he finds that a 

“linearizer” necessarily comprises the lookup tables in which said calibration values are loaded. 

Regarding respondents’ addition of the limitation “known,” the parties agree that the 

background of the invention discusses both “linear and nonlinear errors,” not just “known 

non-linearities,” as a problem of the prior art, as shown in FIG. 1 of the ‘473 patent. (CFF G170 

(undisputed).) The background of the invention also states: 

Variation in output power level and input power detection versus 

frequency can cause an unacceptable amount of error in the amount 

of return link transmitted energy. 

65 
(JX-1 at 2:13-16.) The Summary of the Invention section of the ‘473 describes the invention as 

addressing various linear and non-linear errors. (CFF G172 (undisputed in relevant part).) The 

specification further discloses “linearization [that] removes the undesired linear and non-linear 

errors along with variations versus frequency . . .” for both the receiver and the transmitter. (CFF 

G172-73 (undisputed).) In fact, the word “known” does not appear in the specification or claims 

of the ‘473 patent. Further, respondents, despite their proposed construction, apparently reject the 

use of the term “known” as a limitation. (See ROCFF G172 (“The proposed finding 

mischaracterizes Nokia’s proposed construction of the claimed linearizers as being limited to 

accounting for ‘just’ known non-linearities of the variable gain amplifiers.”).) Respondents also 

argued that “Nokia’s construction does not preclude addressing other errors; it requires only that 

the claimed linearizers address at least known non-linearities, as set forth in the Common 

Specification.” (RRBr at 16.) Therefore, the administrative law judge finds that respondents 

essentially argued that the claimed linearizers must address at least the errors disclosed in the 

specification and the claims, but may address other errors, thereby rendering the word “known” 

inconsistent with respondents’ proposed construction and also superfluous to the construction of 

the claim phrase “linearizer.” 

C. ‘408 Patent And ‘220 Patent 

1. Preamble (Claim 1 Of ‘408 Patent) “A method for limiting transmit power of a radio 

operating in a radio communications system, the radio communications system comprising 

at least one base station that transmits signals including power control commands to the 

radio, the radio comprising a variable gain amplifier and a maximum gain setting, the 

method comprising the steps of” (JX-2 at 658-63.) 

Asserted claim 1 of the ‘408 patent is a method claim, and the preamble of said claim 

recites the structure required by said method claim. (See JX-2 at 658-60 (“a radio operating in a 

66 
radio communications system, the radio communications system comprising.. .”). Each of the 

disputed claim phrases “variable gain amplifier” and “maximum gain setting” are first referred to 

in the preamble. (See JX-2 at 6:62-63.) The claim elements that mention said claimed phrases do 

so by stating ‘‘the variable gain amplifier” and “@ maximum gain setting,” meaning that the 

claim elements refer back to the claim phrases mentioned in the preamble, i.e. the claim phrases 

have antecedent basis in the preamble. (JX-2 at 7:3-4; JX-2 at 7:6-7 (emphasis added).) Likewise, 

the claim phrase “the at least one base station” also has antecedent basis in the preamble. (JX-2, 

6:60-61; JX-2 at 6:65.) Therefore, the claim is incomplete without the preamble. Based on the 

foregoing, the administrative law judge finds that the preamble of asserted claim 1 of the ‘408 

patent is limiting. 

2. Preamble (Claim 2 Of ‘220 Patent) “A method for limiting transmit power of a radio 

operating in a radio communications system, the radio communications system comprising 

a plurality of base stations that transmit power control commands to the radio, the radio 

comprising a variable gain amplifier and a maximum gain setting, the method comprising 

the steps of.” (JX-4 at 7: 12-17.) 

Asserted claim 2 of the ‘220 patent is a method claim, and the preamble of said claim 

recites the structure required by a method claim. (JX-3 at 7:12-17 (“a radio operating in a radio 

communications system, the radio communications system comprising a plurality of base stations 

that transmit power control commands to the radio, the radio comprising ...”).) The disputed claim 

phrase “maximum gain setting” is first referred to in the preamble. (See JX-3 at 7:16-17.) 

Likewise, the claim phrase “variable gain amplifier” in the body of claim 2 is first referenced in 

the preamble. (JX-3 at 7: 16.) The claim elements that mention said claimed phrases do so by 

stating ‘‘h variable gain amplifier” and “@ maximum gain setting,” meaning that the claim 

elements have antecedent basis in the preamble. (JX-3 at 7:27-28; JX-3 at 7:29-34 (emphasis 

67 
added).) Therefore, the administrative law judge finds that the claim is incomplete without the 

preamble. Hence, the administrative law judge finds that the preamble of asserted method claim 2 

of the ‘220 patent is limiting. 

3. The Claimed Term “Maximum Gain Setting” 

The claimed term “maximum gain setting” appears in the preamble and the fourth, fifth, 

and sixth elements of claim 1 of the ‘408 patent following “the method comprising the steps of.” 

Said term also appears in the preamble and the fifth, sixth, and seventh elements of claim 2 of the 

‘220 patent following “the method comprising the steps of ’. The parties agree that the said term 

should be construed in the same way for both patents. (RFF II.370, RFF II.404 (undisputed).) 

Complainant argued that the “maximum gain setting” should be construed as the “upper 

limit on the gain setting.’’ (CBr at 34.) 

Respondents argued that said claim term should be construed as “a nominal gain value 

hard coded into the radio during assembly or input during manufacturing and testing of the radio 

that sets the upper limit of the transmit variable gain amplifier.” (RBr at 25.) 

The staff argued that said claim term should be construed as “[aln upper limit on the 

transmitter gain setting hard coded into the radio during assembly or input during manufacturing 

and testing of the radio. (SBr at 35.) 

A person of ordinary skill in the art as of February 28, 1994 would understand that gain is 

the ratio of output signal power to input signal power, and the parties have so stipulated. (RFF 

11.391, RFF II.396, RFF 11.397 (undisputed).) “Maximum gain setting,’’ however, is not a 

standard term of art. (RFF II.368 (undisputed).) A “maximum gain setting” is different than a 

maximum output power. (RFF 11.394, RFF II.395 (undisputed in relevant part); CRRFF II.395A.) 

68 
The parties agree that the following excerpt from the abstract describes a maximum gain 

setting: 

The process and apparatus of the present invention limits the output 

power of a radiotelephone, operating in a cellular system in the 

preferred embodiment . . . This is accomplished by power detection 

and a correction accumulator that together generate a gain control 

signal by limiting the gain adiustment to a maximum value, even 

when the cell site communicating with the radiotelephone is sending 

power turn-up commands to the radiotelephone. 

(CFF G246 (undisputed)); JX-2 at Abstract; JX-3 at Abstract (emphasis added).) The parties 

agree that the following excerpt from the Summary of the Invention section describes the 

maximum gain setting: 

The radiotelephone also determines if the transmitter is operating 

above a maximum set point. The transmit gain and power amplifier 

biasinp of the radioteleDhone are adiusted to correct the undesired 

error and maintain the desired output power. 

(CFF G247 (undisputed); JX-2 at 2:34-39; JX-3 at 2:35-40 (emphasis added).) Thus the 

administrative law judge finds that the transmit gain adjustment has a maximum value. The 

parties further agree that a maximum gain setting is a limit on the gain. Complainant’s expert 

Verdu has testified. 

Q. 

maximum gain setting, which first appears in element D of claim 1 

of the ‘408. Could we have CDX-28, please. 

I would like to move on the ‘048 patent, claim 1, the term 

What is your consideration, Doctor, of maximum gain 

setting? 

A. Upper limit of the gain setting. 

(Tr. at 1196.) Likewise, respondents’ expert Helgert has opined: 

Q. Have you reviewed the parties’ proposed constructions of 

69 
maximum gain setting? 

A. Ihave. 

Q. 

staff have proposed constructions of maximum gain setting that 

require it to be an upper limit on the gain? 

Would you agree that all -- that the two private parties and the 

A. Yes, I believe that’s true. 

(Tr. at 2506-07.) 

In addition, as found in Sections VII.C.l and VII.C.2, supra, the preambles of claim 1 of 

the ‘408 patent and claim 2 of the ‘220 patent are limiting. The preamble of claim 1 of the ‘408 

patent reads, “the radio comprising . . . a maximum gain setting ...” (JX-2 at 6:62-63.) The 

preamble of claim 2 of the ‘220 patent reads, “the radio communications system comprising. . . a 

maximum gain setting ...” (JX-3 at 7: 13-17.) Therefore, the administrative law judge finds that a 

“maximum gain setting” is a required part of the radio. (See JX-2 at 6:62-63; JX-3 at 7:16-17.) 

Because the maximum gain setting must be part of the radio, the administrative law judge finds 

that said maximum gain setting must be incorporated into the radio during the assembly of the 

radio, or input during the manufacturing and testing of the radio, as per the specification. (See, 

s, JX-2 at 458-60.) Based on the foregoing, the administrative law judge finds that the claim 

phrase “maximum gain setting” should be construed as “an upper limit on the transmit gain 

setting that is hard coded into the radio or during assembly or input during manufacturing and 

testing of the radio.” 

Complainant argued that “hard coded” never appears in claim 1 of the ‘408 patent or claim 

2 of the ‘220 patent; and that respondents’ construction “would result in independent claim 1 in 

the ‘408 patent being too narrow to cover dependent claim 2, directed to a variable maximum gain 

70 
setting.” (CBr at 35.) Said claim 2 states “[tlhe method of claim 1 and further including the step 

of adjusting the maximum gain setting in response to a temperature of the variable gain 

amplifier.” Said dependent claim’s use of “maximum gain setting” has antecedent basis to the 

“maximum gain setting” used in the independent claim. The administrative law judge finds that 

the requirement of claim 1 for a “maximum gain setting” is strengthened, not weakened, by a 

dependent claim purporting to modify an already-existing “maximum gain setting,” as the 

dependent claims require the Drier existence of a “maximum gain setting.”” The specification 

states that the “maximum gain setting can be hard coded into the radio during assembly or input 

during manufacturing and testing of the radio.” (JX-2 at 58-60.) Operation of the radio required 

by the claims requires that a “maximum gain setting” exist, and the specification discloses no 

alternate way for said “maximum gain setting” to suddenly find itself in the radio. Therefore, the 

administrative law judge rejects complainant’s arguments. 

Complainant further argued that “the asserted claims of the ‘408 and ‘220 patents are 

directed to methods of operating a radio (CFF G252) so there is no basis to limit the claim to what 

the phone comprises as a result of ‘assembly,’ ‘manufacturing’ or ‘testing’ as Nokia proposes.” 

(CBr at 35 (emphasis in original).) Although said claims are method claims, both clajms require 

the method disclosed be preformed on “the radio comprising . . . a maximum gain setting ...” (JX-2 

at 6:62-63; JX-3 at 7:15-17.) As the preamble is limiting, as found, supra, the administrative law 

judge finds that both claim 1 of the ‘408 patent and claim 2 of the ‘220 patent therefore require 

l8 Complainant also made the same argument regarding independent claim 2 and 

dependent claim 3 of the ‘220 patent. (CBr at 35, n.23.) The administrative law judge finds that 

the same logic as regards independent claim 1 and dependent claim 2 of the ‘408 patent, supra, 

applies. 

71 
that the method disclosed be performed on a radio, and that that radio must have a “maximum 

gain setting.” Regardless of whether said claim is a method or apparatus claim, the requirement 

for a radio remains the same. 

Respondents argued that the “maximum gain setting” should be the “upper limit of the 

transmit variable gain amplifier.” (RBr at 25.) In fact, taken in their entirety, each of asserted 

claim 1 of the ‘408 patent and claim 2 of the ‘220 patent do require that the maximum gain setting 

be an upper limit on the gain setting of the transmit variable gain amplifier. (RFF II.375 

(undisputed); RFF II.379 (undisputed in relevant part).) However, when the elements of said 

claims in which “maximum gain setting” are found are reviewed individually, the administrative 

law judge finds that the term “valuable gain amplifier” does not appear in each element. Thus, the 

claim term “maximum gain setting” appears in one element in each claim that does not mention 

“variable gain amplifier. (See JX-2 at 7:3-4 (“comparing the summation signal to the maximum 

gain setting...”); JX-3 at 7:27-28 (“comparing the summation signal to the maximum gain 

setting ...”).) Those elements, in fact, do not involve a variable gain amplifier at all, and the 

administrative law judge finds that importing “variable gain amplifier” into said elements would 

be confusing at best, and, at worst, could change the expected operation of the invention. 

Therefore, the administrative law judge rejects this portion of respondents’ construction. 

Respondents also argued that “[blecause the operating characteristics of the transmit 

variable gain amplifier [for each phone] will depend on the specific hardware components, a 

maximum gain setting must be specific to each phone.” (RFF II.379.) Respondents, however, do 

not use this language in their proposed construction. Moreover, respondents do not cite to, and 

the administrative law judge has not found, any reference in the specification or claims that 

72 
requires that the maximum gain setting be “specific to each phone.” Instead, unasserted claim 2 

of the ‘408 patent describes adjusting the maximum gain setting during real-time operation of the 

phone to account for temperature variations. (JX-2 at 7: 11-13 (“adjusting the maximum gain 

setting in response to a temperature of the variable gain amplifier.”).) Thus, rather than requiring 

that a unique value for each phone be hard coded into the radio during assembly or input during 

manufacturing and testing of the radio, unasserted claim 2 discloses a means by which each phone 

may customize an existing “maximum gain setting.” Hence, the administrative law judge finds no 

requirement that the “maximum gain setting” be unique to each phone. 

4. The Claimed Term “Open Loop Power Control Value” 

The claim term “an open loop power control value” appears in the first and third elements 

of claim 1 of the ‘408 patent following the preamble. 

Complainant argued that “open loop power control value” should be construed as “the 

value of the automatic gain control setpoint.” (CBr at 29.) 

Respondents argued that “[tlhe parties all agree that the “open loop power control value” 

is the automatic gain control setpoint. (RBr at 43.) 

The staff argued that the claim term in issue should be construed as, “[tlhe automatic gain 

control setpoint generated in response to the receive power value and the reference voltage signal. 

(SBr at 38.) 

The parties do not dispute that the open loop power control signal is the AGC setpoint. 

(RFF II.615 (undisputed).) The meaning of open loop power control to one of ordinary skill in the 

art as of the February 28, 1994 filing date is “controlling the transmit output power based on a 

measurement of the received signal strength of the signal received from the base station.” (CFF 

73 
G186 (emphasis added) (undisputed).) The ‘408 patent states that “Jtlhe AGC setpoint is the open 

loop power control signal for the radio. (JX-2 at 3:64-65 (emphasis added).) In an embodiment: 

this is the power control performed by the radio by itself without 

control input from the cells. As the power of the signal received 

from the cell increases, the radio decreases its transmit power. This 

output power control is accomplished by the AGC setpoint that is 

filtered by a low pass filter (217). 

(JX-2 at 3:65-4:3 (emphasis added).) Therefore, based on the intrinsic evidence and the 

admissions of the parties, the administrative law judge finds that the claim term “the open loop 

power control value” is the value of the automatic gain control setpoint, as construed, supra, in 

Section VII.B.3. 

5. The Claimed Term “Gain Adjust Signal” 

The claim term “gain adjust signal” appears in the second and third elements of claim 1 of 

the ‘408 patent following the preamble. 

Complainant argued that one of ordinary skill in the art as of the February 28, 1994 filing 

date of the ‘408 patent would have understood the “gain adjust signal” in claim 1 of the ‘408 

patent to mean “a signal that can be used to change the gain of the variable gain amplifier,” and 

thus “is not just any gain signal.” (CBr at 30, CRBr at 21.) 

Respondents argued that the “gain adjust signal” is “[a] signal based on accumulated 

power control commands that is used to adjust the gain of the radio’s variable gain amplifier.” 

(RBr at 43.) It is also argued that said signal is a closed loop power control signal. (RBr at 43-45.) 

The staff argued that the “gain adjust signal” is “[a] signal based on multiple power 

control commands used to change the gain of the variable gain amplifier.” (SBr at 37.) 

All parties agree that the claim term refers to a signal used to change the gain of the 

74 
variable gain amplifier. (CBr at 30; RBr at 43; SBr at 37.) The parties also agree that the “gain 

adjust signal” must be based on “power control commands.” (RFF II.592 (undisputed).) The issue 

is whether said power control commands need to be accumulated. 

Claim 1 of the ‘408 patent states “determining a gain adjust signal in response to the 

transmitted power control commands” (JX-2 at 6:66-67 (emphasis added)) which requires said 

signal to be determined in response to more than one power control command. The specification 

states: 

The closed loop power control section (206), illustrated in FIG. 4, 

accumulates the power control commands sent on the forward link 

by the controlling radiotelephone cell site and outputs a gain adiust 

signal. 

(JX-2 at 5:15-18.) Further, each of unasserted claims that requires a “gain adjust signal,” k, 

claims 4,5 6, and 7 of the ‘408 patent, requires that a “gain adjust signal” be based on power 

control commands. (See JX-2 at 7:33-34,7:61-62, 8:18-19, 8:22-23, 8:44-45.) Based on the 

foregoing, the administrative law judge finds that the claim term “gain adjust signal” in claim 1 of 

the ‘408 patent means “a signal that can be used to change the gain of the variable gain amplifier.” 

Moreover, in view of the plain meaning of the claim language, the specification, and the 

agreement of the parties, the administrative law judge finds that the gain adjust signal must be 

based on the power control commands. Hence, the claim term, “determining a gain adjust signal 

in response to the transmitted power control commands” is construed as “determining a signal 

based on the power control commands that can be used to change the gain of the variable gain 

amplifier.’’ 

Regarding respondents’ argument that the power control commands must be 

75 
“accumulated” (see RBr at 44-45), the use of the term “power control commands” in the plural 

indicates that more than one power control command may used to change the gain of the variable 

gain amplifier, and the parties agree. (See JX-2 at 6:66-67; RFF 11.594 (undisputed).) Claim 1 of 

the ‘408 patent, however, does not disclose the requirement of an accumulator. (JX-2 at 658- 

7: 1 1 .) Likewise, unasserted independent claim 4 of the ‘408 patent does not require an 

accumulator. (JX-2 at 7:23-52.) Unasserted claim 6 of the ‘408 patent, however, recites “a power 

control command accumulator that generates a gain adjust signal” in its preamble (JX-2 at 8:18- 

19) thus indicating that when the inventors wanted to claim a gain adjust signal that is generated 

from a “power control command accumulator,” they explicitly did so. Each of said claims, supra, 

moreover, are method claims, and require the same element of “determining the gain adjust signal 

in response to the transmitted power control commands.” (JX-2 at 6:66-67, JX-2 at 8:22-23.) 

Further, U.S. Patent No. 5,056,109 (the Gilhousen patent or the ‘109 patent)” states in its 

Summary of the Invention section: 

A power adjustment command is generated and sent to the mobile 

unit in the outbound link data, or voice channel, addressed to that 

mobile unit. In response to the cell-site power adjustment command, 

the mobile unit increases or decreases the mobile unit transmitter 

power by a predetermined amount, nominally 1 dB. 

(JX-88 at 6:68-7:6.) In fact, said excerpt from the Gilhousen patent discloses that the transmit 

l9 Although not incorporated by reference, the Gilhousen patent is referenced in the 

Background of the Invention section of the specification of the asserted patents as further 

explanation of the prior art: 

Closed loop and open loop power control together determine the 

return link transmit energy, as disclosed in U.S. Pat. No. 5,056,109 

to Gilhousen et al. and assigned to Qualcomm, Incorporated. 

(JX-2 at 2:4-7.) 

76 
power of the mobile unit is changed based directly on the power adjustment command, with no 

mention of an accumulator. Further, independent claim 22 of the Gilhousen patent contains the 

element, “varying transmitter signal power in correspondence to received power adjustment 

commands,” (JX-88 at 22:lO-11) while claim 27, which depends from claim 22, contains the 

claim element “accumulating said processed power adjustment commands with a predetermined 

gain control level setting ...” (JX-88 at 22:66-67). Thus, said claim 22 does not require an 

accumulator, while said claim 27 does. Therefore, the administrative law judge finds that the 

claims of the ‘408 patent and the specification, through reference to the Gilhousen patent, does 

not support reading the requirement of “accumulated” into asserted claim 1 of the ‘408 patent. 

Respondents, in support of their argument that the “power control commands” must be 

accumulated, also rely on their argument, infra, that “power control commands” are 

“incremental.” (RRBr at 3 1 .) However, the administrative law judge has found, in Section 

VII.C.6, infra, that “power control commands” are not incremental. 

Referring to respondents’ argument that the “gain adjust signal” of the ‘408 patent is a 

closed loop power control signal, the plain language of claim 1 of the ‘408 patent specifically 

requires the use of an “open loop power control value.” (JX-2 at 6:64-65,7:1-2.) Also, the 

language of claim 1 and of other claims of the ‘408 patent does not refer to a closed loop. In 

addition, to so limit the “power control commands” in claim 1 of the ‘408 patent, as respondents 

argued, the administrative law judge finds would be inconsistent with the restriction requirement 

during prosecution that resulted in the ‘408 and ‘220 patents. (See JX-4 at QHITCOO2561-652.) 

Also, while a “gain adjust signal” has been found, supra, to depend on “power control 

commands,” “power control commands,” as found in Section VII.C.6, infra, need not be based on 

77 
the radio’s power level as received by the base station. As found in Section VII.C.8, infra, a 

closed loop power control signal would need to be based on said power level as received by the 

base station. Therefore, the administrative law judge finds that claim 1 of the ‘408 patent neither 

directly nor indirectly supports the assertion that the “gain adjust signal” is a closed loop power 

control signal. 

6. The Claimed Term “Power Control Commands” 

The claim term, “power control commands” appears in the preamble and the second 

element of claim 1 of the ‘408 patent following the preamble, and in the preamble of claim 2 of 

the ‘220 patent. The parties agree that the said claim term should be interpreted consistently 

between said patents. (FWF II.404 (undisputed).) 

Complainant argued that the claim term “power control commands” should be construed 

as ‘‘commands from the base station instructing the radio to turn up or turn down power.” (CBr at 

32.) 

Respondents argued that said claim term should be construed as “[plower-up or power 

down commands sent from the base station to the radio, based on the radio’s power level as 

received by the base station.” (RBr at 29.) 

The staff argued that said claim term should be construed as “[c]ommands from the base 

station instructing the radio to turn up or turn down power.” (SBr at 32.) 

All parties agree that the claim term “power control commands” should be construed, at 

least in part, as “commands from the base station instructing the radio to turn up or turn down 

power.” (CBr at 32; RBr at 29; SBr at 32; see also CFF G230, CFF G231, CFF G232, FWF II.413 

(undisputed).) However, the issue is whether the term should be based on the radio’s power level 

78 
as received by the base station. 

The preamble of claim 1 of the ‘408 patent states in part only “the radio communications 

system comprising at least one base station that transmits signals including power control 

commands to the radio ...” (JX-2 at 659-62.) Such is consistent with the specification of the ‘408 

patent, which discloses that the input labeled “Up/Down From Cell” to 206 in FIG. 2 as well as 

the input labeled “UP,Down,O,” to 702 in FIG. 7 refers to the “power control commands.” (JX-2 

at 5:15-18; JX-2 at 559-61.) Likewise, the specification of the ‘408 patent discloses that the 

input labeled “Adjustment from Cell” to 405 and 401 in FIG. 4 of the ‘408 patent also refers to the 

“power control commands.” (JX-2 at 5:26-32.) While the specification shows that the power 

control commands must come from the base station, none of the asserted patents control the 

content of any signals sent from the base station. Thus, complainant’s expert Verdu testified: 

Q. Dr. Verdu, does the specification of the patents at issue teach 

or disclose anything about what’s going on inside the base station? 

A. 

handset, all the claims here relate to procedures at the 

not at the base station. 

No, Ms. Elson. These three patents are about technology in the 

handset, 

Q. Okay. So is there anything to you or to one of ordinary skill in 

‘94 that would have taught in the patent any measurements going on 

inside the base station? 

A. No. 

(Tr. at 1193-94.) Also, the specification states that “[tlhe radiotelephone limits the power output 

even when the cell erroneously decides the radiotelephone power should be increased.” (JX-2 at 

654-55.) In other words, the administrative law judge finds that the specification‘ contemplates a 

situation in which the “UP/Down From Cell” is ignored, accommodating for several variants of a 

79 
power control command rather than restricting the base station to sendjng only one kind of power 

command. 

Also, the ‘408 patent, under a restriction requirement issued by the PTO during the 

prosecution of the ‘473 patent, claims only those aspects utilizing open loop power control. (JX-4 

at QHITC0025651-652; JX-2 at 6:64-65 (“determining an open loop power control value in 

response to a signal received from the at least one base station ... determining a gain adjust signal 

in response to the transmitted power control commands ...”).) The ‘220 patent, on the other hand, 

contains claims drawn to “controlling the transmitter via closed loop.” (JX-4 at QHlTC0025651- 

652; JX-3 at 7:22-23 (“generating a closed loop power control signal in response to the received 

signal ...”).) In fact, the Examiner issued said restriction based on exactly that distinction. Thus 

the Examiner believed that so-called “Group II” claims, which later issued in the ‘408 patent, 

were based on “controlling the transmitter gain based on transmitted commands, classified in 

Class 455, subclass 69.” (JX4 at QHITC0025651; CFF J10, CFF J13 (undisputed in relevant 

part).) The Examiner found that so-called “Group III” claims, which later issued in the ‘220 

patent, were based on “controlling the transmitter via a closed loop, classified in Class 455, 

subclass 127.” (JX-4 at QHITC0025651; CFF J10, CFF J15 (undisputed); CFF 516 (undisputed in 

relevant part).) 

Further, the Gilhousen patent, or the ‘109 patent, discloses both power control commands 

based on the radio’s power level as received by the base station and power control commands not 

based on the radio’s power level as received by the base station. (JX-88 (Gilhousen) at Abstract, 

5:9-20.) As a specific example, independent claim 22 of the Gilhousen patent has no such 

requirement, stating only “varying transmitter signal power in correspondence to received power 

80 
adjustment commands.” (JX-88 at 22:lO-11.) Claim 25, however, which depends from claim 22, 

specifically requires: 

The method of claim 22 wherein said cell-site station measures 

signal power of said cellular mobile telephone transmitted CDMA 

communication signals and generates for transmission said power 

adjustment commands indicative of one of an increase and a 

decrease in said cellular mobile telephone signal power so as to 

maintain a predetermined power level for cell-site station received 

CDMA communication signals from said cellular mobile telephone. 

(JX-88 at 22:24-32.) 

Based on the foregoing, the administrative law judge finds that “power control 

commands” are “commands from the base station instructing the radio to turn up or turn down 

power.” Also based on the foregoing, the administrative law judge rejects respondents’ proposed 

construction that said the “power control commands” must be “based on the radio’s power level 

as received by the base station.” (RBr at 29.) 

Respondents argued that “power control commands’’ are “incremental closed loop 

commands.” (RBr at 33.) As found, supra, said “power control commands” need riot be based on 

the radio’s power level as received by the base station. Therefore, said commands cannot be 

“incremental closed loop commands,” as a “closed loop” would depend at least in part on the 

radio’s power level as received by the base station. (See Section VII.C.8, infra.) Further, the word 

“increment” or any derivative thereof does not appear in the specification or claims of the ‘408 

patent. (See, generally, JX-2.) The word “increment” or derivatives thereof does not appear in the 

Gilhousen patent specification or claims. (See, generally, JX-88.) Moreover, as found, supra, the 

claims of the asserted patents do not control the contents of a particular signal from the base 

station. Although each of FIGS. 4,6,7,8, and 9 show a summation symbol representing that the 

81 
power command from the base station will cause the sum to increase or decrease by 1 dB, the 

written specification and the claims do not purport to limit the base station to only power 

commands that increase or decrease by that amount. (JX-2 at FIGS. 4,6,7, 8,9; see generally, JX2.) Also, complainant’s expert Verdu has testified: 

Q. And what kind of power control commands would one of 

ordinary skill in 1994, what different kinds would the person have 

understood were applicable to the term power control commands in 

the claim? 

A. 

handset could come in the form of absolute commands, for 

example, 5 dB. By the way, when I say dB, first is lower case, d is 

lower case, and upper case is B. 

Well, the information that flows from the base station to the 

Q. What do you mean by absolute power control commands? 

A. 

the information could be given as increments. So, in other words, 

the information would take the previous value you have computed, 

and add one dB to it, or take the previous value you have computed 

and decrease it by one dB. That’s the kind of incremental power 

control command. 

As opposed to incremental power control commands, where 

Q. So in your opinion, Doctor. would the term power control 

commands encompass a command from the base station iust saying 

go to this transmit Dower level? 

A. 

eaual to 5 dB, for example, an absolute command. 

Well, the command would say make the gain adiust signal 

Q. Versus -- 

A. That would be encompassed. 

Q. 

one or down one? 

Versus an incremental command, which might be iust PO UP 

A. Yes. 

82 
(Tr. at 1194-95 (emphasis added).) Therefore, the administrative law judge rejects respondents’ 

argument that “power control commands” are “incremental closed loop commands.” 

7. The Claimed Term “Generating A Received Power Level Signal In Response To The 

Received Signal” 

This claim term appears in the second and fourth elements of claim 2 of the ‘220 patent, 

following the preamble. 

Complainant argued that the “received power level signal” should be construed as “a value 

indicating a power level.” (CBr at 37.) 

Respondents argued that said claim term should be construed as “[tlhe automatic gain 

control setpoint.” (RBr at 40.) 

The staff argued that term claim phrase should be construed as “[a] value indicating a 

power level of the received signal.” (SBr at 44.) 

The claim term in issue does not appear in the specification of the ‘220 patent. (See, 

generally, JX-3.) The “received signal” however is the signal received from a base station. (JX-3 

at 7:18-19; CFF G271 (undisputed).) With reference to FIG. 2 of the ‘220 patent, the 

specification states: 

The signal input to the AGC section is received on the forward link 

and amplified by a low noise amplifier (LNA) (21 1). The output of 

the LNA (21 1) is input to a variable gain amplifier (212). The 

variable gain amplifier (212) produces a signal that is converted to a 

digital signal using an analog to digital converter (ADC) (213). 

The power of the digitized received signal - is next computed bv a 

digital - power detector (214). 

(JX-3 at 3:18-26 (emphasis added).) The “signal input to the AGC section” is the signal received 

from a base station, as a “forward link” is the base station to radiotelephone transmission. (JX-3 at 

83 
1:28; CFF C4 (undisputed).) Also, the SUMMARY OF THE INVENTION section of the ‘220 

patent states: 

The forward and return link power are measured by power detectors 

and input to an analog to digital converter accessible by both control 

hardware and/or software. 

(JX-3 at 2:27-30 (emphasis added).) The excerpts of the specification cited, supra, state that once 

the received signal is digitized, then the power is computed. Therefore, the administrative law 

judge finds that the specification discloses that a power detector is used to measure the power of 

the received signal. The result of a measurement is a value. The specification also states, “[als 

the power of the signal received from the cell increases, the radio decreases its transmit power.” 

(JX-3 at 3:67-4:2.) The parties agree that the “received power level signal” is used to adjust the 

gain of the transmit variable gain amplifier. (JX-3 at 7:24-34; CFF G272 (undisputed).) 

Therefore, the administrative law judge finds that the construction of the claim term in issue is “a 

value indicating a power level of the received signal.” 

Respondents argued that said claim term should be construed as “the automatic gain 

setpoint.” The term “the automatic gain setpoint” does not appear in any claim of the ‘220 patent. 

Said term does appear in the specification of each of the asserted patents, and in the claims of the 

‘473 patent, from which the ‘220 patent is derived. CSee, e.%, JX-3 at 3:36; JX-3 at 3:39; JX-1 at 

7:19; JX-1 at 7:23; JX-1 at 7:34.) Therefore, the inventors on the ‘220 patent had an 

understanding of an automatic gain control setpoint, but chose not to use it for the claims of the 

‘220 patent. Further, the specification of the ‘220 patent states: 

The power of the digitized received signal is next computed bv a 

digital power detector (214). The power detector (214) includes an 

integrator that integrates the detected power with respect to a 

84 
reference voltage. In the preferred embodiment, this reference 

voltage is provided by the radio’s demodulator to indicate the 

nominal value at which the demodulator requires the loop to lock in 

order to hold the power level constant. The demodulator requires 

this value for optimum performance since a power level too far out 

of the optimum range will degrade the performance of the 

demodulator. The power detector (214) performs the integration, 

thus generating an AGC setpoint. The setpoint and a receive 

frequency index are input to a receiver linearizing table (216). 

(JX-3 at 3:25-38 (emphasis added).) The received power level signal is the digitized received 

signal in this excerpt. The excerpt goes on to describe an integrator integrating the received power 

level signal with a reference voltage to generate the automatic gain control setpoint. Because the 

value of the received power level is combined with a reference voltage to create the automatic 

gain control setpoint, the administrative law judge finds that the value of the received power level 

cannot itself be the automatic gain control setpoint. 

8. The Claimed Term “Closed Loop Power Control Signal” 

Complainant argued that the claim term should be construed as, “a signal representing one 

or more power control commands.” (CBr at 38.)20 It is argued that said term should not be based 

on the radio’s power level as received by the base station. (CBr at 38-41.) 

Respondents argued that said claim term should be construed as, “[a] signal based on 

accumulated power control commands that is used to adjust the gain of the radio’s variable gain 

amplifier.” (RBr at 35.) It is also argued that said claim term requires a measurement by the base 

station of the signal received from the handset. (RRBr at 23.) 

The staff argued that the claim term in issue should be construed as “[a] value representing 

*’ As found, supra, “power control commands” are “commands from the base station 

instructing the radio to turn up or turn down power.” 

85 
power control commands sent from the base station to the handset, and based at least in part on a 

measurement of the handset’s transmitted power.” (SBr at 39.) 

The claim terms “close loop power control” and/or “closed loop” are found throughout the 

specification of the ‘220 patent. (See, e.%, JX-3 at 2:30-35; 250-51,4:4-10,4:38-45, 5:16-35, 

7:22,7:24,7:48,7:56, 8:3; 8:9, Figs. 2,3,4.) Claim 2 of the ‘220 patent requires the step of 

“generating a closed loop power control signal in response to the received signal ...” (JX-3 at 7:22- 

23.) The parties agree that the “received signal” is the signal received from the base station. (CFF 

G287 (undisputed).) Likewise, the parties agree that the base station transmits “power control 

commands to the radio.” (JX-3 at 7:14-15; CFF G288 (undisputed).) The SUMMARY OF THE 

INVENTION section states: 

The closed loop power control setting is also monitored. The 

radiotelephone uses the detected power levels and closed loop 

power control setting to index a set of correction tables that indicate 

the reverse link transmit power error and desired power amplifier 

biasing for the particular operating point. 

(JX-3 at 2:30-35 (emphasis added).) In FIG. 2, box 206, which is labeled “Closed Loop Power 

Control,” has as one input: the “UpDown From Cell.” The output of box 206, which is not 

separately labeled, is used as an input box 205, which is labeled “Power Limiting Control.” (JX-3 

at FIG. 2.) FIG. 4, which is a block diagram of the closed loop power control section in FIG. 2 

(JX-3 at 50-51), shows the same input as “Adjustment From Cell.” (JX-2 at FIG. 4.) FIG. 4 also 

shows the output of the closed loop power control section to be “TX-GAIN-ADJUST,” which 

adjusts the gain. The specification of the ‘220 patent further states: 

The closed loop power control section (206), illustrated in 

FIG. 4, accumulates the power control commands sent on the 

forward link by the controlling radiotelephone cell site and outwts a 

86 
gain adjust signal. 

*** 

In this embodiment, a closed loop power control limiting 

function (604 and 605), similar to the preferred embodiment, is 

employed. However, the trigger for the closed loop power control 

limiting function is a comparator (603) that detects when the power 

limiting accumulator (602) is limiting the output power by 

comparing the accumulator (602) output to 0 dB with the 

comparator (603). The linearizing compensation tables, similar to 

the tables in the preferred embodiment, are added into the transmit 

gain control using a summer (606). 

*** 

In another alternate embodiment, illustrated in FIG. 7, a 

power limiting control system is employed that is based on the 

closed loop power control accumulator (702). The system operates 

by first measuring the output power of the power amplifier (705) 

using a power detector (706). The detected power is digitized (707) 

and compared to a maximum allowable setting by the comparator 

(701). If the output power is greater than the maximum setting, the 

closed loop power control accumulator (702) is modified to turn the 

amplifier (704) power down by one step each 1.25 ms until the 

output power is less than the maximum setting. If the output power 

is less than the maximum setting, the closed loop power control 

accumulator is not modified. The linearizing compensation tables, 

similar to the preferred embodiment, are added into the transmit 

gain control using a summer (703). 

(JX-3 at 5:15-18, 5:50-59,5:60-6:8 (emphasis added).) Based on the foregoing, the 

administrative law judge finds that the “closed loop power control signal” is based on one or more 

“power control commands.” Moreover, all parties apparently agree, as each proposed 

construction has such a limitation. (See CBr at 38; RBr at 35; SBr at 39.) The ‘220 patent, 

however, does not itself fully define the “closed loop power control signal,’’ but refers to the 

Gilhousen patent or the ‘109 patent (JX-88). (JX-3 at 25-8 (“Closed loop and open loop power 

control together determine the return link transmit energy, as disclosed in US. Pat. No. 5,056,109 

87 
to Gilhousen et al. and assigned to Qualcomm, Incorporated”).) The ‘220 patent does not 

incorporate the Gilhousen patent by reference, but does cite the Gilhousen patent in the 

BACKGROUND OF THE INVENTION section of the ‘220 patent specifically for the purpose of 

explaining the use of closed loop and open loop power control in combination. Significantly, Ann 

Weiland, a named inventor of the asserted patents, testified at the hearing: 

Q. 

line for the work that you did on power control? 

Well, isn’t it true that the Gilhousen patent served as the base 

A. 

ideas in that patent. And I would say we further refined those ideas 

so that they would be more suitable to a commercially viable 

handset. 

I would say that’s a fair statement. We took -- we built upon 

(Weiland, Tr. at 629:lO-17.) The Gilhousen patent states: 

Furthermore, the present invention also utilizes closed loop power 

mstment feedback from the cell-site to adjust mobile unit 

transmitter power. 

(JX-88 at 11: 17-20 (emphasis added).) Also, the abstract of the Gilhousen patent states: 

A power control feedback scheme may also be utilized. At the 

cell-site communicating with the mobile unit, the mobile unit 

transmitted power is measured as received at the cell-site. A 

command signal is generated at the cell-site and transmitted to the 

mobile unit for further adiusting - mobile unit transmitter power 

corresponding to deviations in the cell site received signal power. 

The feedback scheme is used to further adjust the mobile unit 

transmitter power so as to arrive at the cell-site at a desired power 

level. 

(JX-88 at abstract (emphasis added).) Thus, the administrative law judge finds that a person of 

ordinary skill in the art, as of the February 28, 1994 filing date, would have understood “closed 

loop” to refer to a signal sent from a radiophone based at least in part on the power of the signal 

received from that radiophone by the base station. 

88 
Based on the foregoing, the administrative law judge finds that the claim term “closed 

loop power control signal” should be construed as “a value representing one or more power 

control commands sent from the base station to the handset and based at least in part on a 

measurement of the handset’s transmitting power as received by the base station.” The 

administrative law judge finds that if the “closed loop power control signal” were not based at 

least in part on a measurement of the handset’s transmitting power, said signal would simply be 

one or more power control commands received from a base station by the handset. However, 

power control commands must be different than a closed loop power control signal as each of 

“power control commands” and “closed loop power control signal” is recited in claim 2 of the 

‘220 patent. If the claimed “closed loop power control signal” were interpreted as not requiring 

that it be based in part on the measurement of the power level of the radio as received by the base 

station, as complainant argued, then the administrative law judge finds the language “closed loop 

power control signal” superfluous. (See Power Mosfet Techs., L.L.C. v. Siemens AG. 375 F.3d 

1396, 1410 (Fed. Cir. 2004).) (“Interpretations that render some portion of the claim language 

superfluous are disfavored”). 

Respondents argued that the “closed loop power control signal” must be based on 

“accumulated power control commands.” (RBr at 35.) However as found, in Section VII.C.6, 

supra, regarding claim 1 of the ‘408 patent, “power control commands” need not be accumulated. 

The parties have agreed that claim terms should be interpreted consistently between the asserted 

patents. (RFF II.404 (undisputed).) 

Complainant argued that a closed loop would not necessarily be based at least in part on a 

measurement of the handset’s transmitted power. (CBr at 39-41; CRBr at 17-18.) The citations to 

89 
the record that complainant makes to support said argument are found not supportive. For 

example, complainant points to claim 22 of the Gilhousen patent as claiming a method “which 

includes ‘power control commands’ which need not be based on the phone’s power level as 

received by the base station, and to dependent claim 25 of said patent which specifies that the 

commands are based on the phone’s power level as received by the base station.” (CBr at 40.) 

The administrative law judge has found, in Section VII.C.6, supra, that “power control 

commands” need not be based on the phone’s power level as received by the base station and thus 

he finds that “power control commands” need not be used in a closed loop. Hence, the bare fact 

that said claims 25 requires that power control commands be based on the received power level of 

the radio, and said claim 22 does not so require, does not support the conclusion that closed loop 

power control need be based on the received power level of the radio. Thus, the administrative 

law judge finds that the distinction between said claims 22 and 25 of the Gilhousen patent does 

not aid in defining a closed loop. 

Complainant, to support its argument that there are multiple forms of closed loop, i.e. one 

that requires power control command be based on a measurement of the received power level 

from measurement the radio and one that does not, argued that: 

A power adjustment command in a CDMA network being sent by a 

base station to a phone where the command is based on a 

measurement of the phone’s signal strength is just one form of 

“closed loop” power control in the counterpart Wheatley PCT 

application. (RX-311 at p. 10; Wheatley, Tr. at 312:3-313:7, 

314:4-8; JX-302C (Wheatley Dep.) at 74: 12-76:l.) 

(CFF G314.) Yet, the Wheatley PCT application (RX-311) at 10 cited by complainant states: 

Each cell-site receiver measures that strength of the signal, as 

received at the cell-site, from each mobile unit to which the cell-site 

90 
is in communication with. The measured signal strength is 

compared to a desired signal strength - level for that particular mobile 

unit. A power adiustment command is generated and sent to the 

mobile unit in the outbound link data, or voice channel, addressed 

to that mobile unit. In response to the cell-site power adjustment 

command, the mobile unit increases or decreases the mobile unit 

transmitter power by a predetermined amount.. . 

(RX-311 ‘at 10:4-12 (emphasis added).) This excerpt from the Wheatley PCT application, pointed 

out by complainant, shows a closed loop which is based on a measurement of received signal 

strength. Complainant does not point to any reference for an alternate form of closed loop in RX3 11 in the other citations listed in CFF G3 14, and the administrative law judge has found none. 

VIII. Validity Prior Art 

A. Claims 1 And 3 Of The ‘473 Patent 

1. Anticipation 

Respondents argued that under complainant’s proposed claim construction, McGirr U.S. 

Patent No. 5,129,098 (McGirr) (JX-333) anticipates each of claims 1 and 3 of the ‘473 patent. 

(RRBr at 69.) 

Complainant argued that certain elements of claims 1 and 3 of the ‘473 patent are missing 

from McGirr. Hence, it argued that Nokia has not shown by clear and convincing evidence that 

McGirr anticipates the asserted claims of the ‘473 patent. (CBr at 96-100.) 

The staff, in its post hearing filings, did not take a position on the issue of alleged 

anticipation of the asserted claims of the ‘473 patent. 

Although a patent is presumed valid upon issue, see 35 U.S.C. 8 282, it is invalid as 

anticipated if it “was known or used by others in this country, or patented or described in a printed 

publication” before the claimed invention, id. 0 102(a), or if it was “patented or described in a 

91 
printed publication . . . more than one year prior” to the filing date. Id. 0 102(b). However, for 

anticipation, ‘‘a of the elements and limitations of the claim must be shown in a single prior 

reference, arranged as in the claim.” Karsten Mfg. - Corn. v. Cleveland Golf Co., 242 F.3d 1376, 

1383 (Fed. Cir. 2001) (emphasis added). 

Respondents, in support of their argument that McGirr anticipates each of claims 1 and 3 

of the ‘473 patent, included the following rebuttal findings: 

RRCFF J259b. 

disclosed in Fig. 1 of McGirr, one skilled in the art would have 

understood that a receive AGC loop was inherent in the disclosure 

and would have known how to implement a receive AGC loop to 

control the gain of the receive chain and achieve the RSSI signal 

that is calibrated in table 88a. (Kenney Tr. 3197:s-3198:25, 

Although a receive AGC is not expressly 

3199: 12-3201:24,3412:22-3413:2,3432:22-3433: 19,349912-21; 

RDX-32: 2; RDX-63 36; RDX-069). 

RRCFF J262c. 

invention would have known how to select a first medetermined 

calibration value in remonse to the automatic gain control setpoint 

and the first frequency index in light of the teachings of McGirr. 

(Kenney Tr. 3197:8-3198:25,3199:12-3201:24, 3432:22-3433: 11; 

One skilled in the art at the time of the purported 

, 

RDX-63:36; RDX-069) 

RRCFF J268a. Dr. Kenney testified that the line of questioning 

during his deposition cited by Qualcomm in CFF 5267 was 

confusing, but that his testimony has been consistent that an AGC 

circuit is inherent in generation of the RSSI voltage disclosed in 

McGirr. (Kenney Tr. 3498:4-18). 

CFF J272. When asked if McGirr shows any adjustment of 

the received signal gain in response to the first calibration value, as 

recited in claim 1 element 5 (RDX-32), Professor Kenney testified, 

“I believe that it is inherent as s art of the invention, and therefore, 

one of ordinary skill in the art would say that it does have such a 

receive gain - that’s controlled by this calibration value.” (RDX-32; 

JX-333 (McGirr); JX-1, claim 1; Kenney, Tr. 3499: 12-21.) 

CFF 5275. When asked to confirm that Figure 2 of McGirr 

92 
does not show a variable gain amplifier whose gain could be 

adjusted, Professor Kenney disagreed, replying that “one of ordinary 

skill in the art would know that since AGC circuits were discussed 

at length in the transmitter, one could apply that same concept to the 

receiver.” (JX-333 (McGirr), Fig. 2; Kenney, Tr. 3501: 15-25.) 

RRCFF J277a. 

prior to the time of the purported invention of the ‘473 patent would 

understand that a receive variable gain amplifier is inherent in the 

teachings of McGirr and is inherent in the conventional AGC 

circuits disclosed in McGirr. (3499: 12-3413:2). 

Dr. Kenney testified that one skilled in the art 

RRCFF J282a. 

prior to the time of the purported invention of the ‘473 patent would 

know that the receive AGC loop inherent and expressly disclosed in 

McGirr would necessarily include an integrator - and a reference 

voltage. (Kenney Tr. 3150:14-24,3231:20-3232:1, 

3502:4-23; JX-333 at 1:s-55,7:35-68; RDX-32:2). 

Dr. Kenney testified that one skilled in the art 

3499:12-3413:2,3432:22-3433:19,3499:2-21; 3501115-25, 

RRCFF J283b. Although a receive AGC is not expressly 

disclosed in Fig. - 1 of McGirr, one skilled in the art would have 

understood that a receive AGC loop was inherent in the disclosure 

and would have known how to implement the conventional AGC 

loops disclosed in McGirr to control the gain of the receive chain 

and achieve the RSSI signal that is calibrated in table 88a. (Kenney 

Tr. 3 197: 8-3 198 :25,3 199: 12-320 1 :24,34 12: 22-34 13:2, 

3432122-3433: 19, 349912-21; RDX-3212; RDX-63136; RDX-069). 

RRCFF J284i. 

would recognize that the transmit calibration tables disclosed in 

McGirr (JX-333) would calibrate the radiotelephone’s control signal 

to account for frequency variations. (Kenney Tr. 3224:4-22, 

3204: 14-25; JX-333 at 8: 15-18). 

One skilled in the art at the time of the invention 

RRCFF J284j. One skilled in the art at the time of the invention 

would recognize that the transmit calibration tables disclosed in 

McGirr (JX-333) would use indices corresponding to the operating 

frequency of the radiotelephone, an RSSI value, and the transmit 

power of the radiotelephone. (Kenney Tr. 3224:4-22,3204: 14-25; 

JX-333 at 8:15-18). 

RRCFF J284k. One skilled in the art at the time of the invention 

93 
would have known how to generate a second calibration value in 

response to the automatic gain control setpoint, the second 

frequency index, and the transmit power value in light of McGirr. 

(Kenney Tr. 3224:4-22,3204:14-25; JX-333 at 8: 15-18). 

RRCFF J290a. Dr. Kenney testified that “anyone of ordinarv 

skill in the art would know that [McGirr’s power controll 

algorithms could run faster, a lot faster,” particularly in light of 

McGirr’s teaching to modify its power control method according to 

design choice. (Kenney Tr. 3477:23-3478:7; JX-333 7:45-56). 

(emphasis added). 

Based on said rebuttal findings with their repeated references to what is not expressly 

disclosed in McGirr, the administrative law judge finds that respondents have not established, by 

clear and convincing evidence, that &l of the elements and limitations of claims 1 and 3 of the 

‘473 patent are shown in McGirr, as arranged in said claims in issue. Hence, he finds that 

respondents have not established that McGirr anticipates claims 1 and 3 of the ‘473 patent. 

2. Obviousness 

Respondents argued that claims 1 and 3 of the ‘473 patent are obvious because they did 

nothing more than combine well-known elements as they had been used. Thus, it is argued that 

the ‘473 patent itself in its FIG. 1 acknowledges an existing and complete prior art circuit 

including “nearly every element” of claims 1 and 3; that the asserted claims are obvious in light of 

the Wheatley PCT application W093/07702 (combined Wheatley) (RX-311) and the documents it 

incorporates by reference; that to the extent a “claim of validity” is able to survive the combined 

Wheatley, claims 1 and 3 are “definitively” made obvious by McGirr (JX-333); that in addition to 

the complete systems of the combined Wheatley and McGirr, prior art as European Patent 

Application 0416613 A2 (Fujitsu) (JX-329), U.S. Patent No. 5,230,091 (Vaisanen) (RX-309), and 

94 
European Patent Application 0412392A2 (Motorola I) (RX-3 13) are replete with digital lookup 

tables used in handset power control applications and such art combined with the combined 

Wheatley render claims 1 and 3 of the ‘473 patent obvious. (RBr at 100-201.)21 

The staff argued that the collective teachings of the combined Wheatley, in view of 

McGirr and Vaisanen, render the asserted claims 1 and 3 of the ‘473 patent obvious. (SBr at 69- 

76.) 

Complainant argued that it has not been shown, by clear and convincing evidence, that one 

of ordinary skill in the art would have combined the combined Wheatley and the “other” cited 

patents; and that even if the combined Wheatley “references” were “properly combinable” with 

McGirr or with the other digital linearizer patents, the combination would not work for its 

intended purpose, and therefore could not render asserted claims 1 and 3 of the ‘473 patent 

obvious. (CBr at 104-1 1.) Complainant further argued that “unrebutted” evidence of secondary 

considerations demonstrate that the “asserted patents’’ are not obvious. (CBr 96-13 1.) 

All parties make reference to KSR Int’l v. Teleflex, 127 S.Ct. 1727 (2007) (KSR). In 

m, the Supreme Court reaffirmed its long-standing obviousness test: 

Under 8 103, the scope and content of the prior art are to be 

determined; differences between the prior art and the claims 

at issue are to be ascertained; and the level of ordinary skill 

in the pertinent art resolved. Against this background, the 

obviousness or nonobviousness of the subject matter is 

determined. Such secondary considerations as commercial 

success, long felt but unsolved needs, failure of others, etc., 

21 As indicated in an exhibit dated 8/3/07 (RX-404) the PTO has granted Nokia’s request 

for reexamination of claims 1-4 of the ‘473 patent, the PTO stating that Nokia considers claims 

1-4 of the ‘473 patent unpatentable over “the combination of the Wheatley Patents (Wheatley I 

[RX-31 I], Wheatley II [RX-3061 and Wheatley III [RX-3071) in view of McGirr et a1 [JX-3331.” 

and also “over McGirr in view of the combined Wheatley Patent.” (RX-404 at NITC-N1059280.) 

95 
might be utilized to give light to the circumstances 

surrounding the origin of the subject matter sought to be 

patented. 

- Id. at 1734 (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18, (1966)). 

However, the Supreme Court found that the Federal Circuit in the case below had addressed the 

question of obviousness in a manner contrary to 35 U.S.C. 0 103 and Supreme Court precedents. 

Thus it stated: 

Seeking to resolve the question of obviousness with more 

uniformity and consistency, the Court of Appeals for the Federal 

Circuit has employed an approach re-ferred to by the parties as the 

“teaching, suggestion, or motivation” test (TSM test), under which a 

patent claim is only proved obvious if “some motivation or 

suggestion to combine the prior art teachings” can be found in the 

prior art, the nature of the problem, or the knowledge of a person 

having ordinary skill in the art. See, e.g., Al-Site Corp. v. VSI Int’l, 

Inc., 174 F.3d 1308, 1323-1324 (CA Fed. 1999). KSR challenges 

that test, or at least its application in this case. See 119 Fed. Appx. 

282,286-290 (CA Fed. 2005). Because the Court of Ameals 

addressed the auestion of obviousness in a manner contrary to 6 103 

and our precedents, we granted certio-rari, 547 U.S. 

2965, 165 L. Ed. 2d 949 (2006). We now reverse. 

, 126 S. Ct. 

127 S.Ct. at 1734-35, (emphasis added). 

Referring to the cited prior art and claimed invention at issue in m, the Supreme Court 

indicated that the case concerned adjustable automotive pedals, which were intended to allow 

“drivers of smaller stature” to avoid needless repositioning of the driver’s seat. KSR, 127 S. Ct. at 

1735. One prior art reference, U.S. Patent No. 5,010,782 (Asano), taught an adjustable pedal 

designed so that “one of the pedal’s pivot points stays fixed,” with the result that “the force 

necessary to push the pedal down is the same regardless of adjustments to its location.” Id. Also 

during this time, “it became more common to install computers in cars to control engine 

96 
operation.” KSR, 127 S. Ct. at 1735. Once a computer controlled a car’s engine, “an 

electronic sensor is necessary to translate the mechanical operation into digital data the 

computer can understand.” Id. The industry developed various electronic pedal sensors for this 

purpose. See id. at 1735-36. One such advance was a prior art reference U.S. Patent No. 

5,819,593 (Rixon), which taught “an adjustable pedal assembly with an electronic sensor for 

detecting the pedal’s position.” 127 S. Ct. at 1736. Rixon however had a flaw in that its sensor 

was “located in the pedal footpad” and, as a result, became “known to suffer from wire chafmg 

when the pedal was depressed and released.” Id. 

A third prior art reference, U.S. Patent No. 5,063,811 (Smith), according to m, taught 

that “to prevent the wires connecting the sensor to the computer from chafing and wearing out, 

and to avoid grime and damage from the driver’s foot, the sensor should be put on a fixed part of the 

pedal assembly rather than in or on the pedal’s footpad.” m, 127 S. Ct. at 1735-36. Finally, the 

Supreme Court pointed out that in 1994, Chevrolet bujlt a line of trucks with computerized engines, 

using “modular” electronic sensors on their pedals (Id at 1736) and modular sensors could, as their 

name implied, “be taken off the shelf and attached to mechanical pedals of various sorts, enabling 

the pedals to be used” with computer engine control with Chevrolet attaching its modular sensors 

to the pedal support bracket. Id. 

According to KSR against the backdrop of said prior art, General Motors engaged 

petitioner KSR “to supply adjustable pedal systems for Chevrolet and GMC light trucks that used 

engines with computer-controlled throttles.” 127 S. Ct. at 1736. Petitioner KSR added a modular 

electronic sensor to an existing pedal used in non-computerized cars. Id. Upon learning of 

petitioner KSR’s design for GM, Teleflex Inc. sent a warning letter informing the petitioner that 

97 
its proposal would violate its U.S. Patent No. 6,237,565 to Engelgau (Enelgau patent). 

Petitioner then refused to enter a royalty arrangement with Teleflex so in the district court 

Teleflex accused KSR’s design of infringing claim 4 of the Engelgau patent. See KSR, 127 S. 

Ct. at 1737. The Engelgau patent was said to teach 

“‘a position-adjustable pedal assembly with an electronic pedal 

position sensor attached to the support member of the pedal 

assembly. Attaching the sensor to the support member allows the 

sensor to remain in a fixed position while the driver adjusts the 

pedal.” 

- Id. (quoting Teleflex Inc. v. KSR Int’l, 298 F. Supp. 2d 581,586-587 (ED. Mich. 2003). 

Petitioner KSR then sought summary judgment in the district court asserting that “it 

would have been obvious to someone with ordinary skill in the art of designing pedal systems to 

combine an adjustable pedal system with an electronic pedal position sensor to work with 

electronically controlled engines increasingly being used in motor vehicles.” Teleflex Inc. v. KSR 

- Int’l, 298 F. Supp. 2d 581, 585 (E.D. Mich. 2003). The district court agreed, finding “little 

difference between the teachings of the prior art and claims of the patent-in-suit.” Id. at 592. The 

district court noted that Asano taught “the structure and function of each of the claim 4 limitations, 

except those relating to an electronic pedal position sensor,” which itself was “fully disclosed by 

other prior art references.” Id. 

Having found all claim elements in the prior art, the district court proceeded to apply the thengoverning test, which required “some motivation or suggestion to combine the prior art teachings.” 

298 F. Supp. 2d at 593. The district court found that “it was inevitable that adjustable pedal 

assemblies would be joined with an electronic device to work in conjunction with modem 

electronically controlled engines,” noting that the prior art reference Rixon had already done so. 

98 
- Id. Although the prior art reference Rixon suffered from wire chafing due to its placement of the 

sensor, the district court concluded that a person of ordinary skill in the art would have been 

motivated to combine prior art reference Asano with Chevrolet’s 1994 sensors precisely “to avoid 

the problems with Rixon.” Id. at 594. Finally, the express teaching of the prior art reference 

Smith to avoid wire chafing by fixing electronic sensors to a stationary point was said by the 

district court to support a skilled artisan’s motivation to combine the prior art, further rendering 

Engelgau obvious. See id. 

On appeal by Teleflex, the Federal Circuit vacated and remanded. Teleflex, Inc. v. KSR 

- Int’l, 119 Fed. App’x 282 (Fed. Cir. 2005). The Federal Circuit found that the district court had 

erred by failing to find a specific motivation to combine the prior art exactlv as performed in the 

patent: 

Under our case law, whether based on the nature of the problem to 

be solved, the express teachings of the prior art, or the knowledge of 

one of ordinarv skill in the art, the district court was required to make 

specific findings as to whether there was a suggestion or motivation to 

combine the teachings of Asano with an electronic control in the 

particular manner claimed by Engelgau]. 

- Id. at 288 (emphasis added). 

The Federal Circuit also rejected the district court’s conclusion that the “nature of the problem 

to be solved” could provide the required motivation to combine the prior art. m, 119 Fed. App’x at 

288. The Federal Circuit, noting that it had endorsed this possibility only when “two prior art 

references address the precise problem that the patentee was trylng to solve,” rejected the cited prior art 

as too far afield. Id. (emphasis added). Similarly, the Federal Circuit found that the district court 

improperly considered the prior art Smith’s teaching that “the pedal assemblies must not precipitate 

99 
any motion in the connecting wires” because Smith did not swcifically advise attachment in the 

particular manner claimed by Engelgau. Id. at 288-89. Hence, the Federal Circuit vacated summary 

judgment. See id. at 289. 

In KSR the Supreme Court rejected the Federal Circuit’s “narrow conception of the 

obviousness inquiry,” noting that the Supreme Court’s test was both objective and flexible: 

In determining whether the subject matter of a patent claim is obvious, 

neither the particular motivation nor the avowed purpose of the 

patentee controls. What matters is the objective reach of the claim. If 

the claim extends to what is obvious, it is invalid under 8 103. One of 

the ways in which a patent’s subiect matter can be proved obvious is by 

noting that there existed at the time of invention a known problem for 

which there was an obvious solution encompassed by the patent’s 

claims. 

127 S. Ct. at 1741-42 (emphasis added). It concluded that the Federal Circuit erred by failing to 

“recognize that the problem motivating the patentee may be only one of many addressed by the 

patent’s subject matter.” Id. at 1742. Instead, the Supreme Court emphasized that courts must consider 

all potential motivations: 

The question is not whether the combination was obvious to the 

patentee but whether the combination was obvious to a DerSon with 

ordinarv skill in the art. Under the correct analysis, any need or 

problem known in the field of endeavor at the time of invention and 

addressed bv the patent can provide a reason for combining the 

elements in the manner claimed. 

- Id. (emphasis added). 

The Supreme Court further found that the Federal Circuit erred by assuming that a skilled 

artisan “attempting to solve a problem will be led only to those elements of prior art designed to solve 

the same problem.” 127 S. Ct. at 1742. Thus, it stated that the Federal Circuit erred in dismissing the 

prior art reference Asano on the grounds that it addressed a problem different from Engelgau. See id. 

100 
It further noted: 

Common sense teaches, however, that familiar items may have obvious 

uses beyond their primary purposes, and in many cases a person of 

ordinary skill will be able to fit the teachings of multiple patents 

together like pieces of a puzzle. Regardless of Asano’s primary 

purpose, the design provided an obvious example of an adjustable 

pedal with a fixed pivot point; and the prior art was replete with patents 

indicating - that a fixed pivot point was an ideal mount for a sensor. The 

idea that a designer hoping to make an adjustable electronic pedal 

would ignore Asano because Asano was designed to solve the constant 

ratio problem makes little sense. A person of ordinary skill is also a 

person of ordinarv creativity, not an automaton. 

- Id. (emphasis added) [quoted in part also in the later Translo& see infra]. The Supreme Court also 

found that the Federal Circuit erred by concluding “that a patent claim cannot be proved obvious 

merely by showing that the combination of elements was ‘obvious to try.’” Id. Instead, the Supreme 

Court stated: 

When there is a design need or market pressure to solve a problem and 

there are a finite number of identified, predictable solutions, a person of 

ordinary skill has good reason to pursue the known options within his 

or her technical grasp. If this leads to the anticipated success, it is likely 

the product not of innovation but of ordinary skill and common sense. 

In that instance the fact that a combination was obvious to try might 

show that it was obvious under 6 103. 

- Id. (emphasis added). Finally, the Supreme Court ruled that the Federal Circuit erred in its 

consideration of hindsight bias by imposing “[rligid preventative rules that deny factfinders recourse to 

common sense.” Id. 

The “rigid approach” of the Federal Circuit, the Supreme Court explained in m, ran afoul of 

0 103 by granting patent protection to obvious, predictable combinations of prior art elements: 

Neither the enactment of 6 103 nor the analvsis in Graham disturbed 

this Court’s earlier instructions concerning the need for caution in 

granting a patent based on a combination of elements found in the prior 

101 
- art. For over a half century, the Court has held that a “patent for 

combination which only unites old elements with no change to their 

respective functions . . . obviously withdraws what is already known 

into the field of its monopoly and greatly diminishes the resources 

available to skillful men.” 

- Id. at 1739 (quoting Great Atlantic & Pacific Tea Co. v. Supermarket Euuipment Cop, 340 U.S. 147, 

152 (1950)) (emphasis added). 

In correcting the Federal Circuit’s error, m reaffirmed prior cases holding that a 

“combination of familiar elements according to known methods is likely to be obvious when it does no 

more than yield predictable results.” 127 S. Ct. at 1739. The Supreme Court cited three case 

exemplifymg this principle. Thus it was said that in United States v. Adams, 383 U.S. 39 (1966), the 

Court “recognized that when a patent claims a structure already known in the prior art that is altered by 

the mere substitution of one element for another known in the field, the combination must do more 

than yield a medictable result.” m, 127 S. Ct. at 1739-40 (emphasis added). In Anderson’s-Black 

Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1979), it was said that the Court struck a patent 

“combining two pre-existing elements” because, “while the combination of old elements performed a 

useful function, it added nothing new to the nature and quality” of the prior art. KSR, 127 S. Ct. at 

1740. Finally, it was said that in Sakraida v. AG Pro, Inc., 425 U.S. 273 (1976), the Supreme Court 

held a patent must be invalid if it “simply arranges old elements with each performing the same 

function it had been known to perform and yields no more than one would expect from such an 

arrangement.” m, 127 S. Ct. at 1740. Following “the principles underlying these cases,” m noted 

that a patent must be obvious if it discloses only a foreseeable variation from art in the same or a 

related field: 

When a work is available in one field of endeavor, design incentives 

102 
and other market forces can prompt variations of it, either in the same 

field or a different one. If a person of ordinary skill can implement a 

predictable variation, 0 103 likely bars its patentability. For the same 

reason, if a technique has been used to imurove one device, and a 

person of ordinary skill in the art would recognize that it would 

improve similar devices in the same way, using - the technique is 

obvious unless its actual auulication is beyond his or her skill. 

- Id. at 1740 (emphasis added). Thus, under the correct test, the Supreme Court stated that courts must 

“ask whether the improvement is more than the predictable use of prior art elements according to their 

established functions.” Id. KSR, however, did indicate that a patent composed of several elements is 

not obvious merely because each of said elements was independently known in the prior art: 

Often, it will be necessary for a court to look to interrelated teachings 

of multiple patents; the effects of demands known to the design 

community or present in the marketplace; and the background 

knowledge possessed by a person having ordinary skill in the art, all in 

order to determine whether there was an apparent reason to combine 

the known elements in the fashion claimed by the patent at issue. To 

facilitate review, this analysis should be made explicit. See In re Kahn, 

441 F.3d 977,988 (CA Fed. 2006) “Rejections on obviousness grounds 

cannot be sustained by mere conclusory statements; instead, there must 

be some articulated reasoning with some rational underpinning to 

support the legal conclusion of obviousness”). As our urecedents make 

clear, however, the analysis need not seek out precise teachings 

directed to the specific subject matter of the challenged claim. for a 

court can take account of the inferences and creative steps that a uerson 

of ordinary skill in the art would emuloy. 

When it first established the requirement of demonstrating a 

teaching, suggestion, or motivation to combine known elements in 

order to show that the combination is obvious, the Court of Customs 

and Patent Appeals captured a helpful insight. See Application of 

Bergel, 292 F.2d 955,956-957,48 C.C.P.A. 1102, 1961 Dec. Com-m’r 

Pat. 504 (1961). As is clear from cases such as Adams, a patent 

composed of several elements is not proved obvious merely by 

demonstrating that each of its elements was, independently, known in 

the prior art. Although common sense directs one to look with care at a 

patent application that claims as innovation the combination of two 

known devices according to their established functions, it can be 

103 
important to identify a reason that would have prompted a person of 

ordinary skill in the relevant field to combine the elements in the way 

the claimed new invention does. This is so because inventions in most, 

if not all, instances rely upon building blocks long since uncovered, and 

claimed discoveries almost of necessity will be combinations of what, 

in some sense, is already known. 

- Id. at 1739-40 (emphasis added). 

After explaining the correct obviousness standard and analysis, the Supreme Court in 

held that claim 4 of the Engelgau patent was obvious as a matter of law, agreeing with the district court 

that one of ordinary skill in the art would have seen the benefits of combining the prior art references 

Asano with the prior art reference Smith: 

As did the District Court, we see little difference between the teachings 

of Asano and Smith and the adjustable electronic pedal disclosed in 

claim 4 of the Engelgau patent. A person having - ordinary skill could 

have in the art could have combined Asano with a pedal position 

sensor in a fashion encompassed bv claim 4, and would have seen the 

benefits of doinp so. [quoted in the later Translogjc, see infra] 

127 S. Ct. at 1743 (emphasis added). For this reason, the Supreme Court ruled that the district court 

was correct to: 

conclude that, as of the time Engelgau designed the subject matter in 

claim 4, it was obvious to a person of ordinary skill to combine Asano 

with a pivot-mounted pedal position sensor. There then existed a 

marketplace that created a strong incentive to convert mechanical 

pedals to electronic pedals, and the prior art taught a number of 

methods for achieving this advance. 

- Id. at 1744. These “design incentives and other market concerns,” the Supreme Court concluded, 

provided sufficient impetus to apply Asano to an electronic pedal, rendering the Engelgau patent 

obvious. J&. In contrast, the Supreme Court found that the Federal Circuit had “considered the issue 

too narrowly” by asking “whether a pedal designer writing on a blank slate would have chosen both 

104 
Asano and a modular sensor” in response to the “strong incentive to convert mechanical pedals to 

electronic pedals.” 127 S. Ct. at 1744. (emphasis added). Instead, the Supreme Court stated that the 

Federal Circuit should have asked “whether a pedal designer of ordinary skill starting with Asano 

would have found it obvious to put the sensor on a fixed pivot point.” Id. (emphasis added). Among 

other reasons, “from the known wire-chafing problems of Rixon, and Smith’s teaching that ‘the pedal 

assemblies must not precipitate any motion in the connecting wires,’ the designer would know to place 

the sensor on a nonmoving point of the pedal structure.” Id. Because it was the “most obvious 

nonmoving point on the structure,” the Supreme Court held that “attaching the sensor where both KSR 

and Engelgau put it would have been obvious to a person of ordinary skill,” further confirming the 

obviousness of Engelgau. See id. at 1744-45. Thus the judgement of the Federal Circuit was reversed, 

and the case remanded for further proceedings consistent with “this opinion” 127 S.Ct, at 1746.22 

In a later case, the Federal Circuit in In re Translogic Tech. Inc., 504 F.3d 1249 (Fed. Cir. 

2007) (Translogic), in &inning the €TO Board’s final rejection of claims 16,17,39-45,47 and 48 of 

U.S. Patent No. 5,162,666 (the ‘666 patent) as obvious, made frequent reference to m. In 

Translogic, the Federal Circuit found that the ‘666 patent deals with multiplexers; that a multiplexer is 

a type of electrical circuit; that a multiplexer has multiple inputs, one or more control lines, and one 

output; that signals on the control lines select one of the various inputs to be passed to the output; that 

in a 2: 1 multiplexer, a single output value is selected from two inputs; that similarly, in 4: 1 and 8: 1 

multiplexers, a single output is selected from among four or eight inputs, respectively; and that thus the 

invention selected one of the multiple inputs to pass to the output. a. at 1251. The Court further found 

22 On remand, the Federal Circuit affirmed the district court’s grant of summary 

judgment which was the same grant it had previously vacated. Teleflex, Inc. v. KSR Int’l, 228 

Fed. App’s 988, (Fed. Cir. 2007). 

105 
that the ‘666 patent describes a multiplexer that couples together multiple stages of 2: 1 multiplexers in 

series; that the ‘666 patent specifically uses a transmission gate multiplexer (TGM) as each 2: 1 

multiplexer; that Figure 3 of the ‘666 patent illustrates a 4: 1 series multiplexer that connects three 

TGMs (le, A, B and C) in series; that the inputs are IO, 11, I2 and I3, the output is Z and the control 

lines are SI, S2 and S3; that while a conventional 4: 1 multiplexer would have two control lines, the 

4:l series multiplexer, according to the ‘666 patent configuration, has three control lines. a. at 1252-3. 

It also found that the claims on appeal specify multiplexers with multiple 2: 1 TGMs connected in 

series; that in the series configuration, the output of one TGM connects to one input of the next TGM; 

and that each TGM is known as a stage; that a multiplexer built from a series of TGMs has p control 

inputs and (p+l) data inputs for a total of (2p+l) overall inputs; and that for example, a 4: 1 series 

multiplexer has p=3 control inputs and 4 data inputs thereby resulting in 7 ((2*3) + 1 = 7) overall 

inputs whereas a conventional 4: 1 multiplexer has 4 inputs and 2 control inputs, resulting in 6 overall 

inputs. a. at 1253-54. In affirming the Board, the Federal Circuit found that a person of ordinary skill 

in the art would have a thorough understanding of electrical switching systems and knowledge of 

actual electrical implementations of multiplexers such as the TGMs in a Weste reference; and that a 

Gorai reference uses serial connectivity of 2: 1 multiplexers, each described as M( l), to realize logic 

functions; and that the subject matter of the Gorai reference explains an approach (le, algorithm) to 

analyze mathematical dependencies among desired inputs and then selects appropriate input 

connections as well as series connectivity between M( 1) multiplexers to realize the specified logic 

function. For example, the Gorai algorithm was said to result in the circuit in FIG. 6 defined by logic 

function: f2(x1, x2, x3, XJ = (0,5,7,8,9, 12, 13). Id. at 1260. 

In Translo& the Court in commenting on m, stated: 

106 
When Teleflex sued KSR for infringement, the district court 

invalidated the ‘565 patent on summary judgment. This court reversed 

because the trial court had not made specific findings to show a 

teaching, suggestion, or motivation to combine (“TSM test”). The 

Supreme Court, in turn, reversed: “A person having ordinary skill in 

the art could have combined Asano with a pedal position sensor in a 

fashion encompassed by claim 4, and would have seen the benefits of 

doing so.” KSR Int’l Co., 550 U.S. at , 127 S. Ct. at 1743. [quoted 

also supra] 

On one level, KSR corrected a rather straightforward error. The error appears right 

before footnote 3 in this court’s opinion: 

In this case, the Asano patent does not address the same problem as the 

JEngelnaul ‘565 patent. The objective of the ‘565 patent was to design 

a smaller, less complex, and less expensive electronic pedal assembly. 

The Asano patent, on the other hand, was directed at solving the 

“constant ratio problem.” 

Teleflex. Inc. v. KSR Int’l, Co., 119 Fed. Appx. 282,288 (Fed. Cir. 

2005). This passage - overlooks the fundamental proposition that 

obvious variants of prior art references are themselves part of the public 

-- domain. See KSR Int’l Co., 550 U.S. at , 127 S. Ct. at 1743; Dystar 

Tex-tilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 

F.3d 1356, 1361 (Fed. Cir. 2006); In re Dembiczak, 175 F.3d 994,999 

(Fed. Cir. 1999) (“We have noted that evidence of a suggestion, 

teaching, or motivation to combine may flow from the prior art 

references themselves, the knowledge of one of ordinarv skill in the art, 

or, in some cases, from the nature of the problem to be solved . . . .’7. 

In the context of KSR. the Asano teachings and its obvious variants 

were relevant prior art, even if that patent did address a different 

problem (the constant ratio problem). The Supreme Court highlighted 

that error in its opinion: 

The primary purpose of [prior art reference] Asano was solving 

the constant ratio problem; so, the court concluded, an inventor 

considering how to put a sensor on an adjustable pedal would have no 

reason to consider putting it on the Asano pedal. Common sense 

teaches, however, that familiar items may have obvious uses bevond 

their primarv purposes, and in manv cases a person of ordinarv skill 

will be able to fit the teachings of multiple Datents together like pieces 

of a puzzle. Regardless of Asano’s primary purpose, the design 

107 
provided an obvious example of an adjustable pedal with a fixed pivot 

point; and the prior art was replete with patents indicating that a fixed 

pivot point was an ideal mount for a sensor. The idea that a desimer 

hoping to make an adjustable electronic pedal would imore Asano 

because Asano was desimed to solve the constant ratio problem makes 

little sense. KSR Int’l Co., 550 U.S. at , 127 S. Ct. at 1742. 

- Id. at 1254 (emphasis added). 

The Federal Circuit in Translorric continued 

The Supreme Court [in KSRl also criticized this court’s “rigid 

and mandatory” application of the motivation to combine test: “The 

obviousness analysis cannot be confined by a formalistic conception of 

the words teaching, suggestion, and motivation, or by overemphasis on 

the importance of published articles and the explicit content of issued 

patents.” Id. at 1741. Instead, the Supreme Court advised that 

“common sense” would extend the use of customary knowledge in the 

obviousness equation: “A person of ordinary slull is also a person of 

ordinary creativity, not an automaton.” Id. at 1742. Thus, the Supreme 

Court set aside any “rigid” application of the TSM test and ensured use 

of customary knowledge as an ingredient in that equation. 

The Supreme Court observed that this court had also “elaborated a 

broader conception of the TSM test than was applied in [KSR].” Id. at 

1743. Specifically the Court referred to Dystar Textilfarben GmbH & 

Co. v. C.H. Patrick Co., wherein this court noted: “Our suggestion test 

is in actuality quite flexible and not onlv permits, but resuires, 

consideration of common knowledge and common sense.” 464 F.3d 

1356, 1367 (Fed. Cir. 2006) (emphasis original). The Court suggested 

that this formulation would be more consistent with the Supreme 

Court’s restatement of the TSM test. KSR Int’l Co., 127 S. Ct. at 1739. 

In any event, as the Supreme Court suggests, a flexible approach to the 

TSM test prevents hindsight and focuses on evidence before the time of 

invention, see, e.g., In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 

1998), without unduly constraining the breadth of knowledge available 

to one of ordinary skill in the art during the obviousness analysis. 

- Id. at 1260 (emphasis added.) 

Of particular relevance is the Federal Circuit’s rejection of the argument of Translog Tech Inc.: 

I 

1 

In this appeal, Translogic proffers two arguments to attempt to show 

108 
that the Gorai reference is not prior art with respect to the ‘666 patent. 

Initially, Translogic contends that neither the Gorai algorithm nor its 

circuit realizations provide a multiplexer function. In fact, since the 

entire point of Gorai’s article revolves around logic, not multiplexing, 

with series connectivity among M( 1) circuits, Translogic contends that 

Gorai teaches away from multiplexers. Next, Translogic contends that 

the Gorai reference discloses an algorithm capable of providing designs 

for a large number of circuits, while the inventor of the ‘666 patent was 

modifying one circuit, a multiplexer, with utmost regard for its 

performance. In other words, while Gorai discloses an algorithm to 

design logic circuits based on functional parameters, the ‘666 patent 

improves a known circuit. In sum, Translogic’s argument tries to state 

that the Gorai reference is not relevant prior art because the reference 

does not spe-cifically disclose a N: 1 series multiplexer but only 

discloses an algorithm to realize logic functions by using 2: 1 

multiplexers connected in series. 

In its prior art argument, Translogic is making the same error 

corrected by the Supreme Court in KSR. Translogic mistakenly argues 

that variants of a circuit connecting 2: 1 multiplexers in series are not 

relevant prior art with respect to the ‘666 patent because these variants 

do not address the same problem, namelv an imtxoved multiplexer 

circuit. However, this argument overlooks the fundamental proposition 

that the series circuits in Gorai are prior art within the public domain 

and the common knowledge of a uerson of ordinarv skill in the art. 

Thus, the Gorai reference is a relevant prior art reference with respect 

to the ‘666 patent and clearly discloses a series 2: 1 multiplex-er circuit. 

Translogic also puts forth a prior art argument based on the 

circuit inputs. Translogic contends that Fig. 3 in Gorai (see below) is a 

half-bare, incomplete circuit because all h and g inputs are undefined 

(variables or constants) and therefore the Fig. 3 circuit only shows three 

control inputs (x,, xpl and xp). 

*** 

Therefore, Translogic states that the Gorai Fig. 3 circuit cannot 

be a multiplexer because the inputs are not specifically defined to 

realize a N: 1 series multiplexer circuit (4: 1 in this example). 

Translogic’s input argument is without merit. Claims 47 and 48 

of the ‘666 patent define a series multiplexer circuit. Gorai Fig. 3 

discloses the same serial multiplexer circuit. As anv person of ordinarv 

109 
skill in the art would understand, the inputs to a circuit do not change 

the circuit itself. Therefore, this court finds that Gorai discloses a series 

multiplexer circuit as claimed in the ‘666 patent. Thus, the Board was 

correct in concluding that the Gorai reference discloses a series 

mu1 tiplexer circuit . 

Lastly, Translogic contends that Gorai does not teach or suggest 

the use of TGMs for each M( 1) stage (i.e., 2: 1 multiplexer). Translogic 

admits that the Weste reference does disclose a TGM circuit; however, 

Translogic argues that Weste provides no specific teaching, suggestion 

or motivation to use TGMs in a series circuit such as shown in Gorai 

Fig. 3. Furthermore, Translogic notes that Weste discloses a TGM used 

for a single multiplexer but does not include any reference to coupled 

TGMs in series. Thus, according to Translogic, the Weste reference 

does not provide the necessary teaching, suggestion or motivation 

[*26] to combine the use of TGMs with the Gorai reference. 

As articulated by the Supreme Court in KSR, an obviousness 

analysis “need not seek out precise teachings directed to the specific 

subject matter of the challenged claim, for a court can take account of 

the inferences and creative steps that a person of ordinary skill in the art 

would employ.” 550 U.S. at 

person of ordinary skill in the art at the time of the invention would 

have recognized the value of using a known element. a 2: 1 TGM. as 

taught by Weste, for the 2:l multiplexers in the series arrangement of 

multiplexers in Gorai. A person of ordinary skill in the art would have 

appreciated that any conventional multiplexer circuit could be utilized 

to implement the 2: 1 multiplexer circuits in Gorai. After all. TGMs 

were well-known multiplexer circuits as evidenced by the Weste 1985 

textbook. In other words, in looking for a multiplexer circuit for the 

individual 2: 1 multiplexers disclosed in Gorai, a person of ordinary 

skill in the art would have solved this design need by “pursurind 

known options within his or her technical grasp.” Id. at 1742. Thus, this 

court agrees with the Board’s determination. The Board based its 

decision on sound reasoning that a person of ordinary skill in the art 

would select a specific circuit based on the need for a 2: 1 multiplexer 

circuit for the individual multiplexers shown in Gorai. Specifically. a 

person of ordinary skill in the art at the time of the invention would 

have been able to choose TGMs as an option. While other circuits 

could have been used to implement the 2:l multiplexers, TGMs were a 

well-known circuit as shown by the explanation of TGM circuits in the 

1985 textbook by Weste. This court finds that substantial evidence in 

the record supports the Board’s finding that a person of ordinary skill in 

, 127 S. Ct. at 1741. In this case, a 

110 
the art would have used TGMs in the N: 1 circuit configuration shown 

in Gorai. In sum, this court agrees with the Board’s conclusion that the 

‘666 patent is unpatentable under 35 U.S.C. 0 103(a) over Gorai in 

view of Weste. 

- Id. at 1260-62 (emphasis added). 

The Commission, in its opinion dated November 7,2007 in Certain Ink Cartridges And 

Components Thereof, Inv. No. 337-TA-565 (Ink Cartridges), stated that the Supreme Court in m, 

while reaffirming that the Graham factors still control the analysis of an obviousness inquiry, 

reexamined how the obviousness inquiry should be conducted and rejected what it referred to as the 

overly rigid application of the so-called “teaching, suggestion, motivation” test.23 Id. at 40. Thereafter 

the Commission, referring to this administrative law judge’s ID in Ink Cartridges, observed: 

While the ALJ did refer to a lack of “suggestion” for combining prior 

art in his analysis of obviousness of claims 1,2,3 and 9 of the ‘917 

patent, he also found that not all the features of the asserted claims of 

the ‘917 and ‘422 patents were disclosed in the prior art. ID 151, 153. 

Thus, the prior art could not simply be combined to yield the inventions 

of the two patents and it cannot be argued that the claimed inventions 

would have resulted simply from the combination of old elements to 

yield a predictable result, which appears to have been a primary 

concern of the m decision. m, 127 S.Ct. at 1740 (“The principles 

underlying these cases are instructive when the question is whether a 

patent claiming the combination of elements of prior art is obvious.”) 

We find that Aw’s conclusions with respect to the non-obviousness of 

the asserted claims the of the ‘917 and’422 patents are well-reasoned 

and well-supported in the record and that the active respondents have 

not demonstrated the obviousness of the patents by clear and 

convincing evidence. 

23 The Commission noted that, prior to KSR, the Federal Circuit indicated consideration 

of two factors which was required to determine if the invention was obvious: “( 1) whether the 

prior art would have suggested to those of ordinary skill in the art that they should make the 

claimed composition or device, or carry out the claimed process,” and “(2) whether the prior art 

would also have revealed that in so making or carrying out, those of ordinary skill would have a 

reasonable expectation of SUCC~SS.~’ Noelle v. Lederman, 355 F.3d 1343, 1351-52 (Fed. Cir. 

2004). 

111 
As to claim 1 of the ‘053 patent, the ID discusses a combination of 

prior art elements and one additional element relied on by respondents, 

the repositioning of the ink port to avoid contamination of the circuit 

board. ID 156-157. The Aw found that the ‘422 patent teaches away 

from the repositioning of the ink port and the specification of the ‘422 

patent suggests the ink port should be near the circuit board, we do not 

find that the repositioning of the ink port would have been obvious to 

one skilled in the art. See ‘422 Patent 3:66:67. Moreover, the 

application for the ‘422 patent was disclosed to the examiner and found 

not to be a bar to patentability. ID 156 citing (CFF VIII.73). 

Accordingly, we find that the active respondents have not demonstrated 

the obviousness of claim 1 of the ‘053 patent by clear and convincing 

evidence. 

(Id at 47-8) (emphasis added). 

Referring to the combined Wheatley titled ‘‘TrFsmitter Power Control System” (RX-3 1 1), 

under the subheading “Field of the Invention” at 1 it states that the invention relates to a novel and 

improved method and apparatus for controlling transmitter power in a code division multiple access 

(CDMA) cellular mobile telephone system. (RX-3 1 1 at 3.) 

RX-3 1 1 is an international patent application published under the patent cooperation treaty 

(PCT). (RX-3 1 1 .) RX-3 1 1 bears International Publication Number WO 93/07702 and International 

Application Number PCT/US92/08613. (RX-311.) The named inventor of RX-311 is Charles E. 

Wheatley, HI, an inventor on the ‘473 patent. (RX-311.) The named applicant of RX-311 is 

QUALCOMM. (RX-3 1 1 .) The International Filing Date for RX-311 is October 8, 1992. (RX-3 1 1 .) 

RX-311 bears a priority date of October 8, 1991 and claims priority to U.S. Patent Application No. 

773,067 (RX-3 1 1 .)24 RX-3 1 1 bears an International Publication Date of April 15, 1993 (RX-3 1 1 .) The 

subject of RX- 31 1 was described in a printed publication by at least as early as April 15, 1993 within 

the meaning of 35 U.S.C. $102 (a). (RX-311.) It was so described before the purported invention 

24 Wheatley U.S. Patent No. 5,267,262 (CX-42) is based on said application No. 773,067. 

112 
claimed in the ‘473 patent. (RX-311; RFF VI.233 (undisputed).) RX-3 11 constitutes prior art to each 

of the ‘473 patent, ‘408 patent and ‘220 patent under 35 U.S.C. 3102 (a). (RX-311; RFF VI.237-9 

(undisputed).) Because RX-3 11 explicitly incorporates RX-306 (U.S. Patent No. 5,049,204) and 

RX-307 (U.S. Patent No. 5,107,225) by reference, the administrative law judge finds that one of 

ordinary skill in the art would view the disclosures of RX-3 11, RX-306, and RX-307 as a single 

combined reference. (RFF VI.224 (undisputed).) 25 

FIG. 1 of RX-3 1 126 is a schematic overview of an exemplary mobile cellular telephone system. 

(RFF VI.240 (undisputed).) In FIG. 1 of RX-311, mobile stations 16 and 18 communicate with base 

stations 12 and 14 over uplink communication paths 20b, 22b, and 24b, and downlink communication 

paths 20a, 22a, and 24a. (RX-3 11 at 13:29-30.) FIGS. 2A-2C of RX-3 11 illustrate, in a series of 

graphs, mobile unit received signal power, mobile unit transmit power and cell-site received signal 

power as a function of distance. (RX-311 at 13:31-33; RFF VI.242 (undisputed).) FIG. 7 of RX-31 I is 

a block diagram of a cell-sitekystem controller configuration for cell-site transmitter power control. 

(RX-3 11 at FIG. 7; RFF VI.246 (undisputed).) FIG. 4 of RX-3 1 1, is a block diagram of the mobile 

unit with particular reference to the power control features. (RX-311 at 13:36-14:l; RFF VI.247 

25 There is a typographical error that appears on page 26 of RX-311, lines 3-7, which 

error in the specification reverses the label number assigned to boxes “AGC Detector Circuit” 

and “Conversion Subsystem” in FIG. 5 of RX-3 1 1. (RFF VI.27 1 (undisputed).) 

26 Appendix A. Included with this ID are a number of figures. Some of the figures 

have been color highlighted which meant that said figures had to be reproduced by the publishing 

office at the ITC which took time. Thus the administrative law judge has included said figures as 

appendices to this ID which appendices follow the signature page of the ID. The copy of the ID 

that is filed as well as the seven copies of the ID that will be distributed inside the ITC will have 

the appendices which will be color highlighted as indicated in the ID. Any other copy of the ID 

with appendices, eg. the EDIS copy, will be in black and white and thus will not have said color 

highlight.” However, the private parties and the staff should have any color highlighted figures 

since they are in evidence. 

113 
(undisputed).) 

It is undisputed that RX-3 11 discloses a power control system for a cellular mobile telephone 

system in which system users communicate information signals between one another via at least one 

cell site (RX-3 11 at Abstract; RFF VI.248 (undisputed)); that RX-3 1 1 discloses the use of radio 

frequency (RF) signals to communicate information (RX-311 at 14:29-3 1; FWF VI.249 (undisputed)); 

and that RX-3 1 1 discloses a radiotelephone using code division multiple access spread spectrum 

communication signals. (RX-311 at Abstract; (RFF VI.250 (undisputed).) 

Rx-311 discloses that the radiotelephone receives RF signals through an antenna (RX-311 at 

Abstract, 19:27-30,21:29-3 1; RFF VI.252 (undisputed)); that the radiotelephone’s antenna is coupled 

to a duplexer (RX-311 at 21:31-33; RFF VI.253 (undisputed)); that the transmit and receiver sections 

of the radiotelephone disclosed by RX-3 1 1 operate on different frequencies (RX-3 1 1 at 4: 19-29; JX-1 

at 1:24-32; RFF VI.254 (undisputed)); that accounting for the outbound channel path loss (base station 

to mobile) is insufficient to account for inbound channel path loss (mobile to base station) (RX-311 at 

4:30-35; RFF VI.256 (undisputed)); and that a radiotelephone that measures the power level of 

communication signals received by the radiotelephone. (RX-3 11 at Abstract, 2: 1-3, 8: 1-4,26:3-4; Fig. 

5; (RFF VI.257 (undisputed).) 

FIG. 5 of RX-3 1 1” is a block diagram illustrating in further detail the power control features of 

the mobile unit of FIG. 4 which is said to be a block diagram of the mobile unit with particular 

reference to the power control features. (RX-311 at 14:2-3; RFF VI.259 (undisputed)). RX-3 11 at 28 

specifically states: 

In a preferred embodiment [Fig. 51 amplifiers 94 and 102 are 

27 - See Appendix B. 

114 
each configured as series coupled dual gate FET transistors with a 

surface acoustic wave bandpass disposed therebetween. In order to 

correct for inherent nonlinearities of the transistors so as to provide 

linear gain operation over an extended dynamic range, a gain 

compensation circuit is used to modify the gain control signal as input 

to the transistors. Further details on the specific implementation of this 

circuitry are provided in copending U.S. Patent Application Serial No. 

07/598,845 filed October 15, 1990, entitled “LINEAR GAIN 

CONTROL AMPLIFIER’, now U.S. Patent No. 5,099,204 [RX-3061 

issued March 24, 1992, also assigned to the assignee hereof and 

incorporated by reference. Further details on an implementation of the 

feedback loop comprised of amplifier 94, AGC detector circuit 98 and 

comparator 100 which provide the gain control are provided in 

copending U.S, Patent Application Serial No. 07/620,092, filed 

November 30,1990, entitled “HIGH DYNAMIC RANGE CLOSED 

LOOP AUTOMATION GAIN CONTROL CIRCUIT”, now U.S. 

Patent No. 5,107,225 [RX-3071 issued April 21, 1992, also assigned to 

the assignee hereof and incorporated by reference. 

(RX-311 at 28 (emphasis added).) 

It is undisputed that RX-311 discloses that the RF signals arrive from the antenna system (RFF 

VI.260 (undisputed)); that the RF signals from the antenna system are down-converted into IF signals 

by element 90 of FIG. 5 (RFF VI.260 (undisputed)); that the RF signals from the antenna system are 

processed by the band-pass filter 92 of FIG. 5 to remove any out-of-band signals (RFF VI.262 

(undisputed)); that a radiotelephone measures the power level of communication signals received by 

the radiotelephone using a power detector (RFF VI.266 (undisputed)); that the output of variable gain 

amplifier 94 of FIG. 5 was split, and transmitted to two subsystems: the automatic gain control 

detector 98 of FIG. 5 and the conversion subsystem 96 of FIG. 5 (RFF VI.267 (undisputed)); that the 

radiotelephone’s receiver contains an AGC detector circuit 98 of FIG. 5 that is used to generate a 

signal indicative of the signal strength of the received signal (RDX-63:7; RFF VI.268 (undisputed)); 

that Rx-3 11 discloses that the signal strength signal (output of AGC detector 98 of FIG. 5) is provided 

115 
as one input to integrator 100 of FIG. 5 (RFF VI.272 (undisputed)); that RX-3 11 discloses that the 

other input to said integrator 100 is an input level control signal from a conversion subsystem 96 of 

FIG. 5 also called an open loop power level set signal (RFF VI.273) (undisputed)); that the open loop 

power level set signal (output of said conversion subsystem 96) disclosed by RX-311 is a reference 

signal that repments the desired power level at the output of IF AMP 94 of FIG. 5 (RFF VI.274 

(undisputed)); that RX-3 11 discloses that the open loop power level set signal and the signal strength 

signal are differentially integrated by ssaid integrator 100 to generate a resultant gain control signal that 

is provided as a gain control input to both (1) receive said variable gain amplifier 94 and (2) transmit 

variable gain amplifier 102 of FIG. 5 (RFF VI.275 (undisputed).) 

RDX-63: depicts FIG. 5 of RX-11 along with text from page 27 lines 6 through 9 of 

RX-311. (RFF VI.276 (undisputed).) The administrative law judge finds that one skilled in the art 

would understand the highlighted text of RDX-63: 10 to teach that a gain control signal is output from 

element 100 and is sent to receive variable gain amplifier 94 and transmit variable gain amplifier 102. 

(Kenney, Tr. at 3144 - 45.) 

RX-3 1 1 discloses the use of open loop power control in a radio communications system. (RFF 

VI.280 (undisputed).) RX-311, referring to FIG. 5, also discloses that AGC detector circuit 98, 

conversjon subsystem 96 and integrator 100 estimate the received mobile unit signal power to 

determine the open loop power correction necessary for the mobile unit transmitter. (RFF VI.28 1 

(undisputed).) One skilled in the art at the time of the purported invention of the asserted patents 

would recognize that AGC detector circuit 98, integrator 100 and amplifier 94 of FIG. 5 form an 

automatic gain control loop. (RFF VI.282 (undisputed).) The administrative law judge further finds 

28 - See Appendix C. 

116 
that one of ordinary skill in the art at the time of the invention of the asserted patents would recognize 

that the highlighted elements of RDX-63:529 constitute a receive AGC loop. (Kenney, Tr. at 

3142-3150.) He also finds that a person of ordinary skill in the art at the time of the purported 

invention of the asserted patents would have understood an automatic gain control loop to be: 

a control loop that adjusts gain in a signal path such that it is forced to 

meet a reference point that’s provided to it and, thus, reducing the error 

that the integrator processes, the differential integrator processes to 

zero. So it forces the gain in the received path to be a value such that 

the detected power value is equal to the reference value. 

(Kenney, Tr. at 3149.) The administrative law judge further finds that a person of ordinary skill in the 

art at the time of the purported invention of the asserted patents would have understood that the signal 

leaving element 96 and entering element 100 of said FIG. 5 is a reference voltage that represents the 

desired power in the received signal path. (Kenney, Tr. at 3 150.) 

It is also undisputed that RX-311 discloses using an automatic gain control circuit in the 

radiotelephone’s receiver to generate an open loop power control signal used to control variable gain 

amplifier 102 (RFF VI.287 (undisputed)); that RX-3 1 1 discloses that its open loop power control 

circuit allows the transmitter power to track the received signal power (RFF VI.288 (undisputed)); that 

the open loop power control disclosed in RX-311 adjusts the mobile unit transmitter power in an 

inverse relationship to the mobile unit’s received signal, so that the stronger the received signal, the 

lower the mobile transmitter power and the weaker the received signal, the higher the mobile 

transmitter power (RFF VI.289 (undisputed)); that RX-3 1 1 discloses that details regarding a specific 

implementation of the feedback loop comprised of amplifier 94, AGC detector circuit 98 and 

comparator 100 of RX-311 FIG. 5 are disclosed in RX-307 (‘225 patent) (RF’F VI.291 (undisputed)); 

29 Appendix D. 

117 
that RX-3 1 1 discloses that details regarding a specific implementation of an automatic gain control 

circuit are disclosed in RX-307 (RFF VI.282 (undisputed)); that RX-311 discloses the use of closed 

loop power control (RFF VI.295 (undisputed)); that RX-311 disclosed that the closed loop power 

control signal, derived from the closed loop power adjustment command signal transmitted by the 

cell-site, is used to control amplifier 104 (RFF VI.298 (undisputed)); that RX-311 discloses that the 

open loop power control and closed loop power control for the radiotelephone are combined to control 

the radiotelephone’s transmission power (RFF VI.302 (undisputed)); and that RX-311 disclosed that, 

although illustrated as two separate units for controlling the transmit power, the power level could be 

adjusted by a single variable gain amplifier with two input control signals combined before being 

applied to the variable gain amplifier. (RFF VI.302 (undisputed).) 

The ‘204 patent (RX-306), which is incorporated by reference in the combined Wheatley, 

bears the title LINEAR GAIN CONTROL AMPLIFIER and has as its named inventor Charles E. 

Wheatley, III (RX-306). The Assignee of RX-306 is QUALCOMM. (RX-306). The Patent 

Application for RX-306, filed on October 15, 1990, is 598,845. (RX-306). The subject of RX-306 

was described in a printed publication more than one year prior to the application date for the ‘473 

patent, 408 patent and ‘220 patent. (RX-306). (RFF W.332-334 (undisputed).) 

It is undisputed that RX-306 acknowledged that “[tlhe use of automatic gain control (AGC) 

circuits to control amplifier gain in communications terminals has been accomplished by many various 

designs” (RX-306 at 1: 13-15; (RFF VI.346 (undisputed)); that RX-306 acknowledged that because 

typically the range in gain for such amplifiers is somewhat limited, they are not directly useful in 

applications where a very large dynamic range of signals are to be accommodated (RFF VI.347 

(undisputed)); that RX-306 taught that: 

118 
“[iln many systems, again such as in CDMA cellular telephone 

transceivers, it is essential that in response to a received signal, the 

AGC loop should provide a signal indicative of measured signal 

strength which is linear, in terms of output indication as a function of 

dB of input. Conventional AGC circuits normally exhibit such a 

characteristic over only a portion of the full control range, due to 

non-linearities in the gain control function of the amplifier.” 

(RFF VII.349 (undisputed)); that RX-306 taught that: 

“[ilt is therefor an object of the present invention to provide a novel 

and improved amplification circuit which, in response to a gain control 

signal, is capable of substantially linear gain control operation over a 

relatively large range.” 

(RX-306 at 159-63; RFF VI.350 (undisputed)); that the face of RX-306 depicts compensation circuit 

10 compensating amplifiers that amplify RF signals (RX-306; RFF VI.351 (undisputed)); that the face 

of RX-306 depicts a compensation circuit 10 used in connection with an RF input signal. (RFF VI.334 

(undisputed)); that FIG. 1 of RX-306 is a block diagram of an exemplary embodiment of the linearized 

automatic gain control amplifier of the present invention (RX-306 at 3: 1-3; RFF VI.353 (undisputed)); 

that FIG. 1 of RX-306 also depicts compensation circuit 10 compensating amplifiers that are 

amplifying RF signals (RFF VI.355 (undisputed)); that FIG. 1 of RX-306 also depicts compensation 

circuit 10 used in connection with an RF circuit (RFF VI.356 (undisputed)); that the compensation 

circuit 10 of RX-306 provided “compensation in the control signal for inherent non-linearities in the 

amplification circuitry used to amplify the input RF signal,” shown in FIG. 1 as FW IN entering 

amplifier 12 (RFF VI.358 (undisputed)); that the compensation circuit 10 of RX-306 was designed for 

application in AGC circuits (RFF VI.359 (undisputed)); that the compensation circuit 10 of RX-306 

compensates gain control signals (RFF VI.360 (undisputed)); that the compensation circuit 10 of 

RX-306 compensates gain control signals generated in AGC loops (RFF VI.361 (undisputed)); that the 

119 
compensation circuit 10 of RX-306 compensates gain control signals generated in AGC loops to 

compensate for inherent non-linearities in the amplification circuitry used to amplify input RF signals 

(RFF VI.362 (undisputed)); that the result of the compensation circuit of RX-306 is a “region of 

operation of about 85&, [where] which gain in dl3 is a linear function of the input voltage applied to 

the gain control input of the amplifiers” (RFF VI.364 (undisputed)); that FIG. 3 of RX-306 is a graph 

illustrating the inherent gain characteristic of the uncompensated amplifier circuit used in the 

embodiment of FIG. 2 (RFF VI.364 (undisputed)); that FIG. 3 illustrates in graphical form the gain 

characteristics of the amplifier circuit without compensation of the AGC signal (RFF VI.365 

(undisputed)); that FIG. 4 of RX-306 is a graph illustrating the linearized gain characteristic of the 

compensated amplifier circuit used in the embodiment of FIG. 2 (RFF VI.366 (undisputed)); that FIG. 

4 illustrates in graphical form the gain characteristics of the amplifier circuit with compensation of the 

AGC signal (RFF VI.367 (undisputed)); that RX-306 discloses that it can “readily be seen that by 

providing a compensated AGC signal in the amplifier circuit of the present invention that an extended 

range of gain control in dB, which is linear function of the input AGC signal, is possible” (RFF VI.368 

(undisputed)); and that the compensation circuit 10 of RX-306 modifies gain control signals according 

to predetermined compensation characteristics. (RFFF VII.369 (undisputed).) 

The ‘225 patent (RX-307) bears the title HIGH DYNAMIC RANGE CLOSED LOOP 

AUTOMATIC GAIN CONTROL CIRCUIT and has as its named inventors Charles E. Wheatley, III 

and Derek N. Punch. (RX-307.) The Assignee of RX-307 is QUALCOMM. (RX-307.) The patent 

application for RX-307 was filed on November 30, 1990. (RX-307.) RX-307 constitutes prior art to 

each of the ‘473 patent, the ‘408 patent and the ‘220 patent under 35 U.S.C. 99102 (a) and (b). (RFF 

VI. 3 94-96 (undisputed) . ) 

120 
It is undisputed that RX-307 discloses that it was known in the art that automatic gain control 

circuits are implemented in both analog and digital receivers using different techniques 

(undisputed)); that RX-307 discloses that in analog receivers, analog automatic gain control techniques 

are commonly used while in digital receivers, digital automatic gain control techniques are applied 

(RX-307 at 1:13-19; RFF VI.399 (undisputed)); that FIG. 1 of RX-307 is a block diagram illustrating 

in an exemplary application the elements of an automatic gain control circuit (RFF VI.405 

(undisputed)); that RX-307 discloses that radiotelephone includes the capability of measuring the 

strength of the signal received by the radiotelephone (RFF VI.406 (undisputed)); that RX-307 

discloses that the radiotelephone uses the received signal strength measurement to generate a received 

signal strength indicator (RSSI) (RFF VI.407 (undisputed)); that RX-307 discloses that the RSSI and 

an RSSI reference signal are provided to an integrator 22 (RFF VI.408 (undisputed)); that RX-307 

discloses that the RSSI reference signal corresponds to a desired signal strength level for the output of 

receive amplifier 18 VI.409 (undisputed)); that RX-307 discloses that an integrator integrates the 

RSSI signal (indicative of the measured receive power level) and the RSST reference signal (indicative 

of the desired power level) to eliminate any error between the two signals (RFF VI.410 (undisputed)); 

that RX-307 discloses that said integrator generates an AGC signal that is used to control the gain of a 

receive amplifier (RFF VI.411 (undisputed)); that RX-307 discloses that the RSSI measurements of 

RX-307 could be made at various points in the processing of the received signal (RFF VI.412 

(undisputed)); that RX-307 discloses that the RSSI measurement described in RX-307 could be made 

at an RF or IF frequency (RFF VI.413 (undisputed)); that RX-307 discloses that the transmitter gain 

tracks the receiver gain (RX-307 at 4:28-36,4:58-68; RFF VI.416 (undisputed)); that RX-307 

discloses that the receive AGC signal controls the gain of IF amplifier 24 (RFF VI.417 (undisputed)); 

VI.398 

121 
and that RX-307 discloses an open loop power control system. (RRF VI.419 (undisputed).) 

RDX-63:3330 is a slide created by Kenney in whch he replaced, as the combined Wheatley 

discloses, amplifier from FIG. 5 of the combined Wheatley with the analog compensation circuit that is 

depicted in FIG. 1 of the ‘204 patent (RX-306) which is incorporated by reference in the combined 

Wheatley and which the administrative law judge finds how a person of ordinary skill in the art would 

have understood how to combine the ‘204 patent into FIG. 5 of the combined Wheatley. (Kenney, Tr. 

at 3191,3247,3254.) The administrative law judge finds that said compensation circuit from the ‘204 

patent (RX-306) and described in a preferred embodiment as an analog circuit would lineraize the gain 

control signal that is fed from the integrator into the receive and transmit amplifiers. (Kenney, Tr. at 

3247-48.) In other words, RDX-63:33 shows that the linerazied variable gain amplifier of the ‘204 

patent (RX-306) has replaced, on both the receive side and transmit side, the ordinary variable gain 

amplifies of the FIG. 5 of the combined Wheatley (RX-3 1 l), thus linearizing both the receive AGC 

loop and making more accurate the measurement of the receive power for use with an open loop 

power control circuit. (Kenney, Tr. at 3191-92.)31 With this change, the gain control signal coming 

from integrator 100 in RDX-63:33 goes through a compensation circuit 10 which compensates for the 

predetermined nonlinerities in that gain control signal and then that compensated signal is applied to 

the transmit VGA which the admmistrative law judge finds how a person of ordinary skill would 

understand how the ‘204 patent (RX-306) would be incorporated into the combined Wheatley (RX3 11). (Kenney, Tr. at 3 194.) 

30 Appendix E. 

31 The blue boxes in RDX-63:33 which replace the VGAs, that are in FIG. 5 of the 

combined Wheatley, come from FIG. 1 of Wheatley II. (Kenney, Tr. at 3192.) 

122 
The administrative law judge finds that one skilled in the art at the time of the invention of the 

‘473 patent would understand from the teachings of the combined Wheatley (RX-3 1 1) that the block 

diagram shown in RDX-63:33 (Appendix E) represents the result of replacing the receive and transmit 

variable gain amplifiers of FIG. 5 of RX-311 with the compensation circuit disclosed in the ‘204 patent 

(RX-306) (Kenney, Tr. at 3190-92; Kenney, Tr. at 3247-48; RDX-63:33; RDX-3:5.) He also finds 

that one skilled in the art at the time of the invention of the ‘473 patent would understand from the 

teachings of RX-311 that RDX-63:33 could be achieved by replacing the receive and transmit variable 

gain amplifiers of FIG. 5 of RX-3 11 with the compensation circuit disclosed in RX-306. (Kenney, Tr. 

at 3190-92; Kenney, Tr. at 3247-48; RDX-63:33; RDX3:5;.W VI.313 (undisputed).) 

As to why a person of ordinary skill in the art would want to so incorporate the ‘204 patent 

which is part of the combined Wheatley into FIG. 5 of the combined Wheatley: 

THE WITNESS: Sure, Your Honor. From a technical point of 

view, one would want to achieve very accurate measurement of 

received signal power and use that to control transmit signal power 

over a very wide dynamic range in order to implement open loop 

power control for a CDMA system. 

And the invention of Wheatley It [the ‘204 patent (RX-306)] 

allows that greater linearity and, hence, greater dynamic range of 

control for this to take place in the invention originally described [as 

shown in FIG. 51 in the PCT application. 

(Kenney, Tr. at 3195-96.) 

Referring to McGirr (JX-333), the named inventors of McGirr are Andrew E. McGirr and 

Barry J. Cassidy. (JX-333). The assignee of JX-333 is NovAtel Communications Ltd. (JX-333.) The 

patent application Number for JX-333 is 587,004, which application was filed on September 24, 1990. 

(JX-333.) McGirr bears the title RADIO TELEPHONE USING RECEIVED SIGNAL STRENGTH 

123 
IN CONTROLLING TRANSMISSION POWER and issued on July 7, 1992. (JX-333.) JX-333 

constitutes prior art to each of the ‘473 patent, ‘408 patent and ‘220 patent under 35 U.S.C. $5102 (a) 

and (b). (RFF VI.443-45 (undisputed).) 

It is undisputed that McGirr (JX-333) discloses a radiotelephone containing circuitry for 

dynamically controlling the amplification of communication signals to be transmitted in response to a 

measure of prevailing signal propagation conditions (RFF VI.446 (undisputed)); that JX-333 discloses 

the use of conventional AGC circuits (RFF VI.451 (undisputed)); that JX-333 discloses a radio 

telephone that receives a radio frequency RF signal through its antenna (RFF VI.454 (undisputed)); 

that JX-333 further discloses a radiotelephone with a receiver that has a conventional front-end 

converter and mixer for converting the RF signal from the duplex into an IF signal (RFF V1.455 

(undisputed)); that JX-333 also discloses that said receiver has an FM receiverRSS1 detector that 

produces an RSSI (a signal indicating the strength of the received communication signal) signal having 

a voltage amplitude that varies in response to the strength of the IF signal, and, thus, of the in-coming 

RF signal (RFF VI.456 (undisputed)); and that FIG. 1 of JX-33332 is a block diagram of a radio 

telephone in accordance with a preferred embodiment of the invention. (RFF VI.453 (undisputed).) 

McGirr discloses that the RSSI signal output from FM receiverRSS1 detector is converted into 

a digital signal using analog-to-digital-converter 82 of FIG. 1. (Appendix F) (RFF VI.461 

(undisputed).) JX-333 also discloses that the output of analog-to-digital-converter 82 is input into 

central processing unit (CPU) 30 of FIG. 1 (RFF VI.462 (undisputed)); that to eliminate any false or 

short term fluctuations in the RSSI measurement, the CPU samples the digital RSSI values and 

calculates an average, called RSSI AVERAGE (RFF VI.463 (undisputed)); that sampling and 

32 Appendix F. 

124 
averaging of the digital RSSI values are corrected for momentary fluctuations in the RSSI (RFF VI.464 

(undisputed)); and that as a result of the errors arising from non-linearities in the frequency 

characteristics of the duplexer 40 of FIG. 1 and other components of the radiotelephone 10, the 

measured RSSIs can vary from one channel to the next despite identical strengths of the received 

signals on the various channels. (RFF VI.466 (undisputed).) 

FIG. 5 of JX-333 is an algorithm in flow chart form suitable for execution by the CPU 30 of 

FIG. 333 (a block diagram of the CPU of FIG. 1, (RFF VIA7O(undisputed)) in deriving RSSI-based 

digital control signals. (RFF VI.467 (undisputed).) It is undisputed that central processing unit (CPU) 

30 stores various data concerning the RSSI, and computes a digitized power control signal using the 

digitized RSSI from ND converter of FIG. 1 (RFF VI.468 (undisputed)); that the calibration of the 

measured RSSI is required because the RSSI value provided to the CPU 30 can have a transient 

component due to non-linearities in the frequency characteristics of the duplexer 40 of FIG. 1 and other 

components of the radio telephone 10 (RFF VI.475 (undisputed)); that the measured RSSIs can vary 

from one channel to the next, despite identical strengths of the received signals on the various channels 

(RFF VI 476 (undisputed)); that JX-333 discloses that calibration of the measured RSSI is required 

because the measured RSSI will depend on the normally-otherwise-acceptable manufacturing 

tolerances of those components that cause their characteristics to vary from unit to unit (RFF VI.477 

(undisputed)); that JX-333 (McGirr) discloses that calibration of the measured RSSI is required 

because the measured RSSI will depend on the selection of the output level of the IF and limiter 

amplifiers 54,58 which are shown in FIG. 2, since that level dictates the level of currents drawn by 

amplifiers 54,58 of FIG. 2, which currents are detected in deriving the RSSI (RFF VI.479 

33 - See Appendix G. 

125 
(undisputed)); that JX-333 discloses that the calibration value stored in RSSI Calibration Look-up 

Table 88a of FIG. 3 (Appendix G) is selected by using the average RSSI value as one pointer into the 

calibration lookup table, and the frequency of the received signal is used as the other pointer into 

calibration lookup table 88a (RFF VlI.483 (undisputed)); that the absolute RSSI value output from 

calibration table 88a is input into lookup table 88b of FIG 3 (RFF VI.484 (undisputed)); that FIG. 6 of 

JX-333, is a graph of the relationship between the power amplifier output power (dl3 relative to 

nominal) and RSSI (dBm) for an illustrative application of the invention (RFF VI.487 (undisputed)); 

that JX-333 discloses that the output power levels disclosed in FIG. 6 of JX-333 are exemplary and 

that the rates of increase in output power can be any desired amount @IT VI.489 (undisputed)); that 

the target transmit power level output from lookup table 88b of FIG. 3 (Appendix G) is input into 

lookup table 88c of FIG. 3 (RFF VI.491 (undisputed)); that lookup table 88c of said FIG. 3 contains 

stored values that represent the precise control signal needed to produce a specified output power in 

power amplifier 36 (RFF VI.492 (undisputed)); that the values stored in said lookup table 88c account 

for non-linearities by frequency and signal strength in the radiotelephone’s transmit chain (RFF VI.493 

(undisputed)); that the values stored in said lookup table 88c are empirically derived to account for, 

and substantially eliminate, unit-to-unit variations in the responses of power amplifiers to control 

signals (RFF VI.494 (undisputed)); and that Kenney’ s illustration reflected in RDX-7034 depicts 

calibration lookup tables 88a, 88b and 88c of JX-333, with lookup table 88a indexed by RSSI and 

frequencies, and lookup table 88c indexed by transmit power and frequency. (RDX-70; RFF VI.496 

(undisputed).) As to the creation of RDX-70, the administrative law judge finds the following 

testimony of Kenney relevant: 

34 Appendix H. 

126 
Q. 

same pull-out of JX-333, McGirr, specifically figure 3 and 

lines 10 through 26 with the next sentence highlighted. 

Okay. Let's go to the next slide, RDX-63:40, which is the exact 

column 7, 

I will read it into the record. "Third, the measured RSSI will depend on 

the selection of the output level of the IF and limiter amplifiers 54,58 

(figure 2) since that level dictates the level of currents drawn by 

amplifiers 54,58 (figure 2), which currents are detected in deriving 

the RSSI." 

Do you see that? 

A. Yes. 

Q. 

time, what is that sentence teaching? 

From the standpoint of the person of ordinary skill in the art at the 

A. 

that there might be variations in the, deviations from the ideal linear 

response of an RSSI detector, and those would also need to be 

corrected in element 88A. 

I believe one would have understood that that sentence is teaching 

Q. 

.is to draw for us what the look-up table here that's been 

looks like in terms of the matrix with the inputs.[351 

Dr. Kenney, what I would like to ask you to do now, if you would, 

described 

*** 

THE WITNESS: We're discussing the look-up table 88A. 

*** 

THE WlTNEiSS: 88A describes a digital look-up table. And one of 

ordinary skill in the art could think of that look-up table as being a 

matrix of sorts, and so it has rows and columns that are indexed by 

certain values. 

JUDGE LUCKERN: The good doctor is making some marks on 

RDX-70. And also 88a, as I understand it, is from the McGirr patent, 

35 Complainant moved to strike the subsequent testimony. (Tr. at 321 1.) Said motion 

was denied, and complainant was given the opportunity to cross examine Kenney on said 

testimony. (Tr. at 3217.) 

127 
correct? 

THEWITNESS: correct. 

JUDGE LUCKERN: Go ahead. 

THE WITNESS: And one thing that indexes these values is a set of 

RSSI values received from the RSSI detector. So down the 

the matrix I have labeled four values, for example, RSSI 1 through 4. 

rows of 

Now, along the columns of the matrix the received frequency channel 

is noted, and I will denote also for frequency channels that are also 

used to index the table and, I’m sorry, and extract a particular value 

based on an RSSI signal and a frequency index. 

And let’s suppose, for example, that an RSSI value corresponding to 

RSSI 2 is sent to the look-up table, and that the processor has 

knowledge of the received signal because it has to tune the receiver to 

get the channel from a particular frequency. And that might be 

frequency 3. 

So to highlight frequency 3 -- 

JUDGE LUCKERN: You are doing that with green now, that’s fine. 

You are doing a great job, as all witnesses do. That’s fine. 

THE WITNESS: Thank you, Your Honor. Frequency 3 is used as the 

index, as is RSSI 2. And effectively then I have a corrected RSSI value, 

and I will label it generically CRSSI. 

JUDGE LUCKERN: That’s all done in green. Thank you, Doctor. 

THE WITNESS: Yes. And that’s the action of element 88a of the 

McGirr patent. 

JUDGE LUCKERN: All right. 

BY MR. VERHOEVEN: 

Q. While you are down here drawing, could you show how the table 

88a, using the same sort of illustration, interacts with -- I think there is 

two other tables here in figure 3, control value look-up table 88C and 

RSSI PA relationship look-up table 88B? Could you show the 

128 
relationship of those two, what those tables look like and the 

relationship -- 

A. Sure. 

Q. -- of those tables? 

A. 

of the page here. 88b is another digital look-up table stored in 

nonvolatile RAM. And 88b can be thought of as a one-dimensional 

may. 

So those are two additional tables, and I will try to make good use 

And just for the sake of illustration, I will draw a matrix that 

has only one column and four rows. And each of these four rows 

would have corresponding with it some corrected RSSI value, which I 

will label CRSSI 1 through 4, and that would be the sole index of 88b. 

So what is happening is the value selected by table 88a is then 

used to index a particular corrected RSSI value in 88b. And that gives 

another value here (indicating). 

Now, 88b is what determines the relationship between the 

corrected RSSI, meaning the true received signal strength 

by the radio and the desired transmitted signal. And so I will just label 

that as FTX. In this case, I will put an index 2 there, indicating it is 

some desired transmit signal that corresponds to this corrected RSSI. 

received 

JUDGE LUCKERN: Thank you. 

BY MR. VERHOEVEN: 

Q. And then show how that relates to the third table, 88c? 

*** 

A. If I may continue. As I was describing, the desired transmit power 

level FTX 2 is what the receiver intends to transmit. However, there is 

a third correction required and that’s illustrated by table 88c. Again, I 

will be consistent and draw four columns and four rows here. 

Each of the rows is indexed by some desired transmit power value. 

And I will label these PTX 1 through 3 -- I’m sorry, 1 through 4. And 

across the top, there will be a frequency index corresponding to the 

129 
frequency channel that the transmitter is intending to 

that given instant. 

transmit on at 

And to distinguish them between the receiver channels, I will label 

them FA, FB, FC, and FD. They are different from the receiver 

channel frequencies. 

So the value that is desired to transmit PTX 2, comes around -- I’m 

sorry, I have to draw a long arrow here, it comes around and indexes 

the table. The processor then decides what frequency it is desired to 

transmit on. And for purposes of illustration, I will just pick frequency 

B. 

And frequency B has in it a value that is the corrected transmit power 

value, PTX to CPTX2, as I have labeled it. And it is this power value 

which eventually goes back to the transmitter and tells it accurately 

what value to transmit on channel B. 

JUDGE LUCKERN: Now, the earlier arrow you drew, you drew this 

arrow from PTX2 in 88b down to -- do you want to label that? 

Whatever you want to do. Is that 88c or something? 

THE WITNESS: Yes, thank you, Your Honor. 

JUDGE LUCKERN: And down to PTX2 in 88c. That was earlier on. 

Then you put a little green on 88c where you have the C FTX and 

then an arrow going out. I want to make sure the record is clear. 

Correct? 

THE WITNESS: I believe that’s correct. 

JUDGE LUCKERN: All right. You correct me, please. You are 

doing the talking. Go ahead. 

THE WITNESS: And the last step, which I believe we will cover in 

some detail in some slides I prepared, is to send the value to the 

transmitter, in particular, the transmit AGC circuit. So this value 

eventually goes to Tx AGC. 

JUDGE LUCKERN: That’s what you just put on -- what does AGC 

stand for? 

THE WITNESS: Automatic gain control. 

130 
BY MR. VERHOEVEN: 

Q. 

those are from the received signal? 

A. Yes. 

Just a couple of follow-ups on this. Box 88a, the RSSI columns, 

Q. 

signal in 88a? 

Okay. And this is calibrating based on frequency of the received 

A. 

variations in the RSSI. 

Yes. It is calibrating both for the receive index and unit to unit 

Q. And that gets a corrected RSSI that goes to 88b? 

A. Correct. 

Q. And the FTX2 represents what? 

A. 

indication of RSSI, what might be illustrated from figure 6 in 

McGirr. 

That represents the desired transmit power based on the true 

Q. So that’s the desired transmit value? 

A. Yes. 

Q. 

through the transmit chain, right? 

And that value itself hasn’t been calibrated yet for the transmit, 

A. 

as well. 

No. It is not. There is frequency variations in the transmit chain 

Q. So then that goes into a calibration table for the transmit chain, 

right? 

A. 88c,correct. 

Q. 

is taking the desired transmit power and calibrating it based on the 

frequency channel; is that right? 

Okay. And so the 88c table, if I understand what you are saying, 

A. Correct. 

131 
Q. 

diagram? 

And then it comes out of there and goes back out into the 

A. That is correct. 

(Tr. at 3205-22.) 

The administrative law judge also finds that one of ordinary skill in the art would understand 

that the three digital lookup tables in McGirr (88a, 88b, and 88~~~ of FIG. 3) (Appendix G) could be 

36 Complainant argued that Nokia's repeated assertions that table 88c of McGirr (JX-333) 

corrects for frequency is demonstrably false. (CRBr at 6.) There is reference in McGirr (RX333) however, to the use of frequency as an input to the various LUTs it describes: 

The RSSI calibration factor is preferably stored in a calibration 

look-up table ("LUTI') 88a in the NVM 88 of the CPU 30. The 

LUT 88a is a database in which calibration factors are stored in 

locations corresponding to measured RSSI values, and the channels 

or freauencies to which the receiver 28 (FIG. 1) can be tuned. 

Thus, the calibration factor is the entry corresponding to the 

particular measured RSSI value, and to the particular channel over 

which the communication signal that produced that value was 

received. 

Calibration of the measured RSSI is required for various reasons. 

First, the RSSI value provided to the CPU 30 can have a transient 

component due to non-linearities in the frequency characteristics of 

the duplexer 40 (FIG. 1) and other components of the radio 

telephone 10. Thus, the measured RSSI's can varv from one 

channel to the next, desuite identical strengths - of the received 

signals on the various channels. Second, the measured RSSI will 

depend on the normally-otherwise-acceptable manufacturing 

tolerances of these components that cause their characteristics to 

vary from unit to unit. Third, the measured RSSI will depend on 

the selection of the output level of the IF and limiter amplifiers 54, 

58 (FIG. 2), since that level dictates the level of currents drawn by 

amplifiers 54, 58 (FIG. 2), which currents are detected in deriving 

the RSSI. For all these reasons, RSSI calibration is appropriate. 

(RX-333 at 7:2-26 (emphasis added).) Thus, not only is the LUT 88a described in RX-333 as 

being referenced by a frequency, RX-333 also discloses that RSSI can vary per channel. 

Therefore, because each entry in 88c is described as "the precise control signal needed to produce 

132 
combined in a single lookup table or partition differently into two lookup tables in light of the 

following disclosure in McGirr: 

It will be apparent, however, that variations and modifications may be 

made to the invention, with the attainment of some or all of the 

advantages of the invention. For example, for many applications, the 

look-up tables can be consolidated into a single table, which, when 

referenced by the average RSSI, will yield the digital power control 

signal for use by the AGC circuit 100. Therefore, it is the object of the 

appended claims to cover all such variations and modifications as come 

within the true spirit and scope of the invention. 

(JX-333 at 9:23-33 (emphasis added); Kenney, Tr. at 3258.) 

It is also undisputed that the power control voltage derived from the calibrated value output 

from FIG. 3 (Appendix G) lookup table 88c of JX-333 leaves the triangle labeled D/A 102 of FIG. 1 

(Appendix F) of JX-333 as one input to power control circuit 104 of FIG. 1 (RFF vI.499 

(undisputed)); that FIG. 4 of JX-333, is a block diagram of the power control circuit 104 of FIG. 1 

(JX-333 at 3:34-35, RFF VIS01 (undisputed)); that JX-333.discloses that the power amplifier 

feedback signal and the power control voltage input to differential amplifier 108 of FIG. 4 are 

integrated to produce an AGC signal (RFF VIS05 (undisputed)); that JX-333 discloses that the AGC 

signal output of said differential amplifier 108 is provided as an input to amplifier 36 in order to 

control the gain of amplifier 36 of FIG. 1 and drive the output power level of said amplifier 36 toward 

the target level computed by CPU 30 (RFF VI.506 (undisputed)); that a preferred embodiment of 

JX-333 contains a transmit automatic gain control loop (RFF VIS07 (undisputed)); and that said 

a specified output power in the power amplifier ...” (RX-333 at 8:16-18), the administrative law 

judge finds that 88c would also have to take frequency into account to perform its disclosed 

function. Moreover, as found, supra, RX-333 also discloses that the individual LUTs it describes 

could be combined into one LUT, which would also take frequency into account. 

133 
amplifier 36, FW power detector 106 of FIG. 4 the differential integrator contained in power control 

circuit 104 of FIG. 4, the power amplifier feedback signal, the power control signal and the AGC 

signal of JX-333 comprise a transmit automatic gain control loop. (RFF VIS08 (undisputed).) 

The Vaisanen ‘091 patent (RX-309) bears the title METHOD AND APPARATUS FOR 

TUNING AND COMPENSATING POWER LEVELS IN A RADIO TELEPHONE and issued on 

July 20, 1993. (RX-309.) Its named inventor is Risto Vaisanen of Salo, Finland. (RX-309.) The 

assignee of RX-309 is Nokia Mobile Phones Ltd. (RX-309.) The patent application Number for 

RX-309 is 583,942 which application was filed on September 17, 1990. (RX-309.) Vaisamen 

constitutes prior art to each of the ‘473 patent, the ‘408 patent and the ‘220 patent under 35 U.S.C. 

$102 (a). (RFF VI.525-27 (undisputed).) 

FIG. 137 of Vaisanen (RX-309) is a simplified block diagram illustrating the tuning 

arrangement according to the invention. (RFF VI.528 (undisputed).) Vaisanen discloses a 

radiotelephone having a logic section and a computer that stores tuning and compensation information 

in memory. (RX-309 at Abstract, 19-14.) It is undisputed that the power of a radiotelephone’s 

transmitter may vary with the radiotelephone’s operating conditions (RFF VIS3 1 (undisputed)); that 

that the operating conditions of a radiotelephone are influenced by the selected channel frequency 

(RFF v1.532 (undisputed)); that individual compensation values for each radiotelephone are 

determined during testing of the radiotelephone for chosen operating conditions (RFF VI.533 

(undisputed)); that the compensation values that are determined during testing are stored in the 

radiotelephone’s memory and used during operation of the radiotelephone to control the 

radiotelephone’s transmit power level (RFF VI.535 (undisputed)); that radiotelephone gain 

37 - See Appendix I. 

134 
compensation or calibration could be performed using digital and analog techniques (RFF VIS37 

(undisputed)); that Vaisanen (RX-309) discloses that a number of problems and drawbacks persist with 

using analog technologies to compensate for power variations in radotelephones, including: 1) analog 

components are less reliable than electronic components; 2) analog technologies take up substantial 

area on a radiotelephone’s circuit board (the need for large space is a particular problem concerning 

handsets); 3) analog tuning requires a skilled person manually performing the tuning, which is a slow 

process and introduces the risk for human errors; and 4) compensation based on analog technologes 

are limited by the tolerances of the analog components, which prevents a fully individual 

compensation in series production (RX-309 at 1:38-55; RFF VI.538 (undisputed)); that the operating 

conditions of the radio telephone are defined to include the operating channel (or channel rangej, the 

temperature (or temperature range) measured with the sensor 14 of FIG. 1 (Appendix I) and the 

operating voltage (or the operating voltage range) measured with the D/A-converter (RFF VIS40 

(undisputed)); that during tuning, the system of Vaisanen sets temperature, voltage and frequency 

channel to known values, then measures the output from the radiotelephone transmitter (RFF VIS41 

(undisputed)); that the tuning process disclosed in RX-309 continued until the lookup table was filled 

with values indexed by voltage and frequency as well as by temperature @UT VI.543 (undisputed)); 

and that following the tuning called for in RX-309, the handset would use the completed lookup table 

in operation in accordance with the operating conditions, namely, temperature, frequency, and voltage, 

where the microprocessor 10 of FIG. 1 selects from its non-volatile memory a compensating constant 

or value tuned for the respective operating conditions, and the transmitter power level is set according 

to this value. (RFF VIS44 (undisputed).) 

Fujitsu (JX-256), a European Patent Application, bears the title TRANSMISSION POWER 

135 
CONTROL CIRCUIT and an application publication date of March 13, 1991 with European Patent 

Publication Number 0 416 613 A2. (JX-256.) The named inventor of JX-256 is Yoshifumi Toda. 

(JX-256.) The named applicant of JX-256 is Fujitsu Limited. JX-256 constitutes prior art to each of 

the ‘473 patent, the ‘408 patent and the ‘220 patent under 35 U.S.C. 99102 (a) and (b). (RFF VI.561- 

63 (undisputed).) JX-256 discloses a transmission power control circuit which controls the power 

amplifier of a radiotelephone. (RFF VIS64 (undisputed).) FIG. 4 of JX-256 is a block diagram 

showing a mobile terminal provided with a conventional transmission power control circuit which is a 

first embodiment of the invention recited in JX-256. (RFF VIS64 (undisputed).) 

It is undisputed that Fujitsu discloses: 

A transmission power control circuit comprises a control data table 

(56) in which dlgital data of monitor voltage depending on a 

transmission power level for a plurality of values of transmission 

frequency and a plurality of values of transmission power are stored, 

and a DIA converter (62) for converting selected values of the digital 

data to an analog signal as a reference voltage. The transmission power 

is controlled so that the monitor voltage becomes equal to the reference 

voltage. 

(JX-256 at abstract, RFF VIS66 (undisputed)); that it also discloses: 

a transmission power control circuit comprising control data table 

means [(56)] for storing digital values of monitor voltage [(MON)] 

which are output from a power amplifier [(28)] depending on a 

transmission power level of the power amplifier for a plurality of 

values of transmission frequency, control means for selecting one of the 

digital values stored in the control data table means in accordance with 

a specified value of the transmission frequency, and for outputting a 

selected digital value, D/A conversion means for converting the digital 

value to an analog signal as a reference voltage, and power control 

means for controlling an amplification factor of the power amplifier so 

that the monitor voltage which is output from the power amplifier 

becomes equal to the reference voltage. 

(JX-256 at 2:49-3: 1; RFF VIS67 (undisputed)); that Fujitsu (JX-256) contains a control part which 

136 
comprises a central processing unit, a random access memory, and a read only memory (RFF VIS68 

(undisputed)); that radiotelephone of JX-256 receives a signal from a base station along with 

instructions from the base stations to control the radiotelephone’s output power (RFF VIS69 

(undisputed)); and that JX-256 discloses an automatic power control (APC) circuit that outputs a 

control voltage that controls the amount of amplification of the radiotelephone’s PA (RFF VIS72 

(undisputed)); JX-256 further discloses that the APC controls the amount of amplification of the 

radiotelephone’s amplifier so that a monitor voltage (MON) corresponding to the transmission power 

of the power amplifier becomes equal to a reference voltage corresponding to a required transmission 

power. (JX-256 at 2: 18-21.) Thus, the APC generates a control signal that controls the transmission 

power to achieve a required value. @FF VIS73 (undisputed).) 

It is further undisputed that JX-256 discloses that “another problem to be solved arises in the 

mobile communication system where a carrier frequency of the transmission wave is frequently 

changed in accordance with an assigned frequency channel.” (RFF VIS75 (undisputed).) FIG. 538 of 

JX-256, is a schematic circuit diagram showing a more detailed implementation of the PA (28) and the 

APC (40) shown in FIG. 4. (RFF VI.580 (undisputed).) 

The output of differential amplifier 46 of FIG. 5 is used to produce a signal that adjusts the 

gain applied to the transmit chain to control the output power of the radiotelephone. (JX-256 at 

3:50-4:9,3:47-48.) It is further undisputed that JX-256 teaches re-lookup and re-calibration whenever 

the handset changes the power or frequency of its transmission: 

“When the control part 10 receives an instruction to alter the 

transmission power or the carrier frequency, the CPU 12 reads out an 

applicable digital value from the control data table 56 in accordance 

38 Appendix J. 

137 
with the values of carrier frequency and the transmission power, and 

output to the APC 40’ in the form of serial data as shown in FIG. 6.” 

(RFF VIS83 (undisputed).) 

Motorola (RX-3 13) is European Patent Application Number 901 14596 which bears the title 

AMPLIFIER FOR RADIO TRANSMITTER HAVING CONTROLLABLE OUTPUT POWER, has 

an application publication date of February 13, 1991 and has the named inventors Peter William Dale 

Bishop and Neil Grant. (RX-313.) The named applicant of RX-313 is Motorola Ltd. (RX-313.) 

RX-313 constitutes prior art to each of the ‘473, ‘408 and ‘220 patents under 35 U.S.C. §$lo2 (a) and 

(b). (RFF VI.600-02 (undisputed).) 

It is undisputed that Motorola (RX-313) acknowledges as prior art a power amplifier for a 

radio frequency signal utilizing a microprocessor to address a read-only memory (ROM) to look-up a 

power control value for setting the output power of an RF power amplifier (RFF VI.604 

(undisputed)); and that it teaches a control loop for adjusting the output power, the control loop 

comprjsing measuring means for measuring the output power and comparison means for comparing 

the power measured with the power set and adjusting the output power in response thereto, as 

implemented in FIG. 2.39 (RFF VI.605 (undisputed).) 

It is also undisputed that Motorola further discloses a transmission power control circuit which 

controls the power amplifier of a rad0 transmitter (RFF VI.606 (undisputed)); that it also details a 

transmit section of a transmitter incorporating an FW power control implementation that is based on 

attenuating the output power of the power amplifier with a control value generated with respect to a 

reference voltage and corrected by values from a correction look-up table and a calibration look-up 

39 - See Appendix K. 

138 
table (RFF VI.607 (undisputed)); that it also discloses that the power control circuit uses digital 

look-up tables and stored calibration values to correct for the radio transmitter’s transmit power based 

on frequency (RFF VI.608 (undisputed)); that the correction look-up table disclosed in Motorola stores 

power correction values with respect to frequency and control voltage values and corrects for 

temperature, drift and frequency variations that occur in the transmit section of the transceiver during 

operation of the radio transmitter (RFF VI.609 (undisputed)); that the calibration look-up table 

disclosed in Motorola stores power correction values with respect to power detection and control 

voltage values and corrects for power characteristics of components in the transmit section of a radio 

transmitter (RFF VI.610 (undisputed)); and that FIG. 140 of RX-313 illustrates two methods of power 

control in accordance with the invention of RX-313. (RFF VI.611 (undisputed).) 

In Motorola, the output power is attenuated using attenuator 13 of FIG. 1 (Appendix L) to a 

lower power level and detected using transmit power detector 14 of FIG. 1 and stored in memory 15 of 

FIG. 1 on the radio transmitter as a maximum transmission level that is lower than the 

radiotelephone’s ‘‘high” level. (RFF W.613 (undisputed).) The stored maximum transmission value is 

recalled and the radiotelephone’s control functionality 16 ramps up the control voltage to the power 

amplifier from zero volts until the output power level measured by the transmit power detector is equal 

to the maximum value stored on the transmitter. (RX-313 at 3:42-4:12; FIG. lA, step ID.) The amount 

of voltage required to achieve the maximum output power is stored in setting means 12. (RX-313 at 

5:7-14; RFF VI.614 (undisputed).) 

FIG. 2 (Appendix K) of RX-313, shows a block diagram representing a more detailed 

implementation for implementing the method of FIG. 1A. (RFF VI.615 (undisputed).) In FIG. 2, of 

Appendix L. 

139 
Motorola (Rx-313) the attenuator means 13 is shown to comprise a 20dB laser trimmed resistor pad 

21 and a 2dB pad 22, each having a bypass switch, 23 and 24 respectively, that enables the pads to be 

connected in series to provide their combined attenuation. (RX-313 at 4:33-49.) The storage means 15 

is comprised of an analog-to-digital converter that provides digital power values to the memory of a 

microprocessor, represented as element 15. (RX-313 at 4:33-49.) The control means 16 is shown as 

comprising a comparator 25, a divider 26, frequency correction means 27 and a subtracter 28. An 

analog representation of the output of subtracter 28 controls the power amplifier 10. (RFF VI.615 

(undisputed).) Motorola further teaches a system that is both pre-calibrated and self-correcting, the 

latter through transmit power feedback 

During operation, a required power level is selected by calling up the 

appropriate calibrated power value from setting means 12. With each 

time slot of transmission output, the output power detected by detector 

14 and sampled by the A/D converter in sample and storage means 15. 

. . . The resultant value is stored in correction table 27, for use when the 

same power level and frequency combination is next selected. 

Correction table 27 has space for 12 x 21 values - i.e. twenty-one 

power levels at twelve different frequencies. 

(RX-313 at 7:6-23; RFF VI.607 (undisputed).) It is undisputed that RX-313 includes a frequency 

correction value to allow compensation for the fact that a given control voltage will not necessarily 

give rise to the same output power over the whole frequency range of the amplifier (RFF VI.618 

(undisputed)); and that Motorola discloses further details regarding the operation of its power control 

system, stating that “the maximum output power value is set manually by adjusting the control voltage 

to the power amplifier 10, until the output power is measured to be the desired maximum level (e.g. 80 1 

watts) using highly accurate calibration equipment.” (RFF VI.619 (undisputed).) 

Respondents’ expert Kenney has testified: 

140 
Q. 

use of digital look-up tables to perform calibration, correct? 

Now, we have looked at several references now that disclose the 

A. Yes, four different references. 

JUDGE LUCKEFW: What are they, for the record? Just name the 

names. McGirr is one? 

THE WITNESS: Yes. 

JUDGE LUCKERN: Vaisanen is another? 

THE WITNESS: Vaisanen, Motorola, and Fujitsu. 

(Kenney, Tr. at 3248.) Thus, based on the analysis, supra, and the cited testimony, the administrative 

law judge finds that each of McGirr, Vaisanen, Motorola and Fujitsu discloses the use of digital lookup tables to perform calibration. (Kenney, Tr. at 3248.) 

The administrative law judge further finds that a person of ordinary skill in the art, as of the 

February 28, 1994 filing date of the ‘473 patent, would be motivated to replace the analog 

compensation circuits of the combined Wheatley (through its incorporation by reference of RX-306 

(the ‘204 patent)) and as shown in RDX-63:33 (Appendix E) with the digital compensation circuits 

disclosed in McGirr (JX-333), Vaisanen (RX-309), Motorola (JX0313) or Fujitsu (JX-256) to take 

advantage of numerous efficiencies offered by digital circuits based on design choice. Even named 

inventors on the ‘473 patent testified that the use of digital lookup tables in digital electronics and 

ASIC development was well known and was in fact “standard practice.” Thus inventor Weiland 

testified: 

Q. And you consulted Mr. Kerr regarding the look-up tables you 

were developing and the work you were doing that resulted in this 

patent, the ‘473 patent, correct? 

A. Yes. Rich and I would, you know, we would discuss the ideas 

141 
and bounce ideas off of each other and he was, he was part of that 

group, yes. 

Q. 

had more expertise in digital electronics than you did, correct? 

Yeah. And you consulted him about the look-up tables because he 

A. Yes, and also ASIC development as well. 

Q. 

patent. Do you see that? 

And if you look at this e-mail, it says subject: Look-up table 

A. Yes. 

Q. That refers to the '473 patent, does it not? 

A. I believe so, yes. 

Q. 

using look-up tables, don't you? 

Now, Ms. Weiland, you admit that you didn't invent the idea of 

A. 

tables. I do not believe there had been uses in a system such as this. 

Well, I think that somewhere there have been uses of look-up 

Q. You didn't invent the idea of using look-up tables, did you? 

A. In isolation, no. 

Q. Look-up tables already existed in the prior art, didn't they? 

A. Yes. 

Q. Okay. And you admit that when I said you -- strike that. Once 

again, when I said "you" in those last series of questions, I meant to 

refer to you and your team. 

A. That's correct. 

Q. 

your answers would be the same, correct? 

And if I asked the same questions by saying "you and your team," 

A. That's absolutely right. 

Q. What I would like to do, Ms. Weiland, is play you a clip from a 

142 
deposition excerpt from Mr. Ken, your coinventor, about the look-up 

table, a question he was asked about it, and then ask you a question. 

A. Okay. 

Q. And that clip is from the deposition of Richard Ken dated 

November 28th, 2006. It is page 54, lines 9 through page 55, line 7. 

*** 

(Videotape clip played and transcribed as follows:) 

"Question: Sure. What was the debate? 

"Answer: The debate was, should we go make our own power amp 

that has that linearity characteristics? 

"Question: And how did you resolve that debate? 

"Answer: I iust said, I think it would be easier iust to relinearize it in a 

look-up table and make it perform how you want by redoing the gain 

b. 

"Question: And did you have to actually implement that strategy 

before you could understand whether it would actually be the right 

choice rather than redesigning the amplifier? 

"Answer: No. 

"Question: You knew just from the concept that it could work -- 

"Answer: Right. 

"Question: Is that correct? 

"Answer: Right. 

"Question: How did you know that. if you hadn't done it? 

"Answer: It's -- I don't know. 

"Question: It's pretty obvious? 

143 
“Answer: Yes. 

“Mr. Bright: Objection to form. 

“The Witness: Standard practice. I mean, it’s something that I had 

used previouslv as an audio distortion and also a freuuencv 

synthesizer patent I worked on.” 

(End of video clip.) 

(Tr. at 666-70 (emphasis added).) 

RDX-63:62 41 an in illustration of replacing the analog compensation circuits of RDX-63:33 

with digital compensation circuits. As Kenney stated in his supplemented expert report of July 7, 

2007, para. 151: 

“As recognized by QUALCOMM’s engineers, it was apparent to those 

skilled in the art that analog circuits, such as Wheatley’s analog 

compensation circuit, could easily be replaced with corollary digital 

circuits such as McGirr’s or Vaisanen’s digital look-up tables.” 

(Tr. at 3250.)42 As Kenney further explained in said replacement, the circuit would respond in a “quite 

similar manner. It would only use a set of digital look-up tables to do the lineranization rather than an 

analog compensation circuit.” (Kenney, Tr. at 3255.) 43 

41 & Appendix M. 

42 Complainant, relying on January 2006 deposition testimony of Kenney, argued that 

Kenney, after reviewing the ‘473 patent, stated that he had no reason to believe that the asserted 

claims of the ‘473 patent were not novel. See CFF J58. However, Kenney also testified that his 

deposition testimony was given before he had “reviewed the prior art.” & Tr. at 3338. 

Moreover, Kenney’s deposition testimony was before KSR. supra, was decided by the Supreme 

court. 

43 At the hearing complainant had objected to RDX-63:62 stating: 

What they say is that Wheatley’s analog compensation circuit 

could easily be replaced with corollary digital circuits such as 

McGirr’s or Vaisanen’s digital look-up tables. He doesn’t say 

144 
As found supra, each of McGirr, Vaisanen, Motorola and Fujitsu have digital look-up tables 

calibrated based on frequency. (Kenney, Tr. at 3254-55.) The adrmnistrative law judge finds that a 

person of ordinary skill in the art would have known that one could substitute a digital look-up table 

for an analog compensation circuit. As Kenney testified: 

Q. And what happens to this diagram that you created, if we were to 

replace the analog compensation circuit in Wheatley II with the digital 

look-up table, RDX-63:62, can you explain? 

A. 

It would only use a set of digital look-up tables to do 

linearization rather than an analog compensation circuit. 

Yes. In effect the circuit would respond in a quite similar manner. 

the 

JUDGE LUCKERN: Why would a person of ordinary skill in the -- 

did you finish your answer? 

THE WITNESS: Yes, Your Honor. 

JUDGE LUCKERN: Why would a person of ordinary skill in the art, 

say, in ‘94, want to make any such combination? 

THE WITNESS: I think it was widely known that digital circuits are -- 

can be made more accurate than analog circuits, and they also can be 

made in such a manner that they will, they are easily calibrated because 

you can store those values in a factory test. 

JUDGE LUCKERN: That’s a reason you think a person of ordinary 

skill would make this combination? 

THE WITNESS: Yes. Digital calibration tables were widely used 

about that time. I had used them around and before that period of time 

anything [in Kenney’s expert reports] here about how to do it. He 

doesn’t say anything where they would affix it to that. 

And, frankly, Your Honor, the Wheatley patents literally teach 

away from digital. 

Complainant’s objection was overruled on the ground that complainant had its expert available 

and further had the opportunity to cross Kenney. (Tr. at 3249-52.) 

145 
myself. 

JUDGE LUCKERN: What is the advantage of using digital rather than 

analog? Why mix them up? I’m a chemist talking that way, but 

what’s the advantage of the digital? Why would anybody want to go to 

digital? 

THE WITNESS: Well, a few good reasons. 

JUDGE LUCKERN: I am talking about 1994. 

THE WlTNESS: Sure. At that time, digital technology was 

well-established. The computer, personal computer revolution was 

well under way. And high-level integration of digital circuits was 

commonplace at that time. 

And so digital circuits are more easily formed into integrated circuits, 

and, moreover, because they have things like memory, you can do these 

calibration steps and store values in memory rather than adjusting 

circuits, as you might have to do in analog. 

(Tr. at 3255-57.) 

The administrative law judge finds Vaisanen (RX-309) is relevant in establishing the problems 

a person of ordinary skill in the art would recognize using analog technologies to compensate for 

power variation as radiotelephones. The invention of the Vaisanen patent relates to a method of tuning 

and compensating power levels in a radio telephone having a logic section which controls the 

operation, and to the use of this method in series production and maintenance. The invention also 

relates to a radio telephone, which is tuned with a method according to the invention. (RX-309 at 1:7- 

13.) Under the subheading “Background Of The Invention” it states: 

Generally the power levels in a radio telephone are tuned by adjusting 

built-in trimmer potentiometers and monitoring the output power of the 

radio telephone. The tuning is generally made manually, although in 

some cases a tuning with the aid of robots could be possible. It is 

however common to these prior art methods to adjust 

electromechanical components, such as trimmer potentiometers, with 

146 
the aid of tools. 

The power of the transmitter may vary with the operating conditions 

of the radio telephone. The operating conditions are influenced by the 

selected channel frequency, the radio telephone’s internal temperature 

and the supply voltage (accumulator or battery voltage). In prior art it is 

generally tried to compensate for the power variations with means of 

analog technology. Diodes or NTC resistors are used to compensate for 

power variations due to temperature changes, for example. The 

transmitter output power of individual radio telephone units can behave 

in very different ways at various temperatures and with various 

voltages, and thus the compensating circuitry designed for a radio 

telephone type does not necessarily function in a desired manner for 

every unit in series production. 

The known methods entail many problems and drawbacks. The 

trimmer potentiometers, being electromechanical components, are less 

reliable than the electronic components used in the radio telephone and 

they take up a substantial area on the device’s circuit board. The need 

for a large space is a problem, particularly concerning handsets. In 

addition, tuning of the trimmers is slow and requires a skilled person 

performing the tuning. The tuning precision depends on the person, and 

thus human errors are possible. The radio telephone casing has to be 

opened for the tuning in order to get access to the various components. 

The power levels are usually compensated for temperature and 

battery voltage variations by analog techniques, so that the accuracy of 

the compensation depends on component tolerances, and a fully 

individual compensation will not be possible in series production. 

(RX-309 at 1:15-55.) Thus, a person of ordinary skill on the art, knowing about Vaisanen, would 

recognize a number of problems and drawbacks that persist with using analog technologies to 

compensate for power variations in radiotelephones, as was found supra. 

At the hearing, Kenney testified as to a series of slides he prepared, in which the left hand side 

of the slide corresponded to RDX-1 63:62 (Appendix M) i.e. the Wheatley and digital linearizes 

combination without the blue shading but containing portions highlighted in yellow which Kenney 

testified that a person of ordinary skill in the art would equate to the yellow highlighted portions of 

147 
FIG. 2 of the ‘473 patent on the right side of the respective slide. Said slides have been identified as 

RDX-63:64,44 RDX-63:65,45 RDX-63-66,& RDX-63:67,47 RDX-63:6848 and RDX-63:69.49 The 

administrative law judge finds the following testimony of Kenney pertinent as to how a person of 

ordinary skill in the art would perceive in combining the combined Wheatley with McGirr, Vaisanen, 

Motorola or Fujitsu: 

Q. Okay. Now let’s go to RDX-6354. You have highlighted certain 

boxes on both of these illustrations, correct? 

A. Correct. 

Q. Let’s start on the left with the Wheatley and digital linearizers. 

What have you highlighted? 

*** 

“I have started on the left-hand side, it says from antenna system, and 

that is receiving a signal on a particular frequency channel that” -- 

THE WITNESS: Okay, that is subsequently converted to an IF 

frequency by element 90, down-converter, and filtered in a band pass 

filter 92, and then further amplified through amplifiers 12 and 16 and 

further filtered through element 14. And that’s showing the received 

signal path of the combined inventions. 

BY MR. WRHOEVEN: 

Q. That’s the received signal chain up to the variable -- to the 

44 - See Appendix N. 

45 - See Appendix 0. 

46 Appendix P. 

47 - See Appendix Q. 

48 - See Appendix R. 

49 - See Appendix S. 

148 
amplifier 16? 

A. Yes. 

Q. 

patents in suit? 

And then what’s on the right-hand side from figure 2 of the 

A. 

showing RX-UHF as the input signal. And one would have 

understood that to be the received signal from the antenna. That enters 

element 21 1, LNA, low noise amplifier, and is further amplified by 

element 212 which is simply labeled Rx gain. 

On the right-hand side on the lower portion of that diagram, it as 

Q. 

gain amplifier receive side? 

That is the received chain on the patents in suit up to the variable 

A. 

been converted as it is labeled RX-IF coming out. 

Yes, I should say the output of 212 implies that the signal has also 

Q. Okay. Let’s go to the next slide. 

This is RDX-63:65. This is a demonstrative you prepared, correct? 

A. Correct. 

Q. 

linearizers. What have you highlighted there? 

Let’s start on the left-hand side. It says Wheatley and digital 

A. 

AGC loop. 

What I have highlighted essentially is the linearized receive side 

Q. Can you walk us through it? 

A. Sure. We ended up on the receive path on element 16, which is 

the amplified received signal, and that output is provided to elements 

98 and 96 AGC detector and conversion subsystem respectively. 

The AGC detector 98 produces a value responsive to the level of the 

input signal. 

And the conversion subsystem, among other things, produces a 

reference voltage that represents the desired output power of the 

receive chain that subsequently subtracted and integrates in element 

149 
100, differential integrator, and that AGC control voltage is then fed to 

the digital linearizer that controls the amplifiers 12 and 16. 

Q. 

walk us through what you are illustrating there? 

Okay. And then turning to figure 2 on the right-hand side, can you 

A. Sure. We ended up there with element 212, which outputs a 

signal RX-IF. That signal is subsequently digitized by an 

analog-to-digital converter and it is processed by element 214, power 

detector with integrator. 

And that power detector with integrator would have in it a 

reference voltage that is subtracted and applied to the integration 

function producing a gain control signal. 

The AGC control signal is then fed into 216, Rx linearizer, 

converted back into analog form by 215, digital to analog converter, 

and subsequently controlling the gain, a variable gain amplifier of 212, 

thus closing the AGC loop. 

Q. 

integration occurs in figure 2? 

So in figure 2, box 214 is where the power detection and the 

A. Correct. 

Q. 

suit is what? 

And the integration described in the specification of the patents in 

A. 

reference voltage. 

The integrator is described as an integration with respect to a 

Q. And where do we see that on the Wheatley diagram on the left? 

A. 

box 96, conversion subsystem. 

On the Wheatley diagram, the reference voltage is provided by 

Q. And the integration happens where? 

A. In element 100. 

Q. 

the corresponding functionality in those boxes is in 214 of figure 2; is 

that right? 

So in Wheatley, those three, the three boxes, basically 100,98,96, 

150 
A. Correct. 

Q. 

demonstrative of Wheatley’s digital linearizers is in the box marked 

lo? 

And then on Wheatley, the digital linearizer in your 

What is that number, I can’t read it. Is that a lo? 

A. Yes, it is 10, digital linearizer. 

Q. And the digital linearizer figure 2 is in the box marked 216? 

A. Correct. 

Q. 

digital linearizers highlighted. What was your intent there? 

Okay. Let’s go to the next slide. [RDX-63:66] This just has the 

A. 

of Wheatley with the other references and the element in the ‘473 

patent. 

Just to show the correspondence between the combined invention 

*** 

Q. All right. So we’re at RDX-63:67 

And before we go to each side, what generally are you attempting to 

show by correspondence up here? 

A. I believe one would understand that this shows that the AGC 

control signal that is used on the receive AGC loop is also used to 

control the transmitter gain that’s shown also on the right-hand side, 

highlighted in figure 2 of the ‘473 patent. 

Q. So both show open loop power control? 

A. Both show open loop power control being implemented. 

Q. Let’s go to the next slide, RDX-63:68. 

And can you start on the left side and walk us through your 

comparison on this slide? 

A. Yes. On the left side, I have shown that the control AGC control 

151 
value produced by element 100 is coupled to element 10 digital 

linearizer which linearizes the response of the variable gain amplifiers 

used in the transmit chain. And those would be, again, labeled 12 and 

16. 

The other portion of the transmitter consists of a closed loop 

power control as element 104. 

Q. Okay. If we can go to the next slide of your demonstrative, 

RDX-63:69, and start on the left and then go to the right and explain 

what you are illustrating, please. 

A. On the left-hand side, shown on the combined Wheatley with 

digital linearizers, I am showing a power level control from a processor 

being applied to variable gain amplifier 104, thus implementing closed 

loop power control. 

And on the right-hand side, I am showing that closed loop 

power control is implemented from an up/down from cell command 

applied to element 106, which is processed through box 206 -- I’m 

sorry, I may have misspoke. I meant element 206, closed loop power 

control, and that closed loop power control signal is combined with the 

open loop power control signal. 

Q. 

question. 

Okay. And so there is also a combination of -- withdraw the 

Both sides show closed loop power control, correct? 

A. Correct. 

Q. And both of these, both sides, figure 2 and the Wheatley with 

digital linearizers also both show combined open loop and closed loop 

power control, correct? 

A. That is correct. 

(Tr. at 3259-68.) 

The administrative law judge finds that the functionality of the individual components which 

form the left hand side of the slides (the Wheatley and digital linearizes combination) supra did not 

152 
change in the combination, i.e. the elements were assembled in a predictable manner using the 

functions that they were supposed to implement as set forth in the cited references. (Kenney, Tr. at 

3271-72.) Moreover in a 2/2/07 witness statement of complainant’s Verdu, Verdu stated: 

Well, you see these claims talk about components that at that time were 

very well-known in the state-of-the-art. We’re talking about power 

detectors, integrators, linearizers, variable gain amplifiers and so on. 

So none of those particular components was in any way novel. 

What was novel of these claims were the particular combination. 

That’s what the innovation of those claims was. So these inventions 

really are at the level of putting together components. Not in the sense 

that they would invent a new way to implement any of those 

components. 

OX-63 : 70 (emphasis added).) 

Responding to respondents’ proposed finding which relied on testimony of its Kenney that the 

combined Wheatley alone or in Combination with one or more references invalidates claims 1 and 3 of 

the ‘473 patent (RFF VI.103), complainant represented (CRFF w.103A) that its Verdu opined that 

the combined Wheatley (RX-3 1 1, RX-306 and RX-307) do not disclose the following elements of 

claim 1 of the ‘473 patent: 

1. 

2. 

3. 

4. 

[a] “receiving a first signal having a first gain, a first 

frequency of the plurality of frequencies, and the first 

frequency having a first frequency index;” 

[d] “selecting a first predetermined calibration value in 

response to the automatic gain control setpoint and the 

first frequency index; 

[e] “adjusting the first gain in response to the first 

calibration value;” 

[fl “transmitting a second signal having a second gain 

and a second frequency of the plurality of frequencies, 

the second frequency having a second frequency 

153 
index;” 

5. [g] “determining a transmit power value of the second 

signal;” 

6. [h] “generating a second calibration value in response 

to the automatic gain control setpoint, the second 

frequency index, and the transmit power value; and” 

7. [i] “adjusting the second gain in response to the second 

calibration value.” 

(CRRF VII. 103A.) Complainant further represented that its Verdu opined that the following elements 

of claim 3 of the ‘473 patent are not disclosed in the combined Wheatley 

8. “a receive linearizer, coupled to the integrator and the 

receive amplifier, for generating a receive calibration 

value in response to the automatic gain control setpoint 

and a first frequency index corresponding to the first 

frequency, the receive calibration value being coupled 

to the receive amplifier control input for adjusting the 

gain of the receive amplifier;” 

9. a second power detector, coupled to the transmit 

amplifier. for generating a second power value from a 

transmitted signal having a second frequency; and 

10. a transmit linearizer for generating a transmit 

calibration value in response to the automatic gain 

control setpoint, the second power value, and a 

frequency index corresponding to the second 

frequency, the transmit calibration value being coupled 

to the control input of the transmit amplifier for 

adjusting the gain of the transmit amplifier. 

(CRRFF VII. 103E.) 

The administrative law judge finds that a person of ordinary skill in the art would find said 

elements 1 to 7 of claim 1 of the ‘473 patent in the combined Wheatley taken with McGirr, Vaisnen, 

Motorola or Fujitsu. Referring to said first element all handsets operating in a cellular environment 

154 
inherently perform this step because each signal received by the handset will have a gain and a 

frequency associated with it. Moreover, the ‘473 patent itself teaches that it was known that “[a] 

particular user of the [800 Mhz] cellular system may operate on one or several [frequency] channels at 

a time.” (JX-1 at 1:31-32.) McGirr teaches calibration look-up tables (“LUTs”) that have locations 

corresponding to the channels or frequencies to which the receiver can be tuned. (JX-333 at 7:2-6.) 

Such locations correspond to a “frequency index.” (Kenney, Tr. at 3207-08; RDX-70.) 

Referring to the second element, supra, Wheatley (RX-306) teaches a linear gain control 

amplifier (amplification circuit) “having a compensation circuit for receiving a control signal and 

generating a corresponding compensation signal according to predetermined compensation 

characteristics.” (RX-306, Abstract). It further discloses that the 

“[c]ompensation circuit 10 provides compensation in the control signal 

for inherent nonlinearities in the amplification circuitry used to amplify 

the input RF signal, corresponding to the received RF signal. 

Compensation circuit 10 thus generates a compensated control signal 

which is output therefrom as a nonlinear control signal or 

compensation signal.” 

(Id at 3:46-52.) Said signal produced by the compensation circuit of Wheatley (RX-306) can be used 

to correct for nonlinearities in the AGC amplifiers disclosed in the combined Wheatley and Wheatley. 

(RX-307.) While Wheatley (RX-306) does not specifically disclose whether the “compensation 

characteristics” used in its circuit can be based on frequency, McGirr teaches the use of frequencydependent calibration values for look-up tables: 

The LUT is a database in which calibration factors are stored in 

locations corresponding to measured RSSI values, and the channels or 

frequencies to which the receiver 28 (FIG. 1) can be tuned. Thus, the 

calibration factor is the entry corresponding to the particular measured 

RSSI value, and to the particular channel over which the 

communication signal that produced that value was received. 

155 
(JX-333 at 7:2-9.) McGirr further teaches: 

First, the RSSI value provided to the CPU 30 can have a transient 

component due to non-linearities in the frequency characteristics of the 

duplexer 40 (FIG. 1) and other components of the radio telephone 10. 

Thus, the measured RSSI’s can vary from one channel to the next, 

despite identical strengths of the received signals on the various 

channels. 

(Id at 7:ll-15.) Vaisanen similarly teaches that “[tlhe operating conditions [of a radio telephone] are 

influenced by the selected channel frequency.” (RX-309 at 1 :24-26.) 

Because it was known that a measured signal could vary from one channel to the next &, 

depending upon frequency), the administrative law judge finds that one skilled in the art at the Feb. 28, 

1994 filing date would have recognized that the AGC setpoint generated in the Wheatley system could 

also suffer from non-linearities depending on the frequency of the received signal. Accordingly, he 

finds that the evidence demonstrates that the skilled practitioner would have been motivated to account 

for frequency-dependent variations, as taught by McGirr and Vaisanen, using the compensation circuit 

disclosed in Wheatley. (RX-306.) Thus, Nokia’s expert Kenney credibly testified that one skilled in 

the art would have found it obvious to incorporate the digital linearizers taught by McGirr and other 

references into the circuitry described by the Wheatley references. (Kenney, Tr. at 3267-68.) 

Referring to the third element supra, Wheatley (RX-306) discloses that the “[a]mplification 

circuit 12 receives the RF signal at an input and amplifies the signal at a gain level as determined by 

the compensation circuit” (CDX-374 at 4: 17-20,58-60) which teaching can be applied to the variable 

gain amplifier circuit disclosed in the combined Wheatley and Wheatley (RX-306) in order to perform 

this claim step. 

As for the fourth element supra, Wheatley (RX-307) discloses the transmission of a CDMA 

156 
communications signal, where the transmitter portion of the telephone is provided with “user baseband 

signals.” (RX-307 at 4:37-41.) These signals are converted to higher frequency “IF signals,” whch in 

turn are provided to an IF amplifier that is amplified at a level determined by the AGC signal. (Id at 

4:42-49.) As already found for the first element, supra, any signal transmitted and received by a radio 

will inherently have a gain, and may operate on one of several frequencies in CDMA systems. In view 

of the teachings of McGirr and Vaisanen, the administrative law judge finds that it would have been 

obvious to associate a frequency index to each of those frequencies. 

Refemng to the fifth element supra, while this claim step is not taught by Wheatley, Vaisanen 

teaches that “the transmitter output power. . . will be measured with measuring devices . . . which 

may, for example, comprise a power level meter.” (RX-309 at 4:46-49.) McGirr further teaches the 

use of an “RF power detector” that detects the power level of the power amplifier’s output. (JX-333 at 

6:7-15, Fig. 4.) In addition Nokia’s expert, Kenney testified that one skilled in the art would have been 

motivated to calibrate the transmit power over a range of frequency channels. (Kenney, Tr. at 3241.) 

Thus, the prior art teaches the need to detect the transmitted power. (JX-133; RX-313; RX-309.) 

As for the sixth element supra, for the reasons stated with regard to the second element, supra, 

the administrative law judge find that one skilled in the art would have a reason to generate a 

compensation signal (le, calibration value) as taught by Wheatley (RX-306) in response to both an 

AGC setpoint as well as a frequency index, as taught and suggested by McGirr and Vaisanen. 

Additionally, as Kenney testified, this calibration value can be made more accurate if it is generated 

partly in response to the transmit power value. (Kenney, Tr. at 3241-42.) Hence the administrative law 

judge finds that it would therefore have been obvious to generate a calibration value in accordance 

with these claim requirements. 

157 
Referring to the seventh element, supra the administrative law judge finds that once a 

calibration value is generated according to the sixth element, the next logical, and obvious, step is to 

adjust the gain of an amplifier in the transmit section of the radio using this value. As stated for the 

third element, the teachings of Wheatley (RX-306) to “amplify the signal at a gain level as determined 

by the compensation signal” can also be applied to the variable gain amplifier in the transmit paths of 

the systems disclosed by the combined Wheatley and Wheatley. (RX-307, FIG. 1; RX-311, FIG. 5.) 

Referring to claim 3 of the ‘473 patent as respondents’ expert Kenney testified, the apparatus 

recited in claim 3 can be used to perform the method recited in claim 1, and many of the same claim 

elements are recited in both claims. (Kenney, Tr. at 3287-88.) The administrative law judge finds that 

any additional structural components recited in claim 3 can also be found in the asserted prior art. For 

example, Wheatley (RX-307) discloses receive and transmit variable gain amplifiers (labeled “IF 

Amplifier (AGC)” 18 and 28) (RX-307, FIG. 1.) A power detector is used to measure the received 

power level. (Id at 3:29-30, 54-55.) An integrator is also used to generate the AGC setpoint. (Id at 

3:30-32,51-63.) As stated with regard to the “calibration value” element in claim 1 of the ‘473 patent, 

the administrative law judge finds that it would have been obvious to one skilled in the art to utilize 

calibration look-up tables (LSJTs) b, receive and transmit linearizers) where calibration values are 

stored in locations corresponding to the channels or frequencies of the signal (le, frequency index). 

(JX-333 at 7:2-15.) While the Wheatley prior art does not specifically disclose a power detector 

coupled to a transmit amplifier within the handset, the administrative law judge finds that one of 

ordinary skill in the art would have found it obvious to detect the handset’s transmitted power in order 

to generate a more accurate calibration value, among other reasons. Thus, Vaisanen (RX-309 at 2:48- 

49) discloses that the transmitter output power can be measured with measuring devices which may for 

158 
example comprise a power level meter. The combined Wheatley (RX-311 at 2:12-19) dxloses: 

The signals transmitted by the mobile unit to the satellite are relayed by 

the satellite to a Hub control system earth station. The Hub measures 

the received signal power from signals transmitted by each active 

mobile unit transceiver. The Hub then determines the deviation in the 

received power level from that which is necessary to maintain the 

desired communications. Preferably the desired power level is a 

minimum power level necessary to maintain quality communications 

so as to result in a reduction in system interference. 

McGirr (JX-333 at 6:7-15) discloses: 

FIG. 4 is a schematic representation of the power control circuit 104. 

An RF power detector 106, e.g., a diode detector, receives a portion of 

the output of the power amplifier 36 as a power amplifier’s feedback 

signal, and provides a feedback voltage that is proportional to the 

power control amplifier 108 at its first input 108a. 

There is also testimony that ‘‘[plower detectors were very well-known in the state of the art.” 

(Verdu, Tr. at 3669.) Moreover the inventors of the asserted claims did not invent power detectors. 

Thus inventor Weiland testified 

[QUESTION]: And you and your team didn’t invent a power detector, 

those were around before, right?, 

[ANSWER]: Yes, that’s correct. 

[QUESTION]: And then next slide, power detector box over there on 

207. Again, you didn’t invent a power detector, right? 

... 

[ANSWER]: No, we did not. 

(Weiland, Tr. at 641:13-16,643:8-11.) In addition at the time of the February 28, 1994 filing date of 

the asserted patents (1) the use of receive and transmit power detectors was well known in the field of 

wireless telephony, (2) one skilled in the art would have known how to implement a receive or 

transmit power detector in a radiotelephone, (3) one skilled in the art would have known that a transmit’ 

159 
power detector in a radiotelephone could be used to determine the power level of a transmit signal, one 

of ordinary skill in the art would have known how to implement a power detector in a transmitter to 

determine a transmit power value of a transmit signal. (Weiland, Tr. at 641:13-16,643:8-11; Verdu, 

Tr. at 3667:20-3670: 10; RDX-73:4.)50 

Complainant argued that Nokia has not shown that claims 1 and 3 of the ‘473 patent merely 

combine well-known elements in predictable ways. (CRBr at 59.) It is argued that there is no evidence 

to explain why one of ordinary skill in the art would think to try to combine the teachings of McGirr or 

the other lookup table references with the combined Wheatley. (CFU3r at 66.) Complainant, relying on 

testimony of Verdu, argued that it would not have been reasomable for one of ordinary skill in the art 

in February 1994 to combine the Wheatley patents with either McGirr, Vaisanen, Motorola or Fujitsu. 

(CFF 5358.) 

At the outset it has been found that a person of ordinary skill in the art in this investigation is 

not merely a person who holds a bachelor degree in electrical engineering. Rather, it is a person who 

not only has a master’s degree in electrical engineering but also with a specialization in 

communications engineering and significantly has at least two years of experience in the field of 

wireless communication^.^^ See Section IV, supra. Hence, the administrative law judge finds that a 

50 Complainant argued that Kenney’s illustration in RDX-63:62 does not include a power 

detector on the transmit side. See CFF J378. Complainant presumably would want the 

administrative law judge to find that a person with a master’s degree in electrical engineering 

with a specialization in communication engineering and with at least two years experience in the 

field of wireless communications would not be aware that a power detector on the transmit side 

could be employed for measurement purposes. Even in the absence of Vaisanen, McGirr and the 

combined Wheatley, the administrative law judge rejects complainant’s argument. See 

Translogic, supra, which indicates the weight be given to a person of ordinary skill in the art. 

51 Complainant’s Verdu does not have two years of industrial experience in wireless 

telephony. See Section lV, supra 

160 
person of ordinary skill in this investigation is a person of ordinary creativity, and not an “automaton.” 

-- See KSR 127 S. Ct. at 1742, supra. Moreover it is expected that such a person, when there is a design 

need or market pressure to solve a problem and there are a finite number of identified, predictable 

solutions, has good reason to pursue the known options with the person’s technical grasp. Id. In 

addition if a technique has been used to improve one device, the administrative law judge finds that a 

person of ordinary skill in the art in this investigation would recognize that the technique would 

improve similar devices in the same way, using the same technique unless its actual application is 

beyond the skill of a such a person who has a master’s degree in electrical engineering with a 

specialization in communications engineering, and two years of experience in the field of wireless 

communication. KSR 127 S. Ct. at 1740, supra. 

The Commission stated in its opinion in Ink Cartridges that this administrative law judge in his 

II> in that investigation did not find all the features of the asserted claims disclosed in the prior art. See 

supra. In contrast to Ink Cartridges, the administrative law judge finds all the features of the asserted 

claims disclosed in the prior art and further finds that a person of ordinary skill in the art would be 

motivated to combine the features of the prior art such that the asserted claims of the ‘473 patent are 

obvious. 

Complainant argued that it would not have been obvious to one of ordinary skill in the art in 

February 1994 to combine the frequency dependent digital look-up table of Fujitsu with the combined 

Wheatley, which is operating at a fixed frequency. (CFF 540.5.) Specifically, complainant relies on 

testimony of its expert Verdu: 

Q. Okay. And can we have figure on the front of the page of 

Fujitsu? There you go. Let me ask you this, Dr. Verdu. In your 

opinion, would one of ordinary skill in the art in February 1994 have 

161 
found it reasonable to combine Fujitsu with the Wheatley patents? 

A. No. 

Q. And what’s the basis for your opinion? 

A. 

McGirr. These references disclose tables that are indexed by frequency 

and these tables are used to compensate an output power amplifier. 

And that output power amplifier, block 28, that works at one of a 

plurality of frequencies. So that’s why you have the frequency 

dependent compensation in those tables. 

Well, again, the same basis I outlined before when I talked about 

Whereas the one in Wheatley that you were asking me about, that one 

is just operating at a fixed frequency. 

(Tr. at 3626-27.) At the outset RX-306 discloses that “RF signal” and IF signal” may be input into the 

disclosed compensation circuit in RX-306. (RX-306 at 3:36-59; RX-306 at FIG. 1.) An RF signal is a 

radio-frequency signal. (RFF VI.454 (undisputed).) The following two excerpts show that the 

combined Wheatley discloses the use of an RF signal: 

In an AGC application, such a control signal is generated by a signal 

strength measurement circuit (not shown) in linear correspondence 

with the log of the measured signal strength of the received RF simal, 

or corresponding IF signal if frequency downconverted before 

measurement. 

(RX-306 at 3:40-45.) 

It should be understood that the RSSI measurement can be made at 

various points in the processing of the received signal. Although 

illustrates in FIG. 1 that the measurement is made in downconverter 20, 

and at an IF frequency, the measurement can be made in 

downconverter 16 or at any other point in the signal processing at either 

an RF or IF freuuency. 

(RX-307 at 3:66-4:2 (emphasis added).) In fact, it is undisputed that RX-311 discloses that the RF 

signals from the antenna system are down-converted into IF signals by element 90. (RFF VI.261 

162 
(undisputed).) RF signals could be any of a number of frequencies, as the combined Wheatley refer to 

an “RF channel” and an “RF frequency band”. (see RX-306 at 3:21-23; RX-307 at 8:22-28.) RX-307 

discloses that the RSSI measurement described in RX-307 could be made at an RF or IF frequency. 

(RX-307 at 3:66-4:2 (“Although illustrates [sic.] in FIG. 1 that the measurement is made in 

downconverter 20, and at an IF frequency, the measurement can be made in downconverter 16 or at 

any other point in the signal processing at either an RF or IF frequency.”).) Further, Wheatley has 

testified: 

Q. Do you have any particular techniques in mind when you said 

that they were using digital techniques to augment features? 

A. Yes. The AGC circuits that we mentioned are not inherently 

linear. And we were able to get linearity achieved to meet the 

requirement by working. And my whole history of circuit 

desim has been in analog circuits, so I was able to make it 

work. But it was, if you want, fairly complicated and not 

widely reproducible at that time. So they went for other ways 

which would be, in essence, accomplish the same effect by 

using perhaps digital techniques to control the - to compensate 

out the nonlinearities. And there’s a wide variety of ways it 

could have been doing that. And then the point there would be, 

we could use less accurate AGC circuits, compensate them 

using, you know, replacing this compensation circuit with 

digital technique - it doesn’t say what goes in there - to 

achieve a linear function. And if that turned out to be more 

economic and more commercial and more reproducible, then 

that would be the proper choice for commercial eauipment. 

(JX-302C at 64:24-65:20 (emphasis added).) Thus, the administrative law judge finds that Wheatley 

chose to use analog circuits because his “whole history of circuit design has been in analog circuits,” 

and that he himself contemplated that portions of said analog circuits could be replaced by using 

digital circuits. Thus, the administrative law judge finds that a person of ordinary skill in the art would 

have found it obvious to combine Fujitsu with the combined Wheatley. 

163 
Complainant argued that digital components were extremely slow in 1994 and did not offer the 

same performance abilities as analog components. (CFF J365.)52 However, the administrative law 

judge finds that a person of ordinary skill in the art as of the February 28,1994 filing date would know 

from the teachings of McGirr that McGirr’s power control system could be modified, and an algorithm 

could be designed to operate faster or slower depending on design choice and project requirements. 

(Kenney, Tr. at 3477-3478; JX-333 at 7:45-56.) Specifically, Kenney testified that “anyone of ordinary 

skill in the art would know that [McGirr’s power control] algorithms could run faster, a lot faster,” (Tr. 

at 3477-3478) particularly in light of McGirr’s teaching to modify its power control method according 

to design choice. (JX-333 at 7:45-56.) Further, Wheatley has testified that he chose to use analog 

circuits because his “whole history of circuit design has been in analog circuits,” and that he himself 

contemplated that portions of said analog circuits could conceivably be replaced by using digital 

circuits, if someone else could design one that was “more economic and more commercial and more 

reproducible.’’ See surra. The administrative law judge finds that a person of ordinary skill in the art as 

of the February 28,1994 filing date of the ‘473 patent would know that there are advantages and 

disadvantages to weigh when determining whether to use a digital or analog design. 

(RX-309) at 1:38-55; RFF VIS38 (undisputed), both referenced at 135, supra. Also, in referring to 

RX-307 of the combined Wheately, Verdu testified: 

Vaisanen 

52 CFF J365 relies on testimony of inventor Wheatley and complainant’s expert Verdu. 

Regarding testimony of Wheatley, the question before the administrative law judge is not 

whether the combination of the asserted claims of the ‘473 patent was obvious to the patentee 

Wheatley but rather whether the combination was obvious to a person with ordinary skill in the 

art. Moreover, any need known in the field of endeavor at the time of the invention can provide a 

reason for combining the elements in the manner claimed. KSR, supra. As for testimony of 

Verdu, Verdu does not meet criteria found for a person of ordinary skill in the art. See Section V, 

supra. 

164 
Q. 

about how typically in digital receivers, a digital VGA -- excuse me, a 

digital AGC loop is created, that person at the time of this patent, they 

would have understood that you could also accomplish this with analog 

circuitry, wouldn't they? 

And a person looking at this paragraph and seeing that it is talking 

A. By when you say accomplish this, you mean accomplish an AGC 

loop? 

Q. Yes. 

A. Yes, indeed. 

Q. 

AGC loop at this time, they would have understood that you could 

accomplish this functionality digitally, correct? 

And the opposite is also true, if a person was looking at an analog 

A. Yeah, you could have a digital AGC loop indeed. 

(Tr. at 3729.) Thus, the administrative law judge finds that, in light of the cited testimony, it would be 

obvious to combine the combined Wheatley with McGirr. 

Complainant argued, based on testimony of its Verdu, that although the '225 patent (RX-307, 

Wheatley HI) recognizes the use of AGC techniques that were known, for the purposes that Wheatley 

was trying to address, (le, fast, high dynamic range, accurate power control) Wheatley is unequivocal 

in teaching away from digital AGC techniques. (CFF J361.) Specifically, Verdu testified that: 

Q. Okay. And then immediately preceding that paragraph, Dr. 

Wheatley goes on to say in his patent, "digital AGC techniques, 

however, are relatively slow in controlling signal power due to 

saturation of the error signals involved in actually controlling the 

power." In your opinion, Dr. Verdu, does the Wheatley III reference 

teach away from the use of digital AGC techniques, whether they were 

well-known or not at the time, does Wheatley III teach away from 

using those techniques? 

A. 

other words, fast, high dynamic range, accurate power control, he was 

unequivocal in teaching away from digital AGC techniques. 

Indeed, for the purposes that Wheatley was trylng to address, in 

165 
(Tr. at 3784-3785.) RX-307 discloses that it was known in the art that automatic gain control circuits 

are implemented in both analog and digital receivers. (see RX-307 at 1:13-19 (“In both analog and 

digital signal receivers AGC circuits are implemented using different techniques.”).) In fact, JX-307 

describes typical functionality of a digital receiver (JX-307 at 1:27-40) and explicitly discloses “a 

closed loop automatic gain control circuit for a digital receiver...”. (RX-307 at 2:40-44.) As found, 

supra, complainant’s expert Verdu testified that a person of ordinary skill in the art at the February 28, 

1994 date of the ‘473 patent would know that AGC loops could be designed with either analog or 

digital circuits. Also, McGirr teaches that the power control approach described in its preferred 

embodiment could be modified to fit other power control approaches. (JX-333 at 7:45-56 (“Of course, 

the rates of increase in output power per drop in RSSI values below the first threshold and of decrease 

in output power per rise in RSSI values above the second threshold can be any desired arnounts, and 

certainly need not be equal.”).) The administrative law judge finds that a person of ordinary skill in the 

art would know that choosing a digital or analog design is a matter of balancing the drawbacks and 

benefits of each. RX-307 discloses an analog circuit means but inventor Wheatley admitted his 

“whole history of circuit designs has been in analog circuits.” See supra. There are only two choices 

for circuit design, digital or analog, and RX-307 explicitly discusses and uses both. Based on the 

foregoing, the administrative law judge finds that RX-307 does not teach away from the use of digital 

techniques. 

Complainant argued that the combined Wheatley and the digital lookup table references as 

illustrated in RDX-63:62 would not work, relying on testimony of Verdu which was said to opine that 

the linearizers disclosed and claimed in the ‘473 patent could linearize the non-linear signals illustrated 

in CDX-209 which shows linearizing frequency 1 and frequency 2 (CFF 5149); and on testimony of 

166 
Wheatley which was said to indicate that Wheatley, an inventor on the ‘204 patent, did not consider 

putting a linearizer in the ‘204 patent (CFF J151);53 that there is a distinction between linearizers and 

compensation circuits, such as in RX-306 (CFF J152); and that the compensation circuit of RX-306 

cannot linearize an arbitrary nonlinear transfer function. (CFF J153.) Complainant also relies on 

testimony of Verdu stating that controlling the gain of an amplifier with both an uncompensated signal 

and a compensated signal would not work. (CFF J387.) 

Respondents’ expert Kenney, however, did testify that modifications would have to be made to 

the digital linearizers of McGirr when combining them with Wheatley: 

Q. Okay. But when you put that digital circuit -- if we go back to 

63:62, RDX-63:62, please. So when you drop the digital linearizer 

circuit from McGirr into Wheatley, that circuit will take, according to 

the example as you described it, we looked at, 2.5 seconds to provide a 

value, correct? 

A. Well, I disanee that I was implvinr that I am dropping the exact 

embodiment discussed in the specification of McGirr into this figure to 

form a digital linearizer. 

Q. Allright. 

A. It is showing an invention that uses die;ltal look-up tables that 

runs, that run tens of thousands of times faster that might be described 

bv an algorithm that’s used for a different purpose. 

(Tr. at 3479 (emphasis added).) However, as found, supra, a person of ordinary skill in the art at the 

time of the February 28, 1994 filing date of the ‘473 patent would known from the teachings of 

McGirr that its power control system could be modified according to design choice. (Kenney Tr. 

3477-3478; JX-333.) Also, as found, supra, Wheatley’s entire experience was with analog circuits, 

and thus it is unsurprising that he chose an analog design, rather than implementing a fully digital 

53 However, see immediately preceding footnote. 

167 
design. Moreover, Kenney has testified: 

Q. 

skill in the art would have known that you could substitute out an 

analog compensation circuit for a digital look-up table, correct? 

Now, you also -- it is also your opinion that a person of ordinary 

A. 

techniques are available to solve these kinds of problems. 

I think one of ordinary skill in the art at the time would know both 

Q. The four references you went through were available at the time, 

right? 

A. Yes, they were all prior art. 

Q. And what happens to this diagram that you created, if we were to 

replace the analog compensation circuit in Wheatley II with the digital 

look-up table, RDX-63:62, can you explain? 

A. 

It would only use a set of digital look-up tables to do the linearization 

rather than an analon compensation circuit: 

Yes. In effect the circuit would respond in a quite similar manner. 

JUDGE LUCKERN: Why would a person of ordinary skill in the -- 

did you finish your answer? 

THE WITNESS: Yes, Your Honor. 

JUDGE LUCKERN: Why would a person of ordinary skill in the art, 

say, in '94, want to make any such combination? 

THE WITNESS: I think it was widely known that digital circuits are -- 

can be made more accurate than analog - circuits, and they also can be 

made in such a manner that they will. they are easily calibrated because 

you can store those values in a factory test. 

JUDGE LUCKERN: That's a reason you think a person of ordinary 

skill would make this combination? 

THE WITNESS: Yes. Digital calibration tables were widely used 

about that time. I had used them around and before that period of time 

myself. 

JUDGE LUCKERN: What is the advantage of using digital rather 

168 
than analog? Why mix them up? I'm a chemist talking that way, but 

what's the advantage of the digital? Why would anybody want to go to 

digital? 

THE WlTNESS: Well, a few good reasons. 

JUDGE LUCKERN: I am talking about 1994. 

THE WlTNESS: Sure. At that time, digital technology was 

well-established. The computer, personal computer revolution was 

well under way. And high-level integration of digital circuits was 

commonplace at that time. 

circuits, and, moreover, because thev have thinrrs like memory, YOU can 

do these calibration stem and store values in memory rather than 

adiusting circuits, as YOU miht have to do in analog. 

And so dirrital circuits are more easilv formed into intemated 

(Tr. at 3255-3257 (emphasis added).) Thus, while linearizers and compensation circuits may have 

different implementations, they are functionally interchangeable. In fact, complainant's expert Verdu 

has testified: 

Q. A person of ordinary skill in the looking at this patent at the time, 

the relevant time frame, would understand that if you used this 

technique with amplifiers that are analog, that you are going to have a 

problem with linearities, aren't you? 

A. 

which technique. 

Well, by this technique, you mean Wheatley III's technique or 

Q. A digital AGC loop with an analog VGA. 

A. They would not understand -- they would understand that you may 

have nonlinearities or that you may not have nonlinearities, the fact that 

you have digital AGC loop does not negate the possibility that you may 

have nonlinearities. 

Q. 

understood there may be nonlinearities and that comDensation tables 

were one way to correct for nonlinearities, correct? 

A person of ordinary skill looking at Wheatlev 111 would have 

A. There would be nonlinearities in the VGA, you mean? 

169 
A. Yes. 

Q. 

compensation tables, correct? 

And that one way to correct for those would be to use 

A. Correct. 

Q. 

about how typically in digital receivers, a digital VGA -- excuse me, a 

digital AGC loop is created, that person at the time of this patent, they 

would have understood that you could also accomplish this with analog 

circuitry, wouldn’t they? 

And a person looking at this paragraph and seeing that it is talking 

A. By when you say accomplish this, you mean accomplish an AGC 

loop? 

Q. Yes. 

A. Yes, indeed. 

Q. 

AGC loop at this time. thev would have understood that you could 

accomplish this functionality dinitallv. correct? 

And the opposite is also true, if a Derson was lookiiig at an analog 

A. Yeah, you could have a digital AGC loop indeed. 

(Tr. at 3728-3729 (emphasis added).) Also, the administrative law judge’s construction of linearizer 

does not require it to be able to “linearize an arbitrary nonlinear transfer function.” Nor does RX-306 

disclose that it cannot do so. (See, generally, RX-306.) Instead, RX-306 discloses: 

It is another object of the present invention to provide an amplifier 

circuit in which gain in dl3 is controlled as a linear function of an input 

control signal. 

(RX-306 at 1:64-66 (emphasis added).) RX-306 also discloses: 

Compensation circuit 10 provides compensation in the control signal 

for inherent nonlinearities in the amplification circuitry used to amplify 

the input RF signal, corresponding to the received RF signal. 

170 
Compensation circuit 10 thus generates a compensated control signal 

which is output therefrom as a nonlinear control signal or 

compensation signal. 

(RX-306 at 3:49-55.) Thus, the compensation circuit of RX-306 is able to linearize signals. Based on 

the foregoing, the administrative law judge finds complainant’s arguments unavailing. 

B. 

1. Anticipation 

Claim 1 Of The ‘408 Patent And Claim 2 Of The ‘220 Patent 

Respondents argued that a EbWIA standard (RX-147) alone invalidates the asserted claims of 

‘408 and ‘220 patents. (RFF ~n1.1.)~~ They later argued that RX-147 anticipates the asserted claims of 

the ‘408 and ‘220 claims under the claim construction proposed by QUALCOMM. (RFF VIII. 14.) 

Respondents further argued that U.S. Patent Number 5,241,690 (the Larsson patent RX-142)) 

anticipates the asserted claims of the ‘408 patent and the ‘220 patent under the claim construction 

proposed by QUALCOMM. (RFF VIII.50 (undisputed).) 

Complainant argued that respondents have not shown, by clear and convincing evidence, that 

any reference anticipates the asserted claims of the ‘408 and ‘220 patents. (CBr at 112-116.) 

The staff argued that the ‘408 and ‘220 patents are not anticipated by any art. (SBr at 8 1 .) 

The parties agree that the only novel elements of the ‘408 and ‘220 patents are those elements 

regarding “maximum gain setting.” (Tr. at 3643; RFF VIII.4, RFF Vm.5, RFF Vm.6, RFF VUI.8, RFF 

VIII.9, RFF VIII.10, RFF VIII.11 (undisputed); CRRFF VIII.13A-C.) Therefore, the anticipation 

54 As indicated in an exhibit dated 2/15/07 (RX-403), the PTO has granted Nokia’s 

request for reexamination of claim 1 of the ‘408 patent, inter alia, over a combination of Vilmur 

et a1 US. Patent No. 5,107,487 and Larsson et a1 US. Patent No. 5,241,690. The PTO, as stated 

in RX-405 which has a 3/1/07 date, has also has granted Nokia’s request for reexamination of 

claim 2 of the ‘220 patent, inter alia, over a combination of Vilmur, et al, in view of Larsson and 

McGirr et al. U.S. Patent No. 5,129,098. 

171 
analysis focuses on whether or not a “maximum gain setting” is disclosed by the prior art as argued by 

respondents. 

Regarding the EIA/TIA Standard, the administrative law judge has found in Section VII.C.3, 

supra, that the claim term “maximum gain setting” is “an upper limit on the transmit gain setting that is 

hard coded into the radio during assembly or input during manufacturing and testing of the radio. The 

parties agree that the EIA/TIA standard expressly disclosed that radiotelephone operating in 

accordance with the standard must comply with the standard’s power control algorithm as limited by 

the standard’s maximum power setting. (RFF Vm.30 (undisputed).) The parties also agreed that the 

EWTW Standard discloses an upper limit on the allowed transmit power of a handset. (RFF VIII. 17 

(undisputed).) The administrative law judge finds that an “upper limit” is the same as a “maximum,” 

and that therefore said EIA/TIA Standard discloses a maximum on the transmit power. The parties 

further agree that a maximum gain setting is different from a maximum output power; that a maximum 

gain setting limits the amount of amplification that can be applied by the amplifier; that a maximum 

gain setting does not limit the output power of an amplifier because the input power could increase; 

and that a maximum power setting limits the overall output power of the phone, regardless of the 

amount of gain applied in an amplifier. (RFF V.81, RFF V.82, RFF V.83, RFF V.84 (undisputed).) 

The parties also agree that the objective of the maximum gain setting is to limit the transmit gain. (CFF 

G262 (undlsputed).) As the administrative law judge has found in Section VII.C.3, supra, a limit on a 

gain is distinct from a limit on power. No party has cited any portion of Rx-147 that suggests a limit 

on a gain. Based on the foregoing, the administrative law judge finds that the EIA/TIA Standard does 

not anticipate either the ‘408 or the ‘220 patents. 

Regarding Larsson, the parties agree that RX-142 expressly teaches that the transmitter 

172 
transmit at the lower of the power control signal or a maximum transmission power setting. (RFF 

Vm.77 (undisputed).) As found, supra, limiting the power of a transmission is different than limiting a 

gain. Further, the administrative law judge did not follow complainant’s proposed claim construction, 

which was the premise of at least some of respondents arguments regarding Larsson. (RFF VIII.50 

(undisputed).) Thus, the administrative law judge finds that RX-142 does not anticipate either of the 

asserted claims of the ‘408 or the ‘220 patents. 

2. Obviousness 

Respondents argued that the asserted claims of the ‘408 and ‘220 patents are obvious in light 

of prior art FIG. 1 of said patents and Larsson U.S. Patent No. 5,241,690 (RX-142) or the ETA/TIA 

Interim Standard. (RBr at 121-41; RRBr at 76-8.) It is argued that the asserted claims add nothing to 

the prior art beyond a well-known element, a. a maximum gain setting on a variable gain amplifier, 

that behaved exactly as expected, and that the only issue is whether jt would be obvious to add a 

maximum gain setting to the prior art disclosed in common Figure 1. (RBr at 120-25.) Respondents 

further argued that the combination of the EAI/TIA standard and one or more of the combined 

Wheatleys, Fujitsd5, Motorola and Larsson invalidates the asserted claims of the ‘408 and ‘220 

patents. Respondents’ Proposed Findings, Sections VIII.D, E and F. 

Complainant argued that the combined Wheatley, in combination with either Larsson or the 

ETA/TIA Standard, do not render the asserted claims of the ‘408 and ‘220 patents obvious because the 

evidence is clear that neither the EIA/TIA Standard nor Larsson discloses comparing a summation 

signal to a maximum gain setting to adjust the gain of a variable gain amplifier up or down. It is also 

55 Respondents do not argue that Fujitsu discloses a maximum gain setting. (See RFF 

lI.209.) Therefore, the administrative law judge is not considering this reference. 

173 
argued that the evidence is clear that the asserted claims of the ‘408 and ‘220 patents would not have 

been obvious to one of ordinary skill in the art based on the disclosure of a “maximum power” in the 

EWT’IA Standard and Larsson. (CBr at 119-21.) Complainant’s position, as to claim 1 of the ‘408 

patent and claim 2 of the ‘220 patent, is that their novelty was the combination of “all those elements 

that have to do with maximum gain setting”, citing Verdu (Tr. at 3643) and that the use of maximum 

gain setting and how it is compared is what is new and that would be “elements D, E and F’ of claim 1 

of the ‘408 patent and “elements E, F and G of claim 2 of the ‘220 patent,” citing Verdu, Tr. at 3740- 

41. CRRFF VIII.l3A, 13B. 

The staff argued that it would not have been obvious to substitute a maximum gain setting for 

the previously known “maximum power level” in the prior art and hence, under the staffs proposed 

construction of “maximum gain setting,” the prior art does not render the asserted claims of the ‘408 

and ‘220 patents obvious. (SBr at 81-2.) It is argued by the staff that the only prior art reference relied 

upon by respondents to meet the claimed “maximum gain setting” of the asserted claims impose an 

upper limit on the power level rather than a gain setting and that it would not have been obvious to 

substitute a maximum gain setting or the previously known maximum power level which can still 

result in an increase in transmitted power levels. (Id) 

The parties agree that the only novel elements of the ‘408 and ‘220 patents are those elements 

regarding “maximum gain setting.” (RFF VIII.13; Tr. at 3643:3-8; CRRFF VIII.13A-C.) All other 

elements of the ‘408 and ‘220 patent are admitted to be in the prior art. (RFF VIII.4, RFF vIzI.5, RFF 

VIII.6, RFF VIII.8, RFF VIII.9, RFF VIII.10, RFF VIII.11 (undisputed); Tr. at 3643:3-13.) Therefore, 

the key question for the obviousness analysis is whether or not any of the prior art discloses a 

“maximum gain setting.” 

174 
Regarding Lasson and the EIA/TIA Standard, the administrative law judge has found in 

Section VIII.B.l, supra, that neither the Larsson patent nor the EW’I’IA Standard anticipates either of 

the ‘408 or ‘220 patents, as neither reference discloses a “maximum gain setting.” 

Regarding the combined Wheatley, the fourth, fifth, and sixth elements of claim 1 of the ‘408 

patent, which relate to “maximum gain setting,” are the same elements that the Examiner said were not 

taught or suggested in the prior art during prosecution of the ‘220 Patent. (CDX-186; JX-6 at 

QHITC0025564; Verdu, Tr. at 3643:24-3644:3.) Respondents argued that Wheatley, a named 

inventor on the combined Wheatley, admitted that a maximum gain setting was inherent in the 

operation of the radiotelephone that was the subject of the combined Wheatley, specifically citing to 

Wheatley Tr. at 385:6-15. (RFF VIII.101.) Thus, the transcript excerpt reads: 

“Question: And the limit on the gain, is that what determined the 

maximum transmit power? 

“Answer: Yes. 

“Question: And how was the limit on the gain achieved again? 

“Answer: Um, it was just inherent in the amplifiers. At the maximum 

control voltage, they would go to the maximum gain and that’s it.” 

(Tr. at 385:6-15 (emphasis added).) Wheatley’s testimony, therefore, was that the ampljfiers would go 

to the maximum gain and no further. As he had explained eariler in his testimony: 

Q. Okay. And in the demonstration unit that you talked about doing 

earlier today, is it correct that that demonstration unit had a maximum 

power? 

A. Actually, no. 

Q. It didn’t have maximum power? 

A. We had maximum power, but there was - the maximum power 

would be determined by how much power it could put out. It could put 

out a certain amount of power because that’s the way it was built. It 

couldn’t do any more. 

175 
Q. 

controlled when the amplifier couldn’t put any more power out? 

So in your system, the maximum power was effectively 

A. That’s right. 

Q. 

that right? 

And that’s when the amplifier reached its maximum gain; isn’t 

A. No, that’s exactly when the power amp saturated. 

Q. That’s when the power amp reached its maximum gain, right? 

A. No. The power amp is the final stape in the system. It could be 

driven beyond its range. but it won’t put out any more power than the 

power it’s capable of putting out. Simply saturated. 

(Tr. at 380-381(emphasis added).) In other words, the “maximum gain’’ was the maximum gain 

allowed by the hardware. Therefore, the administrative law judge finds that Wheatley’s testimony 

does not support the conclusion reached by respondents. 

Respondents further argued that Weiland testified that she did not invent the use of a 

maximum gain setting to adjust a variable gain amplifier and cited the following testimony: 

Q. 

to adjust a variable gain amplifier in response to a maximum gain 

setting, correct? 

And it’s true, isn’t it, that it was well known in 1990 [sic 19941 

A. Yes. 

(RFF VIlI.44; JX-299C at 88:13-16.) However, Weiland also testified: 

Q. 

setting before your implementation of the maximum gain setting in a 

QCP line of phones? 

Ms. Weiland, are you aware of anyone who used a maximum gain 

A. I believe that somebody had probably used a maximum gain 

setting somewhere for some applications, but I don’t specifically recall 

any solution. 

(Tr. at 524:7-14.) Weiland further testified: 

176 
Q. Now, isn't it true, referring to this maximum gain setting, isn't it 

true that it was well-known in the art that you could adjust a variable 

gain amplifier in response to a maximum gain setting? 

A. 

probably, it was likely. 

It was probably true. I don't recall a specific example, but it was 

(Tr. at 644: 10-17.) Thus, while Weiland testified that a variable gain amplifier could be adjusted by 

using a maximum gain setting, the administrative law judge finds that nowhere in Weiland's hearing 

testimony is there a mention of using the maximum gain setting to set a limit on maximum power. 

Rather, Weiland testified that the variable gain amplifier itself had an upper limit on how much it 

could be adjusted. 

Respondents also argued that complainant's Verdu testified that maximum gain setting was 

known in the art, pointing to the following portion of the transcript: 

JUDGE LLJCKERN: All right. Well, I will repeat the question. 

We're not talking about the uatent ri&t now. Hold on a minute. Let 

me get it. The question is this: "What I am asking you is about if you 

have a variable gain amplifier prior to 1994, a person of ordinary skill 

in the art would understand that you could set a limit on that gain of 

that variable gain amplifier. That concept is not new, right, sir?" Yes, 

no, I don't know. And I am talking about a person of ordinary skill in 

the art, which you testified has a certain knowledge, degree, whatever it 

is. I hope he is not an ignoramus. 

THEWITNESS: fight. 

JUDGE LUCISERN: Answer the question yes, no or however you 

want to answer. 

THE WITNESS: The answer is yes. 

(Tr. at 3748-49 (emphasis added).) Thus, Verdu testified that, outside the context of radiophones, the 

prior art references, and the asserted patents, it was known to a person of ordinary skill in the art that 

one could set a limit on the gain of a variable gain amplifier. Again, there is no mention in said 

177 
testimony of using said “limit on the gain of a variable gain amplifier” to control maximum output 

power. Rather, Verdu is describing the normal function of variable gain amplifiers, which all parties 

admit was commonly known before the February 28, 1994 filing date of the asserted patents. 

Respondents further argued that Motorola (RX-3 13) included implementation of a maximum 

power level by setting an amplifier’s maximum gain. (RFF VI.618,621-23.) Specifically, respondents 

point to the following excerpt from RX-3 13: 

The maximum output power value is set manually, by adjusting the 

control voltage to the power amplifier 10, until the output power is 

measured to be the desired maximum level (e.g. 80 watts) using highly 

accurate calibration equipment. The voltage V,, applied to the control 

input of the amplifier to provide this measured power is recorded in 

setting means 12. 

(RX-313 at 5:ll-14.) That reference goes on to explain: 

(b) The power amplifier is set to maximum power (80 watts), by 

recalling the calibrated power value V,, from setting means 12. 

(RX-313 at 5:22-24.) Thus, the administrative law judge finds that, rather than limiting the output 

power by limiting a gain, the cited reference discloses a calibration routine that automatically finds a 

specific gain that will cause the output power to reach a desired level; in the excerpt cited above, 

maximum output power. Likewise, FIG. 3 of RX-313 shows only that V,, is used to achieve 

maximum power; not that V,, is used to limit maximum power. Respondents also cite to RX-313 at 

9:7-14; but that citation is not relevant to the conclusions drawn by respondents. (see RFF VI.621; 

RFF VI.622.) 

Based on the foregoing, the administrative law judge finds that “maximum gain setting, as 

178 
disclosed in the asserted products, is not found in the prior art?6 Thus, the administrative law judge 

finds that respondents have not shown, by clear and convincing evidence, that the asserted claims of 

the ‘408 and ‘220 patents are invalid.57 

C. Secondary Considerations 

Complainant argued that unrebutted evidence of secondary considerations demonstrates that 

the asserted patents are not obvious. (CBr at 122-31.) 

Respondents argued that QUALCOMM’ s purported secondary considerations of 

nonobviousness cannot save the patents-in-issue. (RBr at 126-30.) 

The staff argued that QUALCOMM did not present sufficient evidence at the heating to 

demonstrate a nexus between factors, such as the commercial success of its initial QCP-800 phone and 

its current MSM 6550 chipset, industry praise and skepticism, and the particular claimed features of 

the asserted patents. (SBr at 76-7.) 

“Such secondary considerations as commercial success, long felt but unsolved needs, failure of 

others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject 

matter sought to be patented.” m, 127 S.Ct. at 1734 (quoting Graham v. John Deere Co., 383 U.S. 

1, 17-18, (1966). Secondary consideration of commercial success, or other secondary considerations, 

however, are only significant if there is a nexus between the claimed invention and the commercial 

56 Even assuming arguendo that “maximum gain setting’’ was in the prior art, such would 

not establish that the asserted claims are obvious. See KSR 127 S. Ct. at 1739-40, supra. 

57 In Section VIII.A.2, supra, the administrative law judge found that respondents have 

established, by clear and convincing evidence, that claims 1 and 3 of the ‘473 patent are obvious 

in view of the combined Wheatley taken with McGirr, Vaisanen, Motorola or Fujitsu. 

Significantly McGirr, Vaisanen, Motorola and Fujitsu were not cited by the Examiner in the 

prosecution of the ‘473 patent. 

that the ‘473 patent issued before KSR was handed down by the Supreme Court. 

JX-4. Also the administrative law judge finds it significant 

179 
success. See Ormco COT. v. Align Tech., Inc. 463 F.3d 1299, 1312 (Fed. Cir. 2006). 

Complainant argued that the “unrebutted evidence is clear that many in the cellular phone 

industry were hightly skeptical that a CDMA system could be commercially viable, in large part due to 

the difficulty in controlling mobile telephone handset power as it moves closer or further from the base 

station, commonly known at the “near-far” problem; and that by implementing the claimed power 

control solutions of the asserted patents in the QCP-800 handset, QUALCOMM was able to overcome 

the near-far problem and provide fast, accurate power control in a handset that was capable of being 

produced in high volumes and in cost effective manner. (CBr at 123-4.) However, Wheately, an 

inventor on the ‘473 patent, testified 

Q. 

there a counterpart filed in Europe that related to CX-40, the ‘262 

Let me ask you a question. Was there also a counterpart, was 

A. Yes, there was. 

Q. And if you could turn to RX-311 [the combined Wheatley PCT 

application], could you identify this document as to whether or not it 

was the PCT or European counterpart of the ‘262? 

A. Yes, it is. 

Q. 

between Exhibit 3 1 1 and CX-40? 

And were there any material differences that you are aware of 

A. So the two figures in CX-40 and RX-3 11 are both shown right 

here, figure 5, the first one and figure 5 from the second. I believe 

that there is no material difference. 

Q. All right. Thank you. Looking at CX-40, please, Doctor, CX-40, 

58 CX-40 is U.S. Patent No. 5,267,262 with named inventor Charles E. Wheatley, III and 

assigned to QUALCOMM. (CX-40.) It is titled “Transmitter Power Control System” and is 

based on application Ser. No. 773,047 filed October 8, 1991. 

180 
that's the '262 patent. Is there any power control disclosed in CX-40? 

A. The answer is yes. 

Q. Okay. Can you describe it, please? 

A. 

control, which is best and most simply shown in firmre 5. 

This describes an open and a closed loop, combination of power 

*** 

Q. 

CX-40. besides what you have described as closed loop and open loop? 

Was there any other power control techniques utilized in the, in 

A. This is all about closed loop and open loop in an analog - fashion. 

JUDGE LUCKERN: So your answer is no. that there is nothing; else 

disclosed? 

THE WITNESS: Not that I know of, no. 

BY MR. McMAHON: 

*** 

Q. 

power control techniques besides what's disclosed? 

Looking at figure 5 of CX-40, did you consider any other -- any 

JUDGE LUCKERN: Well, in figure 5, only the closed loop and open 

loop is disclosed in figure 5, isn't there, and that's all there is? 

THE WITNESS: That's what it is all about is closed loop and open 

loop. *** 

JUDGE LUCKERN: There wasn't any objection, but looking at figure 

5, did you consider any other power control techniques -- well, that's 

the question. 

MR. VERHOEVEN: I don't even -- I don't believe I objected to that 

question, did I? 

JUDGE LUCKERN: I don't see any objection there. I just made that 

comment here. We have got an answer. All right. However you want 

181 
to proceed. 

BY MR. McMAHON: 

Q. Can you answer the auestion, Doctor? Do you need it back? 

A. Did I consider others? 

Q. Power control techniaues? 

A. Other than own and closed loop? 

Q. That's correct. 

Q. Whvnot? 

A. 

evervthing. it worked. It solved the near-far problem. 

Because that combination as we had worked out in the tests and 

(Tr. at 265-70 (emphasis added).) Later in the hearing when QUALCOMM's expert Verdu was crossexamined on Wheatley's testimony, supra, Verdu testified: 

Q. 

which is the primary prior art in this case, was the 

solved the near-far problem, right? 

So Dr. Wheatley testified that his technology that he developed, 

technology that 

A. Well, Dr. Wheatley said what he said there, but one thing is to 

solve a problem in the abstract and come up with a circuit that may not 

be a simple circuit to implement, that may not be suitable for small 

handsets that have to be produced in very, very large quantities. 

So one thing is solving a problem and another one, another issue is 

solving a problem in a way that can be produced cost effectively. 

Dr. Wheatley testified that his technology solved the near-far problem, 

correct? 

A. That's what it says here. 

Q. Now, you showed us a number of articles on your direct 

182 
examination [to support commercial issues of the patents in issue]. Did 

any of those articles specificallv refer to look-up tables? 

Q. None of them did, did they? 

Q. Did any of those articles refer to a maximum gain - setting? 

Q. None of them did, did thev? 

*** 

183 
184 
1 

(Tr. at 3756-62.) 

Verdu later testified that he{ 

}” (Tr. at 3765.) However, 

there is no testimony from Verdu that he made an analysis of said patents and said other patents 

pendin? to determine whether they were responsible for the commercial success of QCP-8UO versus 

the other patents that were listed. Moreover, it is a fact that inventor Wheatley testified that it was the 

combination of the open and closed loop that solved the “near-far” problem. 

Based on the foregoing, the administrative law judge rejects complainant’s argument that there 

is evidence of secondary considerations that indicate that the asserted patents are not obvious.6o 

59 The ‘408 patent was filed on March 20, 1995 and the ‘220 patent was filed on 

September 23, 1995, which dates were before the 1996 copyright date of the user manual (CX187C) that had referenced the ‘473 patent, which did not issue until September 19, 1995. Hence, 

said filing dates of the ‘408 patent and ‘220 patent and the copyright date of CX-187C indicate 

that the pendings of the applications for the ‘408 and ‘220 patents could have been on the list. 

6o While the administrative law judge has found the absence of secondary considerations 

as they relate to the ‘220 and ‘408 patents, he has found in Section VIII.B, supra, that 

respondents have not established, by clear and convincing evidence, that said patents are invalid 

based on any prior art. 

185 
E. Validity Best Mode 

Respondents argued that the ‘473 patent is invalid because QUALCOMM failed to disclose 

the best mode for carrying out the claimed invention in issue; that the evidence shows that the 

inventors subjectively considered a two RAM Table embodiment using linear interpretation to be the 

best mode for the linearizer; and that QUALCOMM’s identification of a linearizer in the ‘473 patent 

without more, was insufficient to satisfy its obligations to disclose its best mode in detail. (RBr at 130- 

Complainant argued that respondents have not shown, by clear and convincing evidence, that 

the inventors or their attorneys failed to disclose the best mode for practicing the ‘473 patent. (CBr at 

131-6.) 

The staff argued that respondents’ evidence as a whole fails to show that the inventors 

considered an undisclosed linearizer to constitute the best mode for practicing the ‘473 patent. (SBr at 

77-8 1 .) 

Title 35 U.S.C. 0 112, ¶ 1 requires, in relevant part, that the patent specification “set forth the 

best mode contemplated by the inventor of carrying out his invention.” The Federal Circuit has 

articulated a “two-prong” inquiry for determining best mode disclosure compliance: 

Our case law explicating the best mode requirement focuses on a 

two-prong inquiry. . . . First, the factfinder must determine whether, at 

the time of filing the application, the inventor possessed a best mode 

for practicing the invention. . . . Second, if the inventor possessed a best 

mode, the factfinder must determine whether the written description 

disclosed the best mode such that one reasonably skilled in the art 

could practice it. . . . The first prong involves a subiective insuiry, 

focusing on the inventor’s state of mind at the time of filing. . . . The 

second prong involves an objective inquiry, focusing on the scope of 

the claimed invention and the level of skill in the art. 

186 
Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955,963 (Fed. Cir. 2001) (emphasis added). 

The Federal Circuit has explained the subjective nature of the best mode inquiry: 

Unlike enablement, the existence of a best mode is a purely subjective matter 

depending upon what the inventor actually believed at the time the application was 

- filed. Because of the subjective nature of the best mode inquiry, the best mode 

disclosure requirement - unlike enablement - cannot be met by mute reference to the 

knowledge of one of skill in the art. 

Baver AG v. Schein Pharms., Inc., 301 F.3d 1306, 1314 (Fed. Cir. 2002) (emphasis added). 

Compliance with the best mode requirement is a question of fact. Northern Telecom Ltd. v. 

Samsuna Electronics Co., Ltd., 215 F.3d 1281, 1286 (Fed. Cir. 2000). Moreover 

“the first task in any best mode analysis is to define the invention at 

hand. The definition of the invention, like the interpretation of the 

patent claims, is a legal exercise, wherein the ordinary principles of 

claim construction apply.” 

- Id. at 1286-87. A finding of patent invalidity based on best mode “requires clear and convincing 

evidence that the inventor both knew of and concealed a better mode of carrying out the claimed 

invention than that set forth in the specification.” Liauid Dynamics Corn. v. Vaughan Co., 449 F.3d 

1209, 1223 (Fed. Cir. 2006) (citations omitted). 

F.2d 1561, 1570 (Fed. Cir. 1987). 

also Panduit Corn. v. Dennison Mfg.. Co., 810 

The QCP-800 was the first QUALCOMM product to practice the patents in issue. (RFF XI. 1 

(undisputed).) The QCP line of phones used linearizers comprised of{ 

} (RFF XI.2 (undisputed).) The QCP-800 used a mobile station modem chip called 

the MSM2P which was the brains of the phone. (RFF XI.3 (undisputed).) MSM2P chip implemented 

the power control, in the QCP-800. (RFF XI. 4 (undisputed).) The MSM2P chip used linearizers 

containing{ } (RFF XI. 5( undisputed).) 

187 
Respondents argued that the design for the linearizers of the MSM2P was disclosed in a 

number of Qualcomm documents prior to the application for the ‘473 patent on February 28, 1994. 

RFF XI.6. Hence, it is argued that said design should have been disclosed in the ‘473 patent. 

The administrative law judge finds unrefuted testimony from inventor Weiland that at the time 

that the application for the QUALCOMM patents at issue in this investigation was filed on February 

}@Veiland, Tr. 

} (JX-299C (Weiland 

C which is a document titled 

}dated January 

28, 1994,{ 

527-528) and also specifics regarding the{ 

Dep.) at 96-98; Weiland, Tr. at 537-38.) Responc,mts rely on n 

{ 

10, 1994. (RFF XI.11 (undisputed).){ 

4 

}(Weiland, Tr. at 529, 532-36; 

JX-124C (MSM2 HLD) at QNlTC23339 (also JX-45 at QNITC23339).) 

Respondents refer to JX-257C which is a document titled{ 

}dated January 26, 1994. (RFF XI.18 (undisputed).) JX-257C contains 

a figure, Figure 3.2.2.1, showing{ 

} However it states that{ }(JX-257C 

at QNITC0012748-49.) Moreover JX-257C is a proposed design for an{ 

} (JX-257C at QNITC0012732.) In addition in late January 1994, QUALCOMM engineers 

created a preliminary draft (denoted{ 

what they called the{ 

proposed design elements. Said draft states: { 

} to emphasize its very preliminary nature) for 

} that would be used to test and verify the early stage 

} (JX-257C at QNITC 0012732.) 

188 
Respondents rely on JX-150 which is U.S. Patent No. 5,627,857 (the ‘857 patent). The named 

inventor of the ‘857 patent is Nathaniel Wilson,6l and the patent’s assignee is QUALCOMM. 

(JX-150.) The patent application for JX-150 was filed on September 15, 1995 and the patent bears the 

title LINEARIZED DIGITAL AUTOMATIC GAIN CONTROL. (JX-150.) The subject of the ‘857 

patent was patented on May 6, 1997. (JX-150.) The ‘857 patent does disclose “a linearized digital 

control apparatus for automatic gain control (AGC) in a radio.” (RFF XI.36 (undisputed).) Figure 6 of 

JX-150 discloses the preferred embodiment of the linearizer “us[ing] two small lookup tables and 

linear interpolation” which “simplifies the circuitry and reduces the amount of calibration data the 

radiotelephone must store. The linearizer . . . is comprised of two random access memory (RAM) 

look-up tables. One stores slope 610 and the other stores offset 605.” (RFF XI.37 (undisputed).) 

It is a fact that the ‘857 patent was filed on September 15, 1995 some seventeen months after 

the February 28, 1994 filing of the application that led to the ‘473 patent. Respondents argued that 

inventor Wilson worked out a linerization table using{ 

} no later than September 13, 1993 and 

refers to RX-236 which states: 

{ 

1 

(RX-23C at QNITC1519862).62 (see RFF XI.46.) Wilson’s three-sentence notation in RX-23C 

however includes no diagrams or details. Moreover inventor Wilson testified 

61 Wilson is also a named inventor on the ‘473 patent. (JX-1.) 

62 Incorrectly cited by respondents as QNITC15198862. 

189 
And then the 857 specifies that the tables contained slope and offset 

values, which implies that there’s linear interpolation happening in the 

linearizers, which is not described at all in the 473 patent. It’s not 

described in the 473 patent because we believe that the claims of 473 

was a hiph level invention including linearizers. The claim of 857 is 

different and includes, for example, a detailed recitation of a “receive 

linearizer having a plurality of receive slope values and a plurality of 

receive offset values” whereas the more general claim of the 473 recites 

merely a “receive linearizer”. By “optimize” I mean that for the 857 

claim, I was focused on the specific design of the linearizer to conserve 

memory as a cost and production consideration whereas, for the 473, 

we were more focused on control. 

(JX-361 at 164 including Errata (emphasis added).) 

Based on the foregoing the administrative law judge finds that respondents have not 

established, by clear and convincing evidence, that the inventors of the ‘473 patent subjectively 

considered a particular AGC linearizer to be the best mode of practicing the claimed invention of the 

‘473 patent before the February 28, 1994 filing date of said patent. 

X. Infringement 

The unfair acts covered under Section 337 include “all forms of infringement, including drect, 

contributory, and induced infringement.” Certain Home Vacuum Packa~ng Machines, Inv. No. 337- 

TA-496, Order No. 44,2004 ITC LEXIS 202 * 2 n.2 (March 3,2004). To establish infringement, 

there must be a preponderance of evidence. Kao Cop. v. Unilever United States. Inc, 441 F.3rd 

963 (Fed. Cir. 2006). A determination of patent infringement encompasses a two-step analysis. 

Advanced Cardiovascular Svstems, Inc. v. Scimed Life Systems, Inc., 261 F.3d 1329, 1336 (Fed. Cir. 

2001) (Scimed). First, the court determines the scope and meaning of the patent claims asserted, and 

then properly construed claims are compared to the allegedly infringing device. Id. “Literal 

infringement of a claim exists when each of the claim limitations reads on, or in other words is found 

190 
in, the accused device.” Allen Enineering Corp. v. Bartell Indus., 299 F.3d 1336, 1345 (Fed. Cir. 

2002). 

Under the doctrine of equivalents, “a product or process that does not literally infringe upon the 

express terms of a patent claim may nonetheless be found to infringe if there is equivalence between 

the elements of the accused product or process and the claimed elements of the patented invention.” 

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,21 (1997). Equivalency may be 

determined using the “triple identity test” and thus “focusing on the function served by a particular 

claim element, the way that element serves that function, and the result . . . obtained by that element 

. .” - Id. at 39. Regardless of the linguistic framework of the test used, the “essentially inquiry” is: 

“[dloes the accused product or process contain elements identical or equivalent to each claimed 

element of the patented invention?, Id. at 40. 

Direct infringement includes the making, using, selling, offering for sale and importing into the 

United States an infringing product, without authority. 35 U.S.C. 5 271(a). To prove direct 

infringement, the plaintiff must establish by a preponderance of the evidence that one or more claims 

of the patent read on the accused device either literally or under the doctrine of equivalents. Scimed, 

261 F.3d at 1336. 

A person may also infringe a patent claim indirectly. Section 271 (b) of the Patent Act 

provides that “[wlhoever actively induces infringement of a patent shall be liable as an infringer.” To 

establish liability for induced infringement, “a patent holder must prove that once the defendants knew 

of the patent, they actively and knowingly aided and abetted another’s direct infringement.” DSU 

Med. COT. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (DSU Med. Corp.) (citations omitted). 

However, “[tlhe mere knowledge of possible infringement by others does not amount to inducement; 

191 
specific intent and action to induce infringement must be proven.” Id. 

Additionally, 35 U.S.C. 8 27l(c) provides that: 

[wlhoever offers to sell or sells within the United States . . . a 

component of a patented machine, manufacture, combination or 

composition . . . constituting a material part of the invention, knowing 

the same to be especially made or especially adapted for use in an 

infringement of such patent, and not a staple article of commodity of 

commerce suitable for substantial noninfringing use, shall be liable as a 

contributory infringer. 

Thus, “[iln order to succeed on a claim of contributory infringement, in addition to proving an act of 

direct infringement, plaintiff must show that defendant knew that the combination for which its 

components were especially made was both patented and infringing, and that defendant’s components 

have no substantial non-infringing uses.” Cross Med. Prods.. Inc. v. Medtronic Sofamor Danek. Inc., 

424 F.3d 1293, 1312 (Fed. Cir. 2005). 

Direct infringement is a necessary element of induced and contributory infringement. DSU 

Med. Corp., 471 F.3d at 1303. 

A. The Accused Products 

Complainant’s infringement analysis refers to{ 

} (CBr at 44.) Complainant argued that CDX-45C illustrates its expert Verdu’s 

opinion which sets forth how the hardware and software components and signals interact in the 

accused Nokia handsets and that all of the accused products infringed. (CFF H3.) 

Respondents argued that complainant has not established infringement. They admitted that 

CDX-45C represents complainant’s expert Verdu’s opinions regarding the{ }accused products, 

which incorporate the{ } but argued that CDX-45C is inaccurate because 

it fails to identify certain power control -related components contained in the accused Nokia handsets 

192 
with{ 

because Nokia’s accused handsets with the{ 

} Respondents further argued that CDX-45C is inaccurate 

} have certain hardware-based structural 

and functional differences from the{ 1 

The staff argued that none of the accused products have been proven to directly infrirrge any of 

the asserted claims of the ‘473, ‘408 and ‘220 patents and further because of no direct infringement, 

induced and contributory infringement “will not be discussed.” (SBr at 47.) It is further argued that for 

purposes of this investigation, all the accused products are similar. (SPFF 23.) 

The accused handsets have been grouped into three categories based on the Radio Frequency 

Oengine: { } (CDX-52C; SPFF 21 (undisputed).). These RF 

engines constitute the relevant hardware components within the handset. (Verdu, Tr. at 1047-48; SPFF 

21 (undisputed).) The accused Nokia handsets operate on Global System for Mobile Communications 

(GSM) cellular systems, and comply with the General Packet Radio Services (GPRS) and Enhanced 

GPRS (EGPRS or EDGE) standards. (Petterson, Tr. at 2949; SPFF 25 (undisputed).) Qualcomm 

relies upon one of its baseband processors, the MSM6550, used in conjunction with a receiver, the 

RFR6500, and a transmitter, the RFT6150, to satisfy the domestic industry requirement. (Verdu, Tr. at 

1628; SPFF 26 (undisputed).) 

Regarding respondents’ arguments that CDX-45C is inaccurate as to thp_ accused products, 

respondents do not argue that said “power control-related components’’ in the{ }affect 

the infringement analysis. (see, generally, RBr; RRBr.) Although respondents have argued in their 

post-hearing submissions that the differences of the{ } do affect the infringement 

analysis, said arguments were not made during the trial, and are unsupported by expert trial testimony. 

(See Section X.B.7, infra.) Therefore, the administrative law judge finds that the{ } accused 

193 
products are representative of all 117 accused products. (SBr at 47.) 

B. Claim 1 Of The ‘473 Patent 

Preamble 

The preamble of claim 1 of the ‘473 patent reads: 

“A method for correcting transmit power of a radio device having a 

plurality of predetermined calibration values and a reference voltage 

signal, the radio device transmitting and receiving on a plurality of 

frequencies, each frequency having a frequency index, the method 

comprising the steps of:” (JX-1 at 7:9-14.) 

The administrative law judge has found in Section VII.B.l, supra, that the preamble of claim 1 of the 

‘473 patent is a limitation on the claim. In Sections X.B.4, X.B.5, X.B.8, and X.B.9, infra, the 

administrative law judge finds that the accused products have no calibration values as required by the 

elements of claim 1 of the ‘473 patent. As the administrative law judge has found, supra calibration 

values have antecedent basis in the preamble. Section VII.B.l, supra. Therefore, the 

administrative law judge finds that the accused products do not have all the elements required by the 

preamble of claim 1 of the ‘473 patent. 

1. The first element of claim 1 “receiving a first signal having a first gain, a first frequency of the 

plurality of frequencies, and the first frequency having a first frequency index” 

Complainant argued that the Nokia accused handsets practice this first element of claim 1 of 

the ‘473 patent, and that the only disputed issue is whether the accused products have a “frequency 

index.” (CBr at 45.) Specifically, complainant argued that: 

(CBr at 36 (emphasis in original).) 

1 

194 
Respondents argued that: 

{ 

(RRSPFF 99c.) 

The staff argued that Nokia does not contest QUALCOMM’s allegation that its accused 

devices practice “elements [a], [b], [Q, and [g] of claim 1 of the ‘473 patent,” citing CX-243C; RDX62C: 16; Helgert, Tr. at 2504-05; that Nokia also does not contest QUALCOMM’s allegation that its 

accused devices practice “elements [a] and [d] of claim 3 of the ‘473 patent,” citing CX-243C; RDX62C:17; Helgert, Tr. at 2505-06 and that in any event, QUALCOMM has met its burden of proof with 

respect to those uncontested claim elements, citing Verdu, Tr. at 1299-131 1, 1402-08, 1439-40, 1452. 

With respect to the remaining elements, the staff argued that Nokia challenges the assertion that its 

handsets satisfy the following claim limitations: (1) integrator, (2) the automatic gain control setpoint, 

(3) the frequency index, and (4) the first [receive] and second [transmit] calibration values, citing 

RDX-62C:16-17; Helgert, Tr. at 2504-06; that in the staffs view, the evidence presented at the hearing 

supports a finding that Nokia’s handsets do not “generat[e] a second [transmit] calibration value,” and 

therefore do not meet “elements [h] and [i] of claim 1 or element [e] of claim 3 of the ‘473 patent,” 

either literally or under the doctrine of equivalents. The staff, however, believes that the evidence 

supports a finding that Nokia’s handsets meet the other claim elements of said claims 1 and 3. (SBr at 

47-8.) 

The private parties agree that respondents’ accused products practice this first element of claim 

1 of the ‘473 patent, except for disputing the claim term “frequency index.” (CFF H23 (undisputed).) 

195 
The administrative law judge has construed the term “frequency index” as “a value specifying the 

current center frequency on which the receive chain is operating, or the current center frequency on 

which the transmit chain is operating.” (see Section VII.B.2, supra.) The parties admit that in 

CDX-45C, Rx UHF is the first signal recited in this claim element. (CFF H24 (undisputed).) The 

received signal is received within one of four different bands: GSM-850, GSM-900, GSM-1800 and 

GSM-1900. (Pettersson, Tr. at 2904,2907-08.) { 

} (Verdu, Tr. at 1946-47; Frederiksen, Tr. at 2826-27; Helgert, Tr. at 2457-58,2466-67.) As 

found in Section VII.B.2, supra, a “frequency index” is not limited to only a channel, but may be an 

index to a band. Therefore, the administrative law judge finds that{ 

frequency index” as recited in this claim element. Based on the foregoing, the administrative law 

judge finds that respondents’ accused products practice the first element of claim 1 of the ‘473 patent. 

2. The second element of claim 1 ‘‘determining a receive power value of the first signal” 

Complainant argued that the Nokia accused handsets practice this second element of claim 1 of 

} is a “first 

the ‘473 patent, and that there is no dispute regarding this element. (CBr at 46.) 

Respondents do not dispute that their products perform this second element. (CFF H37, CFF 

H38 (undisputed).) Also the staff argued that respondents did not dispute that their accused products 

practice said second element. See supra. Hence, the administrative law judge finds that the Nokia 

accused products practice the second element of claim 1 of the ‘473 patent. 

196 
3. The third element of claim 1 “generating an automatic gain control setpoint in response to the 

receive power value and the reference voltage signal” 

Complainant argued that the Nokia accused handsets practice this third element of claim 1 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 46.) Specifically, 

complainant argued that the AGC setpoint is{ } and is computed as{ 

} (CBr at 47.) 

1 

The administrative law judge has found, supra, that the term “automatic gain control setpoint,” 

is construed as “the value generated by integrating a detected power value with respect to a reference 

value to automatically change the gain of a receiver or transmitter.” (see Section VII.B.3.) 

Considering literal infringement, complainant argued with regard to the{ 1 

{ 

197 
(CBr at 46-47.) { 

198 
} Based on the foregoing, the 

administrative law judge finds that Nokia’s accused products do not literally practice the third element 

of claim 1 of the ‘473 patent. 

Regarding the doctrine of equivalents, complainant argued: 

{ 

1 

(CBr at 52-53.) As noted, supra, the signal labeled{ 

} Because the claim language is specific about the 

requirement for an integration of a received power and a reference voltage, the administrative law 

judge finds that the reference signal as represented in CDX-45C does not perform substantially the 

same function as required by the claim element. Moreover, in regard to the transmit amplifier, the 

{ 

} (RFF V.28 (undisputed).) Furthermore, 

199 
complainant’s expert Verdu stated that{ } has no dependance on the reference voltage level: 

1 

(Verdu, Tr. at 1433-1434 (emphasis added).) Therefore, as the accused products attempt to remove 

200 
from{ 

} the administrative law judge finds that the accused products 

cannot be said to use{ 

element. Therefore, the administrative law judge finds that complainant has not established that the 

} in substantially the same way as disclosed in this thrd claim 

accused products practice said third element by the doctrine of equivalents. 

While the staff argued that the output of{ } is an automatic gain control setpoint 

(SBr at 48-49), the administrative law judge finds that said output cannot literally be the claimed 

automatic gain control setpoint because said signal is not the result of a direct integration of a reference 

voltage level and a detected power level. Also he finds that said output does not satisfy this third claim 

element under the doctrine of equivalents for the same reasoning as regarding{ 

} and hence it cannot be 

used in substantially the same way as the claimed automatic gain control setpoint. 

4. The fourth element of claim 1 “selecting a first predetermined calibration value in response to 

the automatic gain control setpoint and the first frequency index” 

Complainant argued that the Nokia accused handsets practice this fourth element of claim 1 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 53.) Specifically, 

complainant argued that the signal labeled { } in CDX-45C is the first predetermined calibration 

value and is computed in response to the{ 

} in selecting said the first calibration value. (CBr at 53-54.) 

Respondents argued that the accused products do not use a frequency index, that{ } is 

not an AGC setpoint, and that{ } block and hence 

that the accused products cannot practice said fourth element. (RBr at 55.) 

} is not an input to the{ 

201 
The staff argued that the{ 

} hence that the accused products practice said fourth element. (SBr at 

51.) 

The administrative law judge has found in Section X.B.l supra, that{ } isa 

frequency index. However the administrative law judge has found in Section X.B.3 supra, that 

{ 

that said fourth element is not literally practiced by the accused products. 

} is not an automatic gain control setpoint. Therefore, the administrative law judge finds 

Regarding the doctrine of equivalents, the administrative law judge has found in Section 

X.B.3, supra, that the signal{ 

doctrine of equivalents. As this fourth element of the claim requires an automatic gain control 

setpoint, and no such signal, either literally or under the doctrine of equivalents is used, the 

administrative law judge finds that the accused products cannot perform substantially the same 

function in substantially the same way as required by the claim element. Therefore, the administrative 

law judge also finds that said fourth element is not practiced by the accused products under the 

doctrine of equivalents. 

5. 

} is also not an automatic gain control setpoint under the 

The fifth element of claim 1 “adjusting the first gain in response to the first calibration value” 

Complainant argued that the Nokia accused handsets practice this fifth element of claim 1 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 55.) Specifically, 

complainant argued that { 

} (CBr at 55.) 

Respondents argued that Nokia’s accused handsets do not include a first predetermined 

202 
calibration value because the{ 

} Hence it is 

argued that the accused products do not practice this fifth element. (RRCFF H136a.) 

The staff argued that the{ } parameter in Nokia’s handsets meets the requirement of a 

“first predetermined calibration value” in this element of claim 1 because it is selected in response to 

both the AGC setpoint and the first frequency index and hence that the accused products practice said 

fifth element. (SPFF 117.) 

The administrative law judge found in Section X.B.4, supra, that the accused products do not 

have a first calibration value. Therefore, the administrative law judge finds that said fifth element of 

claim 1 of the ‘473 patent is not practiced by the accused products. 

6. The sixth element of claim 1 “transmitting a second signal having a second gain and a second 

frequency of the plurality of frequencies, the second frequency having a second frequency 

index” 

Complainant argued that the Nokia accused handsets practice this sixth element of claim 1 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 56.) Specifically, 

complainant argued that the only dispute is whether a frequency index that identifies a frequency band 

satisfies the claim, and that the variable labeled{ } in CDX-45C is the frequency index that 

specifies on which transmitter frequency or transmitter band the transmitter is operating. (CBr at 56- 

57 .) 

Respondents argued that the { } value identifies only the band on which the handset 

is transmitting because different hardware is used for each band, and that the{ } value does 

not identify the specific frequency channel, within that band, on which the transmitter is operating. 

203 
Hence, it is argued that the accused products do not practice this sixth element. (RBr at 54.) 

The staff argued that respondents do not contest QUALCOMM’s allegation that their accused 

devices practice this sixth element of claim 1 of the ‘473 patent. (SPFF 99.) 

Respondents do not appear to dispute any portion of this claim, except regarding the 

“frequency index” limitation. (See generally, RBr at 54-66; RRBr at 41-42.) The{ 

specifies on which transmitter band the handset is transmitting. (Verdu, Tr. at 1406:2-12, 

1416:l-1417: 12; Helgert, Tr. at 2468: 13-24693 Frederiksen, Tr. at 2873: 15-2875:2; JX-132C at 

0000099: 16520, 16534-35, 16540-41; JX-63C:43.) By the same reasoning for{ 

} variable 

1 

is a frequency index. Based on the foregoing, the administrative law judge finds that the accused 

products meet this sixth element claim limitation. 

7. The seventh element of claim 1 “determining a transmit power value of the second signal” 

Complainant argued that the Nokia accused handsets literally practice this seventh element of 

claim 1 of the ‘473 patent. (CBr at 57.) Complainant further argued that all of respondents’ accused 

products practice said claim element, including those using the{ 

Respondents argued that the accused handsets { 

} (CRBr at 43.) 

} as required by this element of the claim 1 of the ‘473 patent and hence do not 

practice said seventh element. (RBr at 62.) Respondents do not appear to dispute that the other 

accused products meet said seventh element claim limitation. (SPFF 99 (undisputed in relevant part).) 

The staff did not provide an argument regarding this seventh claim element, but did not object 

to respondents’ argument regarding non-infringement of the{ 

Nokia’s Proposed Findings at RFF V.7 1 .) 

} (see Staff Reply to 

204 
Respondents disclaimed any argument regarding this claim element in their interrogatory 

responses. (See CX-243C at Exhibit F, p. 3.) During a telephone conference on September 7,2007, 

counsel for respondents also disclaimed any argument regarding infringement of the seventh element 

of claim 1 of the ‘473 patent: 

JUDGE LUCKERN: All right, let’s go to the infringement argument 

that’s been made that I see here. And let’s go to claim one of the 473 

patent. 

I’m now talking about infringement or claim construction, but 

as far as what is construed to be infringing and I’ll ask the Respondents 

and the staff, but I didn’t find any arguments of the Respondent or the 

staff. Of course to infringe you’ve got to look at the whole claim in 

itself. But I have in the past sometimes broken it down into elements 

of the claim and of course I come out with no infringement if it hasn’t 

met one of the elements. 

So with that comment that I’ve just made on the record I didn’t 

see where the Respondent or the staff offered any argument with 

respect to infringement of claim one of the 473 patent with respect to 

the, one, the preamble of claim one, two, the first element of claim one. 

And I’m talking about the 473 patent. That, of course, “element 

receiving the first signal, having a first gain, a first frequency of the 

plurality of frequencies, first frequency having the first frequency 

index.” 

Also I didn’t see where the Respondent or the staff offered any 

argument with respect to infringement as it relates to the second 

element of claim one of the 473 patent which reads, “Detennining a 

received power value of the first signal.” 

Also, I didn’t find any arguments of the Respondent and the 

staff with respect to the fifth element of claim one of the 473 patent, 

again with respect to infringement. And that, of course, element reads, 

“adjusting the first gain in response to the first calibration value.” 

Same, I didn’t see any arguments with respect to 

non-infringement -- of course you’ve got to infringe the whole claim 

but looking at these particular elements made anything about the sixth 

element of claim one of the 473 patent which reads, “transmitting a 

205 
second signal having a second gain and a second frequency of the 

plurality of frequencies, second frequency having the second frequency 

index.” 

The same thing with respect to the seventh element, I didn’t see 

any armments from the staff and Respondent, this is with respect to 

claim one of the 473 patent. That element reads, “determining a 

transmit power value of the second signal.” - 

And also with respect to the ninth element of claim one as to 

any infringement with respect to that particular element. That reads, 

“adjusting the second gain in response to the second calibration value.” 

Now, I’ve gone through a lot of the clauses of claim one of the 

473 patent but you people, the staff and Respondent, have lived with 

this for over a year so you should know precisely where you stand with 

respect to non-infringement. Am I correct, Mr. Verhoeven, with 

respect to offering no arguments as far as these particular elements as 

to why these do not infringe? 

*** 

MR. VERHOEVEN: The seventh element we don’t dispute. So you’re 

correct on that one. 

(Tr. at 91-94,96 (emphasis added).) Moreover respondents did not raise any argument regarding this 

seventh claim element at the hearing. In fact, the only citation to the hearing transcript that 

respondents made in their proposed findings is the following: 

Q. The next slide, RDX-61C, page 24, do you see that? 

A. Ido. 

Q. Did you prepare this slide? 

A. Idid. 

Q. Did you prepare the diagram disclosed in this slide? 

A. Yes, I did. 

Q. What does this slide represent? 

206 
A. This slide now focuses on the transmit side of the Nokia handsets. 

Q. 

accused Nokia handsets, correct? 

And this is intended to represent, with the exception of the{ 

} this is intended to represent the functionality of all of the 

A. 

Q. Yes. 

A. Yes. 

With the possible exception of some of the{ 1 handsets. 

(Helgert, Tr. at 2371-72 (emphasis added).) The answer emphasized in this excerpt was in response to 

a leading question by counsel, and said answer was not definitive. No other mention of{ } is 

cited, and no reason is given, either in this excerpt or in the post-hearing submissions, for respondents’ 

change of position. Respondents even argued in their post hearing reply submission that “Qualcomm’s 

post-hearing brief does not contain any evidence or argument concerning Nokia’s{ 

(FW3r at 45.) Such omission by QUALCOMM is not unexpected, given that respondents had led 

} handsets.” 

each of the other parties and the administrative law judge to believe that there was no dispute regarding 

{ } handsets. Complainant did make reference to this element in its rebuttal to Nokia’s proposed 

findings of fact. (CRRFF lII.203-205 CRRFF V.55-56.) However, the administrative law judge finds 

that respondents have waived their right to so argue non-infringement in view of their discovery 

responses, testimony at the hearing and, with no explanation or warning, after the hearing has 

concluded, especially where, as here, no expert trial testimony exists exploring the issue. Based on the 

foregoing, the administrative law judge finds that all of the accused products practice this seventh 

element of claim 1 of the ‘473 patent. 

207 
8. The eighth element of claim 1 “generating a second calibration value in response to the 

automatic gain control setpoint, the second frequency index, and the transmit power value; 

and” 

Complainant argued that the Nokia accused handsets practice this eighth element of claim 1 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 58.) Specifically, 

complainant argued that the{ 

} (CBr at 58-59.) 

Respondents argued that no “second calibration value” exists in the accused products because 

said value must be predetermined, and in the accused products it is{ 

} (Rl3r at 57-59.) 

The staff argued that the accused products do not generate a second calibration value because 

{ 

} and hence that the accused 

products do not practice said eighth element. (SBr at 52-54.) 

Complainant, in support of its argument, argued that the linear combination of{ 

} block in the middle of CDX-45C. (CBr at 58-59.) Complainant further argued that the box 

labeled{ 

} The administrative law judge has 

208 
found in Section X.B.3, supra, that{ 

said signal is not even{ 

law judge has found in Section VII.B.4 that the claim term “calibration value(s)” means “corrected 

gain control settings loaded into a look-up table during factory calibration or production testing of the 

radio.” Although{ 

} is not an automatic gain control setpoint, and also that 

} Moreover, the administrative 

} Therefore, the administrative law judge finds that this element is 

not literally practiced by the accused products. 

Regarding the doctrine of equivalents, the claims require that an automatic gain control 

setpoint, a frequency index, and a transmit power value be used to generate the second calibration 

value. As found, in Section X.B.3 supra,{ 

} Therefore, the administrative 

law judge finds that the accused products do not perform substantially the same function in 

substantially the same way, and cannot achieve substantially the same result. Based on the foregoing, 

the administrative law judge finds that the accused products do not practice this eighth element of 

claim 1 of the ‘473 patent. 

9. The ninth element of claim 1 “adjusting the second gain in response to the second calibration 

value” 

Complainant argued that the Nokia accused handsets practice this ninth element of claim 1 of 

209 
the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 61.) Specifically, 

complainant argued that the second calibration value, which is the{ 

} (CBr at 61.) 

Respondents argued that Nokia’s handsets do not generate a second calibration value in 

response to the AGC setpoint, the second frequency index and the transmit power value to adjust the 

second gain under any party’s proposed constructions and thus that the accused products do not 

practice said ninth element. (RRCFF H221a.) 

The staff argued that the Nokia accused handsets do not practice said ninth element. (SBr at 

48.) 

The administrative law judge has found, supra, that the accused products do not have a 

“second calibration value.” Therefore, the administrative law judge likewise finds that the accused 

products do not practice this ninth element of claim 1 of the ‘473 patent. 

Based on the foregoing, the administrative law judge finds that complainant has not 

established, by a preponderance of the evidence, that the accused products literally or under the 

doctrine of equivalents infringe claim 1 of the ‘473 patent. 

C. Claim 3 Of The ‘473 Patent 

Preamble 

The preamble of claim 3 of the ‘473 patent reads: 

“A radio performing transmit power calibration, the radio transmitting 

and receiving signals having a plurality of frequencies, each frequency 

having a frequency index, the radio transmitting signals through a 

variable gain, transmit amplifier having a control input and receiving 

signals through a variable gain, receive amplifier having a control 

input, the radio comprising ...” 

210 
(JX-1 at 7:43-49.) 

The administrative law judge has found in Section VII.B.l, supra, that the preamble of claim 3 

of the ‘473 patent is a limitation on the claim. Respondents have adrmtted that the accused products 

are radios. (RFF III.8 (undisputed); ROCFF E27; RRCFF E27a-d.) The administrative law judge has 

also found in Section X.B.l, supra, that the accused products have a frequency index. Respondents 

further have admitted that their accused products also contain a transmit amplifier and a receive 

amplifier. (CFF E34 (undisputed); RRCFF Hls; RRCFF H49b.) Therefore, the administrative law 

judge finds that the accused products contain all the elements required by the preamble of claim 3 of 

the ‘473 patent. 

1. The first element of claim 3 “a power detector, coupled to the receive amplifier, for generating 

a first power value from a received signal having a first frequency” 

Complainant argued that the Nolua accused handsets literally practice this first element of 

claim 3 of the ‘473 patent, and that Nokia does not dispute this. (CBr at 62.) 

Respondents do not provide a counter argument regarding said first claim element. (RBr at 63.) 

The staff argued that respondents did not contest that their accused products practice the first 

element of claim 3 of the ‘473 patent. (SBr at 47.) 

The parties agree that the accused products practice the first claim element. (CFF H232-233 

(undisputed).) Also, respondents, at the teleconference on September 7,2007, dlsclaimed any noninfringement argument regarding said first claim element: 

JUDGE LUCKERN: All right. Well, let’s go to claim three of the 473 

patent. Again I didn’t see any arguments by Respondents and the staff 

as to why the accused doesn’t infringe. Zeroing in on maybe perhaps 

what you said with respect to claim one, Mr. Verhoeven, but 

respect to the preamble on the second thing with respect to the first 

element that reads “a power detector coupled to the receiver amplifier 

21 1 
for generating a first power value from a received signal having a first 

freauency.” Or the fourth element, and that reads, “A second power 

detector coupled to the transmit amplifier for generating a second 

power value from a transmitted signal having a second frequency.” 

I’m reading in these elements because some people may have a 

different view as to what the first, second, third and fourth elements. 

But in any event as to the preamble the first element which I read into 

the record and also the fourth element am I correct, Mr. Verhoeven, 

that you haven’t zeroed in on non-infringement as it deals with those 

elements? 

MR. VERHOEVEN: Your Honor, you’re correct. I just want to have 

one caveat for the record though is that we do dispute that the accused 

devices have a frequency index. And the word “frequency” appears in 

those claims but they’re not talking, as I read them, about a frequency 

index. Well, I guess the preamble does say the frequency index. So we 

would dispute that we have that frequency index. So that one word, 

Your Honor, should be aware of. 

As to the elements one and four you’re correct, we aren’t raising 

arguments on those. 

(Tr. at 99-100 (emphasis added).) 

Based on the foregoing, the administrative law judge finds that the accused products practice 

the first element of claim 3 of the ‘473 patent. 

2. The second element of claim 3 “an integrator, coupled to the power detector, for generating an 

automatic gain control setpoint from the first power value” 

Complainant argued that the Nokia accused handsets practice the second element of claim 3 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 62.) Specifically, 

complainant argued: 

212 
(CBr at 62-63.) 

Respondents argued that the accused products do not include an integrator as defined in the 

‘473 patent; that{ } is not an AGC setpoint;{ 

} Hence, it is argued that the 

accused handsets do not have said second element. (RBr at 63-64.) 

The staff argued that the accused products do contain an integrator, and that the received 

power value is adjusted in Nokia’s handsets with respect to a reference value. (SBr at 50-51.) 

This second claim element requires an automatic gain control setpoint. The administrative law 

judge has found in Section X.B.3, suma, that the accused products do not use an automatic gain 

control setpoint, either literally or under the doctrine of equivalents. Therefore, the administrative law 

judge finds that the accused products do not practice the second element of claim 3 of the ‘473 patent. 

3. The third element of claim 3 “a receive linearizer, coupled to the integrator and the receive 

amplifier, for generating a receive calibration value in response to the automatic gain control 

setpoint and a first frequency index corresponding to the first frequency, the receive calibration 

value being coupled to the receive amplifier control input for adjusting the gain of the receive 

amplifier” 

Complainant argued that the Nokia accused handsets practice this third element of claim 3 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 63.) Specifically, 

213 
complainant argued: 

{ 

(CBr at 63-64.) 

Respondents argued that{ 

} is the receive linearizer, and the table does not generate a 

calibration value. Hence, it is argued that the accused products do not have said third element. (RBr at 

65-66.) 

The staff provided no argument regarding this third claim element. 

This third claim element requires an automatic gain control setpoint. The administrative law 

judge has found, supra, that the accused products do not use an automatic gain control setpoint, either 

literally or under the doctrine of equivalents. Therefore, the administrative law judge finds that the 

accused products do not practice the third element of claim 3 of the ‘473 patent. 

4. The fourth element of claim 3 “a second power detector, coupled to the transmit amplifier, for 

214 
generating a second power value from a transmitted signal having a second frequency; and” 

Complainant argued that the Nokia accused handsets literally practice this fourth element of 

claim 3 of the ‘473 patent, and that respondents do not dispute this. (CBr at 65.) 

Respondents argued that this fourth element of claim 3 requires a power detector, and 

{ 

} (RBr at 71.) 

Respondents do not dispute that the{ } handsets practice this fourth element. (RRCFF 

H265a.) 

The staff argued that respondents do not dispute that the accused products practice this fourth 

claim element. (SBr at 47.) 

Respondents do not provide an argument regarding said claim element in their interrogatory 

responses. (See CX-243C at Exhibit F, p. 6.) Respondents, at the teleconference on September 7, 

2007, disclaimed any non-infringement argument regarding this claim element. See transcript quoted, 

supra, as to the first claim element of said claim 3. Based on the foregoing, the administrative law 

judge finds that the accused products practice the fourth element of claim 3 of the ‘473 patent.63 

5. The fifth element of claim 3 “a transmit linearizer for generating a transmit calibration value in 

response to the automatic gain control setpoint, the second power value, and a frequency index 

corresponding to the second frequency, the transmit calibration value being coupled to the 

control input of the transmit amplifier for adjusting the gain of the transmit amplifier.” 

Complainant argued that the Nokia accused handsets practice this fifth element of claim 3 of 

the ‘473 patent both literally and under the doctrine of equivalents. (CBr at 66.) Specifically, 

complainant argued that “[tlhe transmit linearizer in the Nokia handsets is comprised of at least the 

63 For further reasoning rejecting respondents’ { } non-infringement argument, see 

- also Section X.B.7, supra. 

215 
} (CBr at 66.) 

Respondents argued that complainant cannot point to any functionality in the accused handsets 

that generate a calibration value based on the inputs of a frequency index, an automatic gain control 

setpoint, and the power value of the transmit signal. (RBr at 68.) Respondents further argued that the 

patent requires that the linearizer be a “look-up table.” Hence, it is argued that the accused handsets do 

not practic said fifth element. (FW3r at 15.) 

The staff argued that the{ }vlaue that QUALCOMM argued is an automatic gain 

control setpoint cannot be an AGC setpoint because{ 

} (SBr at 52.) 

This fifth claim element requires an automatic gain control setpoint. The administrative law 

judge has found in Section X.B.3, supra, that the accused products do not use an automatic gain 

control setpoint, either literally or under the doctrine of equivalents. Therefore, the administrative law 

judge finds that the accused products do not have the fifth element of claim 3 of the ‘473 patent. 

Based on the foregoing, the administrative law judge finds that complainant has not 

established, by a preponderance of the evidence, that the accused products literally or under the 

doctrine of equivalents infringe claims 3 of the ‘473 patent. 

D. 

Preamble 

Claim 1 Of The ‘408 Patent 

The preamble of claim 1 of the ‘408 patent reads: 

“A method for limiting transmit power of a radio operating in a radio 

communications system, the radio communications system comprising 

at least one base station that transmits signals including power control 

216 
commands to the radio, the radio comprising a variable gain amplifier 

and a maximum gain setting, the method comprising the steps of:” 

(JX-2 at 6:58-63.) 

The administrative law judge has found in Section VII.C.1, supra, that the preamble of claim 1 

of the ‘408 patent is a limitation on the claim. Respondents have admitted that the accused products 

are radios. (RFF IU.8 (undisputed); ROCFF E27; RRCFF E27a-d.) Respondents also have adrmtted 

that the accused products operate in a network with at least one base station. (CFF C3, CFF H293, 

CFF H561 (undisputed).) The administrative law judge has found in Section X.D.2, infra, that power 

control commands are transmitted to the radio by the base station. Respondents have adrmtted that the 

accused products comprise a variable gain amplifier. (See, inter alia, CFF H12, CFF H50, CFF H76 

(undisputed); CFF H589 (undisputed in relevant part).) The administrative law judge has found, 

however, in Section X.D.4, infra, that the accused products do not comprise a maximum gain setting. 

Therefore, the administrative law judge finds that the accused products do not practice the preamble of 

claim 1 of the ‘408 patent. 

1. The first element of claim 1 “determining an open loop power control value in response to a 

signal received from the at least one base station” 

Complainant argued that the Nokia accused handsets practice this first element of claim 1 of 

the ‘408 patent both literally and under the doctrine of equivalents. (CBr at 70.) Specifically, 

complainant argued that the open loop power control value is{ }, which is the AGC 

setpoint in Nokia‘s handsets, as complainant described for the second and third elements of claim 1 of 

the ‘473 patent. (CBr at 70.) Complainant further argued that the AGC setpoint,{ 

indicative of the received power level. (CBr at 70.) 

} is 

Respondents argued that all parties agree that the term “open loop power control value” refers 

217 
to the automatic gain control setpoint, and referred to their prior argument regarding non-infringement 

of the ‘473 patent. Hence, it is argued that the accused products do not practice this first element. (RBr 

at 87-88.) 

The staff argued that the{ } signal is not an automatic gain control setpoint, but that 

the accused products do generate an open loop power control value. (SBr at 57.) 

This first claim element requires an “open loop power control value.” The parties agree that 

the open loop power control value is the same as the automatic gain control setpoint. (FWF V.132 

(undsputed).) The adrmnistrative law judge has found in Section X.B.3, sum-a, that the accused 

products do not contain an automatic gain control setpoint either literally or under the doctrine of 

equivalents. Therefore, the administrative law judge finds that the accused products do not practice the 

first element of claim 1 of the ‘408 patent. 

2. The second element of claim 1 “determining a gain adjust signal in response to the transmitted 

power control commands” 

Complainant argued that the Nokia accused handsets practice this second element of claim 1 of 

the ‘408 patent both literally and under the doctrine of equivalents. (CBr at 72.) Specifically, 

complainant argued that power control commands are extracted from the base station signal 

gamma-ch and used by the accused Nokia handsets to determine a gain adjust signal. (CBr at 75.) 

Respondents argued that, based on the same arguments presented regarding “power control 

commands” as for the ‘220 patent, their accused products do not receive power control commands 

either literally or under the doctrine of equivalents. (RBr at 88.) Specifically, respondents argued that 

gamma-ch (or I’a) is not a power control command because said signal is not based on any 

measurement by the base station of the signal from the handset, and that said signal cannot turn up or 

218 
turn down power without that measurement. (RBr at 77-78.) Respondents also argued that said signal 

cannot cause a change in the power level of the handset because said signal is a constant that never 

changes. (RBr at 78.) 

The staff argued that the r, value broadcast by the base station satisfies the claim 

requirement for multiple power control commands. (SBr at 59.) 

The administrative law judge has found that “power control commands” are “commands from 

the base station instructing the radio to turn up or turn down power.” (See Section VII.C.6, supra.) The 

parties agree that I?, is a static parameter that is sent to every handset within a particular cell during 

GPRS or EDGE communications. (CFF H312, H320, H458 (undisputed).) The parties also agree that 

the accused Nokia handsets extract gamma-ch from the signal received from the base station. (CFF 

H3 15 (undisputed).) The parties further agree that the ccused Nokia handsets store the value of 

gamt-w-ch { 

sent by the base station. (CFF H3 18 (undisputed).) The gamma-ch parameter value is set by network 

operators. (CFF H453 (undisputed).) The parties agree that 3GPP TS 45.008 is a GPRS/EDGE 

Standard. (CFF C31 (undisputed).) Respondents admit that uplink transmit power for GPRS/EDGE 

transmissions is defined in 3GPP TS 45.008, specifically in 0 10.2.1. (RRCFF E45b; see also Paul Tr. 

at 3071:20-3072:24; JX-118 at 65.) Respondents further admit that the GPRSEDGE uplink power 

control algorithm operates according to the equation Pa = min (To - r, - a * (C + 48), PMAX). 

(RRCFF l345c; see also Paul Tr. at 3072: 19-24; JX-l18:65.) Respondents also admit that Nokia’s 

accused handsets comply with 3GPP TS 45.008. (RRCFF E45a; see also Helgert, Tr. at 2657:6-10, 

Verdu, Tr. at 1818:13-19; Frederiksen, Tr. at 2851:15-2853:16; Pettersson, Tr. at 2948:14-2949:5.) 

The 3GPP Standard states that, “When the [mobile station] receives new gamma-ch or alpha values, 

} corresponds to the gamma-ch 

219 
the [mobile station] shall use the new value to update PCH according to the equation (1) . . . [.I” 

(JX-118 at QHITC0021715 (equation (1) is the power control formula of 910.2.1 as can be seen by the 

(1) to the right of the power control formula on page QHITC0021714).) (CFF H329 (undisputed).) 

CX-123 shows that for the first day two entry, the test mobile moved from a cell that had alpha equal 

to eight and gamma-ch equal to 18 to a new cell that had alpha equal to one and gamma-ch equal to 

zero. (CFF H486 (undisputed).) Moreover, I?,, is defined by the 3GPP standard as “an MS and 

channel specific power control parameter, sent to the MS in an RLC control message (see 3GPP TP 

44.060). (JX-118 at 65.) It is the only variable of this formula described specifically as a “power 

control parameter.’’ (JX-118 at 65.) The administrative law judge has rejected respondents’ proposed 

construction that said “power control commands” must be “based on the radio’s power level as 

received by the base station.” (See Section VII.C.6, supra.) Based on the foregoing, the administrative 

law judge finds that I?, is a power control command, and that the accused products use I?,, to 

determinate a gain adjust signal. Therefore, the administrative law judge finds that the accused 

products literally practice this second element of claim 1 of the ‘408 patent. 

3. The third element of claim 1 “combining the open loop power control value and the gain 

adjust signal to produce a summation signal” 

Complainant argued that the Nokia accused handsets literally practice this third element of 

claim 1 of the ‘408 patent. (CBr at 79.) Specifically, complainant argued that the “accused Nokia 

handsets sum[] the open loop component, ‘alpha * (c-value + 48 )’ with closed loop component, 

‘gamma-ch’, to generate the summation signal, which is calls the ‘preliminary value’.” (CBr at 80.) 

Respondents argued that “[blecause Nokia’s handsets neither generate an open loop power 

control value ... nor generate a gain adjust signal ... Nokia’s handsets cannot satisfy element [C].” (RBr 

220 
at 90.) Respondents further argued that the accused products never{ 

(RBr at 90.) 

The staff argued that “[blecause the open loop power control value is not sent to the transmit 

section of the handset, it is not combined with the gain adjust signal to produce a summation signal.” 

(SBr at 60.) 

This third claim element requires an “open loop power control value.” The administrative law 

judge has found that the accused products do not have, either literally or under the doctrine of 

equivalents, an open loop power control value. (see Section X.D. 1, supra.) Thus, the administrative 

law judge finds that the accused products do not practice this third element of claim 1 of the ‘408 

patent, and do not have a summation signal. 

4. The fourth element of claim 1 “comparing the summation signal to the maximum gain setting” 

Complainant argued that the Nokia accused handsets practice this fourth element of claim 1 of 

the ‘408 patent both literally and under the doctrine of equivalents. (CBr at 80.) Specifically, it is 

argued that the { 

} (CBr at 80.) 

Respondents argued that “[blecause Nokia’s handsets neither produce a summation signal ... 

nor comprise a maximum gain setting ... Nokia’s handsets cannot satisfy this element.” (RBr at 91.) 

Regarding “maximum gain setting,” respondents argued that neither the PMAX nor the{ 1 

values infringe, because they are limits on power, not gain. (RBr at 74.) Moreover, respondents argued 

that { 

22 I 
} (RBr at 72-73.) 

The staff argued that this fourth element is not met, because the open loop power control value 

is not sent to the transmit section of the handset, and cannot therefore be combined with the gain adjust 

signal to produce a summation signal. (SBr at 60.) The staff also argued that the accused products do 

not comprise a “maximum gain setting.” (SBr at 60-61.) 

This fourth element requires a “summation signal.” The administrative law judge has found in 

Section X.D.3, supra, that the accused products do not produce a summation signal as defined by the 

specification of the ‘408 patent. 

The administrative law judge has found in Section VII.C.3, supra, that the claim phrase 

“maximum gain setting” is “an upper limit on the transmit gain setting that is hard coded into the radio 

during assembly or input during manufacturing and testing of the radio.” It is undisputed that the 

accused products comply with Section 10.2.1. of the 3GPP Standard. (CFF E25 (undisputed).) 

Complainant argued that either PMAX{ 

accused products. (CBr at 50; CRBr at 82; CRRFF V.85.) The MS output power formula in said 

Section 10.2.1 of the 3GPP standard is PCH = min (To - r,, - a * (C + 48), PMAX), and, as found in 

Section X.D.2, supra, respondents admit that the GPRSBDGE uplink power control algorithm 

operates according to that formula. (RRCFF E45c; see also Paul Tr. 3072:19-24; JX-118 at 65.) In the 

description of that formula, PMAX is described as “the maximum allowed output power in the cell.” 

(JX-118 at 65 (emphasis added).) The parties agree that PMAX is transmitted from the base station. 

(RFF IU. 185 (undisputed).) Therefore, PMAX is not hard coded into the radio during assembly or 

input during manufacturing and testing of the radio, as required by the claim. Further, complainant 

admits that PMAX specifies a limit to the value of Pch. (CRRFF V.88.G; see also RDX-61C:28.) Pch 

} is the maximum gain setting the 

222 
is described in the description of the formula in 10.2.1 of the 3GPP standard as the “RF output power 

... to be employed by the MS on each individual uplink PDCH ...” (JX-118 at 65.) Also, the parties 

admit that Pch is the desired transmit power level, i.e. Pch is a power level, not an amount to change a 

gain. (RFF III. 189 (undisputed).) The parties further agree that{ 

} (RFF III. 187 (emphasis added) (undisputed).) Again, said maximum allowed 

transmission power of the mobile station is a power level, not an amount to change a gain. 

Complainant has admitted that a maximum gain setting is different from a maximum output power; 

that a maximum gain setting limits the amount of amplification that can be applied by the amplifier; 

that a maximum gain setting does not limit the output power of an amplifier because the input power 

could increase; and that a maximum power setting limits the overall output power of the phone, 

regardless of the amount of gain applied in an amplifier. (RFF V.81, RFF V.82, RFF V.83, RFF V.84 

(undisputed).) Based on the foregoing, the administrative law judge finds{ 

} are limits on power, not gain, as is required by the claim. Therefore, the 

administrative law judge finds that the accused products do not practice a maximum gain setting. 

Based on the foregoing, the administrative law judge finds that the accused products do not 

practice this fourth element of claim 1 of the ‘473 patent, because the accused products do not meet the 

requirement of a summation signal, and do not practice a maximum gain setting. 

5. The fifth element of claim 1 “if the summation signal is greater than or equal to the maximum 

gain setting, adjusting the variable gain amplifier in response to the maximum gain setting; 

and” 

Complainant argued that the Nokia accused handsets practice this fifth element of claim 1 of 

223 
the ‘408 patent both literally and under the doctrine of equivalents. (CBr at 83.) Specifically, 

complainant argued that the maximum gain setting, i.e.{ } is comparted to the{ 

} (CBr at 83.) 

Respondents argued that “[blecause Nokia’s handsets neither produce a summation signal ... 

nor comprise a maximum gain setting ...,” Nokia’s handsets cannot satisfy said fifth element. (RBr at 

91 .) 

The staff argued that said fifth element is not met because the open loop power control value is 

not sent to the transmit section of the handset, and cannot therefore be combined with the gain adjust 

signal to produce a summation signal. (SBr at 60.) 

This fifth element requires a summation signal. The administrative law judge has found in 

Section X.D.3, suura, that the accused products do not have a summation signal. Thus, the 

administrative law judge finds that the accused products do not practice this fifth element of claim 1 of 

the ‘408 patent. 

6. The sixth element of claim 1 “if the summation signal is less than the maximum gain setting, 

adjusting the variable gain amplifier in response to the Summation signal.” 

Complainant argued that the Nokia accused handsets practice this sixth element of claim 1 of 

the ‘408 patent both literally and under the doctrine ofquivalents. (CBr at 84.) Specifically, 

complainant argued that { 

224 
(CBr at 84.) 

Respondents argued that “[blecause Nokia’s handsets neither produce a summation signal ... 

nor comprise a maximum gain setting ...,” Nokia’s handsets cannot satisfy this sixth claim element. 

(RBr at 91.) 

The staff argued that this sixth element is not met because the open loop power control value is 

not sent to the transmit section of the handset, and cannot therefore be combined with the gain adjust 

signal to produce a summation signal. (SBr at 60.) 

This sixth claim element requires a summation signal. The administrative law judge has found 

in Section X.D.3, supra, that the accused products do not have a summation signal. Thus, the 

administrative law judge finds that the accused products do not practice this sixth element of claim 1 

of the ‘408 patent. 

Based on the foregoing, the administrative law judge finds that complainant has not 

established, by a preponderance of the evidence, that the accused products literally or under the 

doctrine of equivalents, infringe claim 1 of the ‘408 patent. 

E. 

Testing 

Claim 2 Of The ‘220 Patent 

Respondents argued regarding method claim 2 of the ‘220 patent, generally, that 

QUALCOMM cannot prove infringement by Nokia because it never tested a Nokia phone, despite 

testimony at the hearing indicating that such testing could have been performed. (RBr at 71-72.) 

Complainant argued, with respect to method claims that QUALCOMM is entitled to rely on 

circumstantial evidence to prove that the claimed methods are performed when the accused phones are 

used as intended in the United States. (CRBr at 29.) 

225 
The staff does not appear to answer said argument of respondents directly, but argued that 

none of the asserted claims are infringed. (SBr at 47,55,63.) 

Respondents admitted that the accused products practice several elements of the claims in 

issue. Further, the administrative law judge rejects Nokia’s assertion that proof of infringement of 

method claims must come through direct testing of the accused products. To the contrary, any 

evidence, including circumstantial evidence, can be relied upon by a patentee to demonstrate 

infringement of either method or apparatus claims. See, e.&, Moleculon Research Corn. v. CBS, Inc., 

793 F.2d 1261, 1272 (Fed. Cir. 1986) (“If CBS is arguing proof of inducing infringement or direct 

infringement [of the method claims] requires direct, as opposed to circumstantial evidence, we must 

disagree. It is hornbook law that direct evidence of a fact is not necessary. ‘Circumstantial evidence is 

not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.”’) 

(quoting Michalic v. Cleveland Tankers, Inc., 364 U.S. 325,330 (1960)) (emphasis in original); Alto 

Standard Corn. v. Tennessee Valley Authority, 808 F.2d 1490, 1503 (Fed. Cir. 1986) (addressing 

method claims and stating that, “[allthough the evidence of infringement is circumstantial, that does 

not make it any less credible or persuasive.”) (citing Moleculon, 793 F.2d 1261); see also, Liquid 

Dvnamics Corp. v. VauEhan Co., Inc., 449 F.3d 1209, 1219 (Fed. Cir. 2006) (“[a] patentee may prove 

direct infringement or inducement of infringement by either direct or circumstantial evidence.”) (citing 

Moleculon, 793 F.2d at 1272). A finding of infringement of a method claim does not require direct 

evidence, such as the results of tests. Thus, circumstantial evidence is more than sufficient for the task. 

-- See also Fuii Photo Film Co. v. Jazz Photo Corn., 394 F.3d 1368, 1374 (Fed. Cir. 2005). 

The administrative law judge finds that the authorities cited by Nokia do not stand for the 

proposition for which they are cited. The outcome of each case was the result of a no proof being 

226 
presented; not because of a blanket ruling that direct evidence was required. See Yoon Ja Kim v. 

ConAma Foods, Inc., 465 F.3d 1312,1320 (Fed. Cir. 2006) (“While Kim, who was qualified as an 

expert, offered conclusory testimony that the additional ingredients would not have materially affected 

the pertinent characteristics of the bread, Kim did not support this determination with any 

examinations or tests of the actual accused products. Under the circumstances of this case, we agree 

with the district court that Kim did not prove infringement because she presented no testimony based 

on the accused products themselves that supported a finding of infringement. ”); Centricut LLC v. 

ESAB Grou~, Inc., 390 F.3d 1361, 1370 (Fed. Cir. 2004) (“We do not state a per se rule that expert 

testimony is required to prove infringement when the art is complex. Suffice it to say that in a case 

involving complex technology, where the accused infringer offers expert testimony negating 

infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from those 

who are admittedly not expert in the field. That is what happened here, and the patentee thus failed to 

satisfy its burden of proof. ”); Eltech Svs. Corp. v. PPG Indus.. Inc., 903 F.2d 805, 809-10 (Fed. Cir. 

1990) (“Noting that flowing, adhesion and dimensional stability cannot be inferred from OxyTech’s 

DSC curves alone, and that there was no evidence demonstrating adhesion or dimensional stability, 

and no evidence of reliable tests on PPGs diaphragms or on any diaphragms prepared by PPGs 

method, the district court was struck, as are we, by the plain and total absence of evidence of 

infringement. OxyTech’s attack on the noninfringement finding is as frivolous as its attack on the 

court’s claim interpretation.”). Respondents also relied on In re Certain Molded Golf Balls, Inv. No. 

337-TA-35,1978 WL 50670 (Feb. 10,1978). As this administrative law judge noted in Certain 

Curable Fluoroelastomer Compositions and Precursors Thereof, Inv. No. 337-TA-364, Molded Golf 

227 
does not require that, absent testing, any other evidence relied on to establish infringement must 

be disregarded: 

The administrative law judge finds that neither Molded Golf Balls, 

Genentech nor Perkin-Elmer requires that there must be testing of the 

accused composition in order to establish infringement under the 

doctrine of equivalents and that any other evidence relied on to 

establish infringement under the doctrine of equivalents must, in effect, 

be disregarded. Thus in Molded Golf Balls in issue was whether certain 

golf balls were found to infringe "directly and literally" claim 1 of the 

patent in issue, and whether the failure of respondents to reveal the 

formulation used by them in their manufacture of the golf balls had 

precluded any direct evidence. The record in Molded Golf Balls had no 

evidence, other than the swctra from spectrographic -- tests performed by 

an independent lab, to determine whether there was a direct or literal 

infringement of the claimed subiect matter. In Genentech "all the 

evidence of record" indicated that two methods for obtaining certain 

measurements to demonstrate infringement were not "comparable." In 

Perkin Elmer the district court failed to detect the relevance of a 

modified version of the accused devices, even if the patentee had 

pointed, as it did not, to evidence that the modified version would 

operate substantially the same as the claimed invention. 

(1995 ITC LEXIS 563,115-116 (IT.C 1995) (emphasis added).) Thus, where testing does not occur, 

such a fact does not preclude the patentee from relying on other evidence to establish infringement. 

Preamble 

The preamble of claim 2 of the '220 patent reads: "A method for limiting transmit power of a 

radio operating in a radio communications system, the radio communications system comprising a 

plurality of base stations that transmit power control commands to the radio, the radio comprising a 

variable gain amplifier and a maximum gain setting, the method comprising the steps of:" (JX-3 at 7: 

12-17.) 

The administrative law judge has found in Section VII.C.2, supra, that the preamble of claim 2 

of the '220 patent is a limitation on the claim. Respondents have admitted that the accused products 

228 
are radios. (RFF lII.8 (undisputed); ROCFF E27; RRCFF E27a-d.) Respondents have admitted that 

the accused products operate in a network with at least one base station. (CFF C3, CFF H293, CFF 

H561 (undisputed).) The administrative law judge has found in Section X.D.2, supra, that power 

control commands are transmitted to the radio by the base station. Respondents further have admitted 

that the accused products comprise a variable gain amplifier. (See, inter alia, CFF H12, CFF H50, CFF 

H76 (undisputed); CFF H589 (undisputed in relevant part).) The administrative law judge has found, 

however, in Section X.D.4, supra, that the accused products do not comprise a maximum gain setting. 

Therefore, the administrative law judge finds that the accused products do not practice the preamble of 

claim 2 of the ‘220 patent. 

1. The first element of claim 2 “receiving a signal from at least one of the plurality of base 

stations” 

Complainant argued that the Nokia accused handsets literally practice this first element of 

claim 2 of the ‘220 patent, which is not disputed by respondents. (CBr at 85.) 

Respondents do not provide an argument regarding said first element in their post hearing 

briefs. 

The staff argued that “Qualcomm has met its burden of proof with respect to this undisputed 

claim element.” (SBr at 64.) 

Respondents do not dispute that the accused products practice this first claim element. (CFF 

H562, H563 (undisputed).) Therefore, the administrative law judge finds that the accused products 

practice this first element of claim 2 of the ‘220 patent. 

2. The second element of claim 2, “generating a received power level signal in response to the 

received signal” 

229 
Complainant argued that the Nokia accused handsets literally practice this second element of 

claim 2 of the ‘ 220 patent. (CBr 85.) Specifically, complainant argued that the generation of the 

{ } signal in the accused products meets this limitation. (CBr at 85.) 

Respondents argued that the term “received power level signal” is the automatic gain control 

setpoint, and thus that Nolua’s handsets do not satisfy this second element of claim 2 of the ‘220 patent 

for the same reasons that Nokia’s handsets do not have an automatic gain control setpoint. @Br at 83.) 

The staff argued that the received power level signal corresponds to the detected power, and 

there is no dispute that Nokia’s accused handsets determines this received power value. (SBr at 64-65.) 

The administrative law judge has found in Section VII.C.7, suma, that the “received power 

level signal” is “a value indicating a power level of the received signal.” The administrative law judge 

has also found that the received power level cannot itself be the automatic gain control setpoint. It is 

undisputed that the value stored in the{ 

by the base station as seen at the mobile station antenna. (RFF III.74, RFF III.75 (undlsputed).) 

}variable represents the power of the signal sent 

Therefore, even though the administrative law judge has found that{ } is not an automatic 

gain control setpoint (see Section X.B.3, supra), the administrative 1 law judge finds that{ 

indicates the power level of the received signal. Therefore, the administrative law judge finds that the 

accused products practice this second element of claim 2 of the ‘220 patent. 

3. The third element of claim 2 “generating a closed loop power control signal in response to the 

received signal” 

Complainant argued that the Nokia accused handsets literally practice this third element of 

claim 2 of the ‘220 patent. (CBr at 86.) Specifically, complainant argued that the “closed loop power 

230 
control signal” { 

} (CBr at 86.) 

Respondents argued that Nokia handsets do not receive instructions from the base station to 

turn up or turn down power; that GPRS and EDGE base stations do not send power control 

commands; and that any such power control commands are not accumulated as required by the claim. 

(RBr at 82-83.) 

The staff argued that QUALCOMM has presented no evidence that the base stations in the 

networks on which Nokia’s handsets operate measure the handset’s transmitted power. (SBr at 65.) 

The administrative law judge has found that “closed loop” refers to a signal sent from a 

radiophone based at least in part on the power of the signal received from that radiophone by the base 

station. (See VII.C.8, supra.) The parties agree that I?, is a static parameter that is sent to every 

handset within a particular cell during GPRS or EDGE communications. (CFF H312, H320, H458 

(emphasis added) (undisputed).) The parties agree that the accused Nokia handsets store the value of 

gamma-ch in a variable called{ 

the base station. (CFF H318 (undisputed).) The gamma-ch parameter value is set by network 

operators. (CFF H453 (undisputed).) The parties agreed that, based on the evidence of record, within a 

cell for any individual handset, r,, is a constant within that cell. (RFF V. 1 19 (undisputed).) The 

parties further agreed that based on the evidence of record, within any given cell the value of r,, 

received by each handset is the same. (RFF V. 120 (undisputed).) Based on the foregoing, the 

administrative law judge finds that a static value that is constant within a cell and is the same for each 

handset within that cell cannot be based at least in part on the power of the signal received from that 

}and that stored value corresponds to the gamma-ch sent by 

23 1 
radiophone by the base station, as required by the claim element. Therefore, the administrative law 

judge finds that the accused products do not practice this third element of claim 2 of the ‘220 patent. 

Complainant has argued that, in the accused Nokia handsets, I?, is continuously used to 

adjust the gain of the transmit VGA, so minus rcH is the adjustment that the base station is telling the 

handset to perform, and that if Gamma ch changes form cell to cell, the gain adjust signal varies. 

(CRRFF V.118A; CRRFF V.118B.) The administrative law judge finds, however, that whether a 

different cell has a different value of I?, is irrelevant. Even in the case where a radiophone moves 

from one cell to another cell, the r, value is based on the cell, not the power of the signal received 

from any individual radiophone. 

Complainant has further argued that this third element is satisfied under the doctrine of 

equivalents because 

measurements that stimulate the user experience, and are selected as ‘optimal’ values for the base 

station.” (CRBr at 54 (emphasis added).) As can be seen from complainant’s argument, said optimal 

value is based on the dynamic of the cell, not any individual radiophone. Here again, the I?, value is 

based on the cell, not the power of the signal received from any individual radiophone. Even 

assuming, arguendo, that the 

values are not arbitrary, and “are determined on the basis of field 

value is based on{ 

} adjusting transmit power based on dynamic measurements received from an individual 

handset is not, in this context, the same as adjusting a handset using a static constant that is based on 

prior testing. Therefore, the administrative law judge finds that such a process cannot be performing 

substantially the same function in substantially the same way to arrive at substantially the same result. 

Therefore, he finds that this third claim element is not satisfied under the doctrine of equivalents. 

232 
4. The fourth element of claim 2 “combining the received power level signal and the closed loop 

power control signal to produce a summation signal” 

Complainant argued that the Nokia accused handsets literally practice this fourth element of 

claim 2 of the ‘220 patent in the same way that the third element of claim 1 of the ‘408 patent, supra, 

practices this claim element. (CBr at 87.) 

Respondents argued that the accused products neither generate a received power level signal 

nor generate a closed loop power control signal, and therefore cannot produce a summation signal. 

(RBr at 83-84.) Respondents further argued that, even under QUALCOMM’s construction, the 

accused products do not combine{ 

summation signal. (RBr at 84.) 

} and rCH, and therefore likewise cannot produce a 

The staff argued that a summation signal is not produced in the manner required by said claim 

2, because the accused products do not generate a closed loop power control signal. (SBr at 64.) 

A closed loop power control signal is required by this claim element. The adrmnistrative law 

judge has found in Section X.E.3, supra, that the accused products do not generate a closed loop power 

control signal. Therefore, the administrative law judge finds that the accused products do not practice 

this fourth element of claim 2 of the ‘220 patent. 

5. The fifth element of claim 2 “comparing the summation signal to the maximum gain setting” 

Complainant argued that the Nokia accused handsets practice this fifth element of claim 2 of 

the ‘220 patent both literally and under the doctrine of equivalents for the same reasoning as that for 

the fourth element of claim 1 of the ‘408 patent. (CBr at 87.) 

Respondents argued that the accused handsets neither produce a summation signal nor 

comprise a maximum gain setting, and therefore do not practice this element of the claim. (RBr at 85.) 

233 
The staff argued that a summation signal is not produced in the manner required by the claim, 

because the accused products do not generate a closed loop power control signal. (SBr at 64.) The 

staff further argued that the accused handsets do not comprise a maximum gain setting under any 

party’s proposed construction of that term. (SBr at 64.) 

A summation signal is a requirement of this claim element. The administrative law judge has 

found in Section X.E.4, supra, that the accused products do not produce a summation signal. 

Therefore, the administrative law judge finds that this fifth element of claim 2 of the ‘220 patent is not 

satisfied in the accused products. 

6.. The sixth element of claim 2 “adjusting the variable gain amplifier in response to the 

maximum gain setting if the summation signal is greater than or equal to the maximum gain 

setting; and” 

Complainant argued that the Nokia accused handsets practice this sixth element of claim 2 of 

the ‘220 patent both literally and under the doctrine of equivalents for the same reasoning as that for 

the fifth element of claim 1 of the ‘408 patent. (CBr at 87.) 

Respondents argued that the accused handsets neither produce a summation signal nor 

comprise a maximum gain setting, and therefore cannot satisfy this element. (RBr at 85.) 

The staff argued that a summation signal is not produced in the manner required by said claim 

2, because the accused products do not generate a closed loop power control signal. (SBr at 64.) The 

staff further argued that the accused handsets do not comprise a maximum gain setting under any 

party’s proposed construction of that term. (SBr at 64.) 

A summation signal is a requirement of this claim element. The administrative law judge has 

found in Section X.E.4, suura, that the accused products do not produce a summation signal. 

234 
Therefore, the adrmnistrative law judge finds that this sixth element of claim 2 of the ‘220 patent is not 

satisfied in the accused products. 

7. The seventh element of claim 2 “adjusting the variable gain amplifier in response to the 

summation signal if the summation signal is less than the maximum gain setting.” 

Complainant argued that the Nokia accused handsets practice this seventh element of claim 2 

of the ‘220 patent both literally and under the doctrine of equivalents for the same reasoning as that for 

the sixth element of claim 1 of the ‘408 patent. (CBr at 88.) 

Respondents argued that the accused handsets neither produce a summation signal nor 

comprise a maximum gain setting, and therefore cannot satisfy this seventh element. (RBr at 85.) 

The staff argued that a summation signal is not produced in the manner required by the claim, 

because the accused products do not generate a closed loop power control signal. (SBr at 64.) The 

staff further argued that the accused handsets do not comprise a maximum gain setting under any 

party’s proposed construction of that term. (SBr at 64.) 

A summation signal is a requirement of this claim element. The administrative law judge has 

found in Section X.E.4, supra, that the accused products do not produce a summation signal. 

Therefore, the administrative law judge finds that this seventh element of claim 2 of the ‘220 patent is 

not satisfied. 

Based on the foregoing, the administrative law judge finds that complainant has not 

established, by a preponderance of the evidence, that the accused products, literally or under the 

doctrine of equivalents, infringe claim 2 of the ‘220 patent. 

235 
F. Indirect Infringement 

Complainant argued that “[tlhe record contains substantial circumstantial evidence that the 

accused handsets as used by them in an infringing manner and Nokia, with knowledge of 

QUALCOMM’s patents, induced handset owners to use the handsets in that manner.” (CBr at 88.) 

Respondents argued that QUALCOMM has failed to offer evidence of any instance in which 

anyone has ever operated an accused handset in an infringing manner, and therefore cannot meet its 

burden of proving contributory or induced infringement. (RBr at 85.) Respondents also argued that the 

accused products have substantial non-infringing uses, and therefore there cannot be contributory 

infringement. (RBr at 85-86.) Respondents further argued that there can be no inducement to infringe, 

as there is no evidence that Nokia actively encouraged any party to use the accused handsets in an 

infringing manner. (RBr at 87.) 

The staff argued that because none of the accused products have been proven to infringe 

directly any of the asserted claims, induced and contributory infringement have been mooted. (SBr at 

47.) 

Both contributory and induced infringement require that the accused products directly infringe 

the claims of the asserted patents. See DSU Med. Corn., supra. The administrative law judge has 

found, supra, that the accused products do not directly infringe the asserted claims of the ‘473, ‘408, 

and ‘220 patents. (see, generally, Section X.) Therefore, the administrative law judge finds no 

contributory or induced infringement in this investigation. 

XI. Domestic Industry 

To invoke the protection afforded by Section 337, a complainant must show by a 

preponderance of the evidence that a domestic industry exists or is in the process of being established 

236 
within the United States. The domestic industry requirement has two prongs: an “economic” prong 

and a “technical” prong. 

On February 16,2007, the administrative law judge issued Order No. 33, granting 

complainant’s motion for summary determination that it satisfied the economic prong of the domestic 

industry requirement with respect to the ‘473, ‘408, and ‘220 patents. (Order 33.) On March 22,2007, 

the Commission determined not to review Order No. 33. (3/22/07 “Notice Of Commission Not To 

Review Initial Determination Granting Complainant’s Motion For Summary Determination That It 

Satisfied The Domestic Industry Requirement As to Two Asserted Patents.”&l 

The “technical” prong requires that the activities alleged to constitute a domestic industry 

actually utilize the intellectual property at issue. In the context of a patent-based investigation, the 

technical prong is satisfied if the complainant demonstrates that it is practicing at least one claim of 

each of the patents-in-issue. The test for claim coverage for purposes of the domestic industry 

requirement is the same as that for infringement. The technical prong of the domestic industry can be 

satisfied either literally or under the doctrine of equivalents. Certain Excimer Laser Systems for Vision 

Correction Surgery and Components Thereof and Methods for PerforminP Such Surgery, Inv. No. 337- 

TA-419, Order No. 43,1999 lTC LEXIS 245, “7 (July 30,1999). The complainant, however, is not 

While the title of the 3/22/07 Commission Notice referred only to two asserted patents 

which were the ‘408 and ‘220 patents, Order No. 33 also found that complainant had satisfied the 

economic prong of the domestic industry for the ‘473 patent. Neither respondents nor the staff 

refutes CFF 27 1 which asserted: 

On February 16,2007, The Administrative Law Judge issued Order 

No. 33, granting QUALCOMM’s motion for summary 

determination that QUALCOMM satisfies the economic prong of 

the domestic industry requirement with respect to the ‘473, ‘408 

and ‘220 patents. (Order 33). 

237 
required to show that it practices any of the claims asserted to be infringed, as long as it can establish 

that it practices at least one claim of the asserted patent. Certain Point of Sale Terminals and 

Components Thereof, Inv. No. 337-TA-524, Order No. 40,2005 ITC LEXIS 374, “26 (Apr. 11,2005). 

The only issue that remains in dispute, with regards to domestic industry requirement, is 

whether complainant satisfies the technical prong with respect to claim 3 of the ‘473 patent. 

Claim 3 is the only claim of the ‘473 patent that QUALCOMM relies on to meet the technical prong of 

the domestic industry requirement. (RFF XD.2 (undisputed).) 

A. 

1. 

Claim 3 Of The ‘473 Patent 

Preamble, First, Second, Fourth And Fifth Elements 

Complainant argued that Nokia has conceded that QUALCOMM practices the first, second, 

fourth and fifth elements65 of claim 3 of the ‘473 patent. (CBr at 138.) Complainant further argued that 

Nokia represented to the administrative law judge before, during, and after the hearing that only the 

third element of claim 3 was in dispute. (CRBr at 88.) Nonetheless, complainant argued that it 

adduced witness testimony and technical documentation that indisputably establish that QUALCOMM 

practices said elements. (CRBr at 88, citing CBr at 136-144; CFF 113247; CRFF XII 1-81.) 

Respondents argued that despite complainant’s burden to come forward with evidence 

supporting its practice of claim 3 of the ‘473 patent, QUALCOMM failed to introduce any evidence 

that the MSM6550 chipset met said elements. (RBr at 136-37.) Respondents further argued that 

although they indicated that they would not contest those elements were the evidence at the hearing 

consistent with what QUALCOMM claimed it was, respondents affirmatively told QUALCOMM, in 

65 Said elements are identified in Section X. C., supra. 

23 8 
writing, that they were not relieving QUALCOMM of its burden of presenting said evidence at the 

hearing. (FU3r at 136-37, citing RFF XII.81; RIU3r at 88.) 

The staff argued that the record is clear that Nokia did not contest QUALCOMM’s practice of 

said first, second, fourth and fifth elements. (SRBr at 38, citing FWF XII.81.) The staff further argued 

that although the focus of Verdu’s testimony was on the contested third element, he did summarily 

testify as to his belief that QUALCOMM’s MSM 6550 chipset satisfies said elements. (SRBr at 39, 

citing CFF 153-54; CFF 159-60; CFF I230-21; CFF I233-34.) The staff also argued that 

QUALCOMM presented additional documentary evidence showing how it practices said elements. 

(SRBr at 39, citing CFF 152-66; CFF I229-270.) Finally, the staff argued that Nokia did not present 

any evidence to rebut QUALCOMM’s case, and has stated on the record that it was not contesting said 

elements. (SFU3r at 39, citing CFF 1.12.) 

During the pre-hearing telephone conference on 9/7/07, respondents asserted the following: 

JUDGE LUCKERN: All right, let’s go to the domestic industry. As 

far as the domestic industry goes as I understand it the only issue with 

respect, well the big issue is respect to the technical prong as far as the 

473 patent the Complainant relied on claim three. And as I understand 

it Respondent has disputed whether Complainant had satisfied the 

received linearizer limitation which is the third element of claim three 

of the 473 patent. Is that a correct understanding, Mr. Verhoeven, with 

respect to why you feel they haven’t met the technical prong with 

respect to the 473 patent? 

MR. VERHOEVEN: Correct, Your Honor. 

JUDGE LUCKERN: And there’s nothing else? 

MR. VERHOEVEN: Correct, Your Honor. 

(Tr. at 105:2-16; (emphasis added).) To support complainant’s assertion that it satisfies the technical 

prong of the domestic industry requirement, Verdu testified regarding claim 3 of the ‘473 patent: 

239 
Q. Doctor, could you please -- let’s make sure we got an answer to 

the overarching question. In your opinion, do -- does the 

QUALCOMM radio, which includes the chips I iust identified, 

practice claim 3 of the ‘473 patent? 

A. Yes, it does. 

Q. 

domestic industry? 

Can you please describe how you reached your opinions on 

A. 

software and I also relied on testimony by their engineers. 

Yes. I reviewed QUALCOMM documents. I reviewed their 

Q. Did you rely on the testimony of Taher Nabulsi? 

A. Yes. 

Q. 

testimony of Mr. Brian Butler and Steve Ciccarelli? 

The QUALCOMM engineer. Did you also rely on the deposition 

A. Yes. 

Q. 

QUALCOMM documents and testimony regarding the MSM-6550, 

the RFR-6500, and the RlT-6150? 

Now, that documentation you just referred to, would that include 

A. Correct. 

Q. 

QUALCOMM radio practice that claim? 

Okay. Let’s take claim 3 of the ‘473 patent. How does the 

A. 

description? 

Claim 3 starting at -- you want me to just give a general 

JUDGE LUCKEW Rephrase the question. However you want to 

proceed, but apparently the witness is not sure of just what he is 

supposed to answer to, Ms. Elson. 

MS. ELSON: Sure, Your Honor. 

BY MS. ELSON: 

240 
Q. 

element of claim 3? 

Does the OUALCOMM radio literally satisfy each and every 

A. Yes, it does. 

Q. 

claim 3 reads, "a power detector, coupled to the receive amplifier, for 

generating a first power value from a received signal having a first 

frequency." 

Okay. Now, let's just run through the elements. Element A of 

In your opinion, Doctor, does the OUALCOMM radio practice this 

element? 

A. yeS. 

Q. 

that you identified? 

And are you basing your opinion on the documents and testimony 

A. Yes. 

Q. 

detector for generating an automatic gain control setpoint from the first 

power value." 

Element B of claim 3 reads, "an integrator coupled to the power 

In your opinion, Doctor, does the OUALCOMM radio practice 

element B? 

Q. 

witness statement you identified earlier? 

And is the basis of your opinion the same documentation and 

A. Yes. 

Q. I am going to skip for the present to element D, the fourth 

element, which reads, "a second power detector, coupled to the 

transmit amplifier, for generating a second power value from a 

transmitted signal having a second frequency." In your opinion, 

Doctor, does the QUALCOMM radio practice element D of claim 3? 

A. Yes. 

24 1 
Q. 

documentation and testimony you identified earlier? 

And is the basis of your opinion the same QUALCOMM 

A. Yes. 

Q. Okay. Let’s go to element E, which reads, “a transmit linearizer 

for generating a transmit calibration value in response to the automatic 

gain control setpoint, the second power value, and a frequency index 

corresponding to the second frequency, the transmit calibration value 

being coupled to the control input of the transmit amplifier for 

adjusting the gain of the transmit amplifier.” 

In your opinion, Doctor, does the OUALCOMM radio practice 

element E of the claim 3? 

A. Yes. 

Q. 

document -- excuse me, QUALCOMM documentation and testimony 

you identified earlier? 

And is the basis of your opinion the same QUALCOMM 

A. Yes. 

Q. What is your understanding of the only element that’s in dispute 

regarding OUALCOMM, the OUALCOMM radio’s uractice of claim 

3 of the ‘473 patent? 

A. Element C starting in line 56 of column 7. 

(Tr. at 1627-31 (emphasis added).) The administrative law judge finds that Verdu’s testimony, based 

on QUALCOMM documents and chipsets, is sufficient to establish the technical prong with respect to 

the preamble as well as the first, second, fourth and fifth elements of claim 3 of the ‘473 patent. 

Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1574-76 (Fed. Cir. 1991). Respondents provided 

no arguments disputing Verdu’s testimony that QUALCOMM’s handset satisfies said elements. (See 

RBr at 136-37; RRBr at 88.1 

242 
2. The Third Element 

Complainant argued that its handset practices the third elementM because the{ 

} (CRBr at 88-89.) Complainant 

also argued that the{ 

}(CRBr at 

88-89.) Complainant further argued that other components, such as the variable gain LNA, diplexer, 

duplexer, and filters, contribute to non-linearities, which need to be corrected for by the receive 

linearizer. (CRBr at 89.) 

Complainant argued that the{ 

It is argued that the{ 

Complainant also argued that the{ 

} (CRBr at 9 1 .) 

} (CRBr at 91-92.) 

} (CBr at 143.) Complainant further argued that during a phone call,{ 

therefore argued that { 

} (CBr at 143; CFF I1 11-162; CFF I207.) Complainant 

1 

66 Said third element is identified in Section X.C, supra. Also there are two circuits at 

issue regarding the technical prong for this claim element: { 
{ 

CFF 176-79; CFF 1130-131.) 

Complainant similarly argued that{ 

} (CRl3r at 93.) It is argued that like the{ 

} (CBr at 143-44; CFF 173; 

} (CBr at 142; CFF I5 1 .) Thus, complainant argued that the 

} (CRRFF XII.25H, CBr at 142.) 

Respondents argued that complainant removed the receive linearizer from the MSM6550, such 

} (IU3r at 138.) 

Respondents also argued that the{ 

20-6 of JX- 13C { 

Respondents argued that the{ 

Thus, it is argued that the{ 

} Figures 20-5 and 

}(RBr at 139-141, 143.) 

} (RBr at 143-44.) 

1 

244 
Respondents further argued that the { 

} (RBr at 144.) 

The staff argued that QUALCOMM’s{ } practices the third element, while its 

} does not. (SBr at 87-89.) It is argued that QUALCOMM concedes that the 

{ } (SRBr 39, citing 

CFF 1.93; CFF I224; RFF XII.6, 8,20-23); and that therefore it is{ 

} (SRBr at 39, citing RFF XII.76.) The staff also 

argued that the{ 

} (SFU3r at 40, citing RFF XII.65; RFF XII.74.) Accordingly, the staff argued that 

} (SRBr at 40.) 

The staff however argued that the circuitry in the{ 

} satisfies the third element for 

the technical prong of domestic industry. (SBr at 87-88.) The staff specifically argued that the 

{ 

} satisfies the third element. (SBr 

at 87, citing Tr. at 94142,947.) In light of the staffs construction, the staff argued that the term 

{ 1 

245 
} (SBr at 88.) It is argued that it is undisputed that{ 

} (SBr at 

88, citing Tr. at 944.) 

As a preliminary matter, the parties agree that QUALCOMM relies upon the MSM6550 chip, 

used in conjunction with a receiver, the RFR6500, and a transmitter, the RFT6150, to satisfy the 

technical prong of the domestic industry requirement. (CFF I6 (undisputed); CFF I7 (undisputed); 

SPFF 26 (undisputed).) The parties also agree that the MSM6550 chip in QUALCOMM’s handsets is 

a baseband processor that handles the signal processing of the QUALCOMM radio. (CFF I2 

(undisputed) .) 

With respect to the{ } the parties agree that a{ 

(RFF XII.23 (undisputed).) Moreover, the parties agree that{ 

1 

} (CFFI92 

(undisputed).) The parties agree that during operation of the MSM6550,{ 

} (RFF XII.71 (undisputed).) 

Nonetheless, the parties dspute whether QUALCOMM{ 

} The administrative law judge finds that in the MSM6050. a 

predecessor chip to the MSM6550, QUALCOMM{ 

} (JX-294C (Butler 

Dep.) at 115: 17:24, 145:21-146:7; JX-295C (Ciccarelli Dep.) at 54: 17-25.) { 1 

246 
} (JX-295C (Ciccarelli Dep.) at 55: 11-17.) In{ 

1 

(JX-295C (Ciccarelli Dep.) at 54:17-25.) As a result of this change, QUALCOMM replaced{ 

} (Nabulsi, Tr. at 932:6-933: 15; JX-294C (Butler Dep.) at 115: 17- 

24.) Thus, the adrmnistrative law judge finds that the QUALCOMM radio used for the domestic 

industry requirement has{ } (Nabulsi, Tr. at 872:l-2, 871:15- 

21,87223-10,986:21-23; JX-294C (Butler Dep.) at 103:12-16.) The administrative law judge further 

finds that said evidence supports the conclusion that the{ 

} Since the parties agree that the{ 

} the 

administrative law judge further finds that the{ 

and therefore it cannot serve as a receive linearizer for generating a calibration value in response to an 

AGC setpoint as the third element recites.67 

} in QUALCOMM’s chipset 

With respect to the{ } the parties agree the{ 

} (CFF I73 (undisputed).) The parties also agree that the MSM6550 FW 

software manages the blocks labeled{ 

} in Figure 20-6 of QNITC0122670. (CFF I1 11 (undisputed).) The parties 

further agree that in the{ 1 

67 Complainant’s product contains both Digital VGA and LNA circuitry. However the 

administrative law judge finds that if one of said circuits meets the requirement of said third 

element, the presence of a circuit that does not meet said requirement is irrelevant. 

247 
{ 

(undisputed); CFF I1 15 (undisputed).) The parties also agree that the{ 

} (CFF I114 

} (CFF I1 19 (undisputed); CFm120 (undisputed).) As found, infra, the 

1 

The parties agree that the{ 

} (CFF I123 (undisputed); CFF I124 

(undisputed).) The parties also agree that the{ 

} (CFF I126 (undisputed).) They further agree that{ 

} (CFF I128 (undisputed).) 

The parties ape that the{ 

} (CFF I160 (undisputed); CFF 

I161 (undisputed).) The parties also agree that{ 

further agree that the{ 

} (CFF I132 (undisputed); CFF I137 (undisputed).) The parties 

} (CFF I80 (undisputed); CFF I40 

(undisputed).) Moreover, the parties agree that the{ 

248 
} (CFF I145 (undisputed); CFF I148 

(undisputed); CFF I149 (undisputed).) Furthermore, the parties agree that the{ 

} (CFF I151 (undisputed); CFF I153 (undisputed).) 

However, the parties dispute whether the{ 

} Respondents argued that the 

} (RRCFF I1 18p; RRCFF I1 1Sq.) Respondents argued that the 

} (RRCFF I1 18h.) Respondents further argued that the{ 

} (RRCFF I1 1 Si; RRCFF I1 18d.) Furthermore, Taker Nabulsi68 was 

cross-examined on the LNA-RISE and{ } as follows: 

68 Nabulsi, a QUALCOMM employee since 1996, is director of engineering. (Tr. at 854- 

5.) 

249 
250 
1 

25 1 
1 

(Tr. at 941-946 (emphasis added).) Thus, the administrative law judge finds that said testimony shows 

that the{ } Moreover, the{ 

} (Nabulsi, Tr. at 940:9-18,941:ll-25,943:l-13, 

947:l-5; JX-13C at QNITC0122660,122669-122670; JX-19C at QNlTC1476015-1476022; JX-28C 

at QNITC014312-143417; JX-297C Nabulsi Dep. 7521-77:ll) which is not disputed by respondents. 

252 
- See RRCFF I1 12a. Finally, the administrative law judge finds that the{ 

} (Nabulsi, Tr. 

at 943:19-22,998:2-999:4), which is not disputed by respondents. RRCFF I112d. 

In view of the foregoing and the construction of “frequency index,” which has no channel 

limitati0n,6~ the administrative law judge finds by a preponderance of the evidence that 

QUALCOMM’s handset practices the third element because the (1){ 

1 

Based on the foregoing, the administrative law judge finds that complainant has established 

that it practices claim 3 of the ‘473 patent, and therefore satisfies the technical prong of the domestic 

industry requirement as to said patent. 

XII. Remedy 

Pursuant to the Commission rules 210.36(a) and 210.42(a)(l)(ii), the administrative law judge 

shall consider evidence on the issue of the appropriate remedy in the event that a violation of Section 

337 is found, and issue a recommended determination on that issue. The Commission, with respect to 

remedy, has wide latitude to craft an exclusion order including selecting the form, scope, and extent of 

the order. Hvundai Elecs. Indus. Co., Ltd. v. United States Int’l Trade Comm’n, 899 F.2d 1204, 

69 The administrative law judge has construed “frequency index” as “a value specifying 

the current center frequency on which the receive chain is operating, 3 the current center 

frequency on which the transmit chain is operating.” 

253 
1209 (Fed. Cir. 1990); Viscofan v. United States Int’l Trade Comm’n, 787 F.2d 544, 548 (Fed. Cir. 

1986). 

Under Section 337(f)(l), the Commission can also issue cease and desist orders. 19 U.S.C. 0 

1337(f)(1). A cease and desist order is appropriate when the evidence demonstrates the presence of 

commercially significant inventory of infringing products in the United States. See Certain Crvstalline 

Cefadroxil Monohvdrate, Inv. No. 337-TA-293, Comm’n Opinion on Remedy, the Public Interest and 

Bonding, [USITC Pub. 2391,] 1991 ITC LEXIS 736, “85 n.117 (June 1991) (cease and desist order 

does not require evidence of “stockpiling”), see also, Certain Inteaated Circuit Telecommunication 

Chips and Products Containing Same Including Dialing - Apparatus, __ Inv. No. 337-TA-337, Comm’n 

Op., USITC Pub. 2760, 1993 ITC LEXIS 854, “26 n.45 (Aug. 1993) (cease and desist order 

appropriate where respondents held 120 days worth of infringing inventory). The Commission issues 

cease and desist orders to prevent a respondent from selling such commercially significant inventories 

thus undercutting the effect of any exclusion order. See Certain Microsphere Adhesives, Process for 

Making Same, and Products Containing Same, Including - Self-stick Repositionable Notes, Inv. No. 

337-TA-366, Comm’n Opinion, [USITC Pub. No. 2949,] 1996 ITC LEXIS 5, “31-32 (Jan. 1996). 

Complainant argued that if the Commission determines that there has been a violation of 

Section 337, the appropriate remedy is a limited exclusion order directed to all Nokia products that 

infringe the asserted claims of the patents-in-issue thus prohibiting the importation of any mobile 

telephone handset that infringes the asserted claims of the patents at issue. 19 U.S.C. 0 1337(d)(l) (“If 

the Commission determines.. .that there is a violation of [Section 3371, it shall direct that the articles 

concerned.. .be excluded from entry into the United States.. .”). Complainant further argued that given 

that it would not be afforded complete relief if Nokia were allowed to dispose of its inventories of 

254 
accused products in the United States, a cease and desist order barring the marketing, sale, distribution 

and transfer (other than for exportation) of such inventory is both necessary and appropriate, citing 

Certain Ink Markers & Packaging Thereof, Inv. No. 337-TA-522, Order No. 30,2005 ITC LEXIS 750, 

“98-99 (July 2005) (recommending such a remedy due to respondent’s “significant domestic inventory 

of infringing markers.”) (CBr at 145-8.) 

Respondents argued that should a violation of Section 337 be found to exist, the appropriate 

remedy is a limited exclusion order directed only to those specific models of Nokia handsets that have 

been found to infringe the asserted patents. (RBr at 147.) Respondents, as to any cease and desist 

order, argued that complainant has failed to establish Nokia’s existence of commerically significant 

inventories of post-importation goods and hence any cease and desist order would not be appropriate. 

(Rl3r at 147-48.) 

The staff, should a Section 337 violation be found, recommended a limited exclusion to 

exclude infringing Nokia handsets as well as a cease and desist order to prohibit the sales of Nokia’s 

commercially significant inventories within the United States. (SBr at 90.) 

Commission practice is to drect remedial orders to all products “covered by” the asserted 

claims as to which a violation has been found, not to limit the orders to only those specific models 

selected for the infringement analysis. See Hardware Logic Emulation Svstems and Components 

Thereof, Inv. No. 337-TA-383, Comm’n Op., 1998 ITC LEXIS 138, “31-32 (March 1998); Certain 

Optical Disk Controller Chips and Chipsets and Products Containing Same, Including DVD Players 

and PC Optical Storage Devices, Inv. No. 337-TA-506, Comm’n Op., 2005 ITC LEXIS 881, “90 

(Sept. 2005). Thus, while individual models of the accused product may be evaluated in determining 

importation and infringement, the “Commission’s jurisdiction extends to all models of infringing 

25 5 
products that are imported at the time of the Commission’s determination and to all such products that 

will be imported during the life of the remedial orders.” Hardware Lofic, 1998 ITC LEXTS 138 at 

“32. Hence if the Commission finds that there is a violation of section 337, the administrative law 

judge recommends that the Commission issue a limited exclusion order drected to all Nokia infringing 

products and prohibiting the importation of any infringing mobile telephone handsets, wireless 

communication devices and components thereof that infringes the asserted claims of the patents at 

issue. 

As to any cease and desist order respondents admit that supplemental Exhibit A to Nokia’s 

Response to Interrogatory No. 7 is a table indicating the inventory held by Nokia at its Alliance facility 

in the DallasFt. Worth area of Texas as of October 31,2006, for each non-Vertu handset. 

(RRCFFLla, CX-233C, Exhibit A.) { 

} (CFF L22, CX-233C at Exhibit A.) However it was argued that: 

256 
1 

(RRCFFL2la-21g (emphasis added).) As seen from the foregoing respondents qualified their 

responses with “are likely”, “may be”, “only”, “expected to dramatically decrease” “would be”, 

“expected to”. In view of the absence of a definitive showing that said Alliance Facility or an 

equivalent thereof is no longer in existence, should the Commission find a violation, the 

administrative law judge recommends the issuance of a cease and desist order against respondents. 

XIII. Bond 

Complainant argued that the administrative law judge should recommend that the Commission 

set the bond of 100 percent of entered value during the sixty day Presidential review period because a 

plain price comparison is not practicable and there is no reasonable royalty rate. (CBr at 150.) 

Nokia proposed a bond amount not to exceed{ }of the entered value of the accused 

handsets, which was said to represent{ 

} However should the administrative law judge conclude that the proposed{ 

} Nokia proposed that the bond amount should not exceed 5% 

which it argued was the bond amount applied in Certain Baseband Processor Chips and Chipsets, Inv. 

No. 337-TA-543, Comm’n Op. on remedy, public interest and bonding at 159-60 (public version, June 

19, 2007) Baseband Processor Chips) to handsets incorporating infringing technology. (FU3r at 149.) 

257 
The staff argued a 5% royalty rate is the appropriate bond on the ground that it perceives no 

reason to distinguish the bond amount applied for handsets in this investigation from the 5% that the 

Commission applied to infringing handsets in Baseband Processor Chi=. (SBr at 91.) 

If a violation of Section 337 is found and an exclusion order is issued, Section 337(j)(3) 

provides for the entry of infringing articles upon the payment of a bond during the sixty (60)-day 

Presidential review period. 19 C.F.R. 9 1337(j)(3). The bond is established at a level deemed 

sufficient to protect the complainant from injury. See id. Thus, the bond is generally set at a level 

“sufficient to offset any competitive advantage resulting from the unfair method of competition or 

unfair act enjoyed by persons benefiting from the importation.” & Certain Intenated Circuit 

Telecommunications Chips and Products Containing Same Including Dialing - ADparatus, __ Inv. No 

337-TA-2670, Comm’n Op., USITC Pub. 2670, 1993 ITC LEXIS 854, “28 (August 1993). 

In setting a bond amount, “the Commission typically has considered the differential in sales 

price between the patented product made by the domestic industry and the lower price of the infringing 

imported product.” & Certain Microsphere Adhesives, Process for Making Same, and Products 

Containing Same, Including Self-stick Repositionable Notes, Inv. No. 337-TA-366, Comm’n Op., 

1996 ITC EXIS 5, “35-36 (January 1996), aff‘d sub nom. Minnesota Mining & Manufacturing Co. v. 

U.S. Int’l. Trade Comm., 91 F.3d 171 (Fed. Cir. 1996). The Commission, however, has found that a 

plain price comparison is not practical when the parties sell their products at different levels of 

commerce. Certain Flash Memorv Circuits and Products Containing Same, Inv. No. 337-TA-382, 

Comm’n Op., USITC Pub. No. 3046,1997 ITC LEXIS 166 “6 (July 1997) (a 100 percent bond 

imposed when price comparison was not practical because the parties sold products at different levels 

of commerce, and the proposed royalty rate appeared to be de minimis and without adequate support in 

25 8 
the record). The Commission may also rely on royalty rates established on the basis of license 

agreements or other reliable evidence of an appropriate royalty rate for the patents at issue. See, e.g, 

Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, 19933 ITC EXIS 854, 

“27-28. 

Nokia has admitted that there is insufficient evidence in the record to perform a pricedifferential analysis. (RBr at 148.) The staff further noted that QUALCOMM no longer manufactures 

or sells cellular handsets so there is no evidence in the record as to the prices of handsets for 

comparison prices. (SBr at 91.) With respect to the{ 

} (JX-289C (Rahnasto Dep.) at 266.) 

Nokia and the staff rely on the amount of bond applied in Baseband Processors Chips. In that 

case the Commission stated: 

We agree with the Aw and the IA that a bond equal to 100 percent of 

entered value should be set on programmed infringing chips during the 

Presidential review period. We note that, consistent with the AIJ’s and 

the IA’s position, where, as in the present investigation, - the record 

lacks any evidence of current sales or pricing information that would 

permit determination of a urice differential or a reasonable royalty rate, 

a 100 percent bond per accused infringhg imported chip is appropriate. 

As for the downstream products subject to exclusion under the 

proposed limited exclusion order, we agree with the IA’s analysis and 

her conclusion that the bond amount on the handsets should be set at 

five percent of their entered value. 1-1562 [TEXT REDACTED BY THE 

COURT]. n563 Consistent with the IA’s position, we believe that such 

a bond is excessive. In any event, we expect relatively few imports to 

be subiect to bonding - during the Presidential review period because 

models already being imported for sale to the general public are exempt 

from exclusion. 

259 
2007 ITC LEXIS 621, "255-6 (emphasis added). As seen from the foregoing, the Commission set a 

100 percent bond per accused infringing imported chip and, as for downstream products, a bond of five 

percent of the entered value of the handsets, which was somewhat qualified. Moreover, in Certain 

Cellular Radiotelephones and Subassemblies and Component Parts Thereof, Inv. No. 337-TA-297, 

1991 ITC EXIS 117, "8-10 (Feb. 1991) the Commission imposed a 25% bond on cellular 

radiotelephones, subassemblies thereof and components thereof. Hence, a determination of an 

appropriate bond has been done on a case-by-case basis. Thus because a plain price comparison is not 

practical and there is no reasonable royalty rate:' should a violation be found, the administrative law 

judge recommends that the Commission set the bond of 100 percent of entered value during the sixty 

day Presidential review period. 

XIV. Additional Findings Of Fact 

A. Parties 

1. Complainant QUALCOMM is a Delaware corporation with its principal place of business 

in San Diego, California. It does not manufacture cellular telephones or other mobile communication 

devices but does provide chips and chipsets for such devices. (SPFF 1,2 (undisputed).) 

2. Respondent Nokia Corp. is a Finland corporation.and a maker of telephone handsets and 

the infrastructure for mobile telephones. (SPFF 3,4 (undisputed).) 

3. Respondent Nokia, Inc. is a Delaware corporation located in Irving, Texas and distributes 

phones in the United States manufactured by Nokia Corp. (SPFF 5,6 (undisputed).) 

70 Nokia relies on this administrative law judge's recommendation in Certain Rubber 

Antidegradients, Components Thereof, and Products Containing Same, Inv. No. 337-TA-533, 

Initial Determination (Feb. 17,2006). In contrast to the record in that investigation, it is 

undisputed that QUALCOMM does not manufacture or sell cellular handsets. Moreover, there is 

evidence that QUALCOMM has not entered into any license involving the subject matter. 

260 
CONCLUSIONS OF LAW 

1. 

2. 

allegation. 

3. 

4. 

5. 

6. 

7. 

anticipation. 

8. 

9. 

112 for failure to disclose a best mode. 

10. 

11. 

12. 

desist order and a bond set in the amount of 100 percent of entered value during the sixty day 

Presidential review period. 

The Commission has in rem jurisdiction and subject matter jurisdiction. 

There has been an importation of accused products which are the subject of the unfair trade 

None of the accused products infringe the asserted claims of the ‘473 patent. 

None of the accused products infringe the asserted claim of the ‘408 patent. 

None of the accused products infringe the asserted claim of the ‘220 patent. 

A domestic industry exists as to articles protected by the ‘473, ‘408, and ‘220 patents. 

The asserted claims of the ‘473 patent have not been proven to be invalid based on 

The asserted claims of the ‘473 patent have been proven to be invalid under 35 U.S.C. 9 103. 

The asserted claims of the ‘473 patent have not been proven to be invalid under 35 U.S.C. 0 

The asserted claims of the ‘408 and ‘220 patents have not been proven to be invalid. 

There has been no violation of Section 337. 

If a violation is found the record supports issuance of a limited exclusion order, a cease and 

26 1 
ORDER 

Based on the foregoing, and the record as a whole, it is the administrative law judge’s Final 

Initial Determination that there is no violation of section 337 in the importation into the United States, 

sale for importation, and the sale within the United States after importation of certain mobile telephone 

handsets, wireless communication devices and components thereof. It is also the administrative law 

judge’s recommendation, if the Commission finds a violation, that a limited exclusion order should 

issue barring entry into the United States of infringing mobile telephone handsets, wireless 

communication devices, and components thereof as well as a cease and desist order; and that a bond of 

100 percent oft entered value, during the Presidential review period, be set. 

The administrative law judge hereby CERTIFIES to the Commission his Final Initial and 

Recommended Determinations which includes Appendices A-S together with the record consisting of 

the exhibits admitted into evidence. The pleadings of the parties filed with the Secretary and the 

transcript of the pre-hearing conference, and the hearing, are not certified, since they are already in the 

Commission’s possession in accordance with Commission rules. 

Further it is ORDERED that: 

1. In accordance with Commission rule 210.39, all material heretofore marked in camera 

because of business, financial and marketing data found by the administrative law judge to be 

cognizable as confidential business information under Commission rule 201.6(a), is to be given 

camera treatment continuing after the date this investigation is terminated. 

2. Counsel for the parties shall have in the hands of the administrative law judge those 

portions of the final initial and recommended determinations which contain bracketed confidential 

business information to be deleted from any public version of said determinations, no later than 

262 
December 28, 2007. Any such bracketed version shall not be served via facsimile on the 

adrmnistrative law judge. If no such bracketed version is received from a party, it will mean that the 

party has no objection to removing the confidential status, in its entirety, from these initial and 

recommended determinations. 

3. The initial determination portion of the Final Initial and Recommended Determinations, 

issued pursuant to Commission rule 210.42(h)(2), shall become the determination of the Commission 

forty-five (45) days after the service thereof, unless the Commission, within that period shall have 

ordered its review or certain issues therein or by order has changed the effective date of the initial 

determination portion. The recommended determination portion, issued pursuant to Commission rule 

210.42(a)(l)(ii), will be considered by the Commission in reaching a determination on remedy and 

bonding pursuant to Commission rule 210.50(a). 

Paul J. Luclpe 

Administratwe Law Judge 

Issued: December 12,2007 

263 
IN THE MATTER OF CERTAIN MOBILE TELEPHONE HANDSETS, WIRELESS 

COMMUNICATION DEVICES AND COMPONENTS THEREOF 

Inv. No. 337-TA-578 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached Public Version Final Initial and 

Recommended Determinations was served upon Christopher G. Paulraj, Esq. , Commission 

Investigative Attorney, and the following parties via Federal Express overnight delivery 

on February 1, 2008. 

Marilyn R. kbbott,'iecretary && 

U.S. International Trade Commission 

500 E Street, SW, Room 112A 

Washington, DC 20436 

FOR COMPLAINANT QUALCOMM, INC.: 

Cecilia H. Gonzalez, Esq. 

HOWREY LLP 

1299 Pennsylvania Ave., NW 

Washington, DC 20004 

Terrance P. McMahon, Esq. 

Vera M. Elson, Esq. 

Peter P. Chen, Esq. 

MCDERMOTT WILL & EMERY LLP 

3 150 Porter Dr. 

Palo Alto, CA 94304 

Philip L. Blum, Esq. 

BINGHAM MCCUTCHEN LLP 

399 Park Avenue 

New York, NY 10022 

Richard J. Stark, Esq. 

Roger G. Brooks, Esq. 

CRAVATH SWAINE & MOORE LLP 

825 Eighth Ave. 

New York, NY 10019 
IN THE MATTER OF CERTAIN MOBILE TELEPHONE HANDSETS, WIRELESS 

COMMUNICATION DEVICES AND COMPONENTS THEREOF 

Inv. No. 337-TA-578 

Richard S. Taffet, Esq. 

BINGHAM MCCUTCHEN, LLP 

399 Park Avenue 

New York, NY 10022 

Kathryn B. Riley, Esq. 

DLA PIPER US LLP 

401 B St., Suite 1700 

San Diego, CA 92101-4297 

Steven M. Straws, Esq. 

COOLEY GODWARD KRONISH LLP 

4401 Eastgate Mall 

San Diego, CA 92121 

FOR RESPONDENTS NOKIA CORPORATION AND NOKIA, INC.: 

Louis S. Mastriani, Esq. 

Tali L. Alban, Esq. 

Andrea B. Miller, Esq. 

ADDUCI, MASTRIANI & SCHAUBERG, L.L.P 

1200 Seventeenth Street, NW 

Washington, DC 20036 

Paul F. Brinkman, Esq. 

ALSTON & BIRD, LLP 

950 F Street, NW 

Washington, DC 20004 
IN THE MATTER OF CERTAIN MOBILE TELEPHONE HANDSETS, WIRELESS 

COMMUNICATION DEVICES AND COMPONENTS THEREOF 

Inv. No. 337-TA-578 

A. William Urquhart, Esq. 

Frederick Lorig, Esq. 

Marshall M. Searcy, 111, Esq. 

William C. Price, Esq. 

Eric J. Bakewell, Esq. 

Matthew Warren, Esq. 

David Kleiman, Esq. 

Mateo Z. Fowler, Esq. 

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 

865 South Figueroa Street, 10* Floor 

Los Angeles, CA 90017 

Charles K. Verhoeven, Esq. 

Rachel H. Smith, Esq. 

Paul A. Alsdorf, Esq. 

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 

50 California St., 22nd Floor 

San Francisco, CA 941 1 

Sanford I. Weisburst, Esq. 

Emily Costello, Esq. 

QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 

5 1 Madison Ave., 22nd Floor 

New York, NY 10010 

Keith E. Broyles, Esq. 

Matthew J. Urbanawiz, Esq. 

John Haynes, Esq. 

Mark A. McCarty, Esq. 

Kristen L. Melton, Esq. 

Demetrius Tennell Lockett, Esq. 

ALSTON & BIRD LLP 

One Atlantic Center 

1201 West Peachtree Street 

Atlanta, GA 30309-3424 
IN THE MATTER OF CERTAIN MOBILE TELEPHONE HANDSETS, WIRELESS 

COMMUNICATION DEVICES AND COMPONENTS THEREOF 

Inv. No. 337-TA-578 

Kenneth R. Adamo, Esq. 

Thomas E. Jackson, Esq. 

Michael J. Newton, Esq. 

Kajeer Yar, Esq. 

JONES DAY 

2727 North Harwood Street 

Dallas, TX 75201-1515 

Jacques Buhart, Esq. 

HERBERT SMITH LLP 

20 Quentin Bauchart Street 

75008 Paris 

France 
IN THE MATTER OF CERTAIN MOBILE TELEPHONE HANDSETS, WIRELESS 

COMMUNICATION DEVICES AND COMPONENTS THEREOF 

Inv. No. 337-TA-578 

PUBLIC MAILING LIST 

Sherry Robinson 

8891 Gander Creek Drive 

Miamisburg, OH 45342 

LEXIS - NEXIS 

Ronnita Green 

Thomson West 

1100 Thirteen Street, NW, Suite 200 

Washington, DC 20005