BEFORE THE PATENT TRIAL AND APPEAL BOARD … · BEFORE THE PATENT TRIAL AND APPEAL BOARD _____...

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

NOKIA SOLUTIONS AND NETWORKS US LLC; AND

NOKIA SOLUTIONS AND NETWORKS OY,

Petitioners

v.

HUAWEI TECHNOLOGIES CO. LTD.,

Patent Owner

____________

Case: IPR2017-00658

U.S. Patent No. 8,537,779

____________

PETITION FOR INTER PARTES REVIEW

UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104

Mail Stop PATENT BOARD

Patent Trial and Appeal Board

US Patent and Trademark Office

PO Box 1450

Alexandria, Virginia 22313-1450

i

TABLE OF CONTENTS

LIST OF EXHIBITS ................................................................................................ v

ACRONYM GLOSSARY ....................................................................................... x

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................ 1

A. REAL PARTY IN INTEREST ........................................................................ 1

B. RELATED MATTERS ................................................................................. 1

C. DESIGNATION OF COUNSEL ...................................................................... 1

D. SERVICE INFORMATION............................................................................ 2

II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ................. 2

III. PAYMENT OF FEES ................................................................................... 2

IV. OVERVIEW OF CHALLENGES AND RELIEF REQUESTED ............ 2

V. INTRODUCTION ......................................................................................... 4

VI. BACKGROUND OF THE TECHNOLOGY .............................................. 6

A. 3GPP ORGANIZATION.............................................................................. 6

B. THE 3G 3GPP PACKET-SWITCHED NETWORK ......................................... 7

C. THE ATTACH PROCEDURE AT THE TIME OF THE INVENTION ..................12

VII. THE ’779 PATENT .....................................................................................23

A. OVERVIEW OF THE ’779 PATENT ............................................................23

B. PURPORTED PROBLEM AND ALLEGED NOVELTY ...................................23

C. PROSECUTION HISTORY OF THE ’779 PATENT ........................................26

VIII. CLAIM CONSTRUCTION ........................................................................31

A. “OBTAINING UNIT,” “IDENTIFYING UNIT,” AND “PROCESSING UNIT” IN

CLAIM 11 ...............................................................................................31

B. “CREATE BEARER REQUEST MESSAGE” IN CLAIM 4...............................33

IX. PRIOR ART REFERENCES .....................................................................35

A. THE ’779 APA (NSN779-1002, AT 1019-40) ........................................37

B. SODERBACKA (NSN779-1007)..............................................................38

C. THE NOKIA SUBMISSION (NSN779-1008) .............................................39

ii

D. THE MOTOROLA SUBMISSION (NSN779-1009) .....................................40

X. INVALIDITY OF CLAIMS 1, 4 AND 9-11 OF THE ’779 PATENT ....40

A. COUNT 1: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35

U.S.C. § 103(A) OVER THE ’779 APA IN LIGHT OF SODERBACKA .........41

B. COUNT 2: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35

U.S.C. § 103(A) OVER THE ’779 APA IN LIGHT OF THE NOKIA

SUBMISSION ...........................................................................................54

C. COUNT 3: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35

U.S.C. § 103(A) OVER THE MOTOROLA SUBMISSION IN LIGHT OF THE

NOKIA SUBMISSION ...............................................................................62

D. COUNT 4: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35

U.S.C. § 103(A) OVER THE MOTOROLA SUBMISSION IN LIGHT OF

SODERBACKA ........................................................................................74

E. THE GROUNDS ARE NOT REDUNDANT ..................................................78

XI. CONCLUSION ............................................................................................79

iii

TABLE OF AUTHORITIES

Page(s)

CASES

Cassidian Commc’ns, Inc. v. MicroDATA GIS, Inc.,

No. 2:12-CV-162-JRG, D.I. 71 (E.D. Tex. June 20, 2013) ................................ 34

Constant v. Advanced Micro-Devices, Inc.,

848 F.2d 1560 (Fed. Cir. 1988) .......................................................................... 38

Huawei Technologies Co., Ltd. v. T-Mobile US, Inc. and T-Mobile

USA, Inc.,

Case No. 2:16-cv-0056 (E.D. Tex. Jan. 15, 2016) ............................................... 1

In re NTP,

654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 38

Lextron Sys., Inc. v. Microsoft Corp.,

No. C-04-0588 VRW, D.I. 74 (N.D. Cal. June 1, 2005) .................................... 34

LG Elecs. v. Core Wireless Licensing S.A.R.L.,

IPR2015-01988, Paper 7 (PTAB Apr. 1, 2016) ................................................. 36

Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,

CBM2012-00003, Paper 7 (PTAB Oct. 25, 2012) ....................................... 78, 79

PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,

491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 38

Tokyo Keiso Co., v. SMC Corp.,

307 F. App’x 446 (Fed. Cir. 2009) ..................................................................... 38

STATUTES

35 U.S.C. § 102 .................................................................................................. 35, 38

35 U.S.C. § 103(a) ............................................................................................passim

35 U.S.C. § 365(c) ................................................................................................... 35

iv

OTHER AUTHORITIES

37 C.F.R. § 42.8 ......................................................................................................... 1

37 C.F.R § 42.10(b) ................................................................................................... 1

37 C.F.R. § 42.15(a) ................................................................................................... 2

37 C.F.R. § 42.22(a)(1) .............................................................................................. 2

37 C.F.R. § 42.100(b) .............................................................................................. 31

37 C.F.R. § 42.104(a) ................................................................................................. 2

37 C.F.R. § 42.104(b)(1)-(2) ...................................................................................... 2

77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ......................................................... 31

77 Fed. Reg. 48,766 (Aug. 14, 2012)....................................................................... 32

v

LIST OF EXHIBITS

Exhibit Short Name Description

NSN779-1001 ’779 Patent U.S. Patent No. 8,537,779

NSN779-1002

’779

Application File

History

File History of U.S. Patent No. 8,537,779

(Appl. No. 12/581,575)

NSN779-1003 Lanning

Declaration

Declaration of Mark R. Lanning under 37

C.F.R. § 1.68

NSN779-1004 Bertenyi

Declaration

Declaration of Balazs Bertenyi under 37

C.F.R. § 1.68

NSN779-1005 Newton’s

Dictionary

Newton’s Telecom Dictionary (18th ed.

2002)

NSN779-1006

Patent Owner’s

District Court

Complaint

Huawei Techs. Co. Ltd. v. T-Mobile US, Inc.,

2:16-cv-00052, D.I. 1 (E.D. Tex. Jan. 15,

2016)

NSN779-1007 Soderbacka

U.S. Printed Patent Application Number US

2003/0114158 to inventors Lauri Soderbacka,

Jarmo Virtanen, Kari Kauranen, Hannu

Hietalahti, Jari Liukkonen, and Antti

Pitkamaki, titled “Intersystem Handover of a

Mobile Terminal”

NSN779-1008 Nokia

Submission

3GPP TSG-SA2 Meeting #57, TDoc S2-

072255, GPRS functionality for IMS

emergency services support, submitted by

Nokia Siemens Networks and Nokia,

available as “S2-072255.zip” at

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T

SGS2_57_Beijing/Docs/ (uploaded 4/27/2007

at 9:29 AM)

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Docs/


vi


NSN779-1009 Motorola

Submission

3GPP TSG SA WG2 Architecture – S2#57,

TDoc S2-072252, Handover from non-3GPP

Access to E-UTRAN (TS 23.402), submitted

by Motorola, available as “S2-072252.zip” at



at 9:28 AM)

NSN779-1010 S2#57 Meeting

Report

3GPP TSG SA WG2 Architecture—S2#57,

Report of SA WG2 meeting #57 (April 23-27,

2007), available as

“Approved_Report_v100_SA2_57.zip” at


SGS2_57_Beijing/Report/ (uploaded

6/23/2009)

NSN779-1011 S2#57 Attendee

List

List of Registered Attendees, Meeting

SA2#57, available at

http://webapp.etsi.org/3GPPRegistration/fVie

wPart.asp?mid=26044 (last accessed

1/9/2017)

NSN779-1012 Huawei

Submission

3GPP TSG SA WG2 Architecture – S2#58,

TDoc S2-072558, Attach Type in attach

procedure, submitted by Huawei, available as

“S2-072558.zip” at


SGS2_58_Orlando/Docs/ (uploaded

6/19/2007 at 12:59 PM)



http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Report/

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Report/

http://webapp.etsi.org/3GPPRegistration/fViewPart.asp?mid=26044

http://webapp.etsi.org/3GPPRegistration/fViewPart.asp?mid=26044

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_58_Orlando/Docs/

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_58_Orlando/Docs/

vii


NSN779-1013 Nokia-Huawei

Submission

3GPP TSG SA WG2 Meeting #61, TDoc S2-

075847, Principle of differentiating Initial

Attach and Handover Attach to EPS via LTE

or non-3GPP IP Access, submitted by Nokia

Siemens Networks, Nokia, and Huawei,



SGS2_61_Ljubljana/Docs/ (uploaded

11/16/2007 at 4:17 PM)

NSN779-1014 Ericsson

Submission

3GPP TSG SA WG2 Architecture –S2#57,

TDoc S2-071738, GW selection for LTE and

non-3GPP accesses, submitted by Ericsson,




at 1:33 PM)

NSN779-1015 About 3GPP

About 3GPP Home, 3GPP: A Global

Initiative, available at

http://www.3gpp.org/about-3gpp/about-3gpp

(last accessed 1/10/2017)

NSN779-1016

3GPP

Delegates’

Corner

Delegates Corner, 3GPP: A Global Initiative,

available at

http://www.3gpp.org/specifications-

groups/delegates-corner (last accessed

1/10/2017)

NSN779-1017 3GPP FAQ

3GPP FAQs, 3GPP: A Global Initiative,

available at

http://www.3gpp.org/contact/3gpp-faqs (last

accessed 1/10/2017)

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_61_Ljubljana/Docs/

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_61_Ljubljana/Docs/



http://www.3gpp.org/about-3gpp/about-3gpp

http://www.3gpp.org/specifications-groups/delegates-corner

http://www.3gpp.org/specifications-groups/delegates-corner

http://www.3gpp.org/contact/3gpp-faqs

viii


NSN779-1018 S2#57

Document List

3GPP Public FTP File Server TSG S2#57

Document List, available at


SGS2_57_Beijing/Docs/ (last accessed

1/9/2017)

NSN779-1019 TS 23.060

3GPP TS 23.060 V4.6.0 (2002-09), 3rd

Generation Partnership Project; Technical

Specification Group Services and System

Aspects; GPRS Service description Stage 2

(Release 4), available at

https://portal.3gpp.org/desktopmodules/Speci

fications/SpecificationDetails.aspx?specificati

onId=758 (uploaded on 10/02/2002)

NSN779-1020 * * * European File History of International

Application Number PCT/CN2008/070909

NSN779-1021 TS 23.401

3GPP TS 23.401 V0.4.1 (2007-04), 3rd



Aspects; GPRS enhancements for E-UTRAN

access (Release 8), available at



onId=849# (uploaded on 4/16/2007)

NSN779-1023

Joint Claim

Construction

Chart

Joint Claim Construction Chart, Huawei

Techs. Co. Ltd. v. T-Mobile US, Inc., 2:16-cv-

00056, D.I. 110 (E.D. Tex. Dec. 08, 2016)

NSN779-1024 Lanning CV Curriculum Vitae of Mark R. Lanning



https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=758






ix


NSN779-1025

Cassidian Claim

Construction

Order

Cassidian Commc’ns, Inc. v. MicroDATA

GIS, Inc., No. 2:12-CV-162-JRG, Paper 71,

(E.D. Tex. June 20, 2013)

NSN779-1026

Lextron Claim

Construction

Order

Lextron Sys., Inc. v. Microsoft Corp., No. C-

04-0588 VRW, Paper 74, at 15 (N.D. Cal.

June 1, 2005)

NSN779-1027 TS 24.008

3GPP TS 24.008 V7.7.0 (2007-03), 3rd


Specification Group Core Network and

Terminals; Mobile radio interface Layer 3

specification; Core network protocols’ Stage

3 (Release 7), available at



onId=1015 (uploaded 3/20/2007)

NSN779-1050 TR 21.900

3GPP TS 21.900 V6.0.0 (2003-09), 3rd



Aspects; Technical Specification Group

working methods (Release 5) available at



onId=555 (uploaded 9/26/2003)




x

ACRONYM GLOSSARY

Acronym Term

3GPP 3rd Generation Partnership Project

2G Second Generation

3G Third Generation

4G Fourth Generation

AAA Authentication, Authorization, and Accounting

eNB Evolved NodeB

ePDG Evolved Packet Data Gateway

GGSN Gateway GPRS Support Node

GPRS General Packet Radio Service

HLR Home Location Register

HSS Home Subscriber Server

LTE Long Term Evolution

NB NodeB

PCRF Policy and Charging Rules Function

PDN Packet Data Network

PDN GW Packet Data Network Gateway

PDP Packet Data Protocol

POSITA Person of Ordinary Skill in the Art

PSTN Public Switched Telephone Network

RAB Radio Access Bearer

xi

Acronym Term

RAN Radio Access Network

RAT Radio Access Technology

RNC Radio Network Controller

S-GW Serving Gateway

SGSN Serving GPRS Support Node

UE User Equipment

UMTS Universal Mobile Telecommunications System

- 1 -

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

A. Real Party in Interest

The real party in interest for Petitioners are (1) Nokia Solutions and Networks

US LLC, (2) Nokia Solutions and Networks Oy (“NSN” or “Petitioners”), (3) T-

Mobile USA, Inc. and (4) T-Mobile US, Inc.

B. Related Matters

The ’779 Patent is at issue in Huawei Technologies Co., Ltd. v. T-Mobile US,

Inc. and T-Mobile USA, Inc., Case No. 2:16-cv-0056 (E.D. Tex. Jan. 15, 2016). On

June 10, 2016, NSN filed a motion to intervene, which was granted by the district

court on June 14, 2016.

In that matter, Patent Owner also asserts, inter alia, U.S. Patent Nos.

8,638,750 and 8,031,677. The ’779 Patent is not related to either of these two patents.

Petitioners are concurrently filing a petition for an inter partes review challenging

certain claims of U.S. Patent No. 8,031,677.

C. Designation of Counsel

Lead counsel is S. Benjamin Pleune (Reg. No. 52,421) and backup counsel

are John D. Haynes (Reg. No. 44,754) and Michael C. Deane (Reg. No. 70,389) each

of Alston & Bird LLP, 101 S. Tryon Street, Suite 4000, Charlotte, NC 28280, Tel:

704.444.1098, Fax: 704.444.1935. Pursuant to 37 C.F.R § 42.10(b), Powers of

Attorney are being submitted with this Petition.

- 2 -

D. Service Information

Petitioners consent to electronic service directed to [email protected]

and [email protected].

II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)

Petitioners certify that U.S. Patent No. 8,537,779 (“the ’779 Patent”) is

available for inter partes review (“IPR”) and that Petitioners are not barred or

estopped from requesting an IPR challenging Claims 1, 4 and 9-11 (“the Challenged

Claims”) on the grounds identified herein.

III. PAYMENT OF FEES

Petitioners authorize the Patent Office to charge Deposit Account No. 16-

0605 for the Petition fee set forth in 37 C.F.R. § 42.15(a) and for any additional fees.

IV. OVERVIEW OF CHALLENGES AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioners request

cancellation of Claims 1, 4, and 9-11 in the ’779 Patent on the following grounds:

Count 1: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C. § 103(a)

over the Admitted Prior Art (“the ’779 APA”) in view of U.S. Patent Application

US 2003/0114158 to Soderbacka et al. (“Soderbacka”).


over the Admitted Prior Art (“the ’779 APA”) in view of S2-072255 (“the Nokia

Submission”).

mailto:[email protected]

- 3 -


over S2-072252 (“the Motorola Submission”) in view of S2-072255 (“the Nokia

Submission”).


over S2-072252 (“the Motorola Submission”) in view of U.S. Patent Application US

2003/0114158 to Soderbacka et al. (“Soderbacka”).

- 4 -

V. INTRODUCTION

The alleged invention of U.S. Patent No. 8,537,779 (“the ’779 Patent”) is

simply “a specific parameter sent within a known message, within a known system.

The parameter capitalizes on an obvious consequence of gradual changes being

made during the standardization process.” NSN779-1003, ¶92. Ultimately, the ’779

Patent claims functionality that “was taught in Computer Communications 101.”

NSN779-1003, ¶39.

The ’779 Patent is directed to a method of distinguishing an “Attach Request”

message during handover in a 3GPP LTE data network that uses a non-3GPP (e.g.,

Wi-Fi) access point. As explained in greater detail below (and in the admitted prior

art), the concept of handover from a non-3GPP access point (such as a Wi-Fi router)

to a 3GPP base station (such as a cell phone tower) was a known procedure. At the

time of the alleged invention, the 3GPP standards body had already defined the

foundational aspects of the procedure. Indeed, the 3GPP standards body had already

decided that the procedure would closely mirror an “initial” Attach procedure—that

is, the Attach procedure conducted when a mobile phone first joins the network.

However, the 3GPP standards body had not yet defined some of the minor, routine

details, for example, how the network would distinguish an Attach Request message

caused by an “initial” Attach from an Attach Request message caused by a

“handover” Attach.

- 5 -

The Patent Owner’s purported invention was to use a data field (i.e.,

information element (IE)) in the Attach Request message to distinguish the “initial”

Attach Request message from the “handover” Attach Request message. For

example, the ’779 Patent discloses that an “Attach Type” information element might

be set to “0” for an “initial” Attach and set to “1” for a “handover” Attach. NSN779-

1001, at 6:37-44. The admitted prior art shows that this information element was the

only purportedly novel part of the Patent Owner’s claims.

At the time of the ’779 Patent, the use of an information element to distinguish

the purpose of an Attach Request message was a long-existing principle. In fact, the

same Attach Type information element had long been a part of the prior generation

(3G) Attach Request message, where it was used to indicate which type of attach

should be performed. Foreseeing that the standards body might simply carry the

long-existing information element from the 3G Attach Request message into the next

generation (4G) Attach Request message, the Patent Owner filed Chinese

applications covering this obvious detail and, eventually, turned those applications

into the ’779 Patent.

Petitioners respectfully request institution of inter partes review of Claims 1,

4, and 9-11 of the ’779 Patent because the patent examiner never had the opportunity

to contemporaneously review the most relevant prior art (Soderbacka) in connection

with the prior art that Patent Owner admitted was in the existing protocol. During

- 6 -

prosecution of the ’779 Patent, Patent Owner did not submit the admitted prior art

(by way of a translation) until years after the patent examiner signed off on the most

relevant references. Therefore, the examiner could not have fully appreciated the

trivial and routine nature of the ’779 Patent’s purported novelty. The examiner also

did not have the benefit of either of the additional references relied on in this Petition

(the Nokia Submission and the Motorola Submission), or the testimony of Mark

Lanning.

VI. BACKGROUND OF THE TECHNOLOGY

The ’779 Patent is closely related to the Patent Owner’s work involving

modifications to 3GPP’s 4G LTE standard. NSN779-1003, ¶41. For example, the

face of the ’779 Patent cites various 3GPP 4G LTE specifications, and Patent

Owner’s complaint in the co-pending district court litigation references Patent

Owner’s involvement in the development of 3GPP standards in support of its

allegations. NSN779-1006, ¶¶7-9. Therefore a brief discussion about 3GPP is

warranted.

A. 3GPP Organization

The 3rd Generation Partnership Project (“3GPP”) is a standards-setting

organization NSN779-1003, ¶42. As cellular telecommunications technology

developed in the late 1980s, network operators began to realize that standardization

was necessary to ensure compatibility of equipment provided by multiple suppliers.

- 7 -

Id. Thus, the 3GPP began in 1998 as a joint partnership between several

telecommunications companies to develop and standardize various aspects of 2G,

3G, and 4G mobile network systems Id.

The development of specifications by 3GPP is an ongoing, collaborative effort

involving hundreds of engineers from many companies. NSN779-1003, ¶45.

Members of the various 3GPP working groups submit written contributions and

discussion documents. Id. 3GPP stores and controls all of these documents

electronically and retains them on the public 3GPP server indefinitely. Id.; see also

NSN779-1016, at 2-3; NSN779-1004, ¶21

B. The 3G 3GPP Packet-Switched Network

3GPP originally developed and maintained the Universal Mobile

Telecommunications System (“UMTS”) 3G cellular network. NSN779-1003, ¶50.

Starting in the mid-2000s, however, 3GPP began developing its Long Term

Evolution (“LTE”) 4G cellular network. Id. ¶58. The relevant technology for the

purported invention of the ’779 Patent relates to modifications to the 4G LTE cellular

network. Id. ¶41.

To appreciate the routine nature of the purported novelty of the ’779 Patent,

it is helpful to trace 3GPP’s network evolution to the 4G LTE architecture.

3GPP UMTS Network Architecture—Early releases of the 3GPP standards

created a network that could only offer voice calls to landline phones or other mobile

- 8 -

phones. NSN779-1003, ¶49. This network was commonly called the 2G network. Id.

Given that these early 2G networks only supported voice calls, the 2G network only

needed a circuit-switched core network. Id.

However, by the late 1990s, mobile phone subscribers required more from

their devices than just voice calling capability and wanted access to services like e-

mail and Internet. Id. ¶50. These services required transferring data to and from

subscribers in small chunks called packets. Id. Therefore, 3GPP added a packet-

switched core network. Id.

The 3G packet-switched core network transferred data packets between User

Equipment (UE) (e.g., a mobile phone) and a Packet Data Network (PDN) (e.g., the

Internet). Id. ¶53.

A basic feature of any packet-switched network is the use of intermediate

nodes to route data packets from source to destination. NSN779-1003, ¶52-53. To

create a connection (i.e., a bearer) between the nodes, the 3G UMTS network used

a Packet Data Protocol (PDP) Context between the User Equipment (UE) (e.g., a

mobile phone) and the network nodes in order to transfer the data packets. Id. A

simplified diagram of the logical architecture for the 3G nodes contained within the

packet-switched core network appears below:

- 9 -

NSN779-1003, ¶52. In the 3G UMTS architecture, User Equipment (UE) (e.g., a

mobile phone) uses a wireless radio connection to connect to a mobile phone tower,

commonly referred to in the art as a NodeB (NB). Id. ¶53. The NB typically uses a

wired connection to connect to a Radio Network Controller (RNC). Id. Generally,

several NBs are connected to a given RNC. Id. The RNC is connected using a wired

connection to a nearby Serving GPRS Support Node (SGSN), which retrieves

subscriber information from the Home Location Register (HLR) database. Id. Based

on this information and the user’s desired packet data service (e.g., e-mail, Internet

connection, etc.), the SGSN selected a Gateway GPRS Support Node (GGSN). Id.

In a 3G packet-switched network, the bearer (i.e., connection) from mobile phone to

GGSN is referred to as a specific PDP context, and once the PDP context (i.e.,

connection) was established the mobile phone could send and receive data to and

from the service. Id.

- 10 -

To route packets between a mobile phone and the PDN, the 3G architecture

required the SGSN to perform both control-plane and user-plane functions. Id. ¶54.

The 3G Network Shortcomings—In a 3G network, the SGSN is the main

control element. NSN779-1003, ¶55. When initially establishing a PDP context (i.e.,

at “attach”), the SGSN is responsible for “control-plane functions,” such as selecting

a GGSN and performing mobility management (commonly called “handover”). Id.

However, once the PDP context is established, the SGSN is also responsible for

maintaining the connection from the mobile phone to the PDN (Internet). Id. These

are known as “user-plane functions.”

However, this dual-role configuration can create a bottleneck when many

mobile phones were connected to the same SGSN requiring data packet connections.

NSN779-1003, ¶57. Essentially, the SGSN can become too busy with user-plane

messaging and not have sufficient processing power or memory to devote to control-

plane messaging. Id. Stated differently, because the SGSN is tasked with performing

both control-plane and user-plane functions, the SGSN could not be optimized for

either. Id. So in Release 8, the 3GPP standards body decided to define a new

architecture for the packet-switched domain that separated the network equipment

that would be responsible for control- and user-plane messaging. Id. That new

architecture is commonly referred to today as a 4G Long Term Evolution (LTE)

network. Id.

- 11 -

At the time of the ’779 Patent, the 3GPP standards body was in the process of

evolving the 3G UMTS network into the 4G LTE network. Id. ¶58.

3GPP 4G LTE Architecture at the Time of the Invention—The 4G network

was, among other things, designed to improve efficiency and speed by separating

the user-plane and the control-plane functions into two new network elements: (1)

the Serving Gateway (S-GW), which handled the user-plane, and (2) the Mobility

Management Entity (MME), which handled the control-plane. NSN779-1003, ¶58.

A simplified representation of this new evolved 4G architecture appears below:

Id.

In addition, the new 4G LTE network also allowed a mobile phone to access

the packet-switched core network through a non-3GPP (e.g., Wi-Fi) access point,

such as a Wi-Fi router. Id. ¶59. A simplified version of the logical architecture for a

4G packet-switched core network where the mobile phone is connected through a

Wi-Fi (non-3GPP) access point appears below:

- 12 -

Id.

C. The Attach Procedure at the Time of the Invention

Before a mobile phone can use the data services of a 2G, 3G, or 4G cellular

network, it must first successfully establish a connection with the network. NSN779-

1003, ¶63. While the specific steps of this process differ for each generation of

network, the concepts and objectives are the same—to perform the necessary tasks

to get a connection between the mobile phone and the cellular network. Id. This

long-existing procedure is called the “Attach” procedure. Id. An explanation of the

3G and 4G Attach procedures will help show the trivial and routine nature of the

purported invention and show that the concepts had been used in prior generation

networks.

3G UMTS Initial Attach Procedure—The 3G UMTS “initial” Attach

procedure is used to connect the mobile phone to the 3G network. This procedure is

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contained in specification TS 23.060 § 6.5 (NSN779-1019). See also NSN779-1003,

¶¶66-72. In the first part of the 3G UMTS Attach procedure, the mobile phone sends

an Attach Request message to a NB, which routes the Attach Request to the SGSN

through the RNC (depicted with reference to the system architecture below).

NSN779-1003, ¶67.

In the 3G UMTS procedure, the Attach Request message contained an

information element called “Attach Type” that “indicates which type of attach is to

be performed.” Id.; NSN779-1019, at 48. The SGSN receives the Attach Request

message with the information element and identifies the contents of the information

element in that message. NSN779-1003, ¶67.

Id. A person of ordinary skill in the art would have understood that an “information

element” is nothing more than the name for a data field inside of a message. Id. ¶68;

NSN779-1005, at 4.

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In the second part of the procedure, the SGSN uses information provided by

the mobile phone to select a GGSN (similar to a PDN GW in the 4G network) that

the mobile phone will use to connect to the Internet (i.e., PDN). NSN779-1003, ¶69.

Id.

After the SGSN selects the GGSN, the SGSN sends an Activate PDP Context

Request message to the selected GGSN to create a PDP context (also known as a

“bearer”). Id. ¶70.

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Id.

Once the GGSN receives the message requesting that a bearer (i.e.,

connection) be created, the network, in turn, creates the bearer that will allow the

mobile phone to access the Internet and other services. Id. ¶71.

Id.

The bearer (connection) allows the mobile phone to communicate with the

network and, ultimately, the PDN to receive e-mail and Internet service. Id. ¶72.

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Id.

The Two 4G Attach Procedures at the Time of the Invention—At the time

of the alleged invention, the 3GPP standards body had defined the foundational

aspects for two different 4G LTE Attach procedures. The first Attach procedure,

similarly called “initial” Attach, was to be used when the mobile phone had no

presence in the network (for example, when the mobile phone was being turned on

for the first time). NSN779-1003, ¶73. The second Attach procedure, called

“handover” Attach, was to be used when the mobile phone had a connection to the

network through a Wi-Fi access point but wanted to handover the connection to a

3GPP base station (for example, when the phone was moving out of range of a Wi-

Fi router). Id. ¶79. The following aspects of the two procedures were all known

before the priority date of the ’779 Patent. See NSN779-1003, ¶¶73-79.

Both Attach procedures start with the same first step as the 3G Attach

procedure: The mobile phone sends an Attach Request message to the network

element in charge of the control-plane functions, which in the 4G LTE network is

the MME (see the two figures below). NSN779-1003, ¶¶74 & 83.

As can be seen in the simplified diagrams below, the only difference between

the 4G “initial” Attach procedure and the 4G “handover” procedure at this step is

that the mobile phone in the “handover” Attach procedure also has a pre-existing

connection through the Wi-Fi access point (which is what it seeks to handover):

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Given that the rest of the limitations of the claims of the ’779 Patent focus on

the “handover” Attach procedure, an explanation of those steps is below.

The “Handover” 4G Attach Procedures at the Time of the Invention—The

Patent Owner admitted in the Chinese priority application (and in Figure 2 of that

application) that the steps below were admitted prior art:

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First, as noted above, the MME receives an Attach Request message from the

mobile phone. NSN779-1003, ¶83.

Id.

Second, the MME selects a PDN GW. Id. ¶84. In the “handover” Attach

procedure, the MME needs to ensure that it re-selects the PDN GW that the mobile

phone is connected to using the Wi-Fi access point (see blue box below). Id. The

PDN GW in the blue box below acts as the anchor when the message flows are

switched during handover. Id.

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Id.

To re-select the PDN GW that the mobile phone (UE) is connected to through

the Wi-Fi access point, the MME contacts the Home Subscriber Server (HSS) to

obtain the PDN GW address that the mobile phone is connected to through the Wi-

Fi access point. Id. ¶85. The HSS stores this PDN GW address when the mobile

phone is connected through a Wi-Fi access point. Id. ¶84.

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Id.

Once the MME re-selects the PDN GW, the MME sends a message to the

PDN GW asking the network to create a bearer (i.e., connection). Id. ¶86. Given that

there is no direct interface between the MME and the PDN GW, the request is routed

through the Serving GW. Id.

Id.

Once the PDN GW receives the message requesting that a bearer (i.e.,

connection) be created, the PDN GW, in turn, creates the bearer that will allow the

mobile phone to access the Internet and other services. Id. ¶87.

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Id.

Using the re-selected PDN GW as the anchor and the newly created bearer

(connection) as the communication path, the network switches the message flow so

that the mobile phone can now communicate through the 3GPP base station (cell

phone tower) along the newly created bearer. Id. ¶88.

Id.

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Given that the “handover” Attach procedure closely mirrors the “initial”

Attach procedure and that both procedures use an Attach Request message with the

same structure (see figures showing both above), the network needs to distinguish

between situations (1) where the mobile phone is requesting an “initial” Attach, and

(2) where the mobile phone is requesting a “handover” Attach. Otherwise, the MME

might not select the correct PDN GW. Id. ¶89.

The minor detail implementing the mechanism that would be used to

distinguish the two Attach Request messages had not been implemented by the 3GPP

standards body when Patent Owner filed its Chinese priority application. The

Chinese priority application (and the ’779 Patent claims) cover the most basic and

obvious methods for doing so. Id.

However, the need for this minor detail was already recognized by other

participants in the 3GPP standards committee before the time of Patent Owner’s

patent application. Id. ¶90. Indeed, Ericsson stated: “There are two main cases for

selecting a GW (both PDN GW and Serving GW): [1] Initial GW selection, i.e.,

selecting a new GW for a UE. This typically happens when the UE attaches to the

system. [2] Maintain the selected GW during handovers between 3GPP access and

non-3GPP access.” NSN779-1014, at 1 (second emphasis added).

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VII. THE ’779 PATENT

A. Overview of the ’779 Patent

The ’779 Patent discloses the long-existing principle of placing an

information element in an Attach Request message to distinguish the reason for the

Attach Request message. Using the information element, the network could

distinguish (1) the Attach Request message caused by a “handover” Attach, from (2)

the Attach Request message cause by an “initial” Attach.

B. Purported Problem and Alleged Novelty

The earliest filed Chinese priority application succinctly states the problem

purportedly solved by the ’779 Patent. The application states, “[A]fter receiving the

Attach Request message . . . sent by the UE [i.e., mobile phone], the network side

needs to know whether the normal Attach . . . procedure or the Attach . . . procedure

caused by the handover is initiated. However, the existing mechanism cannot

distinguish them.” NSN779-1002, at 1027.

To actually make this purported distinction, the ’779 Patent ultimately claims

“an attach request message . . . wherein the attach request messages comprises an

information element (IE) indicating handover.” NSN779-1001, cl. 1. An

“information element” is nothing more than the name for a data field inside of a

message. NSN779-1005, at 4.

Moreover, the ’779 Patent specification gives more detail about this

“information element.” The ’779 Patent specification states that an “Attach Type IE

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[information element] is added in the Attach Request message.” NSN779-1001 6:37-

38. But further, as shown below and described above, this same “Attach Type”

information element was already being used in the 3G network, in the same message,

to “indicate[] which type of attach is to be performed.” NSN779-1016, at 48; see

also NSN779-1003, ¶94.

Id.

Essentially, the ’779 Patent claims the difference (highlighted in yellow) in

the “Before” and “After” procedures depicted below:

NSN779-1003, ¶93.

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This same purported novelty can be represented in “Before” and “After”

diagrams of the system architecture as well:

BEFORE THE ’779 PATENT

AFTER THE ’779 PATENT

NSN779-1003, ¶92.

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C. Prosecution History of the ’779 Patent

The ’779 Patent claims priority to four Chinese applications, the earliest one

filed May 11, 2007. NSN779-1001, at [30]. In addition, the ’779 Patent is a

continuation of Chinese PCT Application PCT/CN2008/070909, filed May 8, 2008.

Id. at [63]. The application for the ’779 Patent was filed on October 19, 2009. Id. at

[22].

During the prosecution of the original Chinese PCT Application, the

International Searching Authority concluded that certain claims lacked novelty and

an inventive step. NSN779-1002, at 349. A certified copy of the European file

history for PCT Application PCT/CN2008/070909—showing the original claims

that were rejected by the International Searching Authority—is attached to this

Petition as Exhibit NSN779-1020.

One of the references the International Searching Authority used to reach this

conclusion—CN1605222 A to Nokia Corp.—is a family member to U.S. Patent

Application US 2003/0114158 to Soderbacka et al. (hereinafter, “Soderbacka”). The

Written Opinion stated that numerous claims of PCT/CN2008/070909 were

explicitly disclosed by CN1605222. NSN779-1002, at 349-50. Of importance here,

the Written Opinion stated: “The appendant features of claim 34 and 35 are explicitly

disclosed” in CN1605222. Id. at 350. At the time, claim 34 recited a series of

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messages, including an Attach Request message, containing “processing type

information in a IE.” NSN779-1020, at 318.

In other words, the International Searching Authority believed that the

Chinese counterpart to the Soderbacka reference disclosed including “processing

type information in a IE” of various messages. NSN779-1003, ¶104. An IE is

shorthand for an “information element,” and processing type referred to “initial” or

“handover” type processing. Id. As is discussed in more detail below, the U.S.

version of Soderbacka contained the same disclosure.

USPTO Examination—On October 19, 2009, Patent Owner filed a

continuation of its Chinese PCT in the United States. Viewed as a whole, the

prosecution history demonstrates two key points: First, the U.S. examiner did not

contemporaneously review Soderbacka in connection with the ’779 Admitted Prior

Art. Second, Patent Owner continually distinguished the prior art using the claim

element that the International Searching Authority said was explicitly disclosed in

Soderbacka.

To the first point, when Patent Owner filed its U.S. Application, it omitted all

references to the prior art handover procedure described in the earliest filed Chinese

priority application. Indeed, it omitted prior art Figure 2 altogether. This is

significant. While the claims of the ’779 Patent are narrower than claim 34 described

above, the narrowing limitations were all admitted to be prior art in the earliest filed

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Chinese priority application. As a result, when Patent Owner first disclosed the

Soderbacka reference along with many other references in 2010, the examiner would

have been unaware that Patent Owner had already admitted that the majority of its

claims limitations were admitted prior art. The translation of the earliest filed

Chinese priority document would not be disclosed to the examiner until 2013, over

three years after Soderbacka was first disclosed. In any event, the examiner never

included Soderbacka as a basis for rejecting the pending claims in an office action.

Thus, the U.S. examiner never reviewed the admitted prior art

contemporaneously, or in combination, with Soderbacka. This Petition respectfully

seeks just that.

To the second point, despite the fact that a translation of the admitted prior art

was not disclosed to the U.S. examiner, the U.S. examiner nevertheless rejected the

original claims based on other references, and Patent Owner traversed those

rejections based on a similar claim limitation as that disclosed in Soderbacka. For

example, in response to a first office action rejecting certain claims, on February 14,

2011, Patent Owner argued that the prior cited by the examiner did not specifically

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disclose a method that identified “a registration processing type according to

registration processing type information.” NSN779-1002, at 701 (emphasis added).

However, this claim element is substantively similar to the claim element rejected

by the International Searching Authority in light of Soderbacka.

Similarly, on July 11, 2011, Patent Owner attempted to overcome another

rejection by arguing that new prior art cited by the examiner also did not disclose

“identifying, by the network element, a handover processing type of the registration

request according to the registration processing type information.” Id. at 748

(emphasis added). Again, this claim element is substantively similar to the claim

element rejected by the International Searching Authority using Soderbacka.

On March 2, 2012, in response to another rejection, Patent Owner narrowed

“registration processing type information” to, specifically, “an information element

(IE) indicating handover,” thus, showing the commonality between the claim

limitations used to overcome rejections and the limitation the International

Searching Authority believed was disclosed by Soderbacka. Id. at 797.

When the examiner finally did find a new prior art reference showing this

claim limitation, Patent Owner shifted tactics. On August 3, 2012, Patent Owner

attempted to overcome this new prior art reference by arguing that it “fails to disclose

‘identifying, by the MME, a Packet Data Network Gateway (PDN GW) whose

address is used by the UE in the non-3GPP network by communicating with a Home

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Subscriber Server (HSS).’” NSN779-1002, at 916. As evidenced by the discussion

above, this element was already present in the existing protocol (and constituted

admitted prior art). However, the examiner would be unaware of this fact because

the verified translation of the Chinese application showing the admitted prior art was

still not submitted. In this response, Patent Owner did not argue that the new prior

art failed to disclose “wherein the attach request message comprises an information

element (IE) indicating handover.”

On August 16, 2012, based on the same reference, the examiner filed an

Advisory Action Before the Filing of an Appeal Brief. NSN779-1002, at 925.

On September 4, 2012, Patent Owner filed a Pre-Appeal Brief Request for

Review. Patent Owner repeated its arguments about the missing limitation from this

new prior art—the same limitation that both the Board and the examiner would have

realized was in the admitted prior art had a translation of the Chinese priority

application been produced. NSN779-1002, at 928-30. On the same day, Patent

Owner also filed a Notice of Appeal.

In response, the examiner mailed another Non-Final Rejection. This time,

instead of traversing the rejection on substantive grounds, Patent Owner antedated

the prior art reference by filing a translation of the Chinese priority application. This

disclosure, on April 18, 2013, would have been the first time the examiner was

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presented with the admitted prior art. However, without further rejections from the

examiner, a Notice of Allowance issued on May 23, 2013.

VIII. CLAIM CONSTRUCTION

In an IPR, claim terms are interpreted according to their broadest reasonable

interpretation (“BRI”) in view of the specification in which they appear. 37 C.F.R.

§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.

14, 2012). Thus, as required by the applicable rules, this Petition uses the BRI

standard, and all proposed constructions are under the BRI standard. Petitioners

reserve all rights to take a different position with respect to claim construction in any

other proceeding that does not rely on the BRI standard.

A. “obtaining unit,” “identifying unit,” and “processing unit” in

claim 11

Claim 11 of the ’779 Patent describes a “network element” that includes an

“obtaining unit,” “identifying unit,” and “processing unit.” Based on the functions

performed by the “network element,” claim 11 relates to an MME, and the claimed

“obtaining unit,” “identifying unit,” and “processing unit” are components within

the MME.

In the co-pending district court litigation, Petitioners have taken the position

that “obtaining unit,” “identifying unit,” and “processing unit” are means-plus-

function claim elements. The term “unit,” especially when coupled to functional

limitations such as “obtaining, identifying, and processing,” is a nonce word. The

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only purported “structure” identified in the specification that relates to the claimed

functions in any way is set forth in Figure 6 below and its description in the ’779

Patent specification.1 NSN779-1001, at 5:40-6:2.

NSN779-1001, at Fig. 6.

To the extent that the Board believes that these limitations should be construed

as means plus function terms, Petitioners believe that these terms should be afforded

a broad construction given that Figure 6 only discloses the nominal “units” capable

of performing the function recited in the claim. To the extent Patent Owner argues

sufficient structure is disclosed, it should be interpreted broadly. To the extent that

it is not determined to be a means plus function claim, Petitioners believe that such

a construction should be equally broad. In either case, for purposes of this Petition

and consistent with the BRI standard, Petitioners believe that the terms should be

1 Petitioners do not concede that this structure is sufficient and have taken the

position in the district court that it is insufficient.

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construed to mean “hardware or software obtaining unit,” “hardware or software

identifying unit,” and “hardware or software processing unit.”2

B. “Create Bearer Request message” in Claim 4

Claim 4 of the ’779 Patent includes the claim element of “sending, by the

MME, a Create Bearer Request message to the PDN GW.”

In the co-pending district court litigation, Petitioners have taken the position

that the italicized claim limitation—“Create Bearer Request message”—should be

construed as “a message titled Create Bearer Request.” Patent Owner has taken the

position that this limitation should be given its plain meaning. See NSN779-1023,

Ex. A, at 4.

To be clear, the prior art references discussed herein disclose this claim

limitation under either construction.

2 These structures are very similar to those advanced by Patent Owner in the

district court litigation. NSN779-1023, Ex. A, at 20-28;

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The ’779 Patent claims a specific message—a “Create Bearer Request”

message. The use of capital letters in the claim show an intent to refer to a specific

message having that title. “Generally, the capitalization of a term makes it a proper

name or otherwise attributes a particular meaning to the term.” See, e.g., Cassidian

Commc’ns, Inc. v. MicroDATA GIS, Inc., No. 2:12-CV-162-JRG, D.I. 71, at 10 (E.D.

Tex. June 20, 2013) (NSN779-1025, at 10). In other words, “Create Bearer Request”

must mean something more than a mere request to create a bearer. Id.; Lextron Sys.,

Inc. v. Microsoft Corp., No. C-04-0588 VRW, D.I. 74, at 15 (N.D. Cal. June 1, 2005)

(“‘Internet’ is capitalized in the claim language, suggesting the proper noun;

whatever ‘internet’ might mean, there is only one ‘Internet.’”) (NSN779-1026, at

15).

Indeed, a POSITA would have understood that a message having that title and

function existed in the standard specifications at the time of the ’779 Patent.

NSN779-1003, ¶133-34. In fact, the TAU procedure used this specific message. Id.;

NSN779-1021, § 5.3.3.1 & Fig. 5.3.3-1 (step 8). Moreover, the TAU procedure and

its associated messages are an integral part of the ’779 Patent specification. NSN-

1003, ¶134 (citing examples where the TAU procedure is discussed in the ’779

specification). The inventors clearly knew about the TAU procedure and its

messages, the ’779 Patent specification references these specific messages, and most

importantly, the ’779 Patent claims one of those specific messages: a “Create Bearer

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Request message.” Thus, Petitioners suggest that the term should be construed as

that specific message—“a message titled Create Bearer Request.”

Patent Owner, however, appears to take a position that is unreasonably broad

under the guise of “plain meaning.”

Thus, Patent Owner’s apparent construction advances a “plain”

meaning much broader than the actual plain meaning would suggest. Therefore

Petitioners do not believe Patent Owner’s apparent construction, guised as “plain

meaning,” is reasonable under the BRI standard.

However, again, the primary prior art references discussed below disclose a

message titled “Create Bearer Request,” meaning either construction renders this

limitation invalid.

IX. PRIOR ART REFERENCES

The ’779 Patent claims priority to a foreign patent application (described

above), filed on May 11, 2007, and a PCT application filed on May 8, 2008. Thus,

for the ’779 Patent, this Petition assumes that the earliest priority date is May 11,

2007, and the earliest effective U.S. filing date is May 8, 2008. 35 U.S.C. § 365(c).

As a result, any art published before May 11, 2007, is prior art under § 102(a), and

any art published before May 8, 2007, is prior art under § 102(b). 35 U.S.C. § 102

(pre-AIA).

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As described in the declaration of Balazs Bertenyi (NSN779-1004), each

3GPP reference cited by Petitioners was available on the 3GPP website as of the

date and (if available) time indicated in the table provided at the beginning of this

Petition. See NSN779-1004, ¶¶13-36; see also NSN779-1017, at 8 (“When the

secretary copies from the meeting server[,] . . . the files on the public server, . . . will

now get an upload date/time-stamp of the new upload.”); id. at 9 (“[T]he time stamp

of the Zip file can be relied upon to indicate when the upload occurred.”); NSN779-

1016, at 3 (“3GPP has always operated 100% electronic (0% paper) as far as

contribution documents are concerned. Documents are not deleted following the

meeting, but are retained on the public server indefinitely.”). Mr. Bertenyi’s

declaration establishes the public storage and availability of each 3GPP document,

and describes in detail how a member of the public would access such documents,

including through searches using readily available search engines like Google.

NSN779-1004, ¶¶13-24.

In particular, by navigating 3GPP’s public website and accessing the provided

hyperlinks (provided in the exhibit list at the beginning of this Petition), or by

executing a simple Google search, a member of the public could have downloaded

each of the references without restriction. See NSN779-1004, ¶¶13-36; see also LG

Elecs. v. Core Wireless Licensing S.A.R.L., IPR2015-01988, Paper 7, at 12-14

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(PTAB Apr. 1, 2016) (instituting IPR based on prior art that included 3GPP draft

specifications and proposals).

A. The ’779 APA (NSN779-1002, at 1019-40)

The ’779 Admitted Prior Art is contained within the translated version of the

earliest filed Chinese priority application (“the ’779 APA”). A certified copy of the

translated version of the earliest filed Chinese priority application was provided by

Patent Owner late in the prosecution of the ’779 Patent and is contained within the

file history of the ’779 Patent. NSN779-1002, at 1019-40. Specifically, the following

portion of the translated version of the earliest filed Chinese priority application is

alleged to be prior art: In the section titled “Specification,” page 1025, lines 11-30

(describing the prior art architecture), page 1026, lines 8-35, page 1027, lines 1-6

(describing the prior art process), and page 1028, lines 13-17 (describing the prior

art figures). Patent Owner expressly admits that Figures 1-4 (and corresponding text)

(pages 1035-37) are prior art.

As discussed above, the ’779 APA discloses the known prior art non-3GPP

(Wi-Fi) to 3GPP (LTE) handover procedure. NSN779-1002 at 1026, ll. 10-11.

The ’779 APA discloses every element of every claim except the element

requiring that the Attach Request message—a message that establishes an initial

connection between the mobile phone and the network—contain an information

element indicating handover. NSN779-1003, ¶¶169 & 170-203.

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The PTAB and Federal Circuit have used admissions by the Applicant in the

specification itself as APA in determining the validity of patent claims. See, e.g., In

re NTP, 654 F.3d 1279, 1289 (Fed. Cir. 2011); id. at 1298; (“Further, the []APA

clearly teaches the other limitations of the claim with the exception of the RF

network.”); PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362

(Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are binding

on the patentee for purposes of a later inquiry into obviousness.”); Tokyo Keiso Co.,

v. SMC Corp., 307 F. App'x 446, 452-53 (Fed. Cir. 2009) (“We also agree with SMC

that one of ordinary skill in the art would have been motivated to combine the

disclosure of Lynnworth with the admitted prior art described in the ’004 patent.”);

Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569-70 (Fed. Cir. 1988)

(“A statement in a patent that something is in the prior art is binding on the applicant

and patentee for determinations of anticipation and obviousness.”).

B. Soderbacka (NSN779-1007)

U.S. Patent Application US 2003/0114158 to Soderbacka et al.

(“Soderbacka”) was published by the USPTO on June 19, 2003. NSN779-1007, at

[43]. Thus, Soderbacka is prior art to the ’779 Patent under 35 U.S.C. § 102(b).

While Soderbacka was disclosed to the USPTO, the examiner never

contemporaneously reviewed Soderbacka in combination with the other prior art

references, including the ’779 APA. In fact, the U.S. examiner did not discuss

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Soderbacka at all and did not possess the ’779 APA until years after Soderbacka was

disclosed in an IDS along with many other references.

C. The Nokia Submission (NSN779-1008)

The Nokia Submission was a contribution to 3GPP Working Group SA-2 for

a meeting in Beijing, China that took place April 23, 2007, to April 27, 2007.

NSN779-1008, at 1. The Nokia Submission was publicly available at least as early

as April 27, 2007, at 9:29 AM. NSN779-1004, ¶29.

The Nokia Submission discloses an Attach Request message containing an

information element called “Attach Type” that “indicates which type of attach

should be performed.” NSN779-1008, at 4. A POSITA would have been capable of

simply taking the information element disclosed in the Nokia Submission and

placing it in the known Attach Request message from the prior art handover

procedure. NSN779-1003, ¶228-34.

The Nokia Submission was neither disclosed nor cited during the original

prosecution of the ’779 Patent.

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D. The Motorola Submission (NSN779-1009)

The Motorola Submission was a contribution to 3GPP Working Group SA-2

for the same meeting that took place in Beijing, China from April 23, 2007, to April

27, 2007. NSN779-1009, at 1. The Motorola Submission was publicly available at

least as early as April 27, 2007, at 9:28 AM. NSN779-1004, ¶30.

The only element not explicitly disclosed by the Motorola Submission is an

information element indicating handover. NSN779-1003, ¶285. However, as noted

above, that idea had been in the art since at least 2002.

The Motorola Submission was neither disclosed nor discussed during the

prosecution of the ’779 Patent.

X. INVALIDITY OF CLAIMS 1, 4 AND 9-11 OF THE ’779 PATENT

As discussed above, during the prosecution of the ’779 Patent, Patent Owner

argued that the purported invention was distinguishable from the prior art because it

purported to introduce the novel concept of including an information element

specifying the type of attach message sent by the UE—normal or handover. As

described in the counts below, both the Patent Owner’s Chinese priority application

and the Motorola Submission described every limitation in the claims except the

information element. But an English translation of the Chinese priority application

was not provided until late in the prosecution, and the Motorola Submission was

neither cited nor considered by the examiner. The Soderbacka reference and the

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Nokia Submission describe an information element for this very purpose. The

Soderbacka reference was disclosed during prosecution but never discussed by the

examiner. Indeed, it is not a surprise that the examiner failed to appreciate the

significance of Soderbacka given that the examiner did not have the benefit of an

English translation of the Chinese priority document when the Soderbacka reference

was disclosed. In addition, like the Motorola Submission, the Nokia Submission was

not cited or discussed by the examiner, and the examiner did not have the benefit of

the testimony of Mr. Lanning.

Each of the arguments below is made from the standpoint of a person of

ordinary skill in the field of the ’779 Patent (a “POSITA”). Specifically, a POSITA

would have had a Bachelor’s degree in Electrical Engineering, Computer Science,

or Computer Engineering with at least 2 to 3 years of experience in the cellular

telecommunications industry, including experience operating or implementing

3GPP networks. NSN779-1003, ¶18. Additional education might substitute for some

of the experience, and substantial experience might substitute for some of the

educational background. Id.

A. Count 1: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.

§ 103(a) over the ’779 APA in light of Soderbacka

Motivation to Combine

It would have been obvious to a POSITA to combine the ’779 APA and

Soderbacka. NSN779-1003, ¶162. Specifically, the ’779 APA shows that the non-

- 42 -

3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well known in the prior art,

prior to the date of invention of the ’779 Patent. Id. With this knowledge, the person

having ordinary skill in the art would have found explicit motivation within

Soderbacka to include necessary information in the handover procedure so the

mobile phone can access “networks for which the mobile terminal is currently not

registered.” Id.; NSN779-1007, ¶0031. Indeed, not only does Soderbacka identify a

problem with current handover procedures, but it explicitly recites the inclusion of

an information element to allow the network to make decisions as to the type of

registration to perform. NSN779-1007, ¶0032. Given that Soderbacka explicitly

includes an information element, a POSITA would have had a reasonable

expectation of success when using it in conjunction with the handover procedure

outlined in the ’779 APA. NSN779-1003, ¶162.

As another example, a POSITA would have looked to references like

Soderbacka that described 3G handover procedures when designing the 4G handover

procedure like that described in the ’779 APA. NSN779-1003, ¶164. In other words,

POSITA would have been motivated to look to known methods (handover

information elements) from the 3G network to solve similar problems

(distinguishing the Attach Request message to the network) when designing the 4G

network. A person having ordinary skill in the art would have had a reasonable

expectation of success given the teachings of Soderbacka. Id. ¶164. Indeed, 3GPP

- 43 -

standards and specifications are constantly evolving, and it is common in 3GPP for

previous solutions to be used in subsequent generations. Id. ¶163. Soderbacka

discloses the known technique of using an information element to aid in attachment

and/or handover, and the ’779 Patent merely ports this known technique into the

same type of message to achieve the same result. Again, a POSITA would have

expected reasonable success given the teachings of Soderbacka. Id. ¶164.

Finally, POSITA would have been motivated to distinguish different Attach

Request messages using an information element because doing so is one of a finite

number of identified, predictable solutions. NSN779-1003, ¶167. Soderbacka

discloses that a problem arises when the mobile terminal (e.g., mobile phone) seeks

to handover to a “radio access network[] for which the mobile terminal is currently

not registered.” NSN779-1007, ¶0031. Soderbacka discloses the limited set of

possibilities that might solve this problem: (1) “an information element [is] added to

the current connection establishment signaling;” or “[a]lternatively, new messages

could be added to the signaling sequence.” NSN779-1007, ¶¶0113-0114. The ’779

Patent also discloses the same finite solutions: (1) “an Attach Type IE is added in

the Attach Request message;” or (2) “A new message is defined.” NSN-1001, at

6:19-23. Given the limited number of solutions to distinguish two messages of the

same type, POSITA would have obviously tried one of these two solutions to solve

- 44 -

the problem and had a reasonable expectation of success in doing so. NSN779-1003,

¶167.

1preamble: A handover processing method, comprising:

To the extent the preamble is limiting, claim element 1preamble is admitted

to be in the prior art. The ’779 APA discloses a handover method. Specifically,

Patent Owner stated that “FIG. 2 is a flowchart of a handover from a non-3GPP

access system to a 3GPP access system for a UE in the prior art”:

NSN779-1002, at 1028 & 1036, Fig. 2 (emphasis added).

A POSITA would have understood that the above flowchart discloses a

handover processing method. NSN779-1003, ¶170-72.

- 45 -

11preamble: A network element, comprising:

Claim limitation 11preamble is admitted to be prior art. As disclosed, “FIG. 1

shows system architecture of an evolved network in the prior art;”

NSN779-1002, at 1028 & 1036, Fig. 1 (blue box and emphasis added).

In the description of Figure 1, Patent Owner discloses that “[t]he architecture

includes: a Mobile Management Entity (MME), responsible for control plane

mobility management . . . .” NSN779-1002, at 1025 (emphasis added). A POSITA

would have understood the MME to be a network element. NSN779-1003, ¶174.

- 46 -

1a: receiving, by a Mobility Management Entity (MME), an attach request

message sent by a User Equipment (UE) during a handover from a non 3rd

Generation Partnership Project (non-3GPP) network to a 3rd Generation

Partnership (3GPP) network;

11a: an obtaining unit, configured to receive an attach request message sent

by a User Equipment (UE) during a handover from a non 3rd Generation

Partnership Project (non-3GPP) network to a 3rd Generation Partnership

Project (3GPP) network;

Claim elements 1a and 11a are admitted prior art.

Specifically, step 3 of the admitted prior art message flow diagram discloses

this step:

NSN779-1002, at 1036, Fig. 2 (blue boxes added).

In the description of the message flow diagram above, Patent Owner discloses

that this step was squarely in the prior art at the time of the patent: “3. The UE sends

an Attach Request . . . message to the MME.” NSN779-1002, at 1026. If there is any

doubt, a POSITA would have understood that when the UE (e.g., mobile phone)

- 47 -

sends an Attach Request message to the MME, the MME receives that Attach

Request message, as depicted in Figure 2 above. NSN779-1003, ¶178.

In addition, a POSITA would have understood that a network element that is

capable of receiving a message, like an MME, must have hardware or software

configured to receive those messages (i.e., an “obtaining unit”). Id. ¶179. Given that

the ’779 APA discloses an MME capable of receiving an Attach Request message

sent by a mobile phone (UE) during a handover from a non-3GPP network to a 3GPP

network, the ’779 APA discloses an obtaining unit configured to receive an Attach

Request message sent by a mobile phone (UE) during a handover from a non-3GPP

network to a 3GPP network. Id. As stated in the description of the Figure 2 flow

diagram, this process occurs during “a handover from a non-3GPP access system to

a 3GPP access system.” NSN779-1002, at 1026.

Thus, every element of limitation 1a and 11a was in the prior art before the

time of the ’779 Patent.

- 48 -

1b: wherein the attach request message comprises an information element

(IE) indicating handover;


indicating handover;

11c: an identifying unit, configured to identify that the attach request

message is due to the handover according to the IE indicating handover; and

Claim elements 1b, 11b, and 11c are the supposed point of novelty for the

’779 Patent. However, using an information element to indicate handover had long

been a part of the art. Soderbacka discloses as much.

Soderbacka discloses “an information element added to the current connection

establishment signaling” sent by a mobile phone to an SGSN. NSN779-1007, ¶0113

& Fig. 4). The disclosure states that the information included in the information

element “indicat[es] that an intersystem handover . . . should be performed.” Id. at

[57]. For example, the “new information element” could be “added to the SETUP

message transmitted by the mobile terminal to the communication network.” Id.

¶0032. A POSITA would have understood that a setup message, like an Attach

Request message, is a part of the initial connection establishment signaling.

NSN779-1003, ¶187.

In addition, Soderbacka discloses that the handover could occur between a

non-3GPP (Wi-Fi) network and a 3GPP network. More specifically, Soderbacka

states “the intersystem handover of the invention [could be] . . . for a handover of a

mobile terminal from a WLAN (wireless local area network [i.e., Wi-Fi]) to GSM

- 49 -

[i.e., 3GPP].” NSN779-1007, ¶0039; see also NSN779-1003, ¶182-83. A POSITA

would have understood that a WLAN (i.e., Wi-Fi) is a non-3GPP network, and GSM

is a 3GPP network. NSN779-1003, ¶183. Thus, Soderbacka discloses that the

information element could indicate that an intersystem handover from non-3GPP to

3GPP should be performed.

In addition, a POSITA would have understood that the network entity

receiving the message with the information element in Soderbacka would have

hardware or software configured to identify (i.e., an “identifying unit”) the contents

of that information element and, therefore, would be configured to identify that the

attach request message is due to the handover according to the IE indicating

handover. NSN779-1003, ¶188.

.

Soderbacka falls within the same field of endeavor as the ’779 Patent, and

Soderbacka discloses the exact same solution proposed by the ’779 Patent. This

claim limitation is explicitly disclosed in Soderbacka, and the combination of the

’779 APA in light of Soderbacka renders these claim elements obvious.

- 50 -

1c: identifying, by the MME, a Packet Data Network Gateway (PDN GW)

whose address is used by the UE in the non-3GPP network by communicating

with a Home Subscriber Server (HSS).

11d: a processing unit, configured to identify a Packet Data Network Gateway

(PDN GW) whose address is used by the UE in the non-3GPP network by

communicating with a Home Subscriber Server (HSS),

9: The method of claim 1, wherein the MME identifies the PDN GW by

obtaining an identity of the PDN GW from the HSS.


obtaining the PDN GW address from the HSS.

Claim elements 1c, 11d, 9, and 10 were admitted to be in the prior art. The

’779 APA confirms this understanding. In the message flow diagram admitted to be

prior art, this element is met by step 4:

NSN779-1002, at 1036, Fig. 2; see also NSN779-1003, ¶192.

- 51 -

The description of step 4 confirms that the PDN GW address is exchanged

during the authentication step: “4. An authentication procedure is performed

between the UE, the MME, and the HSS to obtain the PDN GW address used by the

UE.” NSN779-1002, at 1026. Furthermore, at step 5, the ’779 APA confirms that

the “MME sends a Create Bearer Request message to the obtained PDN GW

address.” Id. In order for the MME to send a message to the obtained PDN GW

address, the MME identifies the PDN GW address. NSN779-1003, ¶193. Finally,

while step 4 implies that the PDN GW address could come from either the UE

(mobile phone) or the HSS, the possibility that the PDN GW address is obtained

from the HSS is nevertheless present and disclosed. Id. Thus, the ’779 APA discloses

claim limitation 1c.

Further, a POSITA would have understood that a network element configured

to receive messages in the network would also have a “processing unit” (e.g.,

hardware or software) configured to identify the contents of those messages because

both the PDN GW and the HSS are defined network equipment in the 3GPP

standards that have a processor, database, communication capability, etc. NSN779-

1003, ¶194.

- 52 -

Finally, a POSITA would have understood that the “identity of the PDN GW”

is not meaningfully different than the address of the PDN GW. In fact, claim 9 is the

only time the word “identity” appears in the ’779 Patent. A POSITA would have

seen no meaningful difference between an “identity” and an “address,” and the ’779

Patent confirms this understanding. NSN779-1003, ¶195.

1d: requesting, by the MME, the PDN GW to initiate a bearer creation

procedure

11e: and request the PDN GW to initiate a bearer creation procedure

4preamble: The method of claim 1, wherein the requesting a the [sic] PDN

GW to initiate a bearer creation procedure comprises:

4b: initiating, by the PDN GW, the bearer creation procedure.

Claim elements 1d, 11e, 4preamble, and 4b were admitted to be in the prior

art. The ’779 APA confirms this understanding. In the message flow diagram

admitted to be prior art, this claim element is met by step 5 and confirmed by step 7.

- 53 -

NSN779-1002, at 1036, Fig. 2 (blue boxes added).

The description of step 5 states that the “The MME sends a Create Bearer

Request message to the obtained PDN GW address, requesting the network side to

initiate bearer creation procedure.” NSN779-1002, at 1026 (emphasis added). If

there’s any doubt about what element on the “network side” initiates that bearer

creation procedure, step 7 confirms that it is the PDN GW: “7. The PDN GW initiates

a network-side bearer creation procedure to create the bearer of the user.” Id.

(emphasis added).

Thus, claim limitations 1d, 11e, 4preamble, and 4b were already present in

the prior art.

- 54 -

4a: sending, by the MME, a Create Bearer Request message to the PDN GW.

Claim limitation 4a is admitted to be prior art. Specifically, the description

associated with step 5 of the ’779 APA message flow diagram discloses this

limitation. The description of step 5 states: “The MME sends a Create Bearer

Request message to the obtained PDN GW address, requesting the network side to

initiate bearer creation procedure.” NSN779-1002, at 1026 (emphasis added).

Thus, claim limitation 4a was already present in the prior art.

B. Count 2: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.

§ 103(a) over the ’779 APA in light of the Nokia Submission


It would have been obvious to a POSITA to combine the ’779 APA and the

Nokia Submission. NSN779-1003, ¶229. Specifically, the ’779 APA shows that the

non-3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well known in the prior

art. With this knowledge, a POSITA would have found explicit motivation within

the Nokia Submission to include an information element in the handover procedure,

in order to “indicate[] which type of attach is to be performed.” NSN779-1008, at 4;

NSN779-1003, ¶229. In other words, when an Attach Request can be used for two

types of attach, the solution is to include an information element indicating which

one to execute. Id. Indeed, not only does the Nokia Submission highlight the problem

that occurs when Attach Request messages can indicate multiple types of attach, but

it explicitly recites the inclusion of an information element to indicate the type of

- 55 -

attach as its solution. NSN779-1008, at 4. Given, that the Nokia Submission

explicitly includes an information element for this purpose, the a POSITA would

have had a reasonable expectation of success using it in conjunction with the

handover described in the ’779 APA. NSN779-1003, ¶229.

A POSITA would have been motivated to include an information element

indicating which type of attach is to be performed, as disclosed in the Nokia

Submission, to distinguish the Attach Request message disclosed in the ’779 APA.

NSN779-1003, ¶231. As evidenced, the Nokia Submission discloses placing the

information element in the 3G version of the Attach Request message. Both the ’779

APA and the Nokia Submission are directed to the same field of endeavor; namely

Attach Request messages. Therefore, a person of ordinary skill in the art would have

been motivated to look for solutions arising in the field (for example, solutions

already established for previous generations of 3GPP) to solve problems arising in

the same field (apply those established solutions to later generations of 3GPP). Id.

Indeed, 3GPP standards and specifications are constantly evolving, and it is common

in 3GPP for previous solutions to be used in subsequent generations. Id.


Claim element 1preamble is admitted prior art. This section incorporates the

corresponding disclosure for the ’779 APA in Part X.A, Count 1, 1preamble.

- 56 -


To the extent the preamble is limiting, claim element 11preamble is admitted

to be prior art. This section incorporates the corresponding disclosure for the ’779

APA in Part X.A, Count 1, 11preamble.









Claim elements 1a and 11a are admitted prior art. This section incorporates

the corresponding disclosure for the ’779 APA in Part X.A, Count 1, 1a & 11a.






message is due to the handover according to the IE indicating handover; and,

Claim elements 1b, 11b, and 11c are the supposed point of novelty for the

’779 Patent. However, using an information element in the Attach Request message

to indicate which type of attach should be performed was well known in the art. The

Nokia Submission discloses an Attach Request message containing an information

- 57 -

element of this type. NSN779-1008, at 4. The Nokia Submission discloses the

following message flow diagram:

NSN779-1008, at Fig. 22 (blue box added).

- 58 -

Step 1 in the message flow diagram discloses a mobile phone (abbreviated

MS or “mobile station” in the diagram) sending an Attach Request message to an

SGSN. A POSITA would have understood that the “Attach Request” message above

is the 3G version of the Attach Request message described in the claims. NSN779-

1003, ¶251. Further, a POSITA would have understood that the SGSN was

responsible for control plane messaging in a 3G UMTS network, just as an MME is

responsible for control-plane messaging in a 4G LTE network. Id.

The corresponding description of the Attach Request message from the Nokia

Submission shows that it contains information elements: “1) In A/Gb mode, the MS

[i.e., mobile phone] initiates the attach procedure by the transmission of an Attach

Request (IMSI or P-TMSI and old RAI, Classmark, CKSN, Attach Type, DRX

Parameters, old P-TMSI Signature) message to the SGSN.” NSN779-1008, at 4. As

shown, one of these information elements is called “Attach Type.” Id. (emphasis

added). NSN779-1003, ¶¶224 & 252.

The Nokia Submission discloses that “Attach Type indicates which type of

attach is to be performed . . . .” Id. (emphasis added). Patent Owner set forth in the

translation of the Chinese priority application that the exact problem to be solved

was that “the network side needs to know whether the normal Attach/TAU procedure

or the Attach/TAU procedure caused by the handover is initiated. However, the

- 59 -

existing mechanism cannot distinguish them.” NSN779-1002, at 1027 (emphasis

added).

A POSITA would have needed to look no further than the Nokia Submission

to find that the information element called “Attach Type” serves to distinguish

Attach Request messages. NSN779-1003, ¶¶252 & 255. In the Nokia Submission,

the Attach Type information element distinguishes between “GPRS only” or

“GPRS/IMSI combined attach.” However, it would have been trivial for a POSITA

could have easily added “handover or initial” attach into the pre-existing information

element field. NSN779-1003, ¶253. Thus, there was a pre-existing mechanism to

distinguish Attach Request messages of different types. Id. ¶255.

Indeed, approximately one month after the earliest Chinese priority document

was filed, Patent Owner copied and pasted this exact information element and exact

description into a separate TDoc that Patent Owner submitted to 3GPP. NSN779-

1012, at 3 (“Attach Type indicates which type of attach is to be performed, i.e. Initial

Attach, or Handover Attach.” (emphasis added)). Patent Owner also copied nearly

identical language into its own patent application:

The registration processing type may be reported in one of the

following ways:

(1) An Attach Type IE is added in the Attach Request message. For

example, the values of the Attach Type IE are 0 and 1. The value ‘0’

corresponds to Normal Attach (also known as initial Attach); and the

- 60 -

value ‘1’ corresponds to Handover Attach, and indicates that the Attach

Request message is caused by handover.

NSN779-1001, at 6:35-44 (emphasis added).

Finally, a POSITA would have understood that the network entity receiving

that message—in the Nokia Submission, the SGSN—would have an identifying unit

(e.g., hardware or software) configured to identify the contents of that message and,

therefore, would be configured to identify that the Attach Request message indicates

which type of attach should be performed. NSN779-1003, ¶257. In the 4G LTE

network, a POSITA would have understood that the MME, as manager of the

control-plane functions, receives the Attach Request message and, therefore, would

have hardware or software (i.e., an identifying unit) to perform the same function.

Id.

Therefore, the Nokia Submission discloses elements 1b, 11b, and 11c.

- 61 -











Claim elements 1c, 11d, 9, and 10 are admitted prior art. This section

incorporates the corresponding disclosure for the ’779 APA in Part X.A, Count 1,

1c, 11d, 9 & 10.


procedure





Claim elements 1d, 11e, 4preamble, and 4b are admitted prior art. This section

incorporates the corresponding disclosure for the ’779 APA in Part X.A, Count 1,

1d, 11e, 4preamble & 4b.


Claim limitation 4a is admitted prior art. This section incorporates the

corresponding disclosure for the ’779 APA in Part XI.A, Count 1, 4a.

- 62 -

C. Count 3: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.

§ 103(a) over the Motorola Submission in light of the Nokia

Submission


A POSITA at the time of the purported invention would have been motivated

to use an information element (IE), like that described in the Nokia Submission, in

an Attach Request message described in the Motorola Submission. NSN779-1003,

¶306. In fact, as evidenced above, both the Nokia Submission and the Motorola

Submission describe the use of Attach Request messages, and both raise the same

problem: an Attach Request message can be used for multiple purposes. Id. A

POSITA looking to solve this problem would have seen that the Nokia Submission

uses an “Attach Type” information element to solve the problem and, therefore, have

expected a very similar result when implementing the same solution in the Motorola

Submission. Id. Indeed, a POSITA looking to solve the problem posed by S2-072252

(the Motorola Submission) would have only needed to look three TDocs later to S2-

072255 (the Nokia Submission) to find the solution. That is, because both documents

were directed to the solving the same problem, the person of ordinary skill in the art

would have looked to them together to achieve the recited result. Id.

- 63 -

NSN779-1018, at 9 (red boxes added)

In fact, both the Motorola Submission and the Nokia Submission were

publicly disclosed to the same working group, at the same meeting, and uploaded to

the same 3GPP file server, on the same day, only one minute apart. In other words,

not only was the solution easy to locate, using the information element from the

Nokia Submission in the Motorola Submission would have achieved an expected

result. NSN779-1003, ¶307.

Further, a POSITA would have been motivated use an information element

(IE), like that described in the Nokia Submission, in an Attach Request message

described in the Motorola Submission because both documents relate to the same

field of endeavor and solve similar problems. NSN779-1003, ¶308. Specifically, as

discussed above, the Motorola Submission and the Nokia Submission disclose a

method of using an Attach Request message in a 3GPP network. Therefore, a

POSITA would have been motivated to look for solutions arising in the field (for

example, solutions already established for previous generations of 3GPP) to solve

problems arising in the same field (apply those established solutions to later

- 64 -

generations of 3GPP). NSN779-1003, ¶308. Indeed, 3GPP standards and

specifications are constantly evolving, and it is common in 3GPP for previous

solutions to be used in subsequent generations. Id.

Finally, a POSITA would have been motivated to utilize an “Attach Type”

information element indicating which type of attach should be performed, as

disclosed in the Nokia Submission, with the Attach Request message from the

Motorola Submission. NSN779-1003, ¶311. Merely adding different parameters to

the information element—i.e., adding “Initial or Handover attach” to “GPRS only

or combined GPRS/IMSI attach”— obtains the very predictable result of indicating

which type of attach should be performed. Id. The Nokia Submission discloses the

known element of an Attach Request message with an Attach Type information

element, and a POSITA would have been motivated to combine this element with

the Attach Request message in the Motorola Submission. Id. The result achieved is

the exact same and laid out in the Nokia Submission.

Indeed, at the very next meeting, Patent Owner submitted a separate TDoc to

the same 3GPP working group making this trivial addition. NSN779-1012, at 3

(“Attach Type indicates which type of attach is to be performed, i.e. Initial Attach,

or Handover Attach.” (emphasis added)).

- 65 -


To the extent the preamble is limiting, claim element 1preamble is disclosed

in the Motorola Submission. For example, the introduction states, “This contribution

proposes a procedure for handover from non-3GPP access to LTE access based on

PMIPv6 for the scenario where the PMIP client is located at the serving GW.”

NSN779-1009, at 1 (emphasis added).


To the extent the preamble is considered limiting, the Motorola Submission

discloses a network element. For example, the Motorola Submission discloses that

the MME is a network element.

- 66 -

NSN779-1009, at 3 & Fig. 5.x (blue box added).

Thus, the Motorola Submission discloses element 11preamble.









Claim elements 1a and 11a are disclosed in the Motorola Submission. As

stated above, the Motorola Submission discloses a “procedure for handover from

- 67 -

non-3GPP access to LTE access.” NSN779-1009, at 1 (emphasis added). A

POSITA would have understood that LTE is a 3GPP network. NSN779-1003,

¶319. More specifically, step 3 of the message flow diagram (shown in the blue

boxes) from the Motorola Submission shows receiving, by an MME, an Attach

Request message sent by a UE during the handover procedure:

NSN779-1009, at 3 & Fig. 5.x (blue boxes added).

In the description of the message flow diagram, the Motorola Submission

describes Step 3 in the blue boxes above: “3. The UE sends an Attach Request

- 68 -

which is routed by E-UTRAN to an MME instance in the EPSC as specified in TS

23.401.” NSN779-1009, at 3 (emphasis added). A POSITA would have understood

that when the mobile phone (UE) sends an Attach Request message routed through

E-UTRAN to the MME, the MME receives that Attach Request message.

NSN779-1003, ¶322.

Further, a POSITA would have also understood that a network element

capable of receiving a message, like an MME, must have an obtaining unit (e.g.,

hardware or software) configured to receive those messages. NSN779-1003, ¶323.

Given that the Motorola Submission discloses an MME capable of receiving an

Attach Request message sent by a mobile phone (UE) during a handover from a non-

3GPP network to a 3GPP network, the Motorola Submission discloses an obtaining

unit configured to receive an attach request message sent by a mobile phone (UE)

during a handover from a non-3GPP network to a 3GPP network. Id.

Thus, every limitation from 1a and 11a was in the prior art before the time of

the ’779 Patent.

- 69 -







Claim elements 1b, 11b, and 11c are disclosed by the Nokia Submission. This

section incorporates the corresponding disclosure for the Nokia Submission in Part

X.B, Count 2, 1b, 11b & 11c.











Claim elements 1c, 11d, 9, and 10 are disclosed in the Motorola Submission.

Specifically, these claim elements are disclosed in step 4:

- 70 -

NSN779-1009, at Fig. 5.x (blue boxes and emphasis added).

The description of step 4 confirms that the PDN GW address is exchanged

during the authentication step: “4. The MME contacts the HSS and authenticates the

UE. As part of the authentication procedure, the IP address of the PDN GW that

needs to be used is conveyed to the MME.” Id. at 4 (emphasis added).

Further, a POSITA would have understood that a network element configured

to identify a PDN GW would have a “processing unit” (e.g., hardware or software)

configured to do so because both the PDN GW and the HSS are defined network

- 71 -

equipment in the 3GPP standards that have a processor, database, communication

capability, etc. NSN779-1003, ¶337.

Finally, the “identity of the PDN GW” is not meaningfully different than the

address of the PDN GW. In fact, claim 9 is the only time the word “identity” appears

in the ’779 Patent. A POSITA would have seen no meaningful difference between

an “identity” and an “address,” and the ’779 Patent confirms this understanding.

NSN779-1003, ¶338.

Thus, the Motorola Submission discloses claim elements 1c, 11d, 9, and 10.


procedure





Claim elements 1d, 11e, 4preamble, and 4b are disclosed in the Motorola

Submission. For example, Step 6 and Step 7 show the MME sending a message to

the PDN GW to create a bearer (connection) for the mobile phone in the network:

- 72 -

NSN779-1009, at Fig. 5.x (blue boxes added).

The Motorola Submission discloses that the MME initiates a message

requesting that a bearer be created (steps 6 and 7) that ultimately terminates at the

PDN GW. Specifically, a POSITA would have understood that the MME sends a

“Create Default Bearer Request” message to the Serving GW, which in turn sends

the request as a Proxy Binding Update (BU) to the PDN GW. NSN779-1003, ¶342.

The Editor’s note contemplates that this Proxy Binding Update could provide

equivalent functionality of the “GTP Create Bearer Request message.” NSN779-

- 73 -

1009, at 4 (emphasis added). Thus, the Motorola Submission discloses that the 3GPP

working group (and the authors of the Motorola Submission) contemplated that the

last network entity to receive the MME’s request to create bearers could be the PDN

GW. A POSITA would have understood that, when the MME’s request is finished,

the PDN GW responds to the Create Bearer Request message by creating bearers

(connections). NSN779-1003, ¶342. As a result, in the Motorola Submission, the

MME requests the PDN GW to initiate the bearer creation procedure.

In fact, given that (1) the PDN GW is the last entity to receive the messages

requesting a bearer creation procedure that originated at the MME, and (2) the PDN

GW is the first entity to send a message back into the network that results in the

bearer (connection) being established, a POSITA would have understood that the

PDN GW initiates the bearer creation procedure in the Motorola Submission because

bearer creation is done in the reverse direction of the request. NSN779-1003, ¶¶342.

Thus, elements 1d, 11e, 4preamble, and 4b are met by the Motorola

Submission.


The Motorola Submission discloses sending, by the MME, a Create Bearer

Request message to the PDN GW. For example, the Motorola Submission

contemplates the Create Default Bearer Request message and the Proxy Binding

Update Message “suffices to provide equivalent functionality to the GTP ‘Create

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Bearer Request’ message . . . .” NSN779-1009, at 4 (emphasis added). Although this

idea had not been implemented by the 3GPP standards body, the idea is nevertheless

disclosed.

Thus, element 4a is disclosed in the Motorola Submission.

D. Count 4: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.

§ 103(a) over the Motorola Submission in light of Soderbacka


It would have been obvious to combine the Motorola Submission and

Soderbacka at the time of the ’779 Patent. NSN779-1003, ¶377. Specifically, as

evidenced above, the Motorola Submission shows that the non-3GPP (Wi-Fi) to

3GPP (LTE) handover procedure was well known in the prior art before the date of

invention of the ’779 Patent. With this knowledge, the person having ordinary skill

in the art would have found explicit motivation within Soderbacka to include

necessary information in the handover procedure so the mobile phone can access

“networks for which the mobile terminal is currently not registered.” NSN779-1007,

¶0031; NSN779-1003, ¶377. Indeed, not only does Soderbacka identify a problem

with current handover procedures, but it explicitly recites the inclusion of an

information element to allow the network to make decisions as to the type of

registration to perform. Given that Soderbacka explicitly includes an information

element, a POSITA would have had a reasonable expectation of success when using

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it in conjunction with the handover procedure outlined in the Motorola Submission.

NSN779-1003, ¶377.

In addition, both the Motorola Submission and Soderbacka are directed to the

same field of endeavor; namely, handover procedures from a non-3GPP network to

a 3GPP network. Therefore, a person of ordinary skill in the art would have been

motivated to look for solutions arising in the field (for example, solutions already

established for previous generations of 3GPP) to solve problems arising in the same

field (apply those established solutions to later generations of 3GPP). NSN779-1003,

¶378. Indeed, 3GPP standards and specifications are constantly evolving, and it is

common in 3GPP for previous solutions to be used in subsequent generations. Id.

Finally, a POSITA would have been motivated to distinguish different Attach

Request messages using an information element because doing so is one of a finite

number of identified, predictable solutions. NSN779-1003, ¶382. Soderbacka

discloses that a problem arises when the mobile terminal (e.g., mobile phone) seeks

to handover to a “radio access network[] for which the mobile terminal is currently

not registered.” NSN779-1007, ¶0031; NSN779-1003, ¶378. Soderbacka discloses

the limited set of possibilities that might solve this problem: (1) “an information

element [is] added to the current connection establishment signaling;” or

“[a]lternatively, new messages could be added to the signaling sequence.” NSN779-

1007, ¶¶0113-0114. The ’779 Patent also discloses the same finite solutions: (1) “an

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Attach Type IE is added in the Attach Request message;” or (2) “A new message is

defined.” NSN779-1001, at 6:19-23. Given the limited number of solutions to

distinguish two messages of the same type, a POSITA would have obviously tried

one of these two solutions to solve the problem and had a reasonable expectation of

success in doing so. NSN779-1003, ¶378.


Claim element 1preamble is disclosed by the Motorola Submission. This

section incorporates the corresponding disclosure for the Motorola Submission in

Part X.C, Count 3, 1preamble.


To the extent the preamble is limiting, claim element 11preamble is disclosed

by the Motorola Submission. This section incorporates the corresponding disclosure

for the Motorola Submission in Part X.C, Count 3, 11preamble.









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Claim elements 1a and 11a are disclosed by the Motorola Submission. This

section incorporates the corresponding disclosure for the Motorola Submission in

Part X.C, Count 3, 1a & 11a.







Claim elements 1b, 11b, and 11c are disclosed by Soderbacka. This section

incorporates the corresponding disclosure for Soderbacka in Part X.A, Count 1, 1b,

11b & 11c.











Claim elements 1c, 11d, 9 and 10 are disclosed by the Motorola Submission.

This section incorporates the corresponding disclosure for the Motorola Submission

in Part X.C, Count 2, 1c, 11d, 9 & 10.

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procedure





Claim elements 1d, 11e, 4preamble, and 4b are disclosed by the Motorola

Submission. This section incorporates the corresponding disclosure for the Motorola

Submission in Part X.C, Count 3, 1d, 11e, 4preamble & 4b.


Claim element 4a is disclosed by the Motorola Submission. This section

incorporates the corresponding disclosure for the Motorola Submission in Part XI.C,

Count 3, 4a.

E. The Grounds Are Not Redundant

There is no redundancy in this Petition. It applies references in combination

to complement each other rather than as distinct and separate alternatives. See

Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 7, at

3 (PTAB Oct. 25, 2012).

Although both Counts 1 and 2 rely on the ’779 APA, the secondary references

in each Count are different publications that provide varying levels of disclosure

relevant to the claims of the ’779 Patent. For example, Soderbacka provides an

explicit information element indicating handover between non-3GPP and 3GPP

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networks, focused on an implementation scheme that straddles 2G and 3G network

architecture. The Nokia Submission, however, discloses an explicit information

element contained within an “Attach Request” message that was implemented in 3G

networks that shows the simple and obvious tool used to distinguish messages within

a network.

Similarly, although Counts 2 and 3 rely on Soderbacka and the Nokia

Submission as secondary references, the primary references provide additional

details about the known attach procedure that occurs during handover from non-

3GPP networks to 3GPP networks.

Should the Board find any redundancy in a ground, the Board should still

institute an IPR because the redundancy would neither “place a significant burden

on the Patent Owner and the Board” nor would it “cause unnecessary delays.” Id. at

2.

XI. CONCLUSION

For the foregoing reasons, Petitioners ask that inter partes review of the ’779

Patent be instituted and that the Challenged Claims be cancelled.

Date: January 20, 2017 By: / S. Benjamin Pleune /

S. Benjamin Pleune (52,421)

CERTIFICATION UNDER 37 C.F.R. § 42.24

Under the provisions of 37 CFR § 42.24, the undersigned hereby certifies that

the word count for the foregoing Petition for inter partes review totals 13,998 words,

which is less than the 14,000 allowed under 37 CFR § 42.24(a)(i).



CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e), 42.105, and the agreement of the parties,

the undersigned hereby certifies service on the Patent Owner of a copy of this

Petition and its respective exhibits via electronic means to counsel for Huawei at

FishServiceList-Huawei/[email protected].



mailto:FishServiceList-Huawei/[email protected]

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