Petition for Inter Partes Review of U.S. Patent No...

Petition for Inter Partes Review of U.S. Patent No. 6,819,923

Paper No. 1

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC. Petitioner,

v.

CELLULAR COMMUNICATIONS EQUIPMENT LLC, Patent Owner

Patent No. 6,819,923

Issued: November 16, 2004 Filed: December 16, 1999

Inventor: Leif Friman Title: METHOD FOR COMMUNICATION OF NEIGHBOR CELL

INFORMATION ____________________

Inter Partes Review No. IPR2015-00577

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,819,923 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1-.80 & 42.100-.123

________________________


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TABLE OF CONTENTS

I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW ................................................................. 1

A. Certification the 923 Patent May Be Contested by Petitioner .............. 1

B. Fee for Inter Partes Review (§ 42.15(a)) ............................................... 2

C. Mandatory Notices (37 CFR § 42.8(b)) ................................................ 2

D. Proof of Service (§§ 42.6(e) and 42.105(a)) ......................................... 3

II. Identification of Claims Being Challenged (§ 42.104(b)) ........................... 4

III. Relevant Information Concerning the Contested Patent .......................... 4

A. Effective Filing Date of the 923 Patent ................................................. 4

B. Person of Ordinary Skill in the Art ....................................................... 5

C. The 923 Patent ....................................................................................... 5

1. Technical Overview ........................................................................ 5

2. Prosecution History ......................................................................... 6

D. Construction of Terms Used in the Claims ........................................... 8

1. “mobile communication means for communication with a cellular telecommunication network” (Claims 11, 13 and 14) .................................................................................................... 8

2. “means for receiving a neighbor cell information message” (Claims 11, 13 and 14) .................................................................... 9

3. “cell information” (Claims 11, 13 and 14) ....................................10

4. “neighbor cell information message” (Claims 11, 13 and 14) ..................................................................................................11

5. “specific parameter value” (Claims 11, 13 and 14) ......................12

6. “index” (Claims 11, 13 and 14) .....................................................13

7. “wherein, for each cell of a plurality of neighbor cells, said cell information comprises:” (Claims 11, 13 and 14) ...................14

8. “means for associating a specific value of said set of specific parameter values indicated by one of said index


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with the corresponding second parameter of a neighbor cell” (Claims 11, 13 and 14) .........................................................15

9. “abase station identity code (BSIC)” (Claim 14) ..........................16

IV. Precise Reasons for Relief Requested ........................................................ 17

A. Claims 11, 13 and 14 Are Unpatentable Over Korpela ...................... 17

1. U.S. Patent No. 6,510,146 to Korpela et al., (“Korpela”) (Ex. 1005) ......................................................................................17

2. Claim 11 Is Anticipated By Korpela .............................................23

a) Mobile Communication Means ..............................................23

b) Means for Receiving ..............................................................23

c) Wherein Clause ......................................................................26

(1) A Set of Specific Parameter Values .......................................26

(2) At Least One Specific Parameter Value .................................27

(3) Index .......................................................................................28

d) Means for Associating ............................................................29



5. Claim 11, 13 and 14 Are Obvious Over Korpela .........................33

a. Means for Receiving ..............................................................33

b. Wherein Clause ......................................................................34

c. Means for Associating ............................................................39

d. Claim 14 .................................................................................42

B. Claims 11, 13 and 14 Are Unpatentable Over Shah ........................... 43

1. U.S. Patent No. 6,047,071 to Shah, (“Shah”) (Ex. 1007) .............43

2. Claim 11 Is Anticipated By Shah ..................................................45

a) Mobile Communication Means ..............................................45

b) Means for Receiving ..............................................................46

c) Wherein Clause ......................................................................48

d) Means for Associating ............................................................50


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5. Claim 11, 13 and 14 Are Obvious Over Shah ..............................53

a) Means for Receiving ..............................................................53

b) Neighbor Cell Information Message ......................................54

c) Means for Associating ............................................................54

d) BSIC .......................................................................................55

C. Claim 11, 13 and 14 Are Obvious Korpela in view of Shah .............. 56

V. CONCLUSION ............................................................................................ 57

Attachment A. Proof of Service of the Petition

Attachment B. List of Evidence and Exhibits Relied Upon in Petition


I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW

A. Certification the 923 Patent May Be Contested by Petitioner

Petitioner certifies it is not barred or estopped from requesting inter partes

review of U.S. Patent No. 6,819,923 (“the 923 Patent”) (Ex. 1001). Neither

Petitioner, nor any party in privity with Petitioner, has filed a civil action

challenging the validity of any claim of the 923 Patent. The 923 Patent has not

been the subject of a prior inter partes review by Petitioner or a privy of Petitioner.

Petitioner also certifies this petition is filed within one year of the date of

service of a complaint alleging infringement of a patent. A complaint alleging

infringement of the ’923 Patent by Petitioner was filed on January 17, 2014, and

led to Civil Action No. 6-14-cv-31 in the United States District Court for Eastern

District of Texas, but based on a review of Petitioner’s records that complaint was

apparently not served on Petitioner. That case was dismissed without prejudice on

February 12, 2014. See Ex. 1021. Petitioner was next served with a complaint

alleging infringement of the ’174 Patent on April 14, 2014, which led to Civil

Action No. 6-14-cv-251 in the United States District Court for Eastern District of

Texas. Because the date of this petition is less than one year from the service of

this complaint, this petition complies with 35 U.S.C. § 315(b). Petitioner therefore

certifies this patent is available for inter partes review.


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B. Fee for Inter Partes Review (§ 42.15(a))

The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)

to Deposit Account No. 50-1597.

C. Mandatory Notices (37 CFR § 42.8(b))

The real party of interest of this petition is Apple Inc. (“Apple”) located at

One Infinite Loop, Cupertino, CA 95014. Lead and backup lead counsel are:

Lead Counsel

Joseph A. Micallef

Reg. No. 39,772

[email protected]

(202) 736-8492

Backup Lead Counsel

Jeffrey P. Kushan

Reg. No. 43,401

[email protected]

(202) 736-8914

Service on Petitioner may be made by mail or hand delivery to: Sidley

Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for

lead and backup counsel is (202) 736-8711.

The 923 Patent is the subject of the following patent infringement lawsuits

brought by Cellular Communications Equipment LLC in the U.S. District Court for

the Eastern District of Texas, Tyler Division: Cellular Communications Equipment

LLC v. HTC Corporation et al, Civil Action No. 6:13-cv-00507-LED; Cellular

Communications Equipment LLC v. LG Electronics, Inc. et al, Civil Action No.

6:13-cv-00508-LED; Cellular Communications Equipment LLC v. Pantech Co.,

Ltd. et al, Civil Action No. 6:13-cv-00509-LED; Cellular Communications


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Equipment LLC v. Blackberry Limited et al, Civil Action No. 6:13-cv-00510-LED;

Cellular Communications Equipment LLC v. ZTE Corporation et al, Civil Action

No. 6:13-cv-00511-LED; Cellular Communications Equipment LLC v.

Amazon.com, Inc. et al, Civil Action No. 6:13-cv-00568-LED; Cellular

Communications Equipment LLC v. Dell Inc., Civil Action No. 6:13-cv-00569-

LED; Cellular Communications Equipment LLC v. NEC Casio Mobile

Communications Ltd. et al, Civil Action No. 6:13-cv-00584-LED; Cellular

Communications Equipment LLC v. Microsoft Corporation et al, 6:13-cv-00738-

LED; Cellular Communications Equipment LLC v. Apple Inc. et al, Civil Action

No. 6:14-cv-00251-LED; and Cellular Communications Equipment LLC v.

Samsung Electronics Co., Ltd. et al, Civil Action No. 6:14-cv-00759-LED.

The 923 Patent is also the subject of inter partes review in NEC Corporation

of America et al. v. Cellular Communications Equipment LLC, IPR2014-01131.

The 923 Patent was previously asserted in the following patent infringement

lawsuits, each dismissed without prejudice: Cellular Communications Equipment

LLC v. Apple Inc. et al, Civil Action No. 6:14-cv-00031-LED; and Cellular

Communications Equipment LLC v. Motorola Mobility LLC et al, Civil Action No.

6:13-00572-LED.

D. Proof of Service (§§ 42.6(e) and 42.105(a))

Proof of service of this petition is provided in Attachment A.


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II. Identification of Claims Being Challenged (§ 42.104(b))

Claims 11, 13 and 14 of the 923 Patent are unpatentable as being invalid

over the prior art. Specifically:

(i) Claims 11, 13 and 14 of the 923 Patent are anticipated, pursuant to 35

U.S.C. § 102, by U.S. Patent No. 6,510,146 to Korpela et al.,

(“Korpela”) (Ex. 1005).

(ii) Claims 11, 13 and 14 of the 923 Patent are obvious, pursuant to 35

U.S.C. § 103, over Korpela.

(iii) Claims 11, 13 and 14 of the 923 Patent are anticipated, pursuant to 35

U.S.C. § 102, by U.S. Patent No. 6,047,071 to Shah, (“Shah”) (Ex.

1007).

(iv) Claims 11, 13 and 14 of the 923 Patent are obvious, pursuant to 35

U.S.C. § 103, over Shah.

(iv) Claims 11, 13 and 14 of the 923 Patent are obvious, pursuant to 35

U.S.C. § 102, over Korpela in view of Shah.

Petitioner’s proposed construction of the contested claims, the evidence relied

upon, and the precise reasons why the claims are unpatentable are provided in

§ IV, below. The evidence relied upon in this petition is listed in Attachment B.

III. Relevant Information Concerning the Contested Patent

A. Effective Filing Date of the 923 Patent

The 923 Patent issued from an application filed as a PCT application on

December 16, 1999 and claims priority to a foreign application filed December 16,


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1998. Ex. 1001 at Face. The earliest priority date for the 923 Patent would be

December 16, 1998, and Petitioner assumes that date for purposes of this petition.

B. Person of Ordinary Skill in the Art

A person of ordinary skill in the art in the field of the 923 Patent would have

been familiar with cellular communications systems (e.g., mobile stations and base

stations), standards documents describing the schemes for communicating over

wireless radio networks, such as standards documents describing GSM,

3GSM/UMTS, and CDMA, and techniques for communicating neighbor cell

information in such communications systems. That familiarity would have come

through at least an undergraduate degree in electrical engineering (or equivalent

degree) and at least three years of relevant work experience in the field of cellular

communications systems. See Ex. 1003 at ¶ 112.

C. The 923 Patent

1. Technical Overview

In a typical cellular system, a base station will broadcast information about

neighboring cells to mobile stations within its cell, Ex. 1001 at 1:16-25, including

information used by a mobile station to communicate with the base stations of

those neighboring cells, such as frequency information and other parameters. See

id; Ex. 1003 at ¶ 52. The 923 Patent relates to the transmission of a “neighbor cell

information message” in a cellular network such as a GSM network. Ex. 1001 at

1: 17-25; 2: 1-14. The claimed advance of the 923 Patent is “shortening the time


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required for the communication of a neighbor cell information message”. Ex. 1001

at 2:2-4. The patent states this is accomplished by communicating neighbor cell

information in “compressed form,” in particular by sending a list of potential

parameters for use in communicating with neighboring cells and an index, pointer

or other indication of which such potential parameters are to be used for each

neighboring cell. Ex. 1001 at 2:1-48. Thus, in the example described in the 923

Patent, the message could include a list of potential frequencies for communicating

with neighboring cells and, for each neighboring cell, an identification of the cell

(e.g., by a base station identity code (“BSIC”)) and an associated index into the list

of potential frequencies. See, e.g., Ex. 1001 at 2:15-29; 4:31-5:17; Ex. 1003 at ¶

53. The 923 Patent states, however, that the invention is not limited to these

specific parameters:

The parameters, whose values are specified in a neighbor cell

information message, can be any cell parameters which the mobile

station needs to know when communicating with a particular cell. ….

The invention is not limited to any particular selection of parameters

to be recited in a neighbor cell information message.

Ex. 1001 at 7:39-49 (emphasis added); Ex. 1003 at ¶ 54.

2. Prosecution History

The original claims of the application from which the 923 Patent issued were

initially rejected as obvious over U.S. Patent No. 6,192,244 to Abbadessa


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(“Abbadessa”) (Ex. 1009) in view of U.S. Patent No. 6,434,389 to Meskanen et al.

(“Meskanen”) (Ex. 1010). Ex. 1002 at 157-62; Ex. 1003 at ¶ 55. The applicant

responded by amending the claims to require the recited “parameter value” of the

neighbor cell information message be a “specific parameter value” and also to

require that the neighbor cell information message include an “index” indicating

the specific value for a second parameter. Ex. 1002 at 171. The applicant argued

that the cited combination did not teach the amended claims. Ex. 1002 at 174-77.

In making these arguments, the applicant equated neighbor cells with “nearby

cells”. See Ex. 1002 at 176-77 (“This information includes specific values for

certain parameters of the nearby cells, i.e., neighbor cells.”); Ex. 1003 at ¶ 56.

In response, the claims were rejected again as obvious over the prior art, this

time over Abbadessa in view of U.S. Patent No. 6,188,911 to Wallentin et al.

(“Wallentin”) (Ex. 1011). Ex. 1002 at 182-91; Ex. 1003 at ¶ 57. The applicants

responded by arguing that the cited prior art combination did not render the claims

unpatentable because Wallentin did not disclose a neighbor cell message and also

because Wallentin did not disclose a specific parameter value indicated (i.e., by an

index) to be a member of a set of common parameter values. Ex. 1002 at 204-27.

The applicants stressed that their invention was not limited to that particular

embodiment: “An example of such a generated neighbor cell information message

is shown in FIGS. 2-5 of the present application. Please note again that the


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invention claimed in the present application is in no way limited to this exemplary

embodiment.” Ex. 1002 at 205 (emphasis added); Ex. 1003 at ¶ 58. A Notice

Allowability was issued on July 9, 2004. Ex. 1002 at 209; Ex. 1003 at ¶ 59.

D. Construction of Terms Used in the Claims

In this proceeding, claims must be given their broadest reasonable

construction in light of the specification. 37 CFR § 42.100(b). If Patent Owner

contends terms in the claims should be read to have a special meaning, those

contentions should be disregarded unless Patent Owner also amends the claims

compliant with 35 U.S.C. § 112 to make them expressly correspond to those

contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman,

679 F.3d 1335, 1343 (Fed. Cir. 2012).

1. “mobile communication means for communication with a cellular telecommunication network” (Claims 11, 13 and 14)

Claim 11 is directed to a “mobile communication means for communication

with a cellular telecommunication network”. The patent explicitly links certain

structure with the claimed function:

A mobile communication means can be any mobile unit or a mobile

station capable of communicating through the radio interface of a

cellular telecommunications network such as a GPRS or a UMTS

network. Examples of such mobile communication means are a

cellular telephone, a video telephone, and a GPRS data terminal.


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Ex. 1001 at 6:62-67 (emphasis added); Ex. 1003 at ¶ 70. Accordingly, the broadest

reasonable construction of “mobile communication means for communication with

a cellular telecommunication network” is the corresponding structure of any

mobile unit or mobile station capable of communication through the radio interface

of a cellular telecommunications network such as a GPRS or a UMTS network,

including a cellular telephone, a video telephone, and a GPRS data terminal,

performing the function of “communication with a cellular telecommunication

network”. Ex. 1003 at ¶ 68-71.

2. “means for receiving a neighbor cell information message” (Claims 11, 13 and 14)

Claim 11 also requires “means for receiving a neighbor cell information

message”. The 923 Patent states that “means 410 for receiving” are “realized

using software programs stored in a memory element of a control block 490 of the

mobile communication means 10, the programs being executed by a

microprocessor of the control block 490.” Ex. 1003 at ¶ 74; Ex. 1001 at 6:40-61.

Thus, the 923 Patent specification links the function of this means element with

software programs stored in a memory element and executed by a microprocessor.

Ex. 1003 at ¶ 74. The patent further discloses a mobile station which includes an

antenna and a receiver. Ex. 1003 at ¶ 75; Ex. 1001 at Fig. 7; 1:43-47; 2:4-7.

Patent Owner has asserted in parallel litigation that the antenna, receiver,

and microprocessor are the corresponding structure for this means-plus-function


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claim element and that the claimed function of “receiving a neighbor cell message”

does not require the disclosure of a specific algorithm with which the

microprocessor is programmed, citing In re Katz Interactive Call Processing

Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). Ex. 1015 at 5-8. While

Petitioner has argued otherwise, in view of the broadest reasonable interpretation

standard, Petitioner assumes this claim element encompasses Patent Owner’s

structure under that standard. Ex. 1003 at ¶ 77. Accordingly, the broadest

reasonable construction of “means for receiving a neighbor cell information

message” is the corresponding structure of an antenna, a receiver, and a

microprocessor performing the function of “receiving a neighbor cell information

message”. Ex. 1003 at ¶¶ 72-78.

3. “cell information” (Claims 11, 13 and 14)

The broadest reasonable interpretation of “cell information” is information

concerning a cell. Ex. 1003 at ¶¶ 92-94. The 923 Patent states that Figure 5 shows

“the cell information of the particular cell,” Ex. 1001 at 4:56-61, and that the data

structure of Figure 5 “specifies the information concerning a single neighbor cell,”

Id. at 5:6-8. Ex. 1003 at ¶ 93. The patent further states that “[t]he parameters,

whose values are specified in a neighbor cell information message, can be any cell

parameters which the mobile station needs to know when communicating with a

particular cell.” Id. at 7:39-42; Ex. 1003 at ¶ 93. Accordingly, under the broadest


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reasonable interpretation, the phrase “cell information” should be interpreted to

mean information concerning a cell. Ex. 1003 at ¶¶ 92-94.

4. “neighbor cell information message” (Claims 11, 13 and 14)

The broadest reasonable interpretation of “neighbor cell information

message” is a message that contains information concerning a nearby cell. Ex.

1003 at ¶¶ 79-87. The 923 Patent states that in GSM systems of the day the

network communicates to the mobile station “the basic parameters of the

neighboring cells, such as the base station identity code (BSIC) of the base stations

of the cells, the BCCH (Broadcast Control Channel) frequency, and several other

parameters.” Ex. 1001 at 1:15-25 (emphasis added); Ex. 1003 at ¶ 80. The 923

Patent states that the parameters that “can be” included in the neighbor cell

information message consistent with the putative invention could be “any cell

parameters which the mobile station needs to know when communicating with a

particular cell” and that “[t]he invention is not limited to any particular selection of

parameters to be recited in a neighbor cell information message”. Ex. 1001 at

7:39-49; Ex. 1003 at ¶ 83. The 923 Patent equates nearby cells with neighbor

cells, Ex. 1001 at 1:17-25; Ex. 1003 at ¶ 93, as does the prosecution history, Ex.

1003 at ¶ 81; Ex. 1002 at 176-77.

The 923 Patent also states that the neighbor cell information message need

not be limited to any particular data structure. Ex. 1001 at 7:50-54; Ex. 1003 at ¶


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84. During the prosecution of the underlying patent application, the applicant

stressed that the claimed “neighbor cell information message” was not limited to

the particular embodiment described in the specification. Ex. 1003 at ¶ 86; Ex.

1002 at 205. Accordingly, the broadest reasonable interpretation of “neighbor cell

information message” is a message that contains information concerning a nearby

cell. Ex. 1003 at ¶¶ 79-87.

5. “specific parameter value” (Claims 11, 13 and 14)

The broadest reasonable interpretation of “specific parameter value” is a

numerical value, as opposed to an index or other indication into a list of values. Ex.

1003 at ¶¶ 88-91. The 923 Patent consistently distinguishes the specific numerical

value of the neighbor cell information message from an index or pointer into a

table. For example, the patent describes a list of base station frequencies as an

example of “specific parameter values”. Ex. 1001 at 7:39-49 (emphasis added);

Ex. 1003 at ¶ 89.

Moreover, during prosecution of the underlying application, after a non-final

rejection of the claims, this claim was amended to add the word “specific” to the

phrase “specific parameter values”. Applicant then explicitly distinguished an

index into a table with the “numerical value” of each specific value in the message.

Ex. 1002 at 177 (Amendment of December 15, 2003) (“Because these specific

parameter values are common, a pointer or an index or some other shortened form


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of indication may be used to indicate one of the specific values, without having to

reproduce the entire numerical value of the specific value.”) (emphasis added); Ex.

1003 at ¶¶ 90. Accordingly, the broadest reasonable interpretation of “specific

parameter value” is a numerical value, as opposed to an index or other indication

into a list of values. Ex. 1003 at ¶¶ 88-91.

6. “index” (Claims 11, 13 and 14)

The broadest reasonable interpretation of “index” is a form of indication, or

indicator. Ex. 1003 at ¶¶ 95-97.

The 923 Patent describes an “index” as a type of pointer, Ex. 1001 at 2:19-

20, and describes the role of the claimed “index” / pointer as “indicating the value

of a single parameter” or “indicating an element of a set.” Ex. 1001 at 5:35-41; Ex.

1003 at ¶ 96. Patent Owner asserted this same distinction during prosecution,

equating an index with a “form of indication.” Ex. 1002 at 177 (Amendment of

December 15, 2003) (“Because these specific parameter values are common, a

pointer or an index or some other shortened form of indication may be used to

indicate one of the specific values, without having to reproduce the entire

numerical value of the specific value.”) (emphasis added). This comports with the

ordinary meaning of pointer as a “data element that indicates the location of

another data element.” IBM Dictionary of Computing 514 (George McDaniel ed.,


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Aug. 1993) (Ex. 1019 at 4); Ex. 1003 at ¶ 96. Accordingly, the broadest reasonable

interpretation of “index” is a form of indication, or indicator. Ex. 1003 at ¶¶ 95-97.

7. “wherein, for each cell of a plurality of neighbor cells, said cell information comprises:” (Claims 11, 13 and 14)

The broadest reasonable interpretation of “wherein, for each cell of a

plurality of neighbor cells, said cell information comprises:” is that this phrase

covers cell information applicable to each of a plurality of cells, even if not

separately itemized for each cell. Ex. 1003 at ¶¶ 98-101.

The ordinary meaning of this phrase encompasses cell information that is

associated with or describes each of a plurality of cells, whether or not it is set

forth separately for each cell. For example, hypothetical neighbor cell information

that states “each neighbor cell is red” is cell information “for each cell of a

plurality of neighbor cells” to the same extent that “cell 1 is red; cell 2 is red

etc…” would be. Ex. 1003 at ¶ 99. Moreover, the 923 Patent states that the

neighbor cell information message need not be limited to any particular data

structure. Ex. 1001 at 7:50-54 (emphasis added); Ex. 1003 at ¶ 100. Thus, it

would be inconsistent with the specification to construe the claim to require “cell

information” of any particular structure. Ex. 1003 at ¶ 100. Accordingly, the

broadest reasonable interpretation of “wherein, for each cell of a plurality of

neighbor cells, said cell information comprises:” is that this phrase covers cell


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information applicable to each of a plurality of cells, even if not separately

itemized for each cell. Ex. 1003 at ¶¶ 98-101.

8. “means for associating a specific value of said set of specific parameter values indicated by one of said index with the corresponding second parameter of a neighbor cell” (Claims 11, 13 and 14)

Claim 11 requires “means for associating a specific value of said set of

specific parameter values indicated by one of said index with the corresponding

second parameter of a neighbor cell”. The 923 Patent states that “means 420 for

associating a value of said set of parameter values indicated by one of said second

values with the corresponding parameter of a neighbor cell” are “realized using

software programs stored in a memory element of a control block 490 of the

mobile communication means 10, the programs being executed by a

microprocessor of the control block 490.” Ex. 1001 at 6:40-61. Thus, the 923

Patent specification links the function of this means element with software

programs stored in a memory element and executed by a microprocessor. Ex. 1003

at ¶ 103. The 923 Patent also indicates that specific parameter values on the list of

values are associated with a cell through the use of a pointer such as an index. Ex.

1001 at 3:7-22; Ex. 1003 at ¶ 104.

Moreover, Patent Owner has identified in parallel litigation the following

corresponding structure for this claim element: a microprocessor (6:57-61; Fig. 7)

configured to use a parameter (or set of parameters) specified by an index (or


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pointer) for a parameter of a neighbor cell (2:15-28; 2:35-43; 3:4-26; 4:11-5:17;

5:35-46; 7:39-49). Ex. 1015 at 8-13; Ex. 1003 at ¶ 105. Patent Owner has also

asserted that the corresponding “algorithm disclosed for performing [the claimed]

function is simple: using the parameter value specified by the index for the second

parameter.” Ex. 1015 at 10. While Petitioner has argued otherwise, in view of the

broadest reasonable interpretation standard, Petitioner assumes for the purposes of

this petition that this claim element encompasses Patent Owner’s structure under

that standard.

Accordingly, the broadest reasonable interpretation of “means for

associating a specific value of said set of specific parameter values indicated by

one of said index with the corresponding second parameter of a neighbor cell” is

the corresponding structure of a microprocessor configured to use a parameter

(or set of parameters) specified by an index (or pointer) for a parameter of a

neighbor cell, performing the function of “associating a specific value of said set

of specific parameter values indicated by one of said index with the corresponding

second parameter of a neighbor cell”. Ex. 1003 at ¶¶ 102-106.

9. “abase station identity code (BSIC)” (Claim 14)

The broadest reasonable interpretation of “the fast [sic] parameter

comprises abase [sic] station identity code (BSIC)” is that the first parameter

comprises a code used to identify a base station. Ex. 1003 at ¶¶ 107-110. The


17

word “abase” is clearly a typo that should read “a base,” Ex. 1003 at ¶ 108, and the

specification makes clear that a BSIC is a code that identifies a base station. Ex.

1001 at 1:15-25; 6:41-61; Ex. 1003 at ¶ 109-0. Accordingly, the broadest

reasonable construction of “abase station identity code (BSIC)” is a code that

identifies a base station. Ex. 1003 at ¶¶ 107-110.

IV. Precise Reasons for Relief Requested

A. Claims 11, 13 and 14 Are Unpatentable Over Korpela

1. U.S. Patent No. 6,510,146 to Korpela et al., (“Korpela”) (Ex. 1005)

Korpela issued on January 21, 2003 from Application No. 09/103,273, filed

June 23, 1998. Ex. 1005 at Face. Korpela is therefore prior art to the 923 Patent at

least under Section 102(e). Ex. 1003 at ¶ 113.

Korpela discloses a scheme for transmitting neighbor cell information to

mobile stations in a “system information message.” Ex. 1005 at ABSTRACT,

4:61-5:10. Ex. 1003 at ¶ 114. Korpela explains that in prior art cellular systems,

such as Global System for Mobile Telecommunications, or GSM, systems, “each

base station transmits a signal in a certain so-called BCCH channel (Broadcast

Control Channel), the frequency of which is different at neighbouring base

stations.” Ex. 1003 at ¶ 115; Ex. 1005 at 1:19-26. Korpela states that the base

stations of such a system “also transmit information about the BCCH frequencies

used in neighbouring cells to the mobile stations so that they know which


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frequencies they must listen to in order to find the BCCH transmissions of

neighbouring cells. “In each cell, the transmission of the BCCH channel also

contains information of how the mobile stations can make so-called random access

requests in the cell for establishing a telephone connection.” Ex. 1005 at 1:25-34

(emphasis added); Ex. 1003 at ¶ 115.

Korpela discloses examples of system information messages that contain the

kind of neighbor cell information used in his scheme. E.g., Ex. 1005 at 5:11-7:45;

Ex. 1003 at ¶ 116. For example, Korpela notes that such messages necessarily

contain certain “L3 message information elements in the GSM system.” Ex. 1005

at 4:65-5:10; Ex. 1003 at ¶ 116. A person of ordinary skill in the art would

understand that the phrase “L3 message information elements in the GSM system”

refers to the Layer 3 specification for GSM of that time period, more formally

known as the GSM 04.08 v. 6.1.1 MS-BSS Interface; Mobile Radio Interface

Layer 3 Specification ("GSM 04.08") (attached hereto as Ex. 1006). Ex. 1003 at ¶

117. GSM 04.08 discloses several layer 3 system information messages. See, e.g.,

Ex. 1006 at 267-81; Ex. 1003 at ¶ 117.

For example, GSM 04.08 describes System Information Message Type 5,

which is sent “by the network to mobile stations within the cell giving information

on the BCCH allocation in the neighbour cells. … When received this

information shall be used as the list of BCCH frequencies of the neighbouring cells


19

to be reported on.” Ex. 1006 at 273; Ex. 1003 at ¶ 118. GSM 04.08 also describes

System Information Message Type 10, which “defines a list of cells and may

contain further information for cells of that list, a cell being identified by the pair

of ARFCN and BSIC of the BCCH.” Ex. 1006 at 281; Ex. 1003 at ¶ 119. An

ARFCN is a well known acronym, standing for “Absolute Radio Frequency

Channel Number”. See GSM 1.04 Technical Specification, V. 5.0.0 March 1996 at

7 (Ex. 1014). A BSIC is also a well known acronym, standing for base station

identification code. See id. at 8; Ex. 1003 at ¶ 119.

Korpela explains that in so-called “third generation” cellular systems “the

quality of service offered by the cells to the mobile stations varies substantially

from cell to cell.” Ex. 1005 at 1:41-42; Ex. 1003 at ¶ 120. One example of

“quality of service” information cited by Korpela is data transfer speed. See Ex.

1003 at ¶ 120; Ex. 1005 at 1:47-50; 10:50-54. Korpela explains that, due to

differences in quality of service (such as data transfer speeds) among cells, a

mobile station may not be able to operate in some of the neighboring cells. See Ex.

1003 at ¶ 120; Ex. 1005 at 2:51-60.

Korpela notes that, in order to communicate information concerning the

quality of service information of neighboring cells to the mobile station, each base

station could include such information in its own BCCH transmission. Ex. 1003 at

¶ 121; Ex. 1005 at 2:37-43. However, “an arrangement like this loads the mobile


20

stations” causing them to “read from the BCCH signal transmitted by the base

station of its cell a list of other BCCH frequencies, and thereafter receive,

demodulate and decode a short period of each BCCH transmission coming at a

frequency included in the list in order to find out if the mobile station can operate

in the neighbouring cells in question.” Ex. 1005 at 2:44-51. As Korpela explains,

“[i]f the quality of service of most of the neighbouring cells is too low for this, the

reception, demodulation and decoding of their BCCH transmissions in order to

find a new cell is wasted.” Ex. 1005 at 2:64-67; Ex. 1003 at ¶ 121.

Korpela proposes to solve this problem by having a base station “create[] a

message containing information about the neighbouring cells and transmit[] it to

the mobile station,” the message including “in addition to the transmission

frequencies used in the neighbouring cells … other information characterizing the

neighbouring cells,” such as quality of service information. Ex. 1005 at 3:5-14

(emphasis added); Ex. 1003 at ¶ 122. Figure 3a of Korpela describes the portion of

a modified system information message including such “other information” in one

example of his scheme, and the information content of that example is shown in


21

Table I of Korpela (right), Ex. 1003 at

¶ 123; Ex. 1005 at 5:11-6:32. Korpela

explains that, in this example, there

can be eight different classes of cells,

each for a different category of quality

of service. Ex. 1003 at ¶ 124. In the

specific example shown in Table I

there are cells in three of the classes: class 0 (GSM), class 1 (GPRS) and class 7

(UMTS TDD). Korpela sometimes calls these classes “capacity classes”. See Ex.

1005 at 5:13-15; Ex. 1003 at ¶ 125.

Part 32 of Korpela’s modified system information message “presents the

neighbouring cells by capacity classes.” Ex. 1005 at 5:23-25. This part consists of

various fields denoted “32a,” various fields denoted “32b” (each of which

corresponds to one of the 32a fields), and also various fields denoted “32c” (each

of which similarly corresponds to one of the 32a fields). Ex. 1005 at 5:11-33. For

example, Korpela explains that “the variable length part 32 has a first field 32a,

which indicates which capacity class (0-7) is concerned, and a second field 32b,

which indicates the length of the third field 32c describing the capacity class.” Ex.

1005 at 5:23-34; Ex. 1003 at ¶ 126.


22

Korpela explains that field 32c describes a class of neighboring cells, and

therefore has the length and information content of the information required to

describe the cells of a particular type, e.g., GSM, GPRS, UMTS. Ex. 1003 at ¶

127; Ex. 1005 at 5:34-51. Korpela states that “[t]he third fields are in sequence by

capacity class at the end of the variable length part 32”. Ex. 1005 at 5:30-33; Ex.

1003 at ¶ 127.

Thus, in the example of Table I of Korpela, a particular field 32a is a

parameter explicitly identifying a class of service associated with certain

neighboring cells. The corresponding field 32b identifies the corresponding

information in field 32c which describes the particular class of the neighboring

cells referred to by that field 32a. Ex. 1003 at ¶ 128; Ex. 1005 at 5:11-33. More

specifically, because the fields 32c “are in sequence by capacity class at the end of

the variable length part 32,” each field 32b points to a particular one of the set of

fields 32c. Ex. 1003 at ¶ 128. Thus, in Table I, field 32b for the GSM cells (= 16)

identifies the first 16 octets of the set of fields 32c. Field 32b for the GPRS cells

(= 6) identifies the 6 octets of the set of fields 32c after the first 16 octets. Field

32b for the UMTS cells (= 40) identifies the 40 octets of the set of fields 32c after

the first 22 octets. Each field 32b is therefore an index or pointer into the set of

fields 32c. Ex. 1003 at ¶ 128.


23

Korpela also discloses a mobile phone that can be used in his scheme. See

Ex. 1005 at Fig. 5b. The mobile phone of Korpela includes an antenna, a reception

block 53 “through which the mobile station receives, demodulates and decodes the

messages sent by the base stations” and a processor “which processes the

information contained by the messages and controls the operation of the mobile

station”. Ex. 1005 at Fig. 5b; 10:64-11:4; Ex. 1003 at ¶¶ 129-130.

2. Claim 11 Is Anticipated By Korpela

a) Mobile Communication Means

The preamble of claim 11 recites “[a] mobile communication means for

communication with a cellular telecommunication network, comprising”. Korpela

discloses a mobile station that is capable of communication through the radio

interface of a cellular telecommunications network, such as a GSM, GPRS or

UMTS network. Ex. 1003 at ¶ 132; Ex. 1005, Fig. 5b; 4:40-41; 5:10-6:32; 10:64-

11:14. Accordingly, Korpela discloses “[a] mobile communication means for

communication with a cellular telecommunication network, comprising”. Ex. 1003

at ¶¶ 131-133.

b) Means for Receiving

Claim 11 also requires a “means for receiving a neighbor cell information

message”. Korpela explains that the mobile station receives system information

messages that contain “some mandatory data elements, which are called L3

message information elements in the GSM system,” Ex. 1003 at ¶ 135; Ex. 1005 at


24

4:61-5, and “the transmission frequencies used in the neighbouring cells,” Ex.

1005 at 3:6-12; 3:34-42; Ex. 1003 at ¶ 137, all of which are parameters a mobile

station needs to know when communicating with a particular cell. Ex. 1003 at ¶¶

135-136, 138 Ex. 1006 at 27; 267-81. Korpela also discloses that the base station

transmits “information of how the mobile stations can make so-called random

access requests in the cell for establishing a telephone connection.” Ex. 1005 at

1:25-34; Ex. 1003 at ¶ 139. Such information also includes parameters a mobile

station needs to know to communicate with a particular cell. Ex. 1003 at ¶ 141;

Ex. 1006 at 438-39. Korpela also discloses that the message may contain “other

information characterizing the neighbouring cell.” Ex. 1003 at ¶ 141; Ex. 1005 at

ABSTRACT; see also id. 3:6-12; 3:34-42. This includes information relating to

quality of service information, such as data transfer speed. Ex. 1003 at ¶ 141; Ex.

1005 at 1:47-55; 10:50-54; 3:34-42. Korpela explains that mobile phones in the

network of his scheme need to know quality of service information, such as data

transfer speeds of the neighboring cells, because not all cells can provide the data

transfer speed required by the mobile station. Ex. 1005 at 2:51-60; Ex. 1003 at ¶

142. The system information messages of Korpela are therefore “neighbor cell

information messages” and Korpela discloses the function of “receiving a neighbor

cell information message”. Ex. 1003 at ¶ 143.


25

Korpela also discloses a mobile phone for performing that function and

which includes an antenna (see Ex. 1005 at Fig. 5b), a receiver (see id. at reception

block 53 of Fig. 5b), and a processor (see id. at control block 54 of Fig. 5b “which

processes the information contained by the messages and controls the operation of

the mobile station”; 10:64-11:4). Ex. 1003 at ¶ 144. A person of ordinary skill in

the art would understand “control block 54” to include a microprocessor, since it is

described as processing information and also because of the necessity to include a

small processing device in a mobile phone. Ex. 1003 at ¶ 144.

This structure of Korpela is at least equivalent to the corresponding structure

for this claim element because nothing in the 923 Patent indicates that the

disclosed structure anything but conventional, Ex. 1003 at ¶ 145; Ex. 1001 at 6:62-

64, such hardware was known to those of ordinary skill in the art by 1998, Ex.

1003 at ¶ 145, and the structures disclosed by Korpela perform the function of

receiving a neighbor cell information message in substantially the same way (by

receiving, demodulating and decoding the message, see Ex. 1005 at 8:31-36) to

achieve the same result (reception of the included neighbor cell information) as the

generic structures of the 923 Patent. Ex. 1003 at ¶¶ 145, 146. Indeed, mobile

phones of differing hardware designs were common even before 1998, and a

person of ordinary skill in the art would have considered the structures disclosed in

the 923 Patent and those in Korpela to be interchangeable. Ex. 1003 at ¶ 145; Ex.


26

1005 at 10:64-11:4. Korpela therefore discloses structures that are at least

equivalent to the disclosed corresponding structure for this claim element. Ex.

1003 at ¶ 145. Accordingly, Korpela discloses “means for receiving a neighbor

cell information message”. Ex. 1003 at ¶¶ 135-149.

c) Wherein Clause

Claim 11 also requires “wherein said neighbor cell information message

comprises: a set of specific parameter values; and cell information, wherein, for

each cell of a plurality of neighbor cells, said cell information comprises: at least

one specific parameter value for a first parameter, and an index for a second

parameter, said index indicating which value of said set of specific parameter

values is used for said second parameter”.

(1) A Set of Specific Parameter Values

Korpela states that “[t]he third fields are in sequence by capacity class at the

end of the variable length part 32, after the first and second fields concerning all

the capacity classes.” Ex. 1005 at 5:30-33. Korpela explains that “the third field

32c describ[es] the capacity class,” Ex. 1005 at 5:29, i.e., the quality of service for

a particular class of cells, see id. at 5:10-33. Ex. 1003 at ¶ 152. Korpela discloses

that the sequential fields 32c include parameters for communicating with GSM,

GPRS and UMTS cells, respectively, including BCCH frequency lists, and

absolute ARFCN (Absolute Radio Frequency Channel Number) values. Ex. 1003


27

at ¶ 152; Ex. 1006 at 423; Ex. 1005 at 5:37-41, 6:17 (GSM); Ex. 1003 at ¶ 155; Ex.

1005 at 6:11, 6:18, 5:43-46 (GPRS); Ex. 1003 at ¶ 156; Ex. 1005 at 5:47-51, 6:16

& 19 (UMTS). Thus, the fields 32c in Table I of Korpela constitute “a set of

specific parameter values” because those fields include numerical values, such as

frequency values/channel numbers for neighboring cells, as opposed to an index or

some other indication into a list of values. Ex. 1003 at ¶ 157.

(2) At Least One Specific Parameter Value

The system information message of Figure 3a also includes a number of

fields 32a, as shown in Table I. Ex. 1003 at ¶ 160. Korpela explains that “the

variable length part 32 has a first field 32a, which indicates which capacity class

(0-7) is concerned”. Id. at ¶ 160; Ex. 1005 at 5:26-28, 6:15. Each field 32a

contains a numerical value from 0 to 7. Ex. 1003 at ¶ 160; Ex. 1005 at 6:10-13.

The fields 32a of Korpela are therefore “cell information, wherein, for each cell of

a plurality of neighbor cells, said cell information comprises: at least one specific

parameter value for a first parameter” because each such field 32a contains a

numerical value representing a capacity class (i.e., a category of quality of service,

see Ex. 1005 at 5:13-15) concerning a plurality of neighboring cells. Ex. 1003 at ¶

161; Ex. 1005 at 6:5-20. In each case, fields 32a is “cell information” applicable to

each of the plurality of nearby cells in a particular capacity class, even though not

separately represented for each such cell. Ex. 1003 at ¶ 161.


28

Moreover, as demonstrated above, Korpela also discloses that the system

information messages of his scheme include “L3 message information elements in

the GSM system,” Ex. 1005 at 4:65-5:10, which a person of ordinary skill in the art

would understand to refer to the information elements of the Layer 3 specification

for GSM, i.e., GSM 04.08 (Ex. 1006). Ex. 1003 at ¶ 162. That specification

discloses several layer 3 messages, each of which includes at least one “specific

parameter value”. Id. at ¶ 162; Ex. 1006 at 281. Thus, Korpela discloses “cell

information, wherein, for each cell of a plurality of neighbor cells, said cell

information comprises: at least one specific parameter value for a first

parameter”. Ex. 1003 at ¶ 163.

(3) Index

Table I of Korpela also discloses “a second field 32b, which indicates the

length of the third field 32c describing the capacity class.” Ex. 1005 at 5:27-28.

Each field 32b is an “an index for a second parameter, said index indicating which

value of said set of specific parameter values is used for said second parameter”

because each such field is a form of indication used to indicate which octets in the

fields 32c are associated with that particular class of service. Ex. 1003 at ¶ 167.

For example, as noted above, Korpela states that “[t]he third fields are in sequence

by capacity class at the end of the variable length part 32”. Ex. 1005 at 5:30-33.

The first field 32b (Ex. 1005 at 6:11) therefore indicates that the first sixteen octets


29

of the fields 32c describe the GSM cells. The specific numerical values for

communicating with the neighboring GSM cells are therefore found in the first

sixteen octets. The second field 32b (Ex. 1005 at 6:13) indicates that the six octets

following the first sixteen octets of the fields 32c include specific numerical values

describing the GPRS cells. The third field 32b (Ex. 1005 at 6:16) indicates that the

forty octets following the first twenty-two octets (=16 GSM octets + 6 GPRS

octets) of the fields 32c include specific numerical values describing the UMTS

cells. Ex. 1003 at ¶ 167. Thus, the fields 32b are each a form of indication used to

indicate which octets in the fields 32c are associated with that particular class of

service. Ex. 1003 at ¶ 167. Moreover, each of the fields 32b is “cell information”

applicable to each of the plurality of nearby cells in that particular associated class

of service, even though not necessarily separately represented for each such cell,

because each such field is information concerning at least one nearby cell. Ex.

1003 at ¶ 168. Each field 32b is therefore “cell information, wherein, for each cell

of a plurality of neighbor cells, said cell information comprises: … an index for a

second parameter, said index indicating which value of said set of specific

parameter values is used for said second parameter”. Ex. 1003 at ¶ 169.

Accordingly, Korpela discloses the “wherein said neighbor cell information

message comprises …” claim element. Ex. 1003 at ¶¶ 150-177.

d) Means for Associating


30

Claim 1 also requires a “means for associating a specific value of said set of


second parameter of a neighbor cell”. Ex. 1003 at ¶ 178. Korpela discloses that

fields 32c include information describing neighboring cells, such as

frequency/channel number information for cells of a given class of service, to be

used by the mobile station should it seek to communicate with a neighboring cell

in that class of service. Ex. 1003 at ¶ 179; Ex. 1005 at 5:37-51. Korpela also

discloses that “the mobile station receives, demodulates and decodes the system

information messages transmitted by the present base station, from which it finds

out, in addition to the BCCH frequencies, the quality of service offered by the

neighbouring cells, such as the data transfer speed.” Ex. 1005 at 8:31-36; 4: 1-18;

9:25-46; Ex. 1003 at ¶ 179. Korpela also discloses that the mobile station uses the

information from the system information message to discriminate among

neighboring cells based on, among other things, the “quality of service”

information included in fields 32c. Ex. 1005 at 8:37-51 (emphasis added); Ex.

1003 at ¶ 179. In order to discriminate among neighbor cells “on the basis of the

system information message sent by the present base station,” see Ex. 1005 at

8:37-51, the mobile station of Korpela would necessarily have the ability to

associate a specific value of the set of specific parameter values contained in the

fields 32c and indicated by one of the indexes or pointers in fields 32b with a


31

parameter for the neighboring cells. Ex. 1003 at ¶ 180. A person of ordinary skill

in the art would also understand that this operates as a form of compression:

instead of providing quality of service information for each cell individually, the

capacity classes instead reference a group of cells, thus reducing the amount of

information that must be transmitted. See Ex. 1003 at ¶¶ 180, 187. This type of

compression was well-known in art at the time of the invention. See, e.g. Ex. 1009

at 8:55-59; Ex. 1006 at 455; Ex. 1008 at 114; Ex. 1003 at ¶ 180. Korpela therefore

discloses the function of “associating a specific value of said set of specific

parameter values indicated by one of said index with the corresponding second

parameter of a neighbor cell”. Ex. 1003 at ¶ 180.

Korpela discloses that control block 54 of his Fig. 5b “processes the

information contained by the messages and controls the operation of the mobile

station, both as such prior art technique.” Ex. 1005 at Fig. 5b 10:64-11:4; Ex. 1003

at ¶ 183. The control block 54 of Korpela is therefore configured to use

information in fields 32c (using a parameter value specified by an index for a

parameter) describing the quality of service, and specified by the fields 32b (index

or pointer), for a parameter of a neighbor cell. Ex. 1003 at ¶ 183. Indeed,

Petitioner observes that Patent Owner has argued in parallel litigation that the

algorithm required “for performing this function is simple: using the parameter

value specified by the index for the second parameter.” Ex. 1015 at 10. A person


32

of ordinary skill in the art would also understand the control block 54 of Korpela to

be a microprocessor, since it is described as processing information and also

because of the necessity to include a small processing device in a mobile station.

Ex. 1003 at ¶ 183.

Moreover, the processing control block of Korpela is at least equivalent to

the microprocessor of the 923 Patent, since the patent suggests that the recited

hardware can be part of “any mobile unit or mobile station capable of

communicating through the radio interface of a cellular telecommunications

network,” Ex. 1001 at 6:62-64, control block 54 performs the same function in

substantially the same way (by using an index or pointer to access information in

the fields 32c) to achieve the same result (retrieve neighbor cell information from

those fields) as the generic structures of the 923 Patent, and the structures disclosed

in the 923 Patent and Korpela are interchangeable. Ex. 1003 at ¶¶ 145-147 & 184.

Thus, Korpela discloses “means for associating a specific value of said set of


second parameter of a neighbor cell.” Ex. 1003 at ¶¶ 179-191. Accordingly,

Korpela anticipates claim 11. Ex. 1003 at ¶¶ 113-192.


Claim 13 requires “[t]he mobile communication means of clam 11, wherein

the mobile communication means comprises a cellular telephone.” Ex. 1003 at ¶


33

193. Korpela discloses a mobile telephone that is capable of communication

through the radio interface of a cellular telecommunications network, such as a

GSM network. Ex. 1003 at ¶ 194; Ex. 1005 at Fig. 5b; 4:40-41; 10:64-11:14.

Accordingly, Korpela discloses this claim element. Ex. 1003 at ¶¶ 193-196.


Claim 14 requires “[t]he mobile communication means of claim 11, wherein

the fast [sic] parameter comprises abase [sic] station identity code (BSIC).” Ex.

1003 at ¶ 197. Korpela discloses that the system information messages of the prior

art, to which Korpela has added additional information, include “L3 message

information elements in the GSM system,” which a person of ordinary skill in the

art would understand to include the System Information Type 10 messages of

GSM 04.08. Ex. 1003 at ¶¶ 116-119. GSM 04.08 explains that “[e]ach SYSTEM

INFORMATION TYPE 10 message defines a list of cells and may contain further

information for cells of that list, a cell being identified by the pair of ARFCN and

BSIC of the BCCH.” Ex. 1006 at 282 (emphasis added); Ex. 1003 at ¶ 198. Thus,

Korpela discloses “[t]he mobile communication means of claim 11, wherein the

fast parameter comprises abase [sic] station identity code (BSIC).” Ex. 1003 at ¶

199. Accordingly, Korpela anticipates claim 14. Ex. 1003 at ¶¶ 197-201.

5. Claim 11, 13 and 14 Are Obvious Over Korpela

a. Means for Receiving


34

To the extent Patent Owner may argue that the structural requirements of the

“means for receiving” are not literally satisfied by Korpela, it would have been

obvious to include the conventional antenna, receiver, and microprocessor of the

923 Patent in the scheme of Korpela. Ex. 1003 at ¶ 148. A person of ordinary skill

in the art would have understood that an antenna and receiver would be necessary

for any mobile phone, an the use of microprocessors in mobile phones by 1998 was

known, Ex. 1003 at ¶ 148; U.S. patent No. 6,002,940 to Richter (Ex. 1012) at 4:10-

14; Fig. 1, and would have been an obvious modification of Korpela. Ex. 1003 at ¶

148. To use a microprocessor in the mobile phone of Korpela would have been

nothing more than the application of ordinary skill and the use of a prior art

structure for the same purpose it had been used for in the prior art without any

unexpected results. Ex. 1003 at ¶ 148.

b. Wherein Clause

To the extent Patent Owner may argue that Korpela does not disclose “a set

of specific parameter values,” it would have been obvious to include specific

numerical values in the fields 32c of Korpela, since communicating specific

parameter values in system information messages was known in the prior art. Ex.

1003 at ¶ 158; Ex. 1006 at 267-81; Ex. 1001 at 1:26-30. For example, GSM 04.08

describes System Information Message Type 5, which is sent “by the network to

mobile stations within the cell giving information on the BCCH allocation in the


35

neighbour cells. . . . When received this information shall be used as the list of

BCCH frequencies of the neighbouring cells to be reported on.” Ex. 1006 at 272;

Ex. 1003 at ¶ 158. The BCCH frequencies in such a list is “a set of specific

parameter values”. Ex. 1003 at ¶ 158. To include such a list in fields 32c of the

modified system information message of Korpela would have been merely using a

known technique for its usual purpose to achieve a predictable result, and at the

least explicitly suggested by Korpela’s disclosure that “[t]he system information

message includes some mandatory data elements, which are called L3 message

information elements in the GSM system . . .”. Ex. 1005 at 5:1-3; Ex. 1003 at ¶

158. Thus, even if Patent Owner were to argue that Korpela does not disclose “a

set of specific parameter values” that claim requirement would have been an

obvious variation of Korpela. Ex. 1003 at ¶ 159.

To the extent Patent Owner may argue that Korpela does not disclose “for

each cell of a plurality of neighbor cells … at least one specific parameter value

for a first parameter,” it would have been obvious to include such information in

the system information messages of Korpela. Sending a “specific parameter

value” in a neighbor cell message, as in GSM 04.08 system information messages,

was known and, if used in the scheme of Korpela, would have achieved only

predictable results. Ex. 1003 at ¶¶ 164-165. For example, including the

information content of the GSM 04.08 system information type 10 message, which


36

includes a base station identification code (“BSIC”), Ex. 1006 at 281, in the system

information messages of Korpela would have been within the level of ordinary

skill in the art, so such a person could have implemented such a modification. Ex.

1003 at ¶ 165. As demonstrated above, use of such information in the neighbor

cell messages of Korpela is suggested by Korpela’s disclosure that “[t]he system

information message includes some mandatory data elements, which are called L3

message information elements in the GSM system,” Ex. 1005 at 5:1-3; Ex. 1003 at

¶ 165. Moreover, a person of ordinary skill in the art would have recognized that

use of such information would improve the scheme of Korpela. Ex. 1003 at ¶ 165.

In particular, the system information type 10 message of GSM 04.08 is described

as being used for voice group calls and the voice broadcast features of GSM 04.08,

see Ex. 1006 at 281 & 30 et seq., which would be additional improvements to the

scheme of Korpela. Ex. 1003 at ¶ 165. If a person of ordinary skill can implement

a predictable variation, Section 103 likely bars its patentability and, if a technique

has been used to improve one device, and a person of ordinary skill in the art

would recognize that it would improve similar devices in the same way, using the

technique is obvious unless its actual application is beyond his or her skill. KSR

Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Here, adding voice group calls

and the voice broadcast features of GSM 04.08 to the scheme of Korpela would

have improved that scheme, and a person of ordinary skill in art would have


37

recognized it would do so because it would have provided the user additional

functionality. Ex. 1003 at ¶ 165. Thus, even if Patent Owner were to argue that

Korpela does not disclose “cell information, wherein, for each cell of a plurality of

neighbor cells, said cell information comprises: at least one specific parameter

value for a first parameter,” that claim requirement would have been an obvious

variation of Korpela. Ex. 1003 at ¶ 166.

To the extent Patent Owner may argue that Korpela does not disclose the

claimed “index”, it would have been obvious to include this claim element in the

system information messages of Korpela. Ex. 1003 at ¶ 170. For example, use of

an index into a set of parameters was well known in the prior art. Ex. 1003 at ¶

170; U.S. Patent No. 6,192,244 to Abbadessa (Ex. 1009) at 8:55-59.

Moreover, system information message type 10 of GSM 04.08 includes a

parameter “<first frequency: bitstring(5)>”, which is the binary coding of a first

frequency number. Ex. 1003 at ¶ 171; Ex. 1006 at 462. GSM 04.08 explains that

the first frequency number is an index into the list of frequencies included in

System Information Message Type 5 and identifies the frequency to be used for

reselection of the cell identified by an associated BSIC. Ex. 1003 at ¶ 171; Ex.

1006 at 460-63. The field “first frequency” is therefore an index into the list of

frequencies provided in System Information Message Type 5. Ex. 1003 at ¶ 171.


38

System Information Message Type 14 of the GSM 04.08 specification,

though not directed to neighbor cell information, also employs the same supposed

compression technique recited in the claims neighbor cell message. Ex. 1003 at ¶

172. For example, the SI 14 Rest Octets of the System Information Message Type

14 include a “Reference Frequency List” (i.e., : a set of specific parameter values),

an HSN, or hopping sequence number (i.e., at least one specific parameter value

for a first parameter) and an ARFCN_NUMBER, which is an index into the

Reference Frequency List (i.e., an index for a second parameter). Ex. 1003 at ¶

172; Ex. 1006 at 453-54.

Thus, even if Patent Owner were to argue that Korpela does not disclose

employing an “index” into a set of parameters as claimed, to do so in the scheme of

Korpela would have been merely the combination of familiar elements according

to known methods, and an arrangement of old elements with each performing their

known function to achieve entirely predictable results. Ex. 1003 at ¶ 173. Indeed,

use of the system information elements of GSM 04.08 in the scheme of Korpela

would have been well within the level of ordinary skill in the art in 1998. Ex. 1003

at ¶ 173.

Moreover, as demonstrated above, Korpela suggests using the system

information elements of GSM 04.08 by its statement that “[t]he system information

message includes some mandatory data elements, which are called L3 message


39

information elements in the GSM system …”. Ex. 1005 at 5:1-3 (emphasis added);

Ex. 1003 at ¶ 174. A person of ordinary skill in the art would have therefore been

motivated to employ the information elements of the GSM 04.08 system

information messages in the scheme of Korpela. Ex. 1003 at ¶ 174. Thus, even if

Patent Owner were to argue that Korpela does not disclose “cell information,

wherein, for each cell of a plurality of neighbor cells, said cell information

comprises: … an index for a second parameter, said index indicating which value

of said set of specific parameter values is used for said second parameter” that

claim requirement would have been an obvious variation of Korpela. Ex. 1003 at ¶

175.

c. Means for Associating

To the extent Patent Owner may argue that Korpela does not disclose

“associating a specific value of said set of specific parameter values indicated by

one of said index with the corresponding second parameter of a neighbor cell,”

such functionality would have been obvious to include in the scheme of Korpela.

Ex. 1003 at ¶ 181. It would have been only common sense to include in the

scheme of Korpela the ability to use the additional neighbor cell information set

forth in Table I of Korpela, and that would necessarily include the ability to

associate a specific value from the set of specific parameter values in fields 32c

indicated by one of fields 32b with a corresponding parameter of a neighbor cell.


40

Korpela also specifically references the layer 3 technical specification of GSM

04.08, which includes at least two system information messages (types 10 and 14)

that employ an index into a set of parameters in order to communicate specific

parameters to mobile station. Ex. 1003 at ¶¶ 170-175. Thus, including in the

mobile station of Korpela the functionality required to actually use such indexes

would have been using known techniques for their usual and ordinary purpose to

achieve predictable results, and is suggested by the disclosure of Korpela. Ex.

1003 at ¶ 181. They therefore would have been an obvious modification of the

mobile station of Korpela, even if one were to assume that functionality is not

disclosed by Korpela. Ex. 1003 at ¶ 181.

To the extent Patent Owner may argue that the processing control block of

Korpela is not a microprocessor or the equivalent to the microprocessor of the 923

Patent, it would have been obvious to include the conventional microprocessor of

the 923 Patent in the scheme of Korpela. Ex. 1003 at ¶ 185. The use of

microprocessors in mobile phones by 1998 was known, Ex. 1003 at ¶ 185; U.S.

patent No. 6,002,940 to Richter (Ex. 1012) at 4:10-14; Fig. 1, and would have been

an obvious modification of Korpela. Ex. 1003 at ¶ 185. To use a microprocessor

in the mobile phone of Korpela would have been nothing more than the application

of ordinary skill and the use of a prior art structure for the same purpose it had

been used for in the prior art without any unexpected results. Ex. 1003 at ¶ 185.


41

To the extent Patent Owner may argue that Korpela does not disclose the

claimed “means for associating a specific value of said set of specific parameter

values indicated by one of said index with the corresponding second parameter of

a neighbor cell” because Korpela’s Figure 3a is not characterized as a

“compressed” format, it would have been obvious to include the claimed

functionality in the scheme of Korpela. Specifically, it would have been obvious

to compress Korpela’s neighbor cell information via an also-included lookup table

for common values, i.e., dictionary compression. Ex. 1003 at ¶ 186.

Dictionary compression was a well-known compression technique and one

frequently used in cellular communication systems at the time of the invention.

See e.g. Ex. 1009 at 8:55-59; Ex. 1006 at 455; Ex. 1008 at 114; Ex. 1018 at 4:19-

20, 5:33-63; Ex. 1003 at ¶ 187. Dictionary compression works by using a table of

common values and then replacing instances of the common values in the data set

with shorter indices into the table. Ex. 1018 at 1:45-56; Ex. 1017 at 2; Ex. 1003 at

¶ 188.

At the time of the invention, it would have been obvious to a person having

ordinary skill in the art to compress Korpela’s neighbor cell information via

dictionary compression. Ex. 1003 at ¶ 190. One of ordinary skill in the art would

recognize that dictionary compression could compress Korpela’s neighbor cell

information in much the same way as existing communication messages,


42

evidenced by the numerous prior art references that do so. See, e.g., Ex. 1018 at

4:19-20, 5:33-63; see also Ex. 1003 at ¶¶ 187, 190. Compressing Korpela’s

neighbor cell information would therefore have been the predictable application of

a known technique (dictionary compression) to improve similar devices (Korpela’s

mobile station) in the same way (reduced message size). Ex. 1003 at ¶ 190. One

skilled in the art would have also been motivated to use dictionary compression

because it would reduce size of the message, an explicit goal of Korpela’s system.

Ex. 1005 at 6:25-32, 7:30-33; Ex. 1003 at ¶ 190.

d. Claim 14

To the extent Patent Owner may argue that Korpela does not disclose “the

fast parameter comprises abase [sic] station identity code (BSIC),” it would have

been obvious to include such information in the system information messages of

Korpela. Ex. 1003 at ¶ 200. As demonstrated above, employing the system

information messages of GSM 04.08 in the scheme of Korpela would have been

obvious and suggested by Korpela itself, and such messages include a BSIC. Ex.

1003 at ¶¶ 172-175, 200. GSM 04.08 explains that “[e]ach SYSTEM

INFORMATION TYPE 10 message defines a list of cells and may contain further

information for cells of that list, a cell being identified by the pair of ARFCN and

BSIC of the BCCH.” Ex. 1006 at 282 (emphasis added); Ex. 1003 at ¶ 200. To

include such information as a BSIC in fields 32c of the modified system


43

information message of Korpela would have been merely using a known technique

for its usual purpose to achieve a predictable result, and therefore obvious. Ex.

1003 at ¶ 200.

B. Claims 11, 13 and 14 Are Unpatentable Over Shah

1. U.S. Patent No. 6,047,071 to Shah, (“Shah”) (Ex. 1007)

Shah issued on April 4, 2000 from Application No. 08/837,970, filed April

15, 1997. Shah is therefore prior art to the 923 Patent at least under Section

102(e). Ex. 1003 at ¶ 202. Shah relates to “maintaining, changing, and/or

updating of mobile phone parameters by a network service provider without

requiring intervention by the mobile phone user.” Ex. 1007 at 1:5-10; Ex. 1003 at

¶ 203. Shah is directed to a process for securely downloading network parameters

to a mobile phone “in accordance with established industry standards (TIA/EIA/IS-

683).” Ex. 1007 at Abstract; Ex. 1003 at ¶ 204. Shah notes that over-the-air

service provisioning (OTASP) for mobile phones, both cellular and PCS, allows a

network service provider to download information to a mobile phone consistent

with the TIA IS-683 standard. Ex. 1007 at 1:14-20; Ex. 1003 at ¶ 204.

Shah explains that one type of information that can be downloaded using

prior art procedures is a “Preferred Roaming list”. Ex. 1007 at 1:50-57; Ex. 1003

at ¶ 205. Shah also discloses a roaming list update in his scheme pursuant to IS-

683-A. Ex. 1007 at 7:38-42; Ex. 1003 at ¶ 205. IS-683-A is a later version of IS-


44

683 that existed at the time of Shah, see Ex. 1008 at 123 (“Document History”),

and is included herewith as Ex. 1008 (“IS-683-A”). IS-683-A explains that the

Preferred Roaming List “contains information to assist the mobile station system

selection and acquisition process.” Ex. 1008 at 77 (3-42); Ex. 1003 at ¶ 206. IS-

683-A also states that the Preferred Roaming List “indicates which systems the

mobile station should use (preferred systems). It also indicates which systems

should not be used by the mobile station (negative systems). . . .” Ex. 1008 at 114

(C-1); Ex. 1003 at ¶ 206.

The structure of the Preferred Roaming List is set forth in IS-683-A, and

includes, among other things, the “ACQ_TABLE” and the “SYS_TABLE”. Ex.

1003 at ¶¶ 207-208. IS-683-A states that the “ACQ_TABLE” is the “Acquisition

Table,” which contains “Acquisition Records.” Ex. 1008 at 78 (3-43). Each

Acquisition Record “contains parameters that the mobile station can use to acquire

a system.” Ex. 1008 at 79 (3-44). Acquisition Records can vary depending on the

type of system associated with the record, but contain information necessary to

communicate with the cells of the referenced system, such as system type and

CDMA channel number. See Ex. 1006, 79-83 (3-44-48); Ex. 1003 at ¶ 208.

IS-683-A also states that the “SYS_TABLE is the “System Table,” which

“contains parameters that the mobile station can use for identifying the acquired

system, for determining whether the acquired system is the optimal system on


45

which to operate, and for determining the mobile station’s roaming status.” Ex.

1008 at 84 (3-49). IS-683-A states that the System Table includes a “System

Identification (“SID”) that “is set to the SID of the system associated with this

record.” Ex. 1008 at 84 (3-49). A SID is used to identify all of the cells of a

cellular system, such as a CDMA system. Ex. 1003 at ¶ 209; Ex. 1008 at 13 (1-1)

and 16 (1-4). The System Table also includes geographic information that

indicates to the phone which systems, and therefore which cells, are nearby. Ex.

1003 at ¶ 209; Ex. 1008 at C-1, C-2. IS-683-A also states that the System Table

includes a field called “ACQ_INDEX,” which is “the index of the Acquisition

Record that specifies the acquisition parameters for the system associated with this

record.” Ex. 1008 at 85 (3-50); Ex. 1003 at ¶ 209.

Shah discloses an example of a mobile phone that can be used with his

invention, which example includes, among other things, an antenna, a receiver and

a processor. Ex. 1003 at ¶ 210; Ex. 1008 at Fig. 1.

2. Claim 11 Is Anticipated By Shah

a) Mobile Communication Means

The preamble of claim 11 recites “[a] mobile communication means for

communication with a cellular telecommunication network, comprising”. Ex. 1003

at ¶ 211. Shah discloses a mobile phone that communicates with a cellular

network, such as a CDMA network. Ex. 1007 at 1:5-10; 4:25-30; 4:52-59; Fig. 1;


46

Ex. 1003 at ¶ 212. Shah therefore discloses a “mobile communication means …”.

Ex. 1003 at ¶¶ 211-213.

b) Means for Receiving

Claim 11 also requires a “means for receiving a neighbor cell information

message”. Ex. 1003 at ¶ 214. The mobile phone of Shah is described as receiving

a “SSPR Download Request Message,” pursuant to IS-683-A. Ex. 1007 at 4:16-

30, 7:38-47; see also Figure 2 (at 208: “Follows SSPR Procedure For Roaming

List Update (See IS-683-A)”); 1:37-44; Ex. 1003 at ¶¶ 219-220. A person of

ordinary skill in the art would understand that the Selection for Preferred Roaming

(SSPR) procedure of IS-683-A is a procedure for downloading all or some of the

Preferred Roaming List defined in IS-683-A. Ex. 1003 at ¶ 221; see Ex. 1008 at 47

(3-12); 74-75 (3-39-40); see also id. at 117 (C-4); see also U.S. Patent No.

6,529,729 to Nodoushani et al. (Ex. 1013) at 8:25-28. In the Selection for

Preferred Roaming (SSPR) procedure of IS-683-A, the Preferred Roaming List is

downloaded to the mobile phone using the “SSPR Download Request Message.”

Ex. 1003 at ¶ 221; Ex. 1008 at 97-109 (4-11-23).

The “SSPR Download Request Message” containing a Preferred Roaming

List as defined in IS-683-A is a “neighbor cell information message” because it is

a message that contains information a mobile station needs to know when

communicating with a neighbor cell, including that information set forth in the


47

Acquisition Table and the System Table. Ex. 1003 at ¶ 222. For example, the

Acquisition Table contains cell parameters which the mobile station needs to know

when communicating with a particular cell, such as the Acquisition Records for the

cells of neighboring systems, including system type, number of channels and

cellular CDMA channels. Ex. 1003 at ¶ 223; Ex. 1008 at 79-83 (3-44-48). The

System Table contains cell parameters which the mobile station needs to know

when communicating with a particular cell, such as the system ID and acquisition

index for the cells of neighboring systems. Ex. 1003 at ¶ 224; Ex. 1008 at (3-49-

50). The “SSPR Download Request Message” containing a Preferred Roaming

List as defined in IS-683-A is therefore a “neighbor cell information message,” and

Shah discloses the function of receiving a neighbor cell information message”.

Ex. 1003 at ¶¶ 219-225.

Shah discloses a mobile phone having an antenna, a receiver and a

processor. Ex. 1007 at Fig. 1; 3:61-4:5; Ex. 1003 at ¶ 216. A person of ordinary

skill in the art, moreover, would understand the “processor 34” of Shah to be a

microprocessor, since it is described as processing information and also because of

the necessity to include a small processing device in a mobile station. Ex. 1003 at

¶ 216.

Moreover, to the extent there are differences between the structure of Shah

and the corresponding structure for this claim element, they would be insubstantial,


48

since both perform the claimed function in substantially the same way (by

receiving, demodulating and decoding the message, see Ex. 1005 at 8:31-36) to

achieve the same result (reception of the included neighbor cell information) as the

generic structures of the 923 Patent, and a person of ordinary skill in the art would

have considered the structures of Shah to be interchangeable with those of the 923

Patent, since both are simply conventional. Ex. 1003 at ¶ 217; Ex. 1001 at 6:16-

39; Ex. 1005 at 10:64-11:14. Shah therefore discloses at least equivalent structure

for this claim element. Ex. 1003 at ¶ 217.

Accordingly, Shah discloses “means for receiving a neighbor cell

information message”. Ex. 1003 at ¶¶ 214-226.

c) Wherein Clause

Claim 11 also requires “wherein said neighbor cell information message

comprises: a set of specific parameter values; and cell information, wherein, for

each cell of a plurality of neighbor cells, said cell information comprises: at least

one specific parameter value for a first parameter, and an index for a second


values is used for said second parameter”.

The SSPR Download Request Message containing a Preferred Roaming List

as defined in IS-683-A includes an Acquisition Table, which Acquisition Table

includes a set of Acquisition Records. Ex. 1003 at ¶ 228; Ex. 1008 at 77-82 (3-42-


49

47). Each Acquisition Record can include one or more numerical values, including

number of channels and cellular CDMA channel number. Ex. 1003 at ¶ 228; Ex.

1008 at 3-44-48. The Acquisition Records of the SSPR Download Request

Message are therefore “a set of specific parameter values”. Ex. 1003 at ¶ 228.


as defined in IS-683-A also includes a System Table, which System Table includes

a System Identification (“SID”) and an Acquisition Record Index

(“ACQ_INDEX”). Ex. 1003 at ¶ 229; Ex. 1008 at 84-85 (3-49-50). The System

Identification identifies a particular cellular system. Ex. 1003 at ¶ 229; Ex. 1008 at

3-49. The Acquisition Record Index is an index into the Acquisition Records of

the Acquisition Table and points to the particular Acquisition Record associated

with the identified system. Ex. 1003 at ¶ 229; Ex. 1008 at 85 (3-50). The System

Identification and the Acquisition Record Index are “cell information” because

they are information concerning a nearby cell or nearby cells. Ex. 1003 at ¶ 230.

The System Identification and the Acquisition Record Index are cell

information “for each cell of a plurality of neighbor cells” because they are cell

information applicable to each of a plurality of nearby cells in a particular cellular

system. Ex. 1003 at ¶ 231.

The System Identification is “[a] number uniquely identifying a wireless

system.” Ex. 1008 at 16 (1-4). Thus, the SID identifies the plurality of


50

neighboring cells associated with the system identified by the System Information.

Ex. 1003 at ¶ 232. The System Identification is therefore “cell information,

wherein, for each cell of a plurality of neighbor cells, said cell information

comprises: at least one specific parameter value for a first parameter” because it

is a numerical parameter for a plurality of neighbor cells. Ex. 1003 at ¶ 232.

The Acquisition Index is “the index of the Acquisition Record that specifies

the acquisition parameters for the system associated with this record,” Ex. 1008 at

85 (3-50), and is therefore “and an index for a second parameter, said index

indicating which value of said set of specific parameter values is used for said

second parameter” because it indicates which acquisition record parameters should

be used to access the neighbor cells of the associated system. Ex. 1003 at ¶ 233.


as defined in IS-683-A therefore also includes “cell information, wherein, for each

cell of a plurality of neighbor cells, said cell information comprises: at least one

specific parameter value for a first parameter, and an index for a second


values is used for said second parameter”. Ex. 1003 at ¶ 234. Shah therefore

discloses the “wherein said neighbor cell information message comprises …”

claim element. Ex. 1003 at ¶¶ 227-235.

d) Means for Associating


51

Claim 1 also requires a “means for associating a specific value of said set of


second parameter of a neighbor cell”. Shah discloses a “processor 34” that

“accesses information such as options for various features from non-volatile

memory 50 during operation”. Ex. 1007 at 4:12-14. In order to make use of the

information of the Preferred Roaming List the processor of Shah would necessarily

have to use the Acquisition Index as a pointer to the correct Acquisition Record of

the Acquisition Table, thereby associating the specific parameter values of that

Acquisition Record (such as number of channels, cellular CDMA channel number,

and number of PCS frequency blocks; Ex. 1008 at 79-83 (3-44-48)). A person of

ordinary skill in the art would therefore understand that the processor 34 of Shah is

necessarily configured to use the information of the Preferred Roaming List as

parameters for neighboring cells. Ex. 1003 at ¶ 237. A person of ordinary skill in

the art would also understand that this operates as a form of compression: instead

of providing the full contents of the Acquisition Record, the Preferred Roaming

List can instead merely reference the Record, thus reducing the amount of

information that must be transmitted. See Ex. 1003 at ¶¶ 187, 237. This type of

compression was well-known in art at the time of the invention. See, e.g. Ex. 1009

at 8:55-59; Ex. 1006 at 455; Ex. 1008 at 114; Ex. 1003 at ¶ 237. Shah therefore

discloses structure that is at least equivalent to the Patent Owner’s identification of


52

structure corresponding to this claim limitation (including the algorithm “using the

parameter value specified by the index for the second parameter”). Ex. 1003 at ¶¶

237, 240. The mobile phone of Shah therefore necessarily included the

functionality of this claim element. Ex. 1003 at ¶ 237.

A person of ordinary skill in the art, moreover, would understand the

“Processor 34” of Shah to be a microprocessor, since it is described as processing

information and also because of the necessity to include a small processing device

in a mobile station. Ex. 1003 at ¶ 239.

Moreover, to the extent one could argue otherwise, the “processor 34” of

Shah is equivalent to the microprocessor of the 923 Patent, which patent suggests

that the recited hardware can be part of “any mobile unit or mobile station capable

of communicating through the radio interface of a cellular telecommunications

network. Ex. 1001 at 6:62-64; Ex. 1003 at ¶ 240. The 923 Patent therefore

discloses merely conventional hardware that performs the same function as the

disclosed microprocessor in substantially the same way (by using an index to

access information in a table) to achieve the same result (retrieve cell information

from those fields). Ex. 1003 at ¶ 240. Indeed, it was common even before 1998 to

have mobile phones of differing designs operating on the same cellular network, so

a person of ordinary skill in the art would have considered the structures disclosed

in the 923 Patent and Shah to be interchangeable. Ex. 1003 at ¶ 240. Shah


53

therefore discloses a structure that is at least equivalent to the disclosed

corresponding structure for this claim element. Accordingly, Shah discloses or

renders obvious a “means for associating a specific value of said set of specific

parameter values indicated by one of said index with the corresponding second

parameter of a neighbor cell”. Ex. 1003 at ¶ 242.


Claim 13 requires “[t]he mobile communication means of clam [sic] 11,

wherein the mobile communication means comprises a cellular telephone.” As

demonstrated above, Shah discloses a mobile telephone operating in a cellular

system, such as a CDMA based network. Ex. 1007 at 4:25-26; Ex. 1003 at ¶ 244.

Shah therefore discloses this claim element. Ex. 1003 at ¶ 245.


Claim 14 requires “[t]he mobile communication means of claim 11, wherein

the fast [sic] parameter comprises abase [sic] station identity code (BSIC).”

Shah’s System ID is a code used to identify each of the base stations in a particular

system by distinguishing them from base stations of other systems. Ex. 1003 at ¶

247. Shah therefore discloses this claim element. Ex. 1003 at ¶ 247. Accordingly,

claims 11, 13 and 14 are anticipated by Shah.

5. Claim 11, 13 and 14 Are Obvious Over Shah

a) Means for Receiving


54

To the extent Patent Owner may argue that Shah does not disclose the

structure of the “means for receiving,” it would have been obvious to include the

conventional antenna, receiver, and microprocessor of the 923 Patent in the scheme

of Shah for the same reasons noted above with respect to Korpela. Ex. 1003 at ¶¶

148, 218.

b) Neighbor Cell Information Message

Further, to the extent Patent Owner may argue that the Preferred Roaming

List of IS-683-A is not sufficiently disclosed by Shah, it would have been obvious

to combine the SSPR Download Request Message containing a Preferred Roaming

List of IS-683-A with the scheme of Shah, since Shah is explicitly directed to over

the air updating of the parameters using that standard. Ex. 1003 at ¶¶ 249-251.

c) Means for Associating

To the extent Patent Owner may argue Shah does not disclose “associating a

specific value of said set of specific parameter values indicated by one of said

index with the corresponding second parameter of a neighbor cell,” it would have

been obvious to include it that scheme. Ex. 1003 at ¶¶ 181, 238. In order for the

mobile phone of Shah to roam to a cell in a neighboring network it would have had

to access the Acquisition Record associated with that network, and to do so

requires use of the Acquisition Index. Ex. 1003 at ¶ 238. Shah suggests including

such functionality in his phone, and a person of ordinary skill in the art would have


55

been motivated to do so, by the disclosure of Shah downloading the Preferred

Roaming List of IS-683-A. Ex. 1003 at ¶ 238. Including such functionality in the

scheme of Shah would have been only the addition of known functionality for its

known purpose to achieve predictable results, all well within the level of skill in

the art, as IS-683-A evidences. Ex. 1003 at ¶ 238.

To the extent Patent Owner may argue that Shah does not disclose the

structural requirements of this claim element, it would have been obvious to

include a microprocessor in the scheme of Shah for the same reasons noted above

with respect to Korpela. Ex. 1003 at ¶¶ 185, 241.

d) BSIC

To the extent Patent Owner may argue claim 14 is not satisfied by Shah, it

would have been obvious to include base station specific information, including a

code that specifically identifies a particular base station, into the messages of those

schemes. Ex. 1003 at ¶¶ 200, 248. For example, Shah states that his scheme may

also employ communications compliant with the TIA/EIA/IS-95 standard, Ex.

1007 at 5, 47-50; 6:45-48; 6:60-63, which requires the communication of a

message that includes a base station identification code (“BASE_ID”). See Ex.

1009 at 894 (7-170); Ex. 1003 at ¶ 248. It would have been obvious to include that

information and the SSPR Download Request Message in a single message, since

both sets of information were known to be needed by the mobile station for


56

efficient and consumer friendly operation. Ex. 1003 at ¶ 248. Moreover, it would

have been within the level of skill in the art to combine these messages. Ex. 1003

at ¶ 248. There also would have been reason to do so, at least when a mobile

station first registers with a system, since it would necessarily need to be provided

the information in both messages and putting that information into one message

would be more efficient. Ex. 1003 at ¶ 248.

C. Claim 11, 13 and 14 Are Obvious Korpela in view of Shah

It also would have been obvious to combine the neighbor cell information

messages and mobile phone structures of Korpela with the techniques for

compressing information downloaded to a mobile phone as employed in the SSPR

Download Request Message disclosed in Shah. Ex. 1003 at ¶ 253. Both Korpela

and Shah are directed to the problem of efficiently downloading information over

the air to a mobile phone, Ex. 1005 at 4:1-4, Ex. 1007 at 1:5-10, as is the 923

Patent, Ex. 1001 at 2:2-4; Ex. 1003 at ¶ 253. A skilled artisan would therefore

have looked to both Korpela and Shah when considering such a problem.

Moreover, the limited bandwidth of mobile connections was well known, U.S.

Patent No. 6,192,244 to Abbadessa (“Abadessa”) (Ex. 1009) at 8:39-48, so such a

person would have been motivated to employ the technique of communicating a

set of specific parameters and an index, as taught by Shah, in the modified

neighbor cell information message of Korpela in order to reduce the amount of


57

information necessary to transmit, as was known, see, e.g., Ex. 1009 at 8:49-59;

Ex. 1003 at ¶ 253; see also Ex. 1003 ¶¶ 187-188 (discussing prior art compression

techniques for communication systems). As demonstrated above, both Korpela

and Shah disclose the element of the claims analyzed here. However, to the extent

Patent Owner may argue that one or the other of these references does not include

some claim element, it would have been obvious to combine Korpela and Shah in

the manner required by these claims. Ex. 1003 at ¶ 253.

V. CONCLUSION

Because the information presented in this petition shows that there is a

reasonable likelihood that the Petitioner would prevail with respect to at least one

of the claims challenged in the petition, the Petitioner respectfully requests that a

Trial be instituted and that claims 11, 13, and 14 be canceled as unpatentable.

Dated: January 16, 2015 Respectfully Submitted,

/Joseph A. Micallef/ Joseph A. Micallef Registration No. 39,772 Sidley Austin LLP 1501 K Street NW Washington, DC 20005


PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 6,819,923

Attachment A:

Proof of Service of the Petition


CERTIFICATE OF SERVICE

I hereby certify that on this 16th day of January 2014, a copy of this Petition,

including all attachments, appendices and exhibits, has been served in its entirety

by Federal Express on the following counsel of record for patent owner:

The correspondence address of record for the ’923 Patent:

Martin & Ferraro, LLP 1557 Lake O’Pines Street, NE Hartville, OH 44632

The Patent Owner: Cellular Communications Equipment LLC 2400 Dallas Parkway, Suite 200 Plano, TX 75093

The attorneys of record for Cellular Communications Equipment LLC in Civil Action No. 6:14-cv-31 Nelson Bumgardner Casto, P.C. 3131 West 7th Street, Suite 300 Fort Worth, TX 76107 Ward & Smith Law Firm PO Box 1231 1127 Judson Road, Suite 220 Longview, TX 75606

Dated: January 16, 2015 Respectfully submitted,

/ Joseph A. Micallef / Joseph A. Micallef Registration No. 39,772 Attorney for Petitioner


2

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 6,819,923

Attachment B:

List of Evidence and Exhibits Relied Upon in Petition


1

Exhibit # Reference Name

1001 U.S. Patent No. 6,819,923

1002 File History of U.S. Patent No. 6,819,923

1003 Declaration of Thomas La Porta

1004 Curriculum Vitae of Thomas La Porta

1005 U.S. Patent No. 6,510,146 to Korpela et al.

1006 GSM 04.08 v. 6.1.1 MS-BSS Interface; Mobile Radio Interface Layer 3 Specification

1007 U.S. Patent No. 6,047,071 to Shah

1008 TIA/EIA/IS-683-A: Over-the-Air Service Provisioning of Mobile Stations in Spread Spectrum Systems

1009 U.S. Patent No. 6,192,244 to Abbadessa

1010 U.S. Patent No. 6,434,389 to Meskanen et al.

1011 U.S. Patent No. 6,188,911 to Wallentin et al.

1012 U.S. Patent No. 6,002,940 to Richter

1013 U.S. Patent No. 6,529,729 to Nodoushani et al.

1014 GSM 1.04 Technical Specification, V. 5.0.0

1015 Plaintiff’s Opening Brief on Claim Construction, Civil Action No. 6:13-cv-507-LED

1016 Black’s Law Dictionary, 5th Ed. (1979)

1017 Philip Gage, A New Algorithm for Data Compression, 12:2 THE C USERS JOURNAL 23 (Feb. 1994)

1018 U.S. Patent No. 5,701,302 to Geiger

1019 IBM Dictionary of Computing (George McDaniel ed., 1994)


2

Exhibit # Reference Name

1020 Prior Cases for Thomas La Porta

1021 Order Dismissing All Claims Without Prejudice, Civil Action No. 6:14-31-LED

1022 TIA/EIA-95-B: Mobile Station-Base Compatibility Standard for Dual-Mode Spread Spectrum Systems (Oct. 31, 1998)

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