UNITED STATES PATENT AND TRADEMARK OFFICE · PDF fileHUAWEI TECHNOLOGIES CO., ... GSM, US...

Samsung Exhibit 1003,

UNITED STATES PATENT AND TRADEMARK OFFICE ___________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

___________________

SAMSUNG ELECTRONICS CO., LTD. Petitioner

v.

HUAWEI TECHNOLOGIES CO., LTD.

Patent Owner

___________________

Case IPR2017-TBD U.S. Patent Nos. 8,412,197; 8,996,003, and 8,639,246

___________________

PETITIONER’S EXHIBIT 1003

DECLARATION OF TIM ARTHUR WILLIAMS, PH.D.


TABLE OF CONTENTS

Page

I. INTRODUCTION ........................................................................................... 3

II. PROFESSIONAL BACKGROUND ............................................................... 3

III. SUMMARY OF OPINIONS ........................................................................... 5

IV. LEGAL UNDERSTANDING ......................................................................... 6

B. The Person of Ordinary Skill in the Art ................................................ 7

C. Obviousness ......................................................................................... 10

D. Claim Construction.............................................................................. 12

V. TECHNOLOGY BACKGROUND ............................................................... 14

B. The Third Generation Partnership Project (“3GPP”) .......................... 14

C. UMTS (“3G”) Network Architecture .................................................. 16

D. LTE (“4G”) Network Architecture ..................................................... 19

E. Cell Reselection ................................................................................... 21

VI. THE CELL RESELECTION PATENTS ...................................................... 24

B. Claim Construction.............................................................................. 25

VII. OVERVIEW OF THE PRIOR ART REFERENCES ................................... 27

A. R2-075161 ........................................................................................... 28

B. Eerolainen ............................................................................................ 32

C. R2-080338 ........................................................................................... 36

VIII. INVALIDITY ANALYSIS ........................................................................... 37

A. Ground 1: Claims 1-2, 5-9, and 13-15 of the ’197 Patent, Claims 1-20 of the ’003 Patent, and Claims 1-20 of the ’246 Patent Are Obvious In View of R2-075161 and R2-080338 .............. 37

B. Ground 2: Claims 7-9, and 14-15 of the ’197 Patent, Claims 1-20 of the ’003 Patent, and Claims 11-20 of the ’246 Patent Are Obvious In View of R2-075161 and R2-080338 and in further view of Eerolainen .............................................................................. 87

C. Secondary Considerations ................................................................. 102

IX. CONCLUSION ............................................................................................ 103


I. INTRODUCTION

1. I have been asked to provide this declaration to address the invalidity

of U.S. Patent Nos. U.S. Patent Nos. 8,412,197 (the “’197 Patent”); 8,996,003 (the

“’003 Patent”), and 8,639,246 (the “’246 Patent”) (collectively, “Cell Reselection

Patents”) in connection with the Petition for Inter Partes Review submitted by

Samsung Electronics Co., Ltd. (“Samsung” or “Petitioner”). I am being

compensated for the work that I perform in this matter at my consulting rate of

$590 per hour. My compensation does not depend on the outcome of the matter.

II. PROFESSIONAL BACKGROUND

2. The cell reselection patents relate to mobile telecommunications

technology, and in particular, to a procedure called cell reselection, where a mobile

device determines which cell to connect to as it moves from one network to

another. In my opinion, my education and experience makes me qualified to offer

opinions about this technology.

3. I have over 40 years of experience working in the telecommunications

industry. I worked at Motorola from 1976 to 1991 during which time I was the

Senior Technical Manager for Integrated Circuit implementations of the following

cellular standards: GSM, US TDMA, Japanese Digital Cellular, and CDMA.

4. My career has included the design, implementation and sale of many

wireless components and systems, including two-way paging, IEEE 802.11, and 60


GHz wireless LAN. My career has included the design, implementation and sale

of many telephony components and systems, including Integrated Circuits (“ICs”)

for telephone switch linecards, VoIP software and protocols, ICs for cellular and

digital voice communications, and ICs and algorithms for voice compression.

5. My second startup company, Picazo Communications, built VoIP

equipment including hardware and software. As the chief technology officer I was

responsible for development of the technology and the products. Picazo was an

early innovator in the VoIP space. Its products used H.323 and early versions of

SIP to provide PBX-like functionality. Picazo’s products included hard phones,

softphones and switches for voice communication. Picazo Communications was

sold to Intel Corporation.

6. My educational background includes a BSEE from Michigan

Technological University (1976), as well as MSEE (1982) and a Ph.D. degree in

Electrical Engineering from the University of Texas at Austin (1985). My

Master’s thesis was focused on digital voice compression, a critical element of

cellular voice technology.

7. I have prepared expert reports, sat for depositions, and provided

expert testimony regarding cellular telephony and VoIP technology and

networking and cellular protocols and systems in patent litigation cases over the


past 15 years. Some of this experience is shown in my CV attached as Exhibit

1004.

8. I have also attended dozens of standards meetings and was Motorola’s

representative to several standards bodies. I was also working very closely with

various telephony standards as part of my work at Motorola and Picazo

Communications. I am familiar with the structure, operation, and procedures of

many standards bodies, including IEEE, IETF, ITU, 3GPP, and ETSI. I am also

familiar with the procedures these organizations use to solicit, exchange, and

publish working documents.

9. In particular, based on my experience, I am familiar with how 3GPP

standards are developed across the working groups and how 3GPP documents are

drafted, distributed, stored, and made available to the public without restriction.

III. SUMMARY OF OPINIONS

10. I understand that Samsung’s Petitions challenge claims 1-20 of the

’003 Patent, claims 1-20 of the ’246 Patent, and claims 1-2, 5-9, and 13-15 of the

’197 Patent. In my opinion these claims are invalid as obvious based on the

following grounds:

• Ground 1: R2-075161 in combination with R2-080338 renders obvious claims 1-20 of the ’003 Patent, claims 1-20 of the ’246 Patent, and claims 1-2, 5-9, and 13-15 of the ’197 Patent.

• Ground 2: R2-075161 in combination with R2-080338, and in further combination with Eerolainen renders obvious claims 1-20 of the ’003


Patent, claims 11-20 of the ’246 Patent, and claims 7-9 and 14-15 of the ’197 Patent.

11. The remainder of this declaration sets forth my detailed opinions as to

why the challenged claims are invalid. In Section IV, I provide my understanding

of legal principles underlying issues of claim construction and invalidity. In

Section V, I provide an overview of technological principles relevant to the subject

matter of the Cell Reselection Patent challenged claims. In Section VI, I provide

an overview of the Cell Reselection Patents themselves. In Section VII, I describe

the specific prior art references that I believe render the challenged claims obvious.

And in Section VIII, I provide my opinions on how these references render the

claims obvious, and why a person of ordinary skill in the art at the time of the

invention would have been motivated to combine the teachings of the prior art.

IV. LEGAL UNDERSTANDING

12. I am not a lawyer and do not intend to provide legal opinions in

connection with this proceeding. However, I understand that issues such as

invalidity and claim construction are analyzed based on certain legal standards.

Counsel for Petitioner has provided me with an understanding of these principles,

and I have applied them in my analysis of the Cell Reselection Patents.


B. The Person of Ordinary Skill in the Art

13. I understand that a person of ordinary skill in the art is a hypothetical

person who is presumed to be aware of all pertinent art, thinks along conventional

wisdom in the art, and is a person of ordinary creativity—not an automaton.

14. I have been asked to consider the level of ordinary skill in the field

that someone would have had at the time the claimed invention was made. In

deciding the level of ordinary skill, I considered the following:

• the levels of education and experience of persons working in the field;

• the types of problems encountered in the field; and

• the sophistication of the technology.

15. I understand that the Cell Reselection Patents claim foreign priority to

a Chinese patent application filed April 9, 2008. I also understand that, in

connection with the district court litigation, Patent Owner has taken the position

that the conception date for the alleged inventions in some of the challenged claims

is slighltly, but not significantly, before this date. Accordingly, I have used April

2008 as the time of the invention for purposes of determining the level of ordinary

skill in the art. Any slight variation in months for different claims does not affect

my opinion regarding the level of ordinary skill in the art, or any of my opinions

below.


16. In my opinion, a person of ordinary skill in the art at that time would

have been a person with at least (1) a Master’s degree in electrical engineering,

computer science, or a related field and (2) at least two years experience working

with cellular telephony systems.

17. Based on my work in the mobile telecommunications industry, this

level of education and experience is commensurate with that of engineers who

were working on 3GPP standards development in the April 2008 timeframe. These

engineers typically had advanced degrees in fields that underlie mobile

telecommunications technology, including physics, math, electrical engineering,

and computer science. The participants in the standards development process also

typically had at least 2-3 years of experience of hands-on work in the field.

18. This level of education and experience allowed participants to address

typical problems that arose in the context during the standards development

process. These problems involved integrating different aspects of the standards,

integrating different networks, and developing procedures that allowed mobile

devices and networks to communicate and interoperate. An advanced degree in

physics, electrical engineering, or computer science provided the technical

background an engineer needed to address these problems, and 2-3 years of work

experience in cellular or radio communications systems provided hands-on


experience developing the specific technology underlying the 3GPP standards and

the ’166 Patent.

19. In my opinion, the technology disclosed and claimed in the Cell

Reselection Patents is not particularly sophisticated such that a person of ordinary

skill in the art at the time of the invention would need additional education or work

experience in order to understand it. As discussed in more detail below, the

alleged invention of the Cell Reselection Patents combines procedures that were

known to those in the art: one procedure for obtaining a priority list of cells from

an LTE network, and another procedure for using that priority list for cell

reselection on a non-LTE network before an expiration time. An engineer with the

background discussed above would have been very familiar with and capable of

developing, implementing, and combining these types of known procedures. This

was a very common exercise for engineers involved in the standard development

process, because it was obviously necessary that different parts of the standard are

compatible and able to interwork with one another.

20. Accordingly, it is my opinion that a person of ordinary skill in the art

at the time of the invention would have been a person with at least (1) a Master’s

degree in electrical engineering, computer science, or a related field and (2) at least

two years experience working with cellular telephony systems.. As of April 2008,

I met at least these qualifications.


C. Obviousness

21. I understand that a patent claim is invalid if the claimed invention

would have been obvious to a person of ordinary skill in the field at the time the

application was filed. This means that even if all of the requirements of the claim

cannot be found in a single prior art reference that would anticipate the claim, the

claim can still be invalid.

22. To obtain a patent, a claimed invention must have, as of the priority

date, been nonobvious in view of the prior art in the field. I understand that an

invention is obvious when the differences between the subject matter sought to be

patented and the prior art are such that the subject matter as a whole would have

been obvious at the time the invention was made to a person having ordinary skill

in the art.

23. I understand that to prove that prior art, or a combination of prior art,

renders a patent obvious, it is necessary to: (1) identify the particular references

that singly, or in combination, make the patent obvious; (2) specifically identify

which elements of the patent claim appear in each of the asserted references; and

(3) explain how the prior art references could have been combined to create the

inventions claimed in the asserted claim.

24. I understand that certain objective indicia can be important evidence

regarding whether a patent is obvious or nonobvious. Such indicia include: (1)


commercial success of products covered by the patent claims; (2) a long-felt need

for the invention; (3) failed attempts by others to make the invention; (4) copying

of the invention by others in the field; (5) unexpected results achieved by the

invention as compared to the closest prior art; (6) praise of the invention by the

infringer or others in the field; (7) the taking of licenses under the patent by others;

(8) expressions of surprise by experts and those skilled in the art at the making of

the invention; and (9) the patentee proceeded contrary to the accepted wisdom of

the prior art.

25. For the reasons I set out below, in my opinion, the prior art references

demonstrate a strong case of obviousness against the Cell Reselection Patents.

26. Should Patent Owner assert that secondary considerations support a

finding of non-obviousness, I reserve the right to submit a Declaration addressing

those new assertions.

27. I understand that in evaluating the validity of the Cell Reselection

Patent claims, the content of a patent or printed publication prior art should be

interpreted the way a person of ordinary skill in the art would have interpreted the

prior art as of the claimed foreign priority date, April 9, 2008. My full analysis

below is based upon these understandings.


D. Claim Construction

28. I have been instructed by counsel on the law regarding claim

construction and patent claims, and understand that a patent may include two types

of claims––independent claims and dependent claims. An independent claim

stands alone and includes only the features it recites. A dependent claim can

depend from an independent claim or another dependent claim. I understand that a

dependent claim includes all the features that it recites in addition to all of the

features recited in the claim from which it depends.

29. I understand that in this inter partes review the claims must be given

their broadest reasonable interpretation, but that interpretation must be consistent

with the patent specification.

30. In certain cases, I understand that the inventor may provides a special

meaning, or lexicography, for a claim limitation. I understand that if there are

specific statements in the specification that define the invention, those statements

are strong evidence of a definition for a term.

31. Additionally, I understand and have been instructed that, when a

claim’s recitation is purely functional and does not include sufficiently definite

structure for performing the function claimed, the term is a “means-plus-function”

claim. It is my understanding that means-plus-function claims are construed using

a two-step process: first, determination of the claimed function, and second,


identification of the corresponding structure. If the term is understood by a person

or ordinary skill in the art to provide sufficiently definite structure, however, this

two-step process is not followed.

32. I understand and have been instructed that, where the claim uses the

word “means,” there is a presumption that it is a means-plus-function claim term. I

also understand and have been instructed that an applicant for a patent must

disclose adequate structure in the specification to perform the recited function, and

that if adequate structure is not recited, the claim is indefinite. I am further

instructed that when the corresponding structure is a general purpose computer or

microprocessor, the specification must disclose the algorithm or process to be

performed by the general purpose computer or microprocessor, or the claim is

indefinite.

33. In this Declaration, I have used the broadest reasonable interpretation

standard when interpreting the claim terms. I reserve my right to amend or alter

my analysis and opinions in view of the Patent Owner’s proposed claim

constructions, if any.


V. TECHNOLOGY BACKGROUND

34. This section provides an overview of the technology underlying the

Cell Reselection Patents, including a summary of the standard development

process that led to modern cellular telecommunications networks.

35. The information that I have provided in this section was known as of

the alleged conception date of the Cell Reselection Claims, on or about April 9,

2008. Thus, these descriptions represent what a person of ordinary skill in the art

would have considered the state of the art at that time.

B. The Third Generation Partnership Project (“3GPP”)

36. The Third Generation Partnership (“3GPP”) was formed to coordinate

and facilitate the development of standards for different generations of cellular

telecommunications technology, including GSM (“2G”), UMTS (“3G”), LTE

(“4G”), and LTE Advanced (“LTE-A”). 3GPP develops these standards in the

form of technical specifications that govern communication between mobile

devices and network elements like base stations. It was recognized early on that

standardization was important to cellular telecommunications technology because

it ensured consistency across different mobile network operators and mobile device

manufactures. As a simple example, standardization allows a phone manufactured

by Motorola and connected to a network operated by AT&T to communicate


seamlessly with a phone manufactured by Samsung and connected to a network

operated by Verizon.

37. The 3GPP standard development process is an ongoing, collaborative

effort involving hundreds of engineers from dozens of companies. 3GPP is

organized into “working groups” whose members submit written contributions and

discussion documents, ultimately capturing accepted proposals and changes in

Technical Report (“TR”) and Technical Specifications (“TS”) documents. 3GPP

captures updates to the various TR and TS documents in different releases, each

building on each other.

38. With each iteration of the 3GPP standard, the standard adds and

reuses the framework already in place. The reason for this is simple—to ensure

consistent infrastructure across different generations of cellular technology. For

example, infrastructure (i.e., base stations, mobile devices, and other network

elements) serving millions of terminals with different characteristics all need to

communicate together. Ex. 1013 at 35-36. If a newer standard completely

overhauls the required technology, the infrastructure currently in the market would

become obsolete—people and companies would have to purchase and develop new

technology with each new version of the standard. Accordingly, each new version

of the standard uses the existing framework and adds to that framework, ensuring

backwards compatibility with newer standards. Id. at 36-37. This backward


compatibility requirement puts constraints on the technology that LTE and LTE-A

can and cannot consider. Id. at 36. For example, the physical layer fundamentals

need to be the same in LTE and future standards as it is for earlier releases, such as

UMTS. Id. at 36.

39. It is common for the 3GPP participants involved in developing the

standard to reuse technology that was previously used in one area of the standard

for another area of the standard. For example, methods for transmitting

information in 3G systems are commonly extended to methods for transmitting

information in LTE and LTE-A systems, because the underlying framework and

communication layers remains the same between versions. Id. at 36-37. In fact,

one of the key directives for 3GPP was to ensure that the core system architecture

would evolve over the decades, as opposed to being replaced with each new

standard. Id. at 36. While the specifics of utilizing these building blocks in the

newer versions of the standard need to be identified and developed to achieve the

goals of the newer standards, the basic concepts remain the same and are available

for use in these new standards. Id. at 38-55.

C. UMTS (“3G”) Network Architecture

40. The Universal Mobile Telecommunications Service (“UMTS”) is a

third generation (“3G”) mobile cellular network. The general UMTS architecture

is shown below. It includes Mobile Stations (“MS”), a Universal Terrestrial Radio


Access Network (“UTRAN”) comprising a series of base stations (“NodeBs”) and

Radio Network Controllers (“RNCs”), and a Core Network (“CN”) comprising a

Mobile Switching Center (“MSC”), a Home Location Register (“HLR”), a Serving

GPRS Support Node (“SGSN”), and a Gateway GPRS Support Node (“GGSN”):

41. Mobile Station (“MS”). The MS may be a smart phone, feature

phone, tablet, PDA, or other mobile device that sends and receives information to

and from a network base station via radio signals. The MS includes software and

hardware. The software typically includes a mobile operating system and low-

level software that executes on a baseband processor. The hardware typically

includes the baseband processor, a radio, and a removable SIM card. The SIM card

stores unique identifiers for the MS, including its International Mobile Subscriber

Identity (“IMSI”) and International Mobile Equipment Identifier (“IMEI”).

42. UTRAN and NodeBs. The UTRAN is a Radio Access Network

(“RAN”) that acts as an interface between UEs and the Core Network (“CN”). The


UTRAN is made up of a series of base stations (i.e., “NodeBs”), each of which

serves a geographic cell within the network. Each NodeB is controlled by a Radio

Network Controller (“RNC”), also referred to as a RAN node. Mobile Stations

within the mobile network connect to the base stations and RAN nodes via radio

signaling over a functional layer called the Access Stratum (“AS”). The RAN

nodes connect to the CN via an interface called Iu. The RAN nodes are connected

to each other via an interface called IuR, which allows them to pass off context

about the MS and its connection to the network in order to maintain service when

the MS moves from one cell to another, for example, during a process called

“handover.”

43. Core Network (“CN”). The CN performs the routing and computing

functions of the UMTS network. The CN includes an MSC to interface with the

Public Switched Telephone Network (“PSTN”). It also includes an SGSN and

GGSN to interface with Packet Data Networks (“PDNs”) such as the Internet. Each

SGSN in the CN is considered a CN node.

44. In UMTS, the SGSN handles both “user plane” and “control plane”

data. User plane data refers to user traffic, such as voice, email, and internet data.

Control plane data includes signaling necessary to establish and maintain a

connection between the mobile device and CN. Signaling between the MS and CN

occurs over the Non-Access Stratum (“NAS”).


D. LTE (“4G”) Network Architecture

45. The general LTE network architecture is shown below. It includes a

mobile device (“User Equipment” or “UE”), an Evolved Universal Terrestrial

Radio Access Network (“E-UTRAN”) comprising one or more base stations

(“eNodeB”), and an Evolved Packet Core (“EPC”) comprising a series of network

elements including the Home Subscriber Server (“HSS”), the Mobility

Management Entity (“MME”), the Serving Gateway (“S-GW”), and the Packet

Gateway (“P-GW”):

46. The key elements of the LTE network architecture mirror those of the

UMTS network, with modifications noted below.

47. User Equipment (“UE”). The UE is the LTE equivalent of an MS.

Like the MS, the UE may be a smart phone, feature phone, tablet, PDA, or other

mobile device that sends and receives information to and from a network base

station via radio signals. The UE includes software and hardware. Id. The


software typically includes a mobile operating system and low-level software that

executes on a baseband processor. The hardware typically includes the baseband

processor, a radio, and a removable SIM card. The SIM card, also referred to as a

Universal Integrated Circuit Card (“UICC”), stores unique identifiers for the UE,

including its International Mobile Subscriber Identity (“IMSI”) and International

Mobile Equipment Identifier (“IMEI”).

48. E-UTRAN and eNodeBs. The E-UTRAN is the LTE equivalent of

UTRAN. E-UTRAN is a Radio Access Network (“RAN”) that acts as an interface

between UEs and the EPC. It is made up of a series of base stations (“eNodeBs”),

each of which serves a geographic cell within the network. UEs within the mobile

network connect to the eNodeBs via radio signaling over a functional layer called

the Access Stratum (“AS”). The eNodeBs connect to the core network via IP

packets. The eNodeBs are also connected to one another via an interface called

X2, which allows them to pass off context about the UE and its connection to the

network in order to maintain service when the UE moves from one cell to

another—a process called “handover.”

49. Evolved Packet Core (“EPC”). The EPC is the LTE equivalent of the

Core Network. Like the UMTS CN, the EPC performs the primary routing and

computing functions of the network.


E. Cell Reselection

50. The Cell Reselection Patents relate to cellular communications.

Specifically, the Cell Reselection Patents relate to the process a mobile terminal

(sometimes known as a User Equipment, or “UE”) goes through to choose which

“cell” of a cellular system it will use for communication. A cell can be thought of

as the coverage area for a particular cellular tower (also known as a base station).

For example, as shown below, seven cells are each served by a cellular tower

located within the cell. Mobile devices can move freely between the cells at which

time they may connect to a new cellular tower for communication to other devices

within or outside that cell. Ex. 197-1001 at 1:15-17.


51. In order for a UE to communicate with a base station (sometimes

referred to as a “Node B” (NB) or “eNode B” (eNB) in the LTE context), the UE

must first register with a cell before it can being communication. The process of

registering with a base station or cell is often called “camping.” After the UE has

registered with a cell, the UE “camps” on that cell; in other words, the UE connects

to a particular base station that is serving the cell on which the UE has camped.

This first registration in idle mode (i.e., when the UE is switched on but not on an

active call) is called “cell selection.” While in idle mode, the UE will take regular

measurements of the signals coming from the surrounding base stations in order to

choose which cell to camp on (i.e., register with) as the UE moves away from its

currently camped base station. Once camped on a cell, the UE will continue to

monitor surrounding base stations and may choose to camp on a different cell as it

moves; this process is called “cell reselection.” In other words, this process of

locating a cell to use for communication is generally called “cell selection” and

when a new cell is selected for communication that process is generally called “cell

reselection.”

52. In idle mode and for the purpose of cell reselection, the UE will

monitor cells which are of the same radio access technology (RAT)—such as

UMTS (“3G”) or LTE (Long Term Evolution or “4G”)—as the cell it is currently

camped on and usually it will also monitor cells of a different RAT—such as GSM


or GPRS. As the UE moves within a cell, the UE must decide whether it should

remain camped on the current cell or camp on a neighboring cell that might have

better signal characteristics (e.g., a stronger signal). In making this decision, the

UE will take into account the priorities associated with the cells it has measured

(both in terms of the output of the algorithms evaluating the measurements taken as

well as the priorities assigned to different RATs and/or frequencies contained in

“priority lists” provided by the network). Based on these priorities, the UE will

endeavor to choose the cell with the most reliable signal with which to

communicate. This cell reselection criteria to determine which base station the UE

will communication with is similar in all 3GPP networks—both legacy (including

GSM and UMTS) and current (e.g., LTE) networks.

53. Some UEs are capable of communicating on multiple RATs—such as

on 2G, 3G, and LTE networks. These UEs are called “multi-RAT UEs.” Such

multi-RAT UEs may consume additional power performing measurements on

multiple cells. For that reason, cell reselection on a multi-RAT UE is based on a

priority list sent to the UE from the base station, based on the measurements the

base station receives from neighboring UEs. The UE can then choose the best cell

based on that priority list.

54. The technology disclosed in the Cell Reselection Patents is related to

technology developed and published by 3GPP. Ex. 197-1001 at 1:22-61.


VI. THE CELL RESELECTION PATENTS

55. The Cell Reselection Patents, titled “Method, Terminal, and System

for Cell Reselection” claim priority to a PCT application No. PCT/CN2009/

071194, filed April 8, 2009, which in turn claims priority to a foreign application

number CN 2008 1 0091957, filed April 9, 2008. Ex. 197-1001; 003-1001; 246-

001. All of the Cell Reselection Patents share a common specification.

56. According to the Cell Reselection Patents, developments in mobile

communications have resulted in the emergence of different mobile

communication systems, including GSM, EDGE, GSM/EDGE (GERAN),

WCDMA (UMTS), CDMA, CDMA2000, TD-SCDMA, LTE, and WIMAX. Ex.

197-1001 at 1:21-35. Because there are so many different systems, when a mobile

terminal moves, there may be several frequencies (communication systems) that it

can choose for cell reselection. Id. at 1:35-38. The Cell Reselection Patents

purport to offer a method for cell reselection that reduces measurements in order to

save power. Id. at 1:39-41.

57. According to the Cell Reselection Patents, in the current (prior art)

LTE system, a terminal decides what cell to camp on according to the priority. Id.

at 1:42-45. The terminal will measure a frequency/system having a higher priority.

Id. at 1:46-47. If that measurement meets the terminal’s cell reselection criteria, it


will reselect that cell. Id. at 1:47-48. Else, the terminal will measure a cell having

a lower priority. Id.

58. The Cell Reselection Patents admit that in a prior art system, the

terminal performs cell reselection using a “dedicated priority list” provided by a

non-LTE (e.g., 3G) communication system. Id. at 1:56-58. According to the Cell

Reselection Patents, this leads to higher costs to upgrade the network, since more

signaling has to be added for dedicated priorities for newer networks. Id. at 1:64-

2:2. The Cell Reselection Patents allegedly solves this problem by having the UE

perform cell reselection based on a dedicated priority list and valid time obtained

from an LTE system—as opposed to the non-LTE system like in the prior art. Id.

at 2:5-10. Therefore, the alleged inventive solution is that as the UE moves to a

non-LTE cell, the UE receives it priority list by the LTE network instead of the

non-LTE network before a valid time associated with the list expires. As

explained below, however, even these obvious differences from the prior art were

already known in the art before the priority date of the Cell Reselection Patents.

B. Claim Construction

59. Above, I have set forth my understanding of claim construction

principles for inter partes review proceedings. Applying the BRI standard to the

challenged claims of the Cell Reselection Patents, it is my opinion that the claim

terms should be given their plain and ordinary meaning.


60. With respect to the terms “obtaining unit” in the ’197 patent, and the

term “processor” in the ’246 patent, it is my opinion that a person of ordinary skill

in the art at the time of the alleged invention would have interpreted these terms as

generic means for performing certain claimed functions. In my opinion, these

nonce terms, when read in the context of the claims and patent specification, do not

recite definite structure. Accordingly, I understand that this term should be

construed as a means-plus-function term under 35 U.S.C. § 112 ¶ 6. As noted

above, I understand that means-plus-function terms are construed to require the

claimed function and the structure in the specification that corresponds to the

claimed function, as well as equivalents of that structure. For purposes of this

petition, however, I adopt Huawei’s proposed construction.

1. “Obtaining Unit” (’197 Patent, Claims 7, 15)

61. Claims 7 and 15 of the ’197 Patent include the terms “obtaining unit,

configured to obtain a dedicated priority list and a valid time of the dedicated

priority list from a Long Term Evolution (LTE) system” (claim 7) and “obtaining

unit configured to obtain a public priority list from one of the LTE system and the

non-LTE system.” (claim 15) I understand that in a joint submission to the Court

in the district court action, Patent Owner contended that no construction was

necessary for these terms and did not identify any structure. Ex. 1009 at 86-88.


For purposes of this Petition only, I adopt Patent Owner’s proposed construction,

and understand the BRI of this term to be hardware or software that obtains.

2. “Processor” (’246 Patent, Claims 11, 13, 16)

62. Claims 11, 13, and 16 of the ’246 Patent include the terms “processor

. . . configured to perform inter-system cell reselection / further configured to

delete the dedicated priority list” that Petitioner contends should be construed as

means-plus-function limitations. In a joint submission to the Court, I understand

the Patent Owner contended that no construction was necessary for this term and

did not identify any structure. Ex. 1009 at 75-76. For purposes of this petition

only, I adopt Patent Owner’s proposed construction, and understand the BRI to be

any hardware that executes instructions.

3. Camps/Camping”

63. I understand that in a joint submission to the Court in the district court

action, Patent Owner contended that “camps/camping on a cell of a non-LTE

system” means “is in a selected non-LTE cell.” Ex. 1009 at 63, 70, 90. For

purposes of this Petition only, I adopt Patent Owner’s proposed construction.

VII. OVERVIEW OF THE PRIOR ART REFERENCES

64. As explained above, the filing date of the Cell Reselection Patents is

April 8, 2009. Any art published before April 8, 2008 is prior art under §102(b).

See 35 U.S.C. § 102 (pre-AIA). I also understand that Patent Owner has asserted

slightly earlier alleged conception dates for certain challenged claims. All of the


prior art herein pre-dates those alleged conception dates, and is therefore, prior art

under either §102(a), §102(b), or §102(e).

65. I understand that Petitioner has submitted a declaration from Dr.

Raziq Yaqub concerning the publication and availability of 3GPP references,

including those discussed below that I am relying on for my invalidity analysis of

the Cell Reselection Patents. I understand that Dr. Yaqub has explained that each

3GPP reference cited was indexed and available on the 3GPP website as of the

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

petition. Ex. 1012 at ¶34 (“In my experience, the FTP time stamp . . . can be relied

upon to show when the TDocs. Were publically available without restriction to

anyone with Internet access.”). Having worked in the 3GPP standard development

process, it is my opinion that Dr. Yaqub’s declaration accurately describes and

establishes the public storage and availability of these 3GPP documents, and

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

including through searches using readily available search engines like Google. Ex.

1012 at ¶¶ 35-47.

A. R2-075161

66. R2-075161 is an official 3GPP Working Group document drafted and

published by 3GPP. It is entitled, “Inter-frequency/RAT idle mode mobility

control” by NTT DoCoMo, Inc. It was publicly available as of October 31, 2007,


when it was circulated to the 3GPP community by Mikio Iwamura. Ex. 1012 at

¶55. It was publicly available at least as early as November 12, 2007 at 1:30 PM,

when it was publicly posted on 3GPP’s FTP server. Ex. 1012 at ¶53-54. R2-

075161 was prepared for 3GPP TSG RAN WG2 meeting #60 in Jeju, Korea from

November 5-9, 2007. Ex. 1005 at 1. R2-075161 therefore qualifies as prior art

under at least 35 U.S.C. § 102(a) and § 102(b). R2-075161 was not cited during

the prosecution of the Cell Reselection Patents.

67. R2-075161 is related to “UE specific priority control” and whether

“UE specific control for inter-frequency” should be “based on absolute priorities or

offsets.” Ex. 1005 at 1. It states that the “paper discusses this issue and also

attempts to clarify some of the open issues for inter-frequency/RAT mobility

control in idle mode.” Id. By “inter-frequency/RAT mobility control in idle

mode,” R2-075161 is referring to cell-reselection between different Radio Access

Technologies (RATs), as it refers to “inter-frequency,” meaning, moving between

different frequencies. The proposal relates to the operation of the LTE network. It

was published by 3GPP in conjunction with Working Group 2, which was

developing the technology for the LTE network. Moreover, as I discuss above,

equipment such as “eNB,” “UE,” and “MME” are LTE network equipment.

Moreover, the document refers to inter-RAT mobility control, which is a UE that


has multi-RAT functionality, and can communicate on LTE in addition to other

networks, such as GSM, UMTS, or other 2G/3G networks.

68. R2-075161 proposes adopting a “priority based approach,” as opposed

to an offset approach and discloses reasons for why the “priority based approach”

is better. Ex. 1005 at 1. Among the reasons cited was that a priority based

approach had already been adopted at RAN2 meeting #59bis for inter-RAT.

Adopting a priority approach for inter-frequency cell reselection would simplify

the specification. Id. at 1-2.

69. R2-075161 sets forth a series of proposals. All of these proposals are

meant to build on each other and be considered cumulatively. One of ordinary

skill in the art would recognize this because all of the proposals can work together

for the cell reselection process for a UE that can operate on both LTE and non-LTE

networks.

70. Proposal 1 describes why the cell reselection should be based on

absolute priorities and that the eNB or Mobility Management Entity (“MME”)

create the UE specific control information (i.e., priority list) and transmit it to the

UE. Id. at 2. Therefore, R2-075161 discloses that the LTE network communicate

the UE specific control information to the UE.

71. Proposals 3 and 4 describe a process of discarding the priority list

after expiration. Ex. 1005 at 2. Under Proposal 4, the paper explains that the “UE


specific control information would include a list of frequency layers/RATs that the

UE should handle with specific priorities.” Id. This is a priority list of different

RATs that the UE should use for cell reselection. These proposals disclose that the

LTE network provide the UE with a priority list of RATs for cell reselection.

RATs of different frequencies refer to different networks, such as LTE, UMTS,

and GSM. Therefore, the described UE specific control information would include

a priority list of frequencies for different RATs that the UE should use for cell

reselection.

72. R1-075161 also discloses that upon “expiry of the timer, the UE shall

discard the UE specific control information and continue with the normal cell

reselection procedure.” Ex. 1005 at 2. This means that the UE should perform cell

reselection according to the priority list until the expiration of the timer.

73. Proposal 4 also specifically identifies the GSM and UMTS networks

as possible RATs in the priority list. It states “the UE should measure only the

frequency layers/RATs that are indicated in system information of the current

serving cell. For UTRAN and GERAN measurements, an NCL is needed for UE

measurements as have been agreed in stage 2.” Ex. 1005 at 2. UTRAN refers to a

UMTS node, and GERAN refers to a GSM node.

74. Proposals 5 and 6 describe using a public priority list. R2-075161

states that the “UE has to measure only the frequency layers/RATs that are


indicated by BCCH from the serving cell, even when UE specific control

information indicates other frequencies/RATs.” Ex. 1005 at 2. The BCCH refers

to the Broadcast Channel, which distributes information publicly to all UEs

camping on the cell. Proposal 5 indicates that in “certain deployments, it may be

useful that all the UEs are set with common priorities.” Ex. 1005 at 2. Proposal 6

also indicates that it “should be possible to set priorities that apply commonly to all

the UEs by BCCH.” Id.

75. The public priority list in R2-075161 is disclosed as used for cell

reselection patents on non-LTE networks. Proposal 5 indicates that the “opeator

may set a policy to camp all the UEs in UTRAN,” which refers to UMTS. It later

states that “If both common and UE specific priorities are present, the UE specific

priorities should be respected.” Ex. 1005 at 2. Proposal 6 indicates that if “both

common and UE specific priorities are present, the UE specific priorities should be

respected.” Id. at 2-3. That means, if the timer expired, and the UE deletes the

priority list, then the public priority list is the only one remaining. It should

therefore be used for cell reselection when the UE is camped on a non-LTE

network, according to R2-075161.

B. Eerolainen

76. Eerolainen is US Patent publication US 2008/0176565. It was filed

on January 23, 2007, and was published July 24, 2008 under 35 U.S.C. §122(b) in


the United States by Nokia Corporation. Ex. 1006 at 1. Therefore, Eerolainen

qualifies as prior art under at least 35 U.S.C. §102(e). Eerolainen was not cited

during prosecution of the Cell Reselection Patents.

77. Nokia Corporation was actively involved in 3GPP and the standard

setting process in early 2007. Moreover, the specification of Eerolainen discusses

3GPP standards (see, e.g., Ex. 1006 at ¶40), refers to components of the LTE

network (see, e.g., id. at ¶34 (referring to MS (UMTS) and UE (LTE)), and refers

to EUTRAN (see, id. at ¶5). Therefore, one of ordinary skill in the art would

recognize that Eerolainen was meant for use on an LTE network.

78. Eerolainen describes an apparatus, method, and computer program

product providing a RAT priority list for multi-RAT mobile devices. See Ex.

1006. The patent anticipates devices that support several RATs, including 2G, 3G,

3.9G, and beyond. Id at ¶ 34. Eerolainen goes on to describe a situation where

that device moves outside of the coverage of a current “camped on” RAT, and

must select a new cell. Id. In other words, Eerolainen relates to cell reselection in

idle mode using a priority list. See also id. at ¶ 78.

79. Eerolainen defines a RAT as a “radio access technology for a wireless

communication system.” Ex. 1006 at ¶ 35. It describes a “multi-RAT” device as a

device that supports at least three different RATs. Id. At ¶ 36. Like the Cell

Reselection Patents, Eerolainen explains that for a multi-RAT UE, when it moves


away from a camped on RAT, it must measure several RATs, which increases

power consumption. Id. at ¶ 39.

80. Eerolainen indicates that it relates to LTE, for which “standardization

efforts are on-going” as of the filing date of January 23, 2007. Id. at ¶ 61.

Eerolainen explains that different RATs, including 2G, GSM, PDC, GPRS/EDGE,

UMTS, WCDMA, and CDMA2000 may be compatible with each other. Id.

81. Figure 1 of Eerolainen describes the electronic devices for use in the

Eerolainen system:

82. The Eerolainen eNodeB, or base station, is identified as 12, and the

UE is identified as 10. Id. at ¶63, Fig. 1. The LTE network components include


the eNodeB 12, and the Network Control Element 14. Id. The UE includes a data

processor 10A that runs a program 10C that is stored on memory 10B, and an RF

transceiver 10D for communications with the Node B. Ex. 1006 at ¶63, Fig. 1.

Figure 1 also shows a second base station, 12’, which may be of a different RAT

type, e.g., 2G, 3G, WiMax, or Bluetooth. Id. at ¶65, Fig. 1. There will typically be

several additional RATs. Id. Eerolainen discloses that the network constructs a

multi-RAT priority list that is sent to the UE. Id. at ¶69-70. Eerolainen envisions

the priority list coming from an LTE network. See, id. at ¶116. The UE stores this

priority list in memory 10B. Id. The “multi-RAT priority list 10E may contain

identifying information for all RATs that the [network] supports and/or that the

[network] wants the UE 10 to prefer in a particular geographical area.” Id. at ¶70.

With the multi-RAT priority list, the UE only has to perform measurements on one

or two RATs and may ignore the rest. Id.

83. Eerolainen also describes a timer for the multi-RAT priority list.

“The entry for the highest priority RAT in the multi-RAT priority list 10E also

preferably includes an indication of a maximum value for a timer 10F (shown as

TIMER in Fig. 1, and which may be referred to as a search delay timer). The timer

is used to make sure the UE does not stay in communication with a lower priority

RAT when a higher priority RAT is available. Id.


C. R2-080338

84. R2-080338 is an official 3GPP Working Group document drafted and

published by 3GPP. Ex. 1012 at ¶56. It is entitled, “Reselection scenarios for

multi-RAT terminals in Rel-8” by Nokia Corporation and Nokia Siemens

Networks. It was publicly available at least as January 7, 2008 at 9:38 PM, when it

was publicly posted on 3GPP’s FTP server. Id. at ¶56-57. It was also circulated to

the 3GPP server on January 8, 2008 by Luis Barreto. Id. at ¶58. R2-080338 was

prepared for 3GPP TSG-RAN WG2 Meeting #60bis in Seville, Spain from January

14-18, 2008. Ex. 1007 at 1. R2-080338 therefore qualifies as prior art to the under

at least 35 U.S.C. § 102(a) and § 102(b). R2-080338 was not cited during the

prosecution of the Cell Reselection Patents.

85. R2-080338 relates to the use of a priorities algorithm for “inter-

frequency and inter-RAT cell reselection in E-UTRAN.” Ex. 1007 at 1. E-

UTRAN is another term for LTE. The paper indicates that the UE will use a

priorities algorithm to determine what RAT to camp on when it is in an area with a

E-UTRAN (LTE), a UTRAN (UMTS), and a GERAN (GSM) network. Ex. 1007

at 1. The paper relates to the use of a priority algorithm by multi-RAT UE that

supports LTE, UMTS, and GSM, as well as one that supports just UMTS and

GSM. Ex. 1007 at 1.


86. R2-080338 discloses scenarios where the UE receives priorities when

it is camped on an LTE network, but uses those priorities for cell reselection when

camped on a non-LTE system. Id. at 3. R2-080338 states “if the thresholds are

broadcast, the priorities are not but the UE has received priorities via dedicated

signaling (e.g., camping in UTRAN [UMTS] but received prioritization whilst in

E-UTRAN [LTE] then the priorities received via dedicated signaling always apply

– i.e., the UE remembers them.” Id. This means that if the UE received a priority

list from the LTE network, but is camping on a non-LTE network, it will use the

priority list from the LTE network for cell reselection which it had previously

stored in memory.

VIII. INVALIDITY ANALYSIS

87. In my opinion, each of the following grounds demonstrates that the

challenged claims are invalid because the claimed subject matter would have been

obvious to a person of ordinary skill in the art at the time of the alleged invention.

A. Ground 1: Claims 1-2, 5-9, and 13-15 of the ’197 Patent, Claims

1-20 of the ’003 Patent, and Claims 1-20 of the ’246 Patent Are

Obvious In View of R2-075161 and R2-080338

88. In my opinion, R2-075161 and R2-080338 demonstrate that all of the

limitations recited in the claims were known in the context of cell reselection on

LTE networks, including (1) obtaining a dedicated priority list and a valid time

from an LTE network, (2) performing cell reselection according to the dedicated


priority list and the valid time while in a non-LTE cell before the valid time

expires; (3) performing cell reselection while in a non-LTE cell according to a

public priority list after the valid time expires; (4) the dedicated priority list and

valid time are carried in a dedicated signal, which is a Radio Resource Control

connection release message; (5) the dedicated priority list including a priority level

of frequencies and/or a Radio Access Technologies (RAT); (6) obtaining the public

priority list from either an LTE or non-LTE network; (7) the valid time being

controlled through a timer; and (8) deleting the dedicated prioirty list when the

valid time expires.

89. One of ordinary skill in the art would recognize that R2-075161 also

included using the dedicated and public priority lists for cell reselection while

camped on a non-LTE cell. See Ex. 1005 at 2 (“the operator may set a policy to

camp all the UEs in UTRAN). One of ordinary skill in the art would also be aware

of R2-080338, which clearly to one of ordinary skill in the art, receiving priority

information from the LTE network, and using those priorities while camped on a

non-LTE network.

90. For the reasons below, it is my opinion that claims 1-2, 5-9, and 13-15

of the ’197 Patent, claims 1-20 of the ’003 Patent, and claims 1-20 of the ’246

patent should be canceled as obvious in view R2-075161 in combination with R2-

080338.


1. ’197 Patent, Claim 1

91. It is my opinion that the combination of R2-075161 and R2-080338

render obvious claim 1 of the ’197 Patent.

a) Preamble: “a method for cell reselection, comprising:”

92. R2-075161 discloses a method for cell reselection. The discussion

section of R2-075161 discloses a priority-based approach to inter-system cell

reselection for a User Equipment:

Regarding the UE specific control for inter-frequency, there has been much debate about priority vs. offset. Although the offset based approach would provide finer granularity of control in principle, for the reasons listed below, it is suggested that RAN2 adopts the priority based approach.

Ex. 1005 at 1. R2-075161 discloses that the committees were contemplating using

either a “priority” approach or an “offset” approach to inter-system cell reselection.

At the time of the invention, those skilled in the art recognized that LTE already

used a priority approach to cell reselection, and therefore, it would be obvious to

build upon that approach as mch as possible. Unsurprisingly to one of ordinary

skill in the art, the proposal goes on to recommend a priority approach to inter-

system cell reselection.

93. The Introduction states the following:

In RAN2#59bis, it was decided that UE specific priority control should be supported for inter-RAT mobility control in idle mode. However, it is yet undecided whether UE specific control for inter-frequency is based


on absolute priorities or offsets. This paper discusses this issue and also attempts to clarify some of the open issues for inter-frequency/RAT mobility control in idle mode.

Ex. 1005 at 1. The mobility control referred to in R2-075161 refers to a UE

(terminal) moving within different cellular systems. The entire proposal was

dealing with inter-system cell reselection, which means cell reselection as the UE

moves to different cells. Some of the cells may be LTE cells. One of ordinary

skill in the art would have recognized, however, that at the time, LTE was not

widely rolled out in all areas where a UE may travel. There may be wide areas

where an LTE network was unavailable. Therefore, one of ordinary skill in the art

recognized that there had to be a way to prioritize the selection of different

networks, or RATs depending on which were available. Therefore, the proposal

relates to inter-system cell reselection.

94. R2-0803338 also teaches a method for inter-system cell reselection.

R2-080338 is titled “reselection scenarios for multi-RAT terminals in Rel-8.” Ex.

1007 at 1. One of ordinary skill in the art would recognize that a “multi-RAT”

terminal is a UE that can operate on more than one RAT, or, a terminal that can

operate on, for example, LTE, UMTS, and GSM. Such terminals are common, and

have been as networks continue to evolve. As I explained in the previous

paragraph, one of ordinary skill in the art recognizes that LTE, as with all new

networks are not immediately rolled out to every area where the UE may operate.


Therefore, it is common and important to manufacture UEs that can operate on

legacy networks as well as the newest networks. Indeed, even today, LTE is not

available in all areas of the United States.

95. The Introduction further mentions section TS36.304 of the standard:

The use of the priorities algorithm for inter-frequency and inter-RAT cell reselection in E-UTRAN has been agreed at RAN2#60, and has been included in the latest version of TS36.304. This opens some questions. For example, a UE located in an area where a E-UTRAN, a UTRAN and a GERAN network coexist will use the priorities algorithm to determine which RAT it should be camping on; what would then be the behavior of the same UE when located in an area where only UTRAN and GERAN coexist?

Ex. 1007 at 1. As I mentioned above, TS 36.304 is a section of the LTE standard.

This passage, therefore, is referring to a inter-RAT (or inter-system) method for

cell reselection by a UE on an LTE network. This proposal relates to what the UE

will do when it has to perform cell reselection, but is in a non-LTE area, such as a

UTRAN and/or GERAN network.

b) Limitation 1(a):“obtaining, by a terminal, a dedicated

priority list and a valid time of the dedicated priority list

from a Long Term Evolution (LTE) system, and

96. In my opinion, R2-075161 discloses “obtaining, by a terminal, a

dedicated priority list and a valid time of the dedicated priority list from a Long

Term Evolution (LTE) system.”


97. R2-075161 discloses obtaining UE specific control information from

the LTE system:

Whether the UE specific control information is created

by the eNB or the MME has not been decided. For this control, it is thought that information about UE capability, subscription, and cell loading are necessary.

. . .

Consequently, it is thought that the eNB has sufficient

knowledge as to which frequency/RAT layer the UE is

best served with.

Ex. 1005 at 2. UE specific control information is a dedicated priority list:

The UE specific control information would include a

list of frequency layers/RATs that the UE should handle with specific priorities.

Ex. 1005 at 2. Therefore, the UE specific control information is a priority list of

networks or network frequencies, which one of ordinary skill in the art would

recognize as a “dedicated priority list.”. The priority list is referred to as UE

specific control information. The priority list is therefore specific to a particular

UE and not broadly meant to be used by many UEs on the network, making it

“dedicated.”

98. The UE disclosed in R2-075161 is a “terminal,” which is a mobile

phone or tablet. R2-075161 describes the terminal obtaining the UE specific

priority list from the LTE network. A “terminal” is a broad and general term that

one of ordinary skill in the art uses to refer to any mobile device on the network.


That could be a phone or tablet, or even a computer that connect to a cellular

network. As I mentioned above, an eNB refers to the “eNodeB” or base station on

the LTE system, and the MME is a “Mobility Management Entity,” which is also

an LTE network architecture element. In addition to all of the reasons I discussed

above when generally discussing this reference, this demonstrates that R2-075161

is describing the LTE network, as opposed to a non-LTE network is

communicating the dedicated priority list to the terminal.

99. R2-075161 also describes an expiry timer being sent from the LTE

network to a terminal:

An expiry timer can be signaled optionally as part of

the UE specific control information. Upon expiry of the timer, the UE shall discard the UE specific control information and continue with the normal cell reselection procedure.”

Ex. 1005 at 2 (emphasis added). This passage indicates that when the expiry timer

expires, the UE shall discart the dedicated priority list. That means that the expiry

timer indicates a valid time of the dedicated priority list. Moreover, this passage

makes clear that the expiry timer is signaled as part of the UE specific control

information. Therefore, the LTE network sends both the valid time and the

dedicated priority list in a signal to the terminal.

100. R2-080338 also teaches a terminal receiving priorities from the LTE

network:


In this case, the terminals support the priorities algorithm; however, the necessary parameters for the

algorithm (i.e., priorities and thresholds) are not

transmitted by the (UTRAN or GERAN) network. Hence there are three options:

…

• Option 3: The mobile stores the parameters

received from an E-UTRAN network of the

current PLMN or of an equivalent PLMN and

uses these parameters for the priority algorithm

…

Option 3 would allow some predictability in UE behavior, once the UE has camped in E-UTRAN. In this case, the UE would remember the thresholds and

priorities received whilst in E-UTRAN. However, it would still introduce some unreliability once the UE reselects within UTRA, as the thresholds maybe totally different and non-applicable. Example: UE camps in E-UTRA macro-cell, reselects to neighboring UTRA macro-cell, and then reselects to UTRA indoor micro-cell.

Ex. 1007 at 3. This passage is describing the scenario where a terminal needs to

perform cell reselection, but the legacy non-LTE networks do not communicate

priorities for cell reselection to the terminal. That means that if the terminal is

camped on a cell of a non-LTE network, it can’t receive the priorities from which

to perform cell reselection. R2-080338 offers a solution that would be obvious to

one of ordinary skill in the art. R2-080338 teaches that, because the terminal

receives priorities from the LTE network (which, one of ordinary skill in the art


recognizes is already implemented in TS 36.304), the terminal should store those

priorities so it could use them when it is camped on a non-LTE network.

c) Limitation 1(b): “performing, by the terminal, cell

reselection according to the dedicated priority list and

the valid time of the dedicated priority list, when the

terminal camps on a cell of a non-LTE system;”

101. In my opinion, the combined teachings of R2-075161 and R2-080338

render obvious the step of “performing, by the terminal, cell reselection according

to the dedicated priority list and the valid time of the dedicated priority list, when

the terminal camps on a cell of a non-LTE system.”

102. One of ordinary skill in the art would recognize that R2-075161

teaches this limitation:

The UE specific control information would include a list of frequency layers/RATs that the UE should handle with specific priorities. However, the indicated frequency layers/RATs may not be necessarily available throughout the TA that the UE is now registered to, but only in certain parts of the TA. Then, it would be desirable if the UE stops the layer measurements if the given layers are not available in the vicinity. Hence, the UE should measure only the frequency layers/RATs that are indicated in system information of the current serving cell. For UTRAN and GERAN measurements, an NCL is needed for UE measurements as have been agreed in stage 2. The NCL cannot be sent by the UE specific control information, as the area scope of this information is the TA (or multiple TAs if the UE is measured to multiple TAs). Hence, the UE will have to obtain the NCL from the BCCH in each cell, while keeping to use the UE specific control information (priorities).


Ex. 1005 at 2 (emphasis added). This passage is explaining how the UE uses the

dedicated priority list to perform cell reselection no matter where it is located. It

explains that it is used in situations where it has to take measurements for UTRAN

(UMTS) and GERAN (GSM). This means that the priority list the terminal

obtained from the LTE network should also be used when camping on a non-LTE

cell.

103. One of ordinary skill in the art would also recognize that R2-075161

also discloses performing the reselection before a valid time that the dedicated

priority list expires:

An expiry timer can be signaled optionally as part of the UE specific control information. Upon expiry of the

timer, the UE shall discard the UE specific control

information and continue with the normal cell

reselection procedure.

Ex. 1005 at 2. This statement explains that cell reselection should be performed

according to the dedicated priority list (UE specific control information) until the

timer expires, at which point the UE shall discard the priority list and continue with

a different cell reselection procedure. Therefore, it is disclosing performing cell

reselection according to both the dedicated priority list and the valid time.

104. As I explained above, R2-080338 teaches performing cell reselection

in accordance with cell reselection priorities received from the LTE network when

camping on a cell of a non-LTE system:


In this case, the terminals support the priorities algorithm; however, the necessary parameters for the

algorithm (i.e., priorities and thresholds) are not

transmitted by the (UTRAN or GERAN) network. Hence there are three options:

* * *

• Option 3: The mobile stores the parameters

received from an E-UTRAN network of the

current PLMN or of an equivalent PLMN and

uses these parameters for the priority algorithm

* * *

Option 3 would allow some predictability in UE behavior, once the UE has camped in E-UTRAN. In this case, the UE would remember the thresholds and

priorities received whilst in E-UTRAN. However, it would still introduce some unreliability once the UE reselects within UTRA, as the thresholds maybe totally different and non-applicable. Example: UE camps in E-UTRA macro-cell, reselects to neighboring UTRA macro-cell, and then reselects to UTRA indoor micro-cell.

Ex. 1007 at 3. This passage is describing the scenario where a terminal needs to

perform cell reselection, but the legacy non-LTE networks do not communicate

priorities for cell reselection to the terminal. That means that if the terminal is

camped on a cell of a non-LTE network, it can’t receive the priorities from which

to perform cell reselection. R2-080338 offers a solution that would be obvious to

one of ordinary skill in the art. R2-080338 teaches that, because the terminal

receives priorities from the LTE network (which, one of ordinary skill in the art


recognizes is already implemented in TS 36.304), the terminal should store those

priorities so it could use them when it is camped on a non-LTE network.

d) Limitation 1(c): “wherein, when the terminal camps on

a cell of the non-LTE system, the performing cell


the valid time comprises: performing, by the terminal

camping on the cell of the non-LTE system, cell

reselection according to the dedicated priority list before

the valid time expires, wherein when the terminal camps

on the cell of the non-LTE system, the dedicated priority

list is invalid after the valid time expires.”

105. In my opinion, the combined teachings of R2-075161 and R2-080338

render obvious the limitation, “wherein, when the terminal camps on a cell of the

non-LTE system, the performing cell reselection according to the dedicated

priority list and the valid time comprises: performing, by the terminal camping on

the cell of the non-LTE system, cell reselection according to the dedicated priority

list before the valid time expires, wherein when the terminal camps on the cell of

the non-LTE system, the dedicated priority list is invalid after the valid time

expires.”

106. This limitation includes the requirement that the cell reselection

according to the dedicated priority list is performed before the valid time expires

and that the dedicated priority list is invalid after the valid time expires. I’ve

already explained that it is my opinion that this is limitation is met in §§VII.A.1.b-

c.


107. This element is disclosed in the following passage:





Ex. 1005 at 2. This statement explains that cell reselection should be performed

according to the dedicated priority list (UE specific control information) until the

timer expires, at which point the UE shall discard the priority list and continue with

a different cell reselection procedure. Therefore, it is disclosing performing cell

reselection according to both the dedicated priority list and the valid time. One of

ordinary skill in the art would recognize that, because the UE is directed to no

longer use the UE specific control information and to discard it upon expiry of the

timer, that UE specific control information is no longer valid after the valid time

expires. The dedicated priority list is therefore used for cell reselection on the non-

LTE network as explained above with limitation 1(b) only before the valid time

expires.



a) “The method according to claim 1, wherein when the

terminal camps on the cell of the non-LTE system, the

dedicated priority list is invalid after the valid time

expires, the method further comprises: performing cell

reselection according to a public priority list, or

performing cell reselection according to a result

measured in accordance with a cell signal quality

criterion, or searching for a cell of the LTE system.



109. Claim 2 depends from claim 1. It adds the further requirement that

after the valid time expires, the UE should no longer use the dedicated priority list,

and should instead perform cell reselection according to a public priority list, or

performing cell reselection according to a result measured in accordance with a

cell signal quality criterion, or searching for a cell of the LTE system. Only one of

these three options needs to be shown to render the claim obvious.

110. It is my opinion that R2-075161 teaches “wherein when the terminal

camps on the cell of the non-LTE system, the dedicated priority list is invalid after

the valid time expires, the method further comprises: performing cell reselection

according to a public priority list.” I have already explained why it is my opinion

that R2-075161 and R2-080338 render obvious cell reselection on a non-LTE

network according to the dedicated priority list before a valid time expires. R2-


075161 further discloses cell reselection in accordance with a public priority list

after the valid time of the dedicated priority list expires:

The UE has to measure only the frequency layers/RATs that are indicated by BCCH from the serving cell, even when UE specific control information indicates other frequencies/RATs. The priority for cell reselection is still based on priority indicated in UE specific control information.

In certain deployments, it may be useful that all of the UEs are set with common priorities. For example, the operator may set a policy to camp all of the UEs in UTRAN (or LTE), due to differences in the provided services or coverage. In such cases, it would be useful if priorities can be set by system information, so that UE specific signaling can be avoided. If both common and UE specific priorities are present, the UE specific priorities should be respected.

Ex. 1005 at 2. BCCH stands for “Broadcast Control Channel,” which is an LTE

channel meant for all UEs on the network. Therefore, one of ordinary skill in the

art would recognize that the priorities sent via the BCCH are public and the

common priorities received on the BCCH is a public priority list.

111. One of ordinary skill in the art would recognize that it is a priority list,

since the priorities identify what network the terminal should choose during the

cell reselection process in order of priority. Moreover, the passage above describes

both the common and UE specific priorities together – therefore, one of ordinary

skill in the art would recognize that both of these are lists, as described, but the

public priority list is meant for all of the UEs, and the UE specific list is meant for


just one. R2-075116 describes the public list at Proposal 5. it teaches that a

common priority may be that all UEs should camp on UTRAN (UMTS) because of

differences in services or coverage. Ex. 1005 at 2. In this situation, UMTS has the

highest priority in the list.

112. One of ordinary skill in the art would also explain the timing for use

of the public and dedicated priority lists. When both common and UE specific

priority lists are present, the UE is to use the specific priority list. Ex. 1005 at 2-3.

However, when the timer expires and the UE deletes the UE specific control

information (i.e., dedicated priority list), Proposal 4 states:




reselection procedure.”

Ex. 1005 at 2. Once the UE specific control information is discarded after the

timer expires, if the normal cell reselection is to proceed with a priority list, the

only remaining list is the public priority list. Therefore, after the valid time of the

dedicated priority list expires, the UE uses the public priority list.

113. It is my opinion that R2-075161 also discloses using the public

priority list when camping on a non-LTE network. As I explained above, R2-

075161 discloses using the dedicated priority list received from the LTE network

while camping on a non-LTE network. R2-075161 does not distinguish between


the different proposals, and one of ordinary skill in the art would recognize that all

of these proposals should be read for use together. Therefore, one of ordinary skill

in the art would recognize that the disclosure of the public priority list is used in

the same contexts as the dedicated priority list. Moreover, proposal 5 envisions a

terminal camping on a UMTS network while using the public priority list if the

dedicated list is not present. Ex. 1005 at 2. This shows one of ordinary skill in the

art that the public priority list is used for cell reselection on a non-LTE network.

Moreover, one of ordinary skill in the art would be motivated to combine R2-

075161 and R2-080338 for all of the reasons I explained above.

114. It is also my opinion that R2-075161 discloses “searching for a cell of

the LTE system.” It states that “[i]n certain deployments, it may be useful that all

of the UEs are set with common priorities. For example, the operator may set a

policy to camp all of the UEs in UTRAN (or LTE), due to differences in the

provided services or coverage.” Ex. 1005 at 2. One of ordinary skill in the art

would recognize that the operator may set the “normal” cell reselection procedure

to “camp all of the UEs in . . . LTE.” If that is set as the normal cell reselection

procedure, then, when the priority list expires, the UE would search for a cell of

the LTE system. This is because the LTE would, by default, use the “normal” cell

reselection procedure. If an alternate procedure, such as using a dedicated priority


list, is not available (for example, if the list expired), then it would default to the

normal procedure.


a) “The method according to claim 1, wherein the dedicated

priority list and the valid time of the dedicated priority

list are carried in a dedicated signal.”



116. Claim 5 depends from claim 1 and further requires that the dedicated

priority list and the valid time of the dedicated priority list be carried in a dedicated

signal. One of ordinary skill in the art would recognize that R2-075161 discloses

that the priority list and the valid time are sent to the UE from the LTE network on

dedicated signaling:

The UE specific control information is created by the eNB, and signaled as an optional IE in the RRC release message (which is also used at TA updates)

Ex. 1005 at 2. The RRC release message described here is a dedicated signal.

There are two different types of signals that can be communicated between the

network and the UE on an LTE network. One type of signal is a signal that is

meant to be received and potentially used by any UE that is communicating with a

particular base station—this type of signal is a public signal, known as a broadcast

or multicast signal.


117. The other type of signal that can be communicated between the

network and the UE on an LTE network is a signal that is meant for only a certain

UE. This is a dedicated signal. “RRC” stands for “Radio Resource Control.”

RRC refers to signaling in a connection between a base station and a UE. It is a

dedicated signal. The “RRC Release” message referred to in R2-075161 refers to a

message releasing a connection between the base station and the UE, also known

as an RRC connection release message.

118. As I’ve explained above, the valid time is also included in the same

dedicated signal as the dedicated priority list. R2-075161 teaches:

An expiry timer can be signaled optionally as part of

the UE specific control information. Upon expiry of the timer, the UE shall discard the UE specific control information and continue with the normal cell reselection procedure.

Ex. 1005 at 2 (emphasis added). This passage indicates that the expiry timer is

signaled as part of the UE specific control information, which is the dedicated

priority list. Therefore, R2-075161 discloses both the valid time and dedicated

priority list in the dedicated signal. In the case of R2-075161, that dedicated signal

is the RRC connection release message.


a) “The method according to claim 1, wherein the dedicated

priority list comprises one of the following: priority level

of a frequency or a Radio Access Technology, RAT;

priority levels of the frequency of the serving cell,


adjacent frequencies of the serving cell, and frequencies

of the neighboring systems; and priority levels assigned

for each frequency or Frequency Band of a neighboring

system”


render obvious claim 6.

120. Claim 6 depends from claim 1 and adds the further requirement that

the dedicated priority list comprise one of the following priority level of a

frequency or a Radio Access Technology, RAT; prirotiy levels of the frequency of

the serving cell, adjacent frequencies of the serving cell, and frequencies of the

neighboring systems; and priority levels assigned for each frequency of Frequency

Band of a neighboring system. Only one of these needs to be disclosed for the

claim to be rendered obvious.

121. It is my opinion that R2-075161 discloses “wherein the dedicated

priority list comprises one of the following: priority level of a frequency or a

Radio Access Technology, RAT.” The content of the UE specific control

information is described above in for claim 1. R2-075161 states:

The UE specific control information would include a list of frequency layers/RATs that the UE should handle with specific priorities.

Ex. 1005 at 2.

122. As I’ve previously discussed, the RATs refer to the radio access

technologies. In fact this passage specifically identifies the two components that


are identified in the claim language: the frequencies and the RATs. One of

ordinary skill in the art would recognize that the list of different RATs would

include the different frequencies for communicating on those RATs, and therefore,

one of ordinary skill in the art would recognize that such claim limitations are

present in R2-075161.



render obvious claim 7 of the ’197 Patent. Claim 7 is substantially similar to claim

1, in that most of the claim limitations overlap.

124. Claim 7 is an apparatus claim, and claim 1 is a method claim. One of

ordinary skill in the art would recognize that the hardware limitations added to

claim 7 are inherent variations of claim 1. Every UE on every cellular network is a

terminal. Moreover, every terminal will have an “obtaining unit,” a “storage unit”

and a “processing unit.”

125. This is evident from literature that was published during development

of the LTE standard, such as Johansson & Sundin, LTE Test Bed, Ericsson Review

No. 1 (2007). Ex. 1019. Figures 1 and 5 of the Ericsson publication describe the

architecture of the UE, including a radio with transmitters (“TX”) and receivers

(“RX”), and a main processor (“MP”) and host processor (“PC”) for executing

software that implements the procedures specified in the standards publications:


Ex. 1019 at 2, 4.

126. A person of ordinary skill in the art at the time of the invention would

have understood that these hardware and software elements were inherent and

necessarily present features of UEs as disclosed in 3GPP documents such as R2-

075161 and R2-080338. Without a transmitter, receiver, and processor executing

software, as well as memory to store that software, the mobile devices disclosed in


these references would not be able to implement the disclosed operation and

procedures.

a) Preamble: “A terminal comprising”

127. I explained how the combination of R2-075161 and R2-080338

disclosed a terminal, above. §VIII.A.1.b.

b) Limitation 7(a): “a first obtaining unit, configured to

obtain a dedicated priority list and a valid time of the

dedicated priority list from a Long Term Evolution (LTE)

system;”


disclosed obtaining a dedicated priority list and a valid time of the dedicated

priority list from a Long Term Evolution (LTE) system above. §VIII.A.1.b.

129. One of ordinary skill in the art would recognize that both R2-075161

and R2-080338 inherently disclose a first obtaining unit. One of ordinary skill in

the art would recognize that an obtaining unit is a piece of hardware or software

that obtains, such as a receiver. All terminals must include a receiver, as that is

how the terminal receives signals to communicate on a cellular network.

c) Limitation 7(b): “a storage unit, configured to store the

dedicated priority list and the valid time of the dedicated

priority list.”

130. Once received, it is inherent that the information must be stored in the

UE for use in the cell reselection process. One of ordinary skill in the art would

recognize that the priority list and valid time would be stored in a “storage unit”


such as memory. Moreover, in Proposal 4, R2-075161 discloses such storage. It

explains that the UE should discard the dedicated priority list after expiration of the

timer. If such information is discarded, it must have been stored in memory. Ex.

1005 at 2.

131. One of ordinary skill in the art would also recognize a storage unit in

R2-080338. As explained above, a UE necessarily must store the dedicated

priorities list in storage to use in the cell reselection process. The list would be

stored in a storage unit. such as a memory.

132. All of the instructions for procedures that the UEs must follow,

including the cell reselection procedures disclosed in R2-075161 and R2-080338

must also be stored in a storage unit, such as a memory. One of ordinary skill in

the art would recognize that such instructions must be stored and present on the UE

for the UE to execute.

d) Limitation 7(c): “a processing unit, configured to

perform cell reselection according to the dedicated


list stored in the first storage unit when the terminal

camps on a non-LTE system”


rendered obvious performing cell reselection according to the dedicated priority

list and the valid time of the dedicated priority list stored in the first storage unit

when the terminal camps on a non-LTE system above. §VIII.A.1.c.


134. One of ordinary skill in the art would recognize that it is inherent that

the procedures described in R2-075161 and R2-080338 would be inherently stored

in computer code with executable instructions which must be executed on a

processor. In order to perform the described functionality, that functionality must

be written into computer code, which is then compiled, and run on a processor. All

UEs include processors, such as baseband processors, that are used to

communicate with the network and perform cell selection and reselection.

e) Limitation 7(d) “wherein, when the terminal camps on a

cell of the non-LTE system, the performing cell









rendered obvious this limitation above in conjunction with the ’197 patent,

limitation 1(c). §VII.A.1.d.


a) “The terminal according to claim 7, wherein the


priority list are carried in a dedicated signal.


render obvious Claim 8 of the ’197 Patent.



rendered obvious “wherein the dedicated priority list and the valid time of the

dedicated priority list are carried in a dedicated signal” above in conjunction with

the ’197 patent, claim 5. §VII.A.3.


a) “The terminal according to claim 7, wherein the

dedicated priority list comprises one of the following:

priority level of a frequency or a Radio Access

Technology, RAT; or priority levels of the frequency of

the serving cell, adjacent frequencies of the serving cell,

and frequencies of the neighboring systems; or priority

levels assigned for each frequency or Frequency Band of

a neighboring system.”




rendered obvious “wherein the dedicated priority list comprises one of the

following: priority level of a frequency or a Radio Access Technology, RAT; or

priority levels of the frequency of the serving cell, adjacent frequencies of the

serving cell, and frequencies of the neighboring systems; or priority levels assigned

for each frequency or Frequency Band of a neighboring system.” above in

conjunction with the ’197 patent, claim 6. §VII.A.4.



a) “The method according to claim 2, wherein the public

priority list is obtained by the terminal from one of the

LTE system and the non-LTE system.”



141. Claim 13 depends from claim 2 and adds the further requirement that

the public priority list be obtained from one of the LTE system and the non-LTE

system. Above, I explained how the public priority list is obtained from the LTE

network. §VII.A.2. But, moreover, all networks are either (1) LTE systems, or (2)

non-LTE systems. Since the references disclose receiving this public priority list

on a channel, it must come from either an LTE or a non-LTE system.

9. ’197 PatentClaim 14

a) “The terminal according to claim 7, wherein when the

terminal camps on the cell of the non-LTE system, the

processing unit is further configured to perform cell


the valid time expires.”




rendered obvious “wherein when the terminal camps on the cell of the non-LTE

system, the processing unit is further configured to perform cell reselection

according to the dedicated priority list before the valid time expires” above in


conjunction with the ’197 patent, limitations 1(b), 1(c), and 7(c). §VIII.A.1.c-d,

VIII.5.d.




a) Limitation 15(a): “The terminal according to claim 14,

further comprising: a second obtaining unit, configured

to obtain a public priority list from one of the LTE system

and the non-LTE system;”

145. It is my opinion that one of ordinary skill in the art would recognize a

second receiver to receive the public priority list is inherent for the same reasons

disclosed above in conjunction with limitation 7(a) of the ’197 Patent.

146. For the same reasons I described in conjunction with ’197 patent,

limitation 7(a), the obtaining unit is inherently disclosed. §VIII.A.5.b.

147. I also discussed how the terminal receives the public priority list with

respect to claims 2 and 13 of the ’197 patent. §VIII.A.2, VIII.A.8.

b) Limitation 15(b): “a second storage unit, configured to

store the public priority list; and”

148. It is my opinion that it is inherent that the terminal would store the

public priority list in a storage unit or memory, for the same reasons discussed

above for the dedicated priority list in conjunction with ’197 patent, claim

limitation 7(b). §VIII.A.5.c.


c) Limitation 15(c): “a second processing unit, configured

to perform cell reselection according to a public priority

list, when the terminal camps on the cell of the non-LTE

system and the dedicated priority list is invalid after the

valid time expires.”

149. It is my opinion that a second processing unit to perform cell

reselection according to a public priority list is inherent for the same reasons as the

processing unit described above for limitation 7(c) of the ’197 Patent. §VIII.A.5.d.


rendered obvious “performing cell reselection according to a public priority list,

when the terminal camps on the cell of the non-LTE system and the dedicated

priority list is invalid after the valid time expires” in conjunction with limitation

1(c) and claim 2 of the ’197 Patent. §VIII.A.1.d, VIII.A.2.




a) Preamble: “A non-transitory computer readable

medium, comprising”

152. I explained above in conjunction with claim limitation 7(b) of the

’197 patent how the combination renders obvious the limitation “storage unit.”

§VIII.A.5.c. A storage unit is a memory, which is a “non-transitory computer

readable medium.” This is a medium, where data and other information such as

executable instructions can be stored, which allow a computer, like a processor, to


read them. For the same reasons explained in that section, it is inherent that R2-

075161 and R2-080338 disclose a non-transitory computer readable medium.

b) Limitation 1(a): “a computer program code including

executable instructions, which, when executed by a

terminal device, cause the terminal device to perform a

method for cell reselection as follows”


perform a method for cell reselection in conjunction with the preamble of claim 1

of the ’197 patent, above. §VIII.A.1.a.

154. I also explained how it is inherent in those references that there would

be a processor to execute executable instructions which are part of a computer

program code above in conjunction with element 7(c) of the ’197 Patent.

§VIII.A.5.d.

c) Limitation 1(b): “receiving, when in a cell of a Long

Term Evolution (LTE) system, a message including a

dedicated priority list from the LTE system”


“receive, when in a cell of a Long Term Evolution (LTE) system, a message

including a dedicated priority list from the LTE system” in conjunction with

limitation 1(a) of the ’197 patent. §VIII.A.1.b.


d) Limitation 1(c): “performing, when camping on a cell of

a non-LTE system, the cell reselection in accordance

with the received dedicated priority list before a valid

time of the dedicated priority list expires.”


“perform, when camping on a cell of a non-LTE system, the cell reselection in

accordance with the received dedicated priority list before a valid time of the

dedicated priority list expires.” in conjunction with limitation 1(b) of the ’197

patent. §VIII.A.1.c.

12. ’003 Patent Claims 2 and 16

a) “The non-transitory computer readable medium

[apparatus] of claim 1 [15], wherein the message

received from the LTE system includes a dedicated

signaling, the dedicated priority list being included in the

dedicated signaling.”


render obvious claims 2 and 16 of the ’003 Patent.

158. I explained how the combination of R2-075161 and R2-080338 meet

the limitation “wherein the message received from the LTE system includes a

dedicated signaling, the dedicated priority list being included in the dedicated

signaling” in conjunction with claim 5 of the ’197 patent. §VIII.A.3.

13. ’003 Patent, Claims 3 and 17


[apparatus] of claim 1 [15], wherein the dedicated

signaling including [containing] the dedicated priority


list includes a Radio Resource Control (RRC)

Connection Release Message.




the limitation “wherein the dedicated signaling including the dedicated priority list

includes a Radio Resource Control (RRC) Connection Release Message” in

conjunction with claim 5 of the ’197 patent. §VIII.A.3.

14. ’003 Patent Claim 4

a) “The non-transitory computer readable medium of claim

1, wherein the method further comprises: performing,

when camping on the cell of the non-LTE system, the cell

reselection in accordance with a public priority list after

the valid time of the dedicated priority list expires.”




the limitation “performing, when camping on the cell of the non-LTE system, the

cell reselection in accordance with a public priority list after the valid time of the

dedicated priority list expires” in conjunction with claim 2 of the ’197 patent.

§VIII.A.2.




4, wherein the public priority list is obtained from the

LTE system or the non-LTE system.”




the limitation “wherein the public priority list is obtained from the LTE system or

the non-LTE system” in conjunction with claim 13 of the ’197 patent. §VIII.A.8.



5, wherein the public priority list is obtained through

system broadcast information.”




the limitation “wherein the public priority list is obtained through system broadcast

information.” in conjunction with claim 2 of the ’197 patent. §VIII.A.2.

167. In that section, I described the “BCCH,” which is the Broadcast

Control Channel, and is disclosed in R2-075161 as carrying the public priority list.

The Broadcast Control Channel is a system broacast channel that carries broadcast

information to a number of terminals on the LTE network. Therefore, it is system

broadcast information.




1, wherein the method further comprises: deleting the

dedicated priority list when the valid time of the

dedicated priority list expires.”



169. I explained how the combination of R2-075161 and R2-080338 render

obvious the limitation that the dedicated priority list is invalid after the valid time

expires in conjunction with claim limitation 1(c) of the ’197 Patent. §VIII.A.1.d.

170. I pointed to the following passage in R2-075161:





Ex. 1005 at Proposal 4 (Emphasis added). As can be seen here, it states that after

the timer expires, the UE is instructed to “discard” the UE specific control

information. One of ordinary skill in the art would recognize that “discarding”

means deleting the dedicated priority list, which is removing it from memory.




[apparatus] of claim 1 [15], wherein the valid time of the

dedicated priority list is controlled through a timer.”



172. I explained how the combination of R2-075161 and R2-080338 render

obvious the limitation that the dedicated priority list is invalid after the valid time

expires in conjunction with claim limitation 1(c) of the ’197 Patent. §VIII.A.1.d.

173. I pointed to the following passage in R2-075161:





Ex. 1005 at Proposal 4 (Emphasis added). As can be seen here, it describes an

“expiry timer.” One of ordinary skill in the art would recognize that the expiry

timer sets a valid time, as once the timer expires, the UE is instructed to discard the

UE specific control information.




1, wherein the valid time of the dedicated priority list is

obtained through a dedicated signaling from the LTE

system.”




the limitation “wherein the valid time of the dedicated priority list is obtained

through a dedicated signaling from the LTE system” in conjunction with claim 5 of

the ’197 patent. §VIII.A.3.



9, wherein the dedicated signaling includes a Radio

Resource Control (RRC) Connection Release message,

the valid time being included in the RRC Connection

Release message”




the limitation “wherein the dedicated signaling includes a Radio Resource Control

(RRC) Connection Release message, the valid time being included in the RRC

Connection Release message” in conjunction with claim 5 of the ’197 patent.

§VIII.A.3.




1 wherein the valid time is included in a dedicated

signaling.”




the limitation “wherein the valid time is included in a dedicated signaling” in




[apparatus] of claim 1 [15], wherein the dedicated

priority list comprises priority information of different

frequencies or priority information of [] different radio

access technologies (RATs).”




the limitation “wherein the dedicated priority list comprises priority information of

different frequencies or priority information of different radio access technologies

(RATs)” in conjunction with claim 6 of the ’197 patent. §VIII.A.4.




12, wherein the priority information comprises priority

information of frequencies of the different RATs.”




the limitation “wherein the priority information comprises priority information of

frequencies of the different RATs” in conjunction with claim 6 of the ’197 patent.

§VIII.A.4.



1, wherein the dedicated priority list comprises frequency

priority information of the LTE system and the non-LTE

system.”




the limitation “wherein the dedicated priority list comprises frequency priority

information of the LTE system and the non-LTE system” in conjunction with

claim 6 of the ’197 patent. §VIII.A.4.


186. In that section, I showed how the frequency priority information as

disclosed in R2-075161 involved both LTE, and other RATs, like the frequencies

of UMTS and GSM..



renders obvious claim 15 of the ’003 Patent.

a) Preamble: “An apparatus, comprising:”


disclosed an “apparatus” in describing the terminal according to the preamble of

claim 7 of the ’197 Patent. §VIII.A.5.a; VIII.A.1.b.

b) Limitation 15(a): “a non-transitory storage medium

including executable instructions; and”


disclosed a non-transitory storage medium and executable instructions in

conjunction with the preamble and limitation 1(a) of the ’003 Patent, above.

§VIII.A.11.a-b.

c) Limitations 15(b): “a processor;” and 15(c): “wherein

the executable instructions, when executed by the

processor, cause the apparatus to:”

190. I explained how the combination of R2-075161 and R2-080338 met

the processor limitation in conjunction with limitation 7(c) of the ’197 patent and

1(a) of the ’003 patent. §VIII.A.5.d; VIII.A.11.b.


d) Limitation 15(d): “receive, when in a cell of a Long


dedicated priority list from the LTE system; and”


the limitation “receive, when in a cell of a Long Term Evolution (LTE) system, a

message including a dedicated priority list from the LTE system” in conjunction

with limitation 1(a) of the ’197 patent. §VIII.A.1.b.

e) Limitation 15(e): “perform, when camping on a cell of a

non-LTE system, cell reselection in accordance with the

received dedicated priority list before a valid time of the



the limitation “perform, when camping on a cell of a non-LTE system, cell

reselection in accordance with the received dedicated priority list before a valid

time of the dedicated priority list expires” in conjunction with limitations 1(b) and

1(c) of the ’197 patent. §VIII.A.1.c-d.


a) “The apparatus of claim 15, wherein, in a situation

where the apparatus camps on the cell of the non-LTE

system and after the valid time of the dedicated priority

list expires, the executable instructions, when executed by

the processor, cause the processor to perform the cell

reselection in accordance with a public priority list

obtained from the LTE network or the non-LTE

network.”





the limitation “wherein, in a situation where the apparatus camps on the cell of the

non-LTE system and after the valid time of the dedicated priority list expires, the

executable instructions, when executed by the processor, cause the processor to

perform the cell reselection in accordance with a public priority list obtained from

the LTE network or the non-LTE network.” in conjunction with claims 2 and 13 of

the ’197 patent. §VIII.A.2, VIII.A.8.




a) Preamble: “a method for inter-system cell reselection,

comprising:”


disclosed a “method for inter-system cell reselection” in conjunction with the

preamble of claim 1 of the ’197 Patent. §VIII.A.1.a.

b) Limitation 1(a): “when a terminal is in a cell of a Long

Term Evolution (LTE) system, receiving, by the terminal,

a message including a dedicated priority list from the

LTE system; and”


disclosed the limitation “when a terminal is in a cell of a Long Term Evolution

(LTE) system, receiving, by the terminal, a message including a dedicated priority


list from the LTE system” in conjunction with limitation 1(a) of claim 1 of the ’197

Patent. §VIII.A.1.b.

c) Limitation 1(b): “when the terminal camps on a cell of a

non-LTE system, performing, by the terminal, the inter-

system cell reselection in accordance with the dedicated

priority list before a valid time of the dedicated priority

list expires.”


disclosed the limitation “when the terminal camps on a cell of a non-LTE system,

performing, by the terminal, the inter-system cell reselection in accordance with

the dedicated priority list before a valid time of the dedicated priority list expires”

in conjunction with limitations 1(b) and 1(c) of claim 1 of the ’197 Patent.

§VIII.A.1.c-d.


a) “The method [terminal] of claim 1 [11], wherein the

message received from the LTE system [is configured to]

comprise[s] a dedicated signaling, the dedicated priority

list being included in the dedicated signaling”




the limitation “wherein the message received from the LTE system [is configured

to] comprise[s] a dedicated signaling, the dedicated priority list being included in

the dedicated signaling” in conjunction with claim 5 of the ’197 patent. §VIII.A.3.



a) “The method [terminal] of claim 1 [11], wherein when

the terminal camps on the cell of the non-LTE system, the

method further comprises [processor is further configred

to]: perform[ing], [by the terminal], the inter-system

cell reselection in accordance with a public priority list

after the valid time expires”




the limitation wherein when the terminal camps on the cell of the non-LTE system,

the method further comprises [processor is further configred to]: perform[ing], [by

the terminal], the inter-system cell reselection in accordance with a public priority

list after the valid time expires” in conjunction with claim 2 of the ’197 patent.

§VIII.A.2.



public priority list is obtained by the terminal from the

LTE system or the non-LTE system”




the limitation “wherein the public priority list is obtained by the terminal from the


LTE system or the non-LTE system” in conjunction with claim 13 of the ’197

patent. §VIII.A.8.



public priority list is obtained by the terminal through

system broadcast information signaled to the terminal.”




the limitation “wherein the public priority list is obtained by the terminal through

system broadcast information signaled to the terminal” in conjunction with claim 6

of the ’003 patent. §VIII.A.16.


a) “The method [terminal] of claim 1[11], further

comprising[wherein the processor is further configured

to]: delete[ing], [by the terminal], the dedicated priority

list when the valid time expires.”




the limitation “wherein the processor is further configured to]: delete[ing], [by the

terminal], the dedicated priority list when the valid time expires” in conjunction

with claim 7 of the ’003 patent. §VIII.A.17.




valid time of the dedicated priority list is controlled

through [by using] a timer”




the limitation “wherein the valid time of the dedicated priority list is controlled

through [by using] a timer” in conjunction with claim 8 of the ’003 patent.

§VIII.A.18.



dedicated priority list comprises [is configured to

comprise] priority information of different radio access

technologies (RATs).”




the limitation “wherein the dedicated priority list comprises [is configured to

comprise] priority information of different radio access technologies (RATs)” in




priority information comprises [is configured to


comprise] priority information of frequencies of the

different RATs.”




the limitation “wherein the priority information comprises [is configured to

comprise] priority information of frequencies of the different RATs” in



a) “The method [terminal] of claim 1[11], wherein the

dedicated priority list comprises [is configured to

comprise] frequency priority information of the LTE

system and the non-LTE system.”




the limitation “wherein the priority information comprises [is configured to

comprise] priority information of frequencies of the different RATs” in






a) [Preamble]: A terminal comprising:


disclose a “terminal” in conjunction with the preamble of claim 7 of the ’197

patent. §VIII.A.5.a.

b) Limitation 11(a): a receiver; and


disclose a “receiver” when describing a first obtaining unit in conjunction with

limitation 7(a) of the ’197 patent. §VIII.A.5.b.

c) Limitation 11(b): “a processor, wherein”


disclose a “processor” when describing a processing unit in conjunction with

limitation 7(c) of the ’197 patent. §VIII.A.5.d.

d) Limitation 11(c): “when the terminal is in a cell of a

Long Term Evolution (LTE) system, the receiver is

configured to receive a message including a dedicated

priority list from the LTE system; and”


disclose the limitation “when the terminal is in a cell of a Long Term Evolution

(LTE) system, the receiver is configured to receive a message including a

dedicated priority list from the LTE system” in conjunction with limitation 1(a) of

the ’197 patent. §VIII.A.1.b.

e) Limitation 11(d): “when the terminal camps on a cell of

a non-LTE system, the processor is configured to perform


inter-system cell reselection in accordance with the

dedicated priority list before a valid time of the dedicated

priority list expires.”


disclose the limitation “when the terminal camps on a cell of a non-LTE system,

the processor is configured to perform inter-system cell reselection in accordance

with the dedicated priority list before a valid time of the dedicated priority list

expires” in conjunction with limitations 1(b) and 1(c) of the ’197 patent.

§VIII.A.1.c-d.

38. Motivation to Combine R2-075161 and R2-080338

223. One of ordinary skill in the art would be motivated to combine all of

the teachings in R2-075161, and apply them to the teachings of R2-080338.

Essentially, one of ordinary skill in the art would be motivated to use the “list”

disclosed in R2-075161 as implemented in R2-080338, where the list is obtained

from an LTE cell and used for cell reselection while in a non-LTE cell.

224. One of ordinary skill in the art would have already known, at the time

of the invention, the LTE network providing priority information and a validity

timer. TS 36.304, v. 2.0.0 was published in October 2007, and is an early verision

of the LTE standard. It discloses the LTE network providing “absolute priorities”

which are priorities of different frequencies and a validity timer for those priorities.


Ex. 1010 at §5.2.4.1, The priorities and validity timer are provided in a dedicated

message – specifically, an RRC connection release message. Id.

225. With this knowledge, one of ordinary skill in the art would be

motivated to combine R2-075161 and R2-080338. Both references were

contributions made during the RAN2 3GPP meetings, where the participants were

developing technology for the LTE network, and specifically trying to develop the

procedure for cell reselection for inter-RAT communications for the UE. The

references show one of ordinary skill in the art that the LTE developers intended to

build upon the technology already in the standard.

226. For example, R2-075161 was presented during 3GPP TSG-RAN

WG2 Meeting #60, on November 5-6, 2007. By that time, using a UE specific

priority control – or dedicated priority list – had already been discussed during a

previous meeting. Ex. 1005 at 1. The only thing that had not been decided at the

earlier meeting were the specifics of the implementation. Id. The authors of R2-

075161 set forth those specifics.

227. R2-080338 was proposed at the next meeting – meeting #60bis held

on January 14-18, 2008. Ex. 1007 at 1. It references other documents discussed at

meeting #60, and demonstrates that the participants considered other proposals

from the previous meeting. One of ordinary skill in the art would certainly

combine the teachings of R2-075161 and R2-080338 when determining


implementation of cell reselection in inter-RAT systems. In fact, combining

references like this was and is common in the standards setting process.


B. Ground 2: Claims 7-9, and 14-15 of the ’197 Patent, Claims 1-20

of the ’003 Patent, and Claims 11-20 of the ’246 Patent Are

Obvious In View of R2-075161 and R2-080338 and in further view

of Eerolainen

228. Above, I explained my opinions that R2-075161 and R2-080338

rendered obvious all of the limitations of the challenged claims. I also explained

how one of ordinary skill in the art would know that hardware and software

limitations, such as a receiver, memory, processor, and executable instructions are

inherent in R2-075161 and R2-08033.

229. One of ordinary skill in the art would also combine these two

references with Eerolainen. Eerolainen also relates to cell reselection in LTE and

non-LTE cells. Eerolainen explicitly describes all of the hardware and software

components that one of ordinary skill in the art would recognize are inherent in

every terminal or UE.

230. For the reasons below, it is my opinion that claims 7-9, and 14-15 of

the ’197 Patent, claims 1-20 of the ’003 Patent, and claims 11-20 of the ’246 patent

should be canceled as obvious in view R2-075161 in combination with R2-080338,

and further in view of Eerolainen.


231. It is my opinion that the combination of R2-075161, R2-080338, and

Eerolainen renders obvious claim 7 of the ’197 Patent.



232. As explained above, it is my opinion that R2-075161 and R2-080338

disclose a “terminal.” §VIII.A.5(a).

233. Eerolainen explicitly discloses a terminal. Figure 1 of Eerolainen

explicitly shows all of the components that one of ordinary skill in the art would

recognize are part of any UE:

Ex. 1006 at Figure 1. The “terminal” is shown as number 10. The terminal is a

UE.


b) Limitation 7(a): “a first obtaining unit, configured to

obtain a dedicated priority list and a valid time of the

dedicated priority list from a Long Term Evolution (LTE)

system;”

234. As disclosed above, it is my opinion that R2-075161 and R2-080338

disclose or render obvious in combination claim limitation 7(a) of the ’197 patent.

§VIII.A.5.b.

235. To the extent R2-075161 and R2-080338 do not inherently disclose a

first obtaining unit, it is my opinion that one of skill in the art would combine the

disclosure of R2-075161 and R2-080338 with Eerolainen, which explicitly

discloses a first obtaining unit in the terminal. Above, I explained that an

“obtaining unit” is a receiver. In the context of Figure 1, Eerolainen explains:

Further, while described generally in the context of a UE

10 having a single receiver (single transceiver), the exemplary embodiments of this invention may be used as well with those UEs that include a plurality of receivers, such as those adapted for use in different frequency bands possibly using different modulation and coding schemes and different access technologies.”

Ex. 1006 at ¶ 144 (emphasis added). Therefore, one of ordinary skill in the art

would recognize that Eerolainen describes UEs including both a single receiver,

and more than one receiver. Figure 1, which is copied above, also shows a

“wireless link.” One of ordinary skill in the art recognizes that for a UE to

communicate on any wireless network, it needs a receiver.


c) Limitation 7(b) “a storage unit, configured to store the


priority list.”


disclose or render obvious in combination claim limitation 7(b). §VIII.A.5.c.

237. Eerolainen explicitly discloses a “storage unit,” which I explained

above is a “memory.” The memory is shown as element 10B in UE 10 in Figure 1

of Eerolainen. Eerolainen also provides a description about that memory:

The MEMs 10B, 12B and 14B may be of any type suitable to the local technical environment and may be implemented using any suitable data storage technology, such as semiconductor-based memory devices, magnetic memory devices and systems, optical memory devices and systems, fixed memory and removable memory.

Ex. 1006 at ¶68. This memory that is described would also be known to one of

ordinary skill in the art as a non-transitory computer readable medium. That is

because it stores data and executable instructions that can be read by a computer

(e.g., a processor).

238. One of ordinary skill in the art would recognize that this memory can

store any sort of data, including executable instructions to carry out the cell

reselection procedures. Those instructions are executable by a computer or

processor. The memory can also store a valid time or a dedicated or public priority

list.


239. For example, Eerolainen explains that the memory stores a multi-

RAT priority list:

In accordance with the exemplary embodiments of this invention the NW (e.g., the PS 12E in cooperation with the MRHC function 12F) includes logic to construct a multi-RAT priority list as discussed below, to signal the constructed multi-RAT priority list to the UE 10, and the UE 10 includes memory (e.g., the memory 10B) for storing the multi-RAT priority list, shown in Fig. 1 as the MRPL 10E. The use of the multi-RAT priority list 10E provides a simple way to manage the complexity involved when the UE 10 operates with multi-RATs, as described in further detail below.

Id. at ¶69.

d) Limitation 7(c): “a processing unit, configured to



list stored in the first storage unit when the terminal

camps on a non-LTE system”


renders obvious in combination claim limitation 7(c). §VIII.5.d.

241. One of ordinary skill in the art would also note that Eerolainen

explicitly discloses the claimed processor in a UE, and also explicitly teaches

computer program code including executable instructions to perform cell

reselection. Id. Figure 1 shows a data processor as 10A that executes the program

10C stored on memory 10B, all on the user equipment 10, which is a terminal

device. Ex. 1006 at Figure 1. One of ordinary skill in the art would know that this


data processor is like the data processors that are in all UEs, and would execute the

instructions as claimed. Eerolainen also explains that the program 10C includes

instructions that “when executed by [data processor 10A], enable[s] the electronic

device to operate in accordance with the exemplary embodiments of the

invention.” Id. at ¶63. Further describing the data processor 10, Eerolainen states

that it may include “general purpose computers, special purpose computers,

microprocessors, digital signal processors (DSPs) and processors based on a multi-

core processor architecture, as non-limiting examples.” Id. at ¶68.

242. One of ordinary skill in the art would also recognize that Eerolainen

explicitly teaches the processor 10A executing computer instructions to perform a

method of cell reselection. It discloses a multi-RAT priority list that is sent to the

UE. Ex. 1006 at ¶¶69-70. The “multi-RAT priority list 10E may contain

identifying information for all RATs that the [network] supports and/or that the

[network] wants the UE 10 to prefer in a particular geographical area.” Id. at ¶70.

Therefore, one of ordinary skill in the art would recognize that this processor can

process instructions to perform the cell reselection procedures described in the

claim.

e) Limitation 7(d): “wherein, when the terminal camps on a

cell of the non-LTE system, the performing cell










Eerolainen render obvious limitation 7(d) of the ’197 Patent for the same reasons

R2-075161 and R2-080338 render obvious limitation 7(d). §VIII.A.5.e.

2. ’197 Patent, Claims 8, 9, and 14

a) Claim 8: “The terminal according to claim 7, wherein

the dedicated priority list and the valid time of the

dedicated priority list are carried in a dedicated signal.

b) Claim 9: “The terminal according to claim 7, wherein

the dedicated priority list comprises one of the following:

priority level of a frequency or a Radio Access

Technology, RAT; or priority levels of the frequency of

the serving cell, adjacent frequencies of the serving cell,

and frequencies of the neighboring systems; or priority

levels assigned for each frequency or Frequency Band of

a neighboring system.”

c) Claim 14: “The terminal according to claim 7, wherein

when the terminal camps on the cell of the non-LTE

system, the processing unit is further configured to


priority list before the valid time expires.”


Eerolainen render obvious claims 8-9 and 14 of the ’197 Patent for the same

reasons R2-075161 and R2-080338 render obvious claims 8-9, and 14 of the ’197

Patent. §VIII.A.6-7, 9.



a) “The terminal according to claim 14, further comprising:

a second obtaining unit, configured to obtain a public

priority list from one of the LTE system and the non-LTE

system; a second storage unit, configured to store the

public priority list; and a second processing unit,

configured to perform cell reselection according to a

public priority list, when the terminal camps on the cell

of the non-LTE system and the dedicated priority list is

invalid after the valid time expires.”

245. As I explained above, it is my opinion that R2-075161 and R2-080338

render obvious claim 15 of the ’197 Patent. §VIII.A.10.

246. In addition, I explained how Eerolainen explicitly disclosed a first

obtaining unit, a storage unit, and a processing unit. §VIII.B.1.b-d. I also

explained how Eerolainen explicitly disclosed a second obtaining unit.

§VIII.B.1.b. One of ordinary skill in the art would also recognize that they could

use either the same obtaining unit, storage unit, or processing unit disclosed above

in Eerolainen, or add an additional one. One of ordinary skill in the art would

recognize that all of these components could be used for more than one function,

In the case of this claim, they could be used in both the instances where the UE

receives, stores and performs cell reselection using the dedicated priority list, and

where the UE receives, stores and performs cell reselection using a public priority

list.




Eerolainen renders obvious claim 1 of the ’003 Patent.

a) Preamble: “A non-transitory computer readable

medium, comprising”


disclose or render obvious in combination the preamble of claim 1 of the ’003

patent. §VIII.A.11.a.

249. I explained how Eerolainen explicitly disclosed a non-transitory

computer readable medium in conjunction with claim limitation 1(b) of the ’197

Patent. §VIII.B.1.c.

b) Limitation 1(a): “a computer program code including

executable instructions, which, when executed by a

terminal device, cause the terminal device to perform a

method for cell reselection as follows”


disclose or render obvious in combination limitation1(a) of the ’003 patent.

§VIII.A.11.b.

251. I explained how Eerolainen explicitly disclosed computer program

code including executable instructions that could be executed by a processor in

conjunction with claim limitations 1(b) and 1(c) of the ’197 Patent. §VII.B.1.c-d.

c) Limitation 1(b): “receiving, when in a cell of a Long


dedicated priority list from the LTE system; and” and


1(c) “performing, when camping on a cell of a non-LTE

system, the cell reselection in accordance with the

received dedicated priority list before a valid time of the



Eerolainen render obvious limitations 1(b) and 1(c) of the ’003 Patent for the same

reasons R2-075161 and R2-080338 render obvious limitations 1(b) and 1(c).

§VIII.A.11.c-d.

2. ’003 Patent, Claims 2-14


Eerolainen render obvious claims 2-14 of the ’003 Patent for the same reasons R2-

075161 and R2-080338 render obvious claims 2-14. §VIII.A.12-24.



Eerolainen render obvious claim 15 of the ’003 Patent.

a) Preamble: “An apparatus, comprising:”


render obvious in combination the preamble of claim 15 of the ’003 patent.

§VIII.A.25.b.

256. It is my opinion that the R2-075161, R2-080338, and Eerolainen

render obvious in combination the preamble of claim 15 for the same reason they


render obvious the preamble of claim 7 of the ’197 patent. A “terminal” is an

“apparatus.” §VIII.B.1.a.

b) Limitation 15(a): “a non-transitory storage medium

including executable instructions; and”


render obvious in combination limitation 15(a) of the ’003 patent. §VIII.A.25.b.

258. I explained how Eerolainen explicitly disclosed a non-transitory

storage medium including executable instructions in conjunction with claim

limitations 1(b) and 1(c) of the ’197 Patent. §VIII.B.1.c-d.

c) Limitation 15(b): “a processor;” and 15(c): “wherein

the executable instructions, when executed by the

processor, cause the apparatus to:”

259. As described above, it is my opinion that R2-075161 and R2-080338

render obvious in combination limitation 15(b) of the ’003 patent. §VIII.A.25.c.

260. I explained how Eerolainen explicitly disclosed a processor that can

execute instructions in conjunction with claim limitations 1(b) and 1(c) of the ’197

Patent. §VIII.B.1.c-d.


d) Limitations 15(d): “receive, when in a cell of a Long


dedicated priority list from the LTE system; and” and

15(e): “perform, when camping on a cell of a non-LTE

system, cell reselection in accordance with the received

dedicated priority list before a valid time of the dedicated

priority list expires.”


Eerolainen render obvious limitations 15(d) and 15(e) of the ’003 Patent for the

same reasons R2-075161 and R2-080338 render obvious limitations 15(d) and

15(e) of the ’003 Patent. §VIII.A.25.d-e.



Eerolainen render obvious claims 16-20 of the ’003 Patent for the same reasons

R2-075161 and R2-080338 render obvious claims 16-20 of the ’003 Patent.

§VIII.A.12-13,18, 22, 26.



Eerolainen render obvious claim 11 of the ’246 Patent.



render obvious in combination the preamble of claim 11 of the ’246 patent.

§VIII.A.37.a.


265. I explained how Eerolainen explicitly disclosed a “terminal” in

conjunction with the preamble of claim 7 of the ’197 Patent. §VIII.B.1.a.

b) Limitation 11(a) “a receiver; and”


render obvious in combination limitation 11(a) of the ’246 patent. §VIII.A.37.b.

267. I explained how Eerolainen explicitly disclosed a “receiver” when

describing the first obtaining unit in conjunction with limitation 7(a) of the ’197

Patent. §VIII.B.1.b.

c) Limitation 11(b): “a processor, wherein”


render obvious in combination limitation 11(b) of the ’246 patent. §VIII.A.37.c.

269. I explained how Eerolainen explicitly disclosed a “processor” when

describing the processing unit in conjunction with limitation 7(c) of the ’197

Patent. §VIII.B.1.d.

d) Limitation 11(c) “when the terminal is in a cell of a

Long Term Evolution (LTE) system, the receiver is

configured to receive a message including a dedicated

priority list from the LTE system; and” 11(d) “when the

terminal camps on a cell of a non-LTE system, the

processor is configured to perform inter-system cell

reselection in accordance with the dedicated priority list

before a valid time of the dedicated priority list expires.”


Eerolainen render obvious limitations 11(c) and 11(d) of the ’246 Patent for the


same reasons R2-075161 and R2-080338 render obvious limitations 11(c) and

11(d) of the ’246 Patent. §VIII.A.37.d-e..


a) “The terminal of claim 11, wherein the message received

from the LTE system is configured to comprise a

dedicated signaling, the dedicated priority list being

included in the dedicated signaling.”


Eerolainen render obvious claims 12-20 of the ’246 Patent for the same reasons

R2-075161 and R2-080338 render obvious claims 12-20 of the ’246 Patent.

§VIII.A.28-36.

7. Motivation to Combine R2-075161, R2-080338, and

Eerolainen

272. It is my opinion that one of ordinary skill in the art would be

motivated to combine R2-075161, R2-080338, and Eerolainen. I’ve set forth above

my opinions as to why a person of ordinary skill in the art would be motivated to

combine R2-075161 and R2-080338. See § VIII.A.38. Eerolainen relates to inter-

RAT cell reselection for LTE. Ex. 1006 at ¶¶ 34-37 (“It may be anticipated that

future mobile devices . . . will support several RATs (e.g. 2G/3G/3.9G and

beyond). In order to provide seamless service to the UE in a case where it moves

outside of the coverage of a current “camped on”/active RAT, measurement

reports need to be sent to the NW…”).


273. Like R2-075161 and R2-080338, one of ordinary skill in the art would

recognize that Eerolainen was also specifically proposed for the LTE

standardization process:

As employed herein a 3.9G RAT is assumed to be on compatible with EUTRAN, also referred to as UTRAN-LTE, for which specification and standardization efforts are on-going. A 2G RAT may be compatible with, as non-limiting examples, GPRS/EDGE, GSM or PDF, while a 3G RAT may be one compatible with, as non-limiting examples, UMTS, WCDMA and CDMA2000.

Ex. 1006 at ¶ 61. Because all three references relate to the standardization process

for LTE, and specifically, cell reselection, a person of ordinary skill in the art

would be motivated to apply the teachings of Eerolainen to the teachings of R2-

075161 and R2-080338. Like the proposals, it is typical for those involved in the

standards process to look at all of the different proposals and ideas set forth to

continue to build upon them for the standardization process.

274. Nokia Corporation is the assignee of Eerolainen and is also the author

and source for R2-080338. As mentioned above, Nokia, as a 3GPP member, was

very involved in developing the standard for cell reselection in an inter-RAT

system in an LTE network, and would have considered all of the different

proposals to develop this technology. Accordingly, one of skill in the art would

have combined Nokia’s references related to this technology to disclose the ‘197

invention.


275. Because R2-075161, R2-080338, and Eerolainen all relate to inter-

RAT cell reselection during LTE network development, and each provides explicit

motivation to combine the teachings with each other, it would have been natural

for a person of ordinary skill in the art to read the two documents together and

combine the references in the manner shown herein.

C. Secondary Considerations

276. I understand that Patent Owner has not identified any evidence of

secondary considerations, either in the prosecution history or in the related district

court litigation. Having worked in the field and reviewed the prior art and relevant

3GPP submissions, I am not aware of any evidence of secondary considerations

supporting a finding of non-obviousness. Instead, it is my opinion that the alleged

invention of the Cell Reselection Patents was a routine and commonsense

development. As discussed above, evidence from the standard development

process shows that multiple different contributors reached the same conclusion and

proposed the same solution as the inventors of the Cell Reselection Patents.

277. For example, R2-075161 discloses the same solutions as the inventors

of the cell reselection patents proposed: a UE obtaining a priority list from an LTE

network and then using that same list for cell reselection on a non-LTE network.

R2-075161 even disclosed the use of a timer, and expiration of the dedicated

priority list when the timer expired and subequent use of a public priority list.


Moreover, the authors of R2-080338 disclosed the same concept. The concept

involved RAT priorities that were obtained from an LTE network, and

subsequently stored by the UE and used for cell reselection when on a non-LTE

cell. I am not aware of these other contributors attempting to patent their solution

or otherwise hold it out as novel or inventive, and I would not expect them to.

IX. CONCLUSION

278. Based on my findings above, it is clear to me that the challenged

claims of the ’197 Patent, the ’003 Patent, and the ’246 Patent are not patentable in

view of the prior art presented herein.

I hereby declare that all statements made herein of my own knowledge are

true and that all opinions expressed herein are my own; and further that these

statements were made with the knowledge that willful false statements and the like

are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of

the United States Code.

Date:

Tim A. Williams, Ph.D.

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