Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 43
`Entered: January 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATION, ZTE (USA), AMAZON.COM, INC.,
`PANTECH CO., LTD., PANTECH WIRELESS, INC., DELL INC.,
`LG ELECTRONICS, INC., and LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`Case IPR2014-01135
`Patent 6,377,804
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, GREGG I. ANDERSON and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) AND 37 C.F.R. § 42.73
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 43
`Entered: January 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HTC CORPORATION, ZTE (USA), AMAZON.COM, INC.,
`PANTECH CO., LTD., PANTECH WIRELESS, INC., DELL INC.,
`LG ELECTRONICS, INC., and LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner.
`
`Case IPR2014-01135
`Patent 6,377,804
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, GREGG I. ANDERSON and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) AND 37 C.F.R. § 42.73
`
`
`
`
`
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`IPR2014-01135
`Patent 6,377,804
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`INTRODUCTION
`
`Background
`A.
`NEC Corporation of America, NEC Mobile Communications, Ltd.,1
`HTC Corporation, Amazon.com, Inc., ZTE (USA), Inc., Pantech Co., Ltd.,
`Pantech Wireless, Inc., Dell Inc., LG Electronics, Inc., and LG Electronics
`U.S.A., Inc. (collectively, “Petitioner”), filed a Corrected Petition (Paper 4,
`“Pet.”) requesting an inter partes review of claims 1–12 of U.S. Patent No.
`6,377,804 (Ex. 1001, “the ’804 patent”). Patent Owner, Cellular
`Communications Equipment LLC, filed a Preliminary Response. Paper 9
`(“Prelim. Resp.”). On January 20, 2015, we instituted a review (Paper 11,
`“Institution Decision” or “Inst. Dec.”) based upon Petitioner’s assertion that
`(1) claims 1, 3, and 5–9 are anticipated by Sasuta,2 and (2) claims 1, 3, 4, 6,
`and 7 are anticipated by Lawrence.3
`This is a Final Written Decision under 35 U.S.C. § 318(a). For the
`reasons set forth below, Petitioner has not shown by a preponderance of the
`evidence that claims 1 and 3–9 of the ’804 patent (“the challenged claims”)
`are unpatentable.
`
`Related Proceedings
`B.
`The parties indicate that the ’804 patent is the subject of several
`proceedings in the United States District Court for the Eastern District of
`Texas. Pet. 1–2; Paper 6, 2–3.
`
`1 NEC Mobile Communications, Ltd. was formerly known as NEC CASIO
`Mobile Communications, Ltd. Paper 8, 2. NEC Corporation of America
`and NEC Mobile Communications, Ltd. were dismissed on February 12,
`2015. Paper 20, 2–3.
`2 U.S. Patent No. 5,862,490 (“Sasuta”).
`3 U.S. Patent No. 5,819,173 (“Lawrence”).
`
`2
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`The ’804 Patent
`C.
`The ’804 patent relates to mobile communication systems. Ex. 1001,
`Title. Specifically, the ’804 patent discusses the coexistence of a variety of
`mobile telephone standards, including new generation standards that are
`implemented with the expectation that they will eventually supersede older
`standards. Id. at 1:14–27. The ’804 patent explicitly discusses GSM,
`TDMA, and the Universal Mobile Telecommunication System (“UMTS”)
`communication standards. Id. at 1:15–27. Networks using these
`communication standards may coexist and frequently differ in both
`geographical coverage and scope of services provided. Id. at 2:11–20. This
`results in certain geographical areas being covered by more than one
`network, each using a different communication standard and providing
`differing services. Id. The ’804 patent describes taking advantage of this
`overlap by transferring from a network operating on one standard to a
`second network operating on a different standard when a mobile
`communication device requests a service provided by the second network,
`but not the first network. Id. at 1:65–2:10.
`As an example, the ’804 patent describes the situation in Europe in
`which the more recently implemented UMTS networks likely have only
`limited geographical coverage, at least for an initial period of time. Id. at
`3:17–20. Figure 1 of the ’804 patent is reproduced below.
`
`
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`Figure 1 shows schematically the geographical coverage of two
`networks. Id. at 3:3–5. Area 1, which falls wholly within area 2, illustrates
`the coverage provided by the UMTS network. Id. at 20–22. Area 2
`represents a pre-existing GSM network. Id. Figure 2 of the ’804 patent is
`reproduced below.
`
`
`Figure 2 shows a diagram of the architectures of the networks shown
`in Figure 1. Id. at 3:6–7. Mobile station 3 communicates with either UMTS
`base station subsystem 4 or GSM base station subsystem 6. Id. at 3:46–49.
`To provide seamless operation when mobile station 3 moves between
`network coverage areas, the two core networks, 5 and 7, cooperate according
`to a roaming agreement. Id. at 3:49–51. In the situation where mobile
`station 3 is registered with the GSM network of area 2 as its home public
`land mobile network (HPLMN), and requires the use of a service provided
`by a UMTS network, but not the GSM network, mobile station 3 must
`“roam” for that service. Id. at 3:52–59. This activity is referred to as
`“roaming for service” and differs from traditional “roaming for coverage”
`defined in the GSM specification. Id. at 3:56–61, 3:66–4:4. Roaming for
`
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`service, unlike roaming for coverage, does not require location updates or
`location registration because the mobile station can remain registered with
`its home network, which knows the location of the mobile station. Id. at
`2:66–4:3. Figure 3 of the ’804 patent is reproduced below.
`
`
`Figure 3 is a flow chart of mobile station 3 operating in the coverage
`area of the networks shown in Figure 1. Id. at 3:8–9. Figure 3 illustrates
`that mobile station 3 will select the HPLMN “so long as that network is
`available and the selected service is provided by the HPLMN.” Id. at 3:61–
`65.
`
`Illustrative Claim
`D.
`Of the challenged claims in the ’804 patent, claim 14 is independent.
`Claims 3–9 depend, either directly or indirectly, from claim 1. Claim 1 is
`reproduced below.
`
`
`4 Subsequent to the filing of the Petition, a Certificate of Correction was
`issued changing the language of claim 1. Ex. 2001, 12. This decision will
`refer exclusively to this corrected version of claim 1 (discussed in the
`Petition as “claim 1 as allowed but not issued”).
`
`5
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`A method of operating a mobile communication device
`1.
`within a geographical area having overlapping coverage from
`first and second mobile telephone networks, where said first
`network is the home network of the mobile communication
`device and said first and second networks provide respective
`first and second sets of services in said geographical area, the
`method comprising the steps of:
`choosing a desired service to be requested;
`determining if the desired service belongs to said first set;
`
`and
`
`if the desired service belongs to said first set, then
`registering the device with said first network,
`
`if the desired service does not belong to said first set,
`then registering the device with said second network if the
`desired service belongs to said second set.
`
`ANALYSIS
`A. Identification of Real Parties in Interest
`The Petition identifies several real parties in interest. Pet. 1. Based
`on the information in the Petition and Preliminary Response, we did not
`identify any issues under 35 U.S.C. § 312(a)(2) or § 315(b), and we
`instituted an inter partes review. See Inst. Dec. 2. Patent Owner argues in
`its Response that NEC Corporation and HTC America are real parties in
`interest that are not identified in the Petition. Paper 29 (“PO Resp.”) 2.
`According to Patent Owner, the Institution Decision should be vacated
`because, under 35 U.S.C. § 312(a)(2), a petition that does not identify all the
`real parties in interest cannot be considered. Id. For the reasons discussed
`below, we do not vacate the Institution Decision.
`
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`1. NEC Corporation
`The Petition identifies NEC Corporation of America (“NEC
`America”) and NEC Mobile Communications, Ltd.5 (“NEC Mobile”) as real
`parties in interest. Pet. 1. Patent Owner argues that the Petition also should
`have identified NEC Corporation as a real party in interest because NEC
`Corporation controlled the participation of NEC America and NEC Mobile
`in this case. PO Resp. 8. Specifically, Patent Owner argues that NEC
`Corporation executed a Settlement Agreement with Patent Owner that
`required NEC America and NEC Mobile to withdraw from this case. Id. at
`9–10. Patent Owner also argues that certain statements in the Motion to
`Terminate NEC America and NEC Mobile demonstrate that NEC
`Corporation controlled the participation of NEC America and NEC Mobile
`in this case. Id. at 8–9.
`Patent Owner and NEC Corporation executed the Settlement
`Agreement that allegedly demonstrates NEC Corporation’s control with
`respect to this case on November 17, 2014. Id. at 6. Because Patent Owner
`is a party to the Settlement Agreement, Patent Owner knew of its terms at
`that time. Id. Thus, Patent Owner could have raised the issue of whether
`NEC Corporation is a real party in interest when the Settlement Agreement
`was executed, but did not. Patent Owner, NEC America, and NEC Mobile
`filed the Motion to Terminate that allegedly demonstrates NEC
`Corporation’s control with respect to this case on February 6, 2015. Paper
`19. Because Patent Owner signed the Motion to Terminate, Patent Owner
`knew of the statements therein at that time. Id. at 7–8. Thus, Patent Owner
`
`
`5 NEC Mobile Communications, Ltd. was formerly known as NEC CASIO
`Mobile Communications, Ltd. Paper 8, 2.
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`also could have raised the issue of whether NEC Corporation is a real party
`in interest when the Motion to Terminate was filed, but did not.
`Patent Owner instead waited until after we granted the Motion to
`Terminate and dismissed NEC America and NEC Mobile from this case to
`argue that NEC Corporation had controlled their participation. Ex. 2002,
`19:18–25:18. The result of Patent Owner’s delay is that the parties whose
`conduct is in question no longer are involved in this case. Patent Owner
`previously assured the remaining parties and the Board that “NEC’s
`termination from the IPRs [would] have little, if any, impact on the
`remaining parties or the Board.” Paper 19, 5. Yet, now, Patent Owner seeks
`the extraordinary remedy of terminating this case in its entirety based on
`statements made in the documents that secured the dismissal of NEC
`America and NEC Mobile (documents which the remaining parties did not
`sign). Given Patent Owner’s delay and previous assurances regarding the
`dismissal of NEC America and NEC Mobile, we decline to terminate this
`case with respect to the remaining parties. See 37 C.F.R. § 42.12.
`
`HTC America
`2.
`The Petition identifies HTC Corporation as a real party in interest.
`Pet. 1. Patent Owner argues that HTC America should have been identified
`as a real party in interest in the Petition because of the relationship between
`HTC America and HTC Corporation. PO Resp. 12–19. Specifically, Patent
`Owner argues that: 1) HTC America is a wholly owned subsidiary of HTC
`Corporation (id. at 12); 2) HTC America and HTC Corporation often act
`jointly in other cases (id. at 12–15); 3) HTC America and HTC Corporation
`share inside and outside counsel (id. at 13–14); 4) the power of attorney for
`HTC Corporation was signed on behalf of an HTC America employee (id. at
`
`8
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`14); and 5) HTC America is identified as a real party in interest in most
`other petitions for inter partes review that identify HTC Corporation as a
`real party in interest (id. at 15–16). Patent Owner’s argument is not
`persuasive.
`Whether a party is a real party in interest is a “highly fact-dependent
`question” that is evaluated “on a case-by-case basis.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of
`the common considerations for determining whether a party is a real party in
`interest include whether the party funds, directs, or controls the petition or
`proceeding. Id. at 48,760. Here, Patent Owner does not identify any
`evidence indicating that HTC America funds, directs, controls, or otherwise
`is involved in this petition or proceeding. Patent Owner’s argument that
`HTC America and HTC Corporation acted jointly in other cases and that
`HTC America is named as a real party in interest in other cases does not
`indicate that HTC America is a real party in interest in this case. Similarly,
`Patent Owner’s argument that HTC America and HTC Corporation share
`counsel does not indicate that HTC America funds, directs, controls, or
`otherwise is involved in this case.
`The only evidence specifically related to this proceeding is that an
`employee of HTC America is identified on the power of attorney for HTC
`Corporation. PO Resp. 12–18; see also, Ex. 2022, 24:20–25:6 (Transcript of
`conference call with the Board: counsel for Patent Owner “So if we want to
`talk about evidence specific to these cases, it’s this power of attorney in the
`1135 case.”). We are not persuaded that this evidence, by itself, is sufficient
`to indicate that HTC America is a real party in interest in this case. There is
`no dispute that the actual signature on the power of attorney is from an
`
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`employee of HTC Corporation. See PO Resp. 14; Paper 33 (“Reply”) 23.
`And Petitioner represents that the reference to an HTC America employee
`on the document was a simple oversight. Reply 23. Patent Owner does not
`provide evidence to the contrary.
`
`B. Claim Construction
`We construe all claim terms using the broadest reasonable
`construction in light of the ’804 patent specification. 37 C.F.R. § 42.100(b).
`To properly resolve the issues presented in this proceeding, we address
`explicitly the term “home network.”
`The term “home network” appears only in the preamble of claim 1. A
`preamble “is not limiting where a patentee defines a structurally complete
`invention in the claim body and uses the preamble only to state a purpose or
`intended use for the invention.” Catalina Marketing Int’l v.
`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal
`quotation marks omitted). Id. A preamble, however, “limits the invention if
`it recites essential structure or steps, or if it is necessary to give life,
`meaning, and vitality to the claim.” For example, “dependence on a
`particular disputed preamble phrase for antecedent basis may limit claim
`scope because it indicates a reliance on both the preamble and claim body to
`define the claimed invention.” Id.
`Both parties agree that, although it is part of the preamble, the term
`“home network” acts as a limitation of claim 1. PO Resp. 25; Paper 42
`(“Tr.”), 5–6 (Petitioner’s counsel: “We think that home network is
`limiting.”), 12–13 (Petitioner’s counsel: “Since the preamble, we agreed, is
`limiting . . .”). We agree that the preamble limits the scope of the challenged
`claims. The body of claim 1 refers to “said first network,” which refers to
`
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`the “first . . . mobile telephone network[]” recited in the preamble. The
`preamble further defines “said first network is the home network of the
`mobile communication device.” We are persuaded that this language
`“indicates a reliance on both the preamble and claim body to define the
`claimed invention” and is not merely a statement of intended purpose or
`intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s
`Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).
`Patent Owner proposes a broadest reasonable interpretation of “home
`network”—“the network that the mobile communication device is
`preconfigured to access first.” PO Resp. 25. According to Patent Owner,
`several examples described in the ’804 patent, including those illustrated by
`Figures 3, 4a, and 4b, support this interpretation by showing a mobile station
`that is “preconfigured to access [the] home network first.” Id. at 25–27
`(citing Ex. 1001, Figs. 3, 4a, 4b, 3:22–29, 3:61–65). Petitioner proposes a
`competing interpretation for the term—“the network to which the mobile
`stations subscribe.” Reply 3. Petitioner argues that there is “a clear and
`unambiguous definition” of the term in the specification. Id. (quoting Ex.
`1001, 1:41–42 (“the ‘home’ network (i.e. the network to which the mobile
`stations subscribe”)).
`We agree with Petitioner that the broadest reasonable interpretation of
`“home network” is “the network to which a mobile station subscribes,” as
`explicitly defined in the specification. Ex. 1001, 1:40–47. Nothing in the
`’804 patent indicates that the patentee intended to modify this definition. In
`particular, the word “preconfigure” in Patent Owner’s proposed construction
`is never recited in the ’804 patent. We, therefore, are not persuaded that
`limiting the term “home network” in such a way is proper.
`
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`
`
`C. Anticipation by Sasuta
`Petitioner asserts that Sasuta anticipates claims 1, 3, and 5–9. Pet. 3–
`32, 49–52. A claim is anticipated if each limitation of the claim is disclosed
`in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
`VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We have considered
`the parties’ arguments and supporting evidence, and we determine that
`Petitioner has not shown by a preponderance of the evidence that claims 1,
`3, and 5–9 are anticipated by Sasuta.
`
`1. Overview of Sasuta
`Sasuta discloses creating a catalog of service providers. Ex. 1010,
`2:43–46 (“According to the inventive method, the communication unit
`catalogues the service attributes for each of the plurality of service providers
`so that a determination can be made as to which service providers are
`necessary to meet their service requirements.”). “[F]or each of the plurality
`of service requirements, one of the plurality of service providers is selected
`concurrently in order to facilitate that service requirement.” Id. at 2:46–49.
`Figure 3 of Sasuta is reproduced below.
`
`
`
`12
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`Figure 3 shows one portion of a centralized catalog of service attributes. Id.
`at 3:44–54. The catalog includes column 302, storing service provider
`identifiers, column 304, storing the provider’s communication service types,
`and column 306, storing affiliated communication units. Id. Sasuta
`describes communication unit 1012 as requiring the service slow data
`(“DATA-S”) and communication unit 1001 requiring the services fast data
`(“DATA-F”) and telephone interconnect (“TELE”). Id. at 3:63–4:16. Based
`on these requirements, communication unit 1012 chooses provider 101 for
`slow data and unit 1001 chooses provider 102 for fast data. Id. All three
`providers 101, 102, and 103 provide the telephone interconnect service and
`Sasuta discloses that, “since communication unit 1025 has already affiliated
`with service provider 102 (as indicated by record 316) for such services,
`service provider 103, with no currently active affiliation, is chosen to
`provide the telephone interconnect service for communication unit 1001, as
`indicated by record 320.” Id. at 4:7–16.
`Figure 4 of Sasuta is reproduced below.
`
`
`Figure 4 shows another portion of Sasuta’s centralized catalog. Ex. 1010,
`2:19–21. The catalog includes column 410, storing service provider
`identifiers, column 403, storing characteristics of signal quality, 405, storing
`resource usage, and column 407, storing resource availability. Id. at 4:55–
`
`13
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`61. Sasuta discloses a preferred embodiment in which a desired service
`requires both signal quality and resource availability to be optimized. Id. at
`6:1–7. According to Sasuta, under these circumstances, “the communication
`unit would select service provider 102 for this service, as it has the best
`signal quality and the next best resource availability.” Id. at 6:7–10.
`
`2. Analysis
`Independent claim 1 recites “choosing a desired service to be
`requested” and “determining if the desired service belongs to said first set,
`then registering the device with said first network” where the first network is
`the home network—“the network to which a mobile station subscribes.” Ex.
`2001, col. 6, ll. 32–42 (as modified by the Certificate of Correction). In
`other words, claim 1 requires a home network that is looked to first when
`selecting a service (“the home network preference limitation”).
`The Petition does not explain whether the home network preference
`limitation is disclosed explicitly or inherently by Sasuta. Pet. 31–32, 49; Ex.
`1012, App’x A4. In our Institution Decision, we, therefore, assumed that
`Petitioner’s assertion was that this limitation was disclosed explicitly by
`Sasuta. Inst. Dec. 12–13. During the trial, Petitioner, however, made it
`clear that it does not assert that Sasuta explicitly discloses this limitation, but
`instead argues that at least part of this limitation, the home network portion,
`is inherently disclosed by Sasuta—“subscription to a home network is
`inherent in any working cellphone.” Reply 3; Tr. 9:11–22, 13:18–4.
`According to Petitioner, “[i]t is common knowledge that a cellular telephone
`must be subscribed with a service provider . . . [a]bsent a subscription with a
`service provider, a cellular telephone is inoperable.” Id. at 3–4. Petitioner,
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`thus, concludes that “[s]ubscription with a home network is inherent in the
`definition of a working cellular telephone.” Id. at 4.
`Patent Owner argues Sasuta does not disclose the home network
`preference limitation and requests that we reconsider the portion of our
`Institution Decision finding that Sasuta explicitly discloses this limitation.
`PO Resp. 29–38. Patent Owner also argues that Petitioner has not met its
`burden to show that the home network preference limitation is disclosed
`inherently. Tr. 61:11–18. We agree with Patent Owner.
`Nothing in Sasuta’s description requires that in choosing a service
`provider from the catalog of service providers, a provider must be chosen in
`any particular order. In fact, Sasuta is silent on whether any particular
`network, such as a home network, has priority and should be chosen first.
`The Petition relies, primarily, on Figures 3 and 4, and the corresponding
`descriptions, for support of anticipation by Sasuta. Pet. 31–32, 49 (citing
`Ex. 1010, 3:44–4:8, 6:1–10). These portions of Sasuta, however, do not
`describe a home network or any other type of network that is selected first
`among those networks listed in the catalog. To the contrary, the language
`corresponding with Figure 3 describes communication unit 1001 choosing
`service provider 103 for its telephone interconnect service, without any
`explanation, despite the fact that service provider 101 also includes that
`service. The language corresponding with Figure 4, similarly, does not shed
`any light on whether there is a home network that is always chosen first
`from the catalog of service providers. The only language relating to how a
`network is chosen in this portion of Sasuta states that “the communication
`unit uses this service characteristic information by comparing them against
`corresponding threshold values for these characteristics . . . [i]n this manner,
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`the communication unit can determine whether a particular service provider
`should be considered for providing a particular service.” Ex. 1010, 5:5–14.
`Thus, Sasuta does not disclose explicitly the home network preference
`limitation.
`Petitioner also has not met its burden to show that the home network
`preference limitation is disclosed inherently by Sasuta. “To serve as
`anticipation when the reference is silent about the asserted inherent
`characteristic, such gap in the reference may be filled with recourse to
`extrinsic evidence. Such evidence must make clear that the missing
`descriptive matter is necessarily present in the thing described in the
`reference, and that it would be so recognized by persons of ordinary skill.”
`Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
`1991). Petitioner acknowledges that its inherency argument was not made
`until, at the earliest, the Reply brief, and that it did not proffer evidence on
`the issue. Tr. 14:16–18 (“JUDGE WEINSCHENK: What evidence have
`you provided us that shows us that [the home network preference limitation
`is] so well-known that we don’t need it in the reference? MR. THILL: In
`terms of the record, I don’t know that we made an explicit argument, and
`that was not part of the testimony of our expert.”); see also Reply 3–4
`(asserting that “[a]bsent a [home network] cellular telephone is inoperable”
`and that it “is inherent in the definition of a working cellular telephone” to
`have a home network, but providing no citations to supporting evidence for
`these assertions).
`Petitioner’s argument appears to be that if a gap in a prior art
`reference represents functionality that is so well-known that it exceeds a
`certain threshold, not only does that functionality need not be taught
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`explicitly by the reference, but it also need not be supported by evidence in
`the record. Tr. 25:18–26:12. Essentially, Petitioner asks us to take judicial
`notice that every working cellular telephone has a home network that it gives
`preference to when roaming for service. Tr. 76:7–25 (“MR. THILL: I would
`appeal to just common knowledge and your own personal experience, for
`that matter. If you buy a cell phone and don’t have a subscription, it will not
`work. You can dial 911 by law. But it will not work. . . . And out of
`personal experience, it looks for the network that’s designated internally as
`its home network. That’s the very first thing it always does. In many
`regards, this limitation is a trivial limitation.”).
`Petitioner relies for its argument on a statement from the Manual of
`Patent Examining Procedure (“MPEP”): “The specification need not
`disclose what is well-known to those skilled in the art and preferably omits
`that which is well-known to those skilled and already available to the
`public.” Tr. 14, 26 (citing MPEP § 2164). This statement, however, is in a
`section titled “Specification Must be Enabling as of the Filing Date.” MPEP
`§ 2164.05(a). It refers to the requirement that a patent application satisfy 35
`U.S.C. § 112—“whether the disclosure is sufficient to enable those skilled in
`the art to practice the claimed invention.” Lindemann Maschinenfabrik
`GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir.
`1984). It does not, however, support Petitioner’s theory of anticipation. The
`same is true for the cases referenced by the MPEP and relied upon by
`Petitioner. Tr. 26:3–8; MPEP 2164.05(a) (citing In re Buchner, 929 F.2d
`660, 661 (Fed. Cir. 1991); Hybritech Inc. v. Monoclonal Antibodies, Inc. 802
`F.2d 1367, 1384 (Fed. Cir. 1986); Lindemann, 730 F.2d at 1463). Even if
`we agreed with Petitioner’s legal argument, which we do not, we are not
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`persuaded that the home network preference limitation is so trivial, or the
`underlying facts so well-known, that Petitioner’s lack of evidence on the
`subject is acceptable.
`Therefore, because Sasuta does not disclose explicitly the home
`network preference limitation and Petitioner does not meet its burden to
`show that Sasuta inherently discloses that limitation, Petitioner has not
`shown by a preponderance of the evidence that Sasuta anticipates claims 1
`and 3–9.
`
`D. Anticipation by Lawrence
`Petitioner asserts that Lawrence anticipates claims 1, 3, 4, 6, and 7.
`Pet. 53–56. We have considered the parties’ arguments and supporting
`evidence, and we determine that Petitioner has not shown by a
`preponderance of the evidence that claims 1, 3, 4, 6, and 7 are anticipated by
`Lawrence.
`Petitioner relies on a statement in the “Background of the Invention”
`section of Lawrence as teaching a home network as recited in claim 1. Pet.
`38–39, 53–56 (citing Ex. 1011, 1:49–54). For the remaining portion of the
`home network preference limitation, however, Petitioner relies on language
`in the “Detailed Description” of Lawrence, describing a particular
`embodiment of the invention. Pet. 39–40, 53, 56 (citing Ex. 1011, 3:11–25,
`3:30–39; 3:64–4:10, Fig. 1).
`We agree that Lawrence, in the “Background of the Invention”
`section, discusses the concept of a home network as used by “a conventional
`wireless system.” Specifically, Lawrence discloses that some wireless
`communicator manufacturers have attempted to address the problem of
`unavailable service features by including in their telephones Number
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`Assignment Modules (NAMs)—memory locations within the wireless
`communicator storing an assigned telephone number and a System
`Identification Number (SID), which uniquely identifies a particular wireless
`network that is primarily intended to provide airtime service for that
`communicator. Ex. 1011, 1:34–49. Lawrence then states: “A conventional
`wireless communicator determines whether at any given time it is located
`within its home local service area by scanning certain frequencies to receive
`SIDs broadcast by wireless networks and then comparing the received SIDs
`to SIDs stored in the NAM.” Id. at 1:49–54 (emphasis added). Thus,
`Lawrence discloses that the NAM allows the communicator “to identify the
`primary network to which it is pre-subscribed”—the home network. Id. at
`1:54–58. Importantly, however, Lawrence adds that the NAM “does not
`allow the communicator to select a network based on the availability of a
`desired service feature.” Id. In other words, Lawrence discloses that
`although conventional wireless systems include home networks, they do not
`allow roaming for service.
`In the “Detailed Description” section, Lawrence describes a wireless
`communicator that does support roaming for service. Id. at 2:29–58.
`Specifically, Lawrence states that “a wireless communicator tunes to a first
`signaling control channel over which a wireless network broadcasts carrier-
`specific information such as a [SID] number and a service menu,” which
`“lists the various service features available over the network.” Ex. 1011,
`3:11–18. “If the wireless network offers the communication service feature
`requested by the user, the communicator initiates a service request to the
`wireless network.” Id. at 3:21–25. “If the first wireless network to which
`the communicator tunes does not offer the communications service feature
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`requested by the user, the communicator tunes to a second control channel to
`browse through the menu of the wireless network associated with the second
`control channel.” Id. at 3:30–34. This process continues until a network
`that offers the requested service is found or the list of networks is exhausted.
`Id. at 3:34–39.
`Nothing in Lawrence specifically describes how the first signaling
`control channel is chosen. Moreover, there is no indication that the first
`signaling control channel that a wireless communicator tunes to is the home
`network described as being used by a conventional wireless communicator.
`Petitioner points to language in Lawrence that describes three operational
`states of the service request selector. Pet. 39–40 (citing Ex. 1011, 3:64–
`4:10, Fig.1). In the first state, “upon activation of the wireless
`communicator, the communicator automatically begins monitoring various
`signaling control channels and registers onto a wireless network that offers a
`preselected service.” Ex. 1011, 3:64–4:3. In the second state, “the
`communicator only begins monitoring signaling control channels when the
`user manually selects a desired service.” Id. at 4:3–6. In the third state, “the
`communicator begins monitoring various signaling control channels to
`conduct communication with a network that offers a service that the
`communicator itself identifies as being required.” Id. at 4:6–10. Although
`these examples discuss the monitoring of signaling control channels, and
`how that process is initiated, they do not shed any light on whether there is a
`specific order in which the control channels are monitored or that there is
`any particular network, su
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