Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: July 26, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOKIA SOLUTIONS AND NETWORKS US LLC; and
`NOKIA SOLUTIONS AND NETWORKS OY,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00591
`Patent 8,325,675 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, JENNIFER MEYER CHAGNON, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 11
`
`
`
` Entered: July 26, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NOKIA SOLUTIONS AND NETWORKS US LLC; and
`NOKIA SOLUTIONS AND NETWORKS OY,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00591
`Patent 8,325,675 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, JENNIFER MEYER CHAGNON, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00591
`Patent 8,325,675 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Petitioners, Nokia Solutions and Networks US LLC, and Nokia
`Solutions and Networks Oy (“NSN” or “Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1, 5, 6, and 10
`of U.S. Patent No. 8,325,675 B2 (Ex. 1001, “the ’675 patent”) pursuant to
`35 U.S.C. §§ 311–319. Patent Owner, Huawei Technologies Co. Ltd.
`(“Huawei” or “Patent Owner”), filed a Preliminary Response (Paper 10,
`“Prelim. Resp.”) to the Petition.
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted unless the
`information presented in the Petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” After considering the Petition,
`Preliminary Response, and associated evidence, we conclude that Petitioner
`has not demonstrated a reasonable likelihood that it would prevail in
`showing the unpatentability of claims 1, 5, 6, and 10 of the ’675 patent.
`
`B. Related Proceedings
`NSN indicates that the ’675 patent is involved in Huawei
`Technologies Co. v. T-Mobile US, Inc., Case No. 2:16-cv-0052 (E.D. Tex.),
`in which NSN, after a motion to intervene, joined on June 14, 2016. Pet. 1.
`
`C. The ʼ675 Patent
`The ’675 patent describes “[a] data processing method and system
`[that] are provided by the present invention, in order to implement data
`forwarding in a direct-tunnel mechanism when a handover or change
`2
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`IPR2017-00591
`Patent 8,325,675 B2
`between a 2G system and a 3G system takes place.” Ex. 1001, 4:15–19,
`Abstract.
`
`The present invention provides a data processing method.
`The method includes: receiving, by a user plane anchor network
`element, data forwarded by a source data forwarding network
`element; and forwarding, by the user plane anchor network
`element, the data to a target side processing network element.
`The present invention further provides a data processing
`method. The method includes receiving, by a user plane anchor
`network element, an instructive message, and sending data to at
`least one of a source data forwarding network element and a
`target side processing network element; and updating, by the user
`plane anchor network element, user plane routing, and sending
`the data to the target side processing network element as
`instructed in the message according to the updated user plane
`routing.
`Id. at 4:20–34. The ’675 patent discloses that:
`With the data processing methods in the direct-tunnel
`mechanism when a handover or change between a GERAN and
`a UTRAN takes place, a GGSN can buffer data forwarded by a
`source data forwarding network element and then send the data
`to a target side processing network element; alternatively, the
`GGSN can send the data forwarded by the source data
`forwarding network element directly to the target side processing
`network element.
`Id. at 4:49–56.
`
`D. Illustrative Claim
`Claim 1, reproduced below, is illustrative of the claims at issue:
`in a handover procedure
`1. A data processing method
`comprising:
`exchanging messages, between a Mobility Management
`network element and a user plane anchor network element, to
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`IPR2017-00591
`Patent 8,325,675 B2
`obtain a data forwarding tunnel identifier of the user plane anchor
`network element;
`informing, by the Mobility Management network element, the
`user plane anchor network element of a data forwarding tunnel
`identifier of a target side processing network element;
`informing, by the Mobility Management network element, a
`source data forwarding network element of the data forwarding
`tunnel identifier of the user plane anchor network element;
`receiving, by the user plane anchor network element, data
`forwarded by the source data forwarding network element using
`the data forwarding tunnel identifier of the user plane anchor
`network; and
`forwarding, by the user plane anchor network element, the
`data to the target side processing network element.
`E. The Alleged Grounds of Unpatentability
`The Petition sets forth the grounds of unpatentability of claims 1, 5, 6,
`and 10 of the ’675 patent as follows (see Pet. 2, 25–69):
`
`References
`Vodafone,1 Shaheen ’064,2
`TS 42.129,3 and TS 25.4134
`
`Basis
`
`Claims Challenged
`
`§ 103(a)
`
`1, 5, 6, and 10
`
`
`1 3rd Generation Partnership Project (“3GPP”), Paging Initiation from UPE
`or from eNodeB?, TSG-SA WG2 Meeting #50, Tdoc S2-060177, (Jan. 16–
`20, 2006) (Ex. 1005, “Vodafone”).
`2 U.S. Patent No. 2007/0248064 A1, published Oct. 25, 2007 (Ex. 1006,
`“Shaheen ’064”).
`3 3GPP, 3rd Generation Partnership Project; Technical Specification Group
`GERAN; Packet-switched handover for GERAN A/Gb mode; Stage 2
`(Release 6), TS 43.129 V6.8.0 (2006-06) (Ex.1007, “TS 43.129”).
`4 3GPP, 3rd Generation Partnership Project; Technical Specification Group
`Radio Access Network; UTRAN lu interface RANAP signaling (Release 7),
`TS 25.413 V7.2.0 (2006-06) (Ex.1008, “TS 25.413”).
`
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`IPR2017-00591
`Patent 8,325,675 B2
`
`Basis
`
`§ 103(a)
`
`1, 5, 6, and 10
`
`Claims Challenged
`
`References
`Nortel,5 Shaheen ’064,
`TS 42.129, and TS 25.413
`II. ANALYSIS
`To establish Shaheen ’064 as prior art pursuant to 35 U.S.C § 102(e),
`Petitioner relies on the provisional application filing date of Shaheen ’064,
`because the filing date (April 16, 2007) is after the earliest claimed priority
`date of the challenged patent, the ’675 patent, which is August 15, 2006.
`Pet. 22 (citing In re Giacomini, 612 F.3d. 1380, 1383 (Fed. Cir. 2010)).
`Specifically, Petitioner argues that “Shaheen [’064] has § 112 ¶ 1 support
`in—and can claim priority to—its provisional application 60/793,289
`(‘Shaheen Provisional’) filed on April 19, 2006.” Id.
`“A reference patent is only entitled to claim the benefit of the filing
`date of its provisional application if the disclosure of the provisional
`application provides support for the claims in the reference patent in
`compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (emphases added). Petitioner
`recognizes this requirement (see Pet. 22), but analyzes the disclosure of the
`Shaheen Provisional to provide support for claim 1 of the Shaheen
`Provisional and does not demonstrate that it supports any of the claims of
`Shaheen ’064. The Petition addresses the Dynamic Drinkware analysis,
`stating that:
`
`
`5 Nortel, 3GPP, New section for data handling during inter-access mobility,
`TSG-SA WG2 Meeting #53, Tdoc S2-062190, (June 26–30, 2006) (Ex.
`1009, “Nortel”).
`
`5
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`IPR2017-00591
`Patent 8,325,675 B2
`The Shaheen Provisional provides ample support for at least
`independent claim 1 of the issued patent. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1382
`(Fed. Cir. 2015). The Shaheen Provisional discloses a method
`and system for supporting a Routing Area Update (RAU)
`procedure in a Long Term Evolution (LTE) General Packet
`Radio Service (GPRS) Tunneling Protocol (GTP)-based system.
`NSN627-1014, Figs. 8-11, ¶¶3, 10, 31-34. The Shaheen
`Provisional also discloses establishing a single GTP tunnel
`between an Access Gateway (AGW) and an eNodeB, NSN627-
`1014, Fig. 6, ¶¶10, 30; a wireless transmit/receive unit (WTRU)
`sending a RAU to a new eNodeB, id.; the new eNodeB forwards
`the RAU request to a Mobility Management Entity (MME), id.;
`and the MME sends an Update Protocol Data Unit (PDP) context
`request to an AGW, whereby a new tunnel is established between
`the new eNodeB and the AGW, id.
`Pet. 22–23.
`We agree with Patent Owner that Petitioner’s Dynamic Drinkware
`analysis compares the disclosure of the Shaheen Provisional to claim 1 of
`the Shaheen Provisional. Prelim. Resp. 21–24; Ex. 1014, 13 (claim 1). We
`also agree with Patent Owner that claim 1 of the Shaheen Provisional (Ex.
`1014) differs from the claims of Shaheen ’064. Prelim. Resp. 22–25;
`compare Ex. 1014, 13 (claim 1 of Shaheen Provisional), with Ex. 1006, 15–
`16 (claims of Shaheen ’064). Patent Owner also contends that the claims in
`Shaheen ’064 contain limitations that are not mentioned in the Shaheen
`Provisional. Prelim. Resp. 24–25.
`On the record before us, Petitioner has not provided sufficient
`evidence or argument establishing that Shaheen ’064 is entitled to the benefit
`of the filing date of the Shaheen Provisional. See Dynamic Drinkware, 800
`F.3d at 1381. Petitioner has not shown that the disclosure of the provisional
`supports the claims of the reference, Shaheen ’064. Accordingly, Petitioner
`6
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`IPR2017-00591
`Patent 8,325,675 B2
`has not established that Shaheen ’064 is prior art under §102(e) to the ’675
`patent. See Pet. 22–23. Because both of Petitioner’s asserted grounds relies
`on Shaheen ’064, Petitioner has not demonstrated a likelihood of showing
`that claims 1, 5, 6, and 10 would have been obvious over (1) Vodafone,
`Shaheen ’064, TS 42.129, and TS 25.413; or (2) Nortel, Shaheen ’064, TS
`42.129, and TS 25.413.
`
`III. CONCLUSION
`Based on the foregoing, we are not persuaded that Petitioner has
`shown a reasonable likelihood of prevailing in demonstrating that claims 1,
`5, 6, and 10 of the ’675 patent are unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby denied as to all grounds raised in the Petition for the reasons stated
`above and no trial is instituted.
`
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`7
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`
`
`IPR2017-00591
`Patent 8,325,675 B2
`For PETITIONER:
`S. Benjamin Pleune
`Scott Stevens
`John D. Haynes
`Robert Caison
`J. Ravindra Fernando
`Christpher Douglas
`Derek Neilson
`Ross Barton
`Samuel Merritt
`Ben.pleune@alston.com
`scott.stevens@alston.com
`John.haynes@alston.com
`Robert.caison@alston.com
`Ravi.fernando@alston.com
`Christopher.douglas@alston.com
`Derek.neilson@alston.com
`Ross.barton@alston.com
`Sam.merritt@alston.com
`
`
`For PATENT OWNER:
`Michael Hawkins
`W. Karl Renner
`Roberto Devoto
`Jeremy Monaldo
`Nicholas Stephens
`Thomas H. Reger II
`Neil Warren
`Fish & Richardson P.C.
`hawkins@fr.com
`axf-ptab@fr.com
`devoto@fr.com
`jjm@fr.com
`nstephens@fr.com
`reger@fr.com
`warren@fr.com
`
`
`
`
`8
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`
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