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`Paper 8
`Entered: July 26, 2017
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`Trials@uspto.gov
`571-272-7822
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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 IPR2017-00592
`Patent 8,798,575 B2
`____________
`
`
`
`Before JENNIFER MEYER CHAGNON,
`MICHELLE N. WORMMEESTER, and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`I. INTRODUCTION
`Nokia Solutions and Networks US LLC as well as Nokia Solutions
`and Networks Oy (collectively, “Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–3, 5, 8, 9, 11, 16, 17, and
`19 of U.S. Patent No. 8,798,575 B2 (Ex. 1001, “the ’575 patent”). Huawei
`Technologies Co. Ltd. (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we decline to institute an inter
`partes review.
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties identify the following federal district court case involving
`the ’575 patent: Huawei Technologies Co. v. T-Mobile US, Inc., Case No.
`2:16-cv-0055 (E.D. Tex.). Pet. 1; Paper 6, 2. The parties also identify
`several other related petitions for inter partes review. Pet. 1; Paper 6, 2.
`
`
`B. The ’575 Patent
`According to the ’575 patent, there is a wide range of available packet
`data services, including e-mail services, browsing services, and file
`transmission services. Ex. 1001, 1:19, 2:51–57. A user may access multiple
`services based on one activated Packet Data Protocol Context (PDP
`Context). Id. at 2:51–60.
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`The ’575 patent notes that different charging policies may apply to
`different services. Id. at 2:61–62. For example, an e-mail service provider
`may charge a user according to the times of the receiving-sending events; a
`browsing service provider may charge the user according to the data flow
`using one charging rate; and a file transmission service provider may charge
`the user also according to the data flow but using another charging rate. Id.
`at 2:62–3:1. The ’575 patent further notes that the 3rd Generation
`Partnership Project (3GPP) “is now discussing how to implement Flow
`Based Charging (FBC),” which provides for a charging system that can
`apply different charging policies to different services using the same PDP
`Context as the bearer. Id. at 3:1–26. According to the ’575 patent,
`FBC can be regarded to be implemented by filtering the IP
`flows for different services borne in the same PDP context
`through different sieve-like “filters” and then charging for
`different services according to the corresponding “filters”.
`Therefore, the “pore size” of the charging “filter” based on IP
`flows is much less than that based on one PDP Context. The
`“pore size” of the charging “filter” can be regarded as to indicate
`the size of a sieve hole. If the charging is based on one PDP
`Context, one PDP Context corresponds to one sieve hole; while
`if the charging is based on IP flows, one IP flow corresponds to
`one sieve hole and thus one PDP Context corresponds to multiple
`sieve holes in the FBC mode. Therefore, compared with the
`charging based on one PDP Context, the FBC provides more
`abundant charging means for operators or service providers.
`Id. at 3:12–26.
`Figures 2A and 2B of the ’575 patent, which are reproduced below,
`show systematic configurations of FBC. Id. at 8:9–12.
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`In particular, Figure 2A shows the FBC systematic configuration for online
`charging, while Figure 2B shows the FBC systematic configuration for
`offline charging. Id. Traffic Plane Function (TPF) 205 bears IP flow and
`sends a Charging Rules Request to Charging Rule Function (CRF) 203 when
`an IP flow bearer is established. Id. at 3:55–58. CRF 203 selects
`appropriate charging rules according to the input information provided by
`TPF 205 and returns to TPF 205 the selected charging rules, including the
`charging mechanism. Id. at 4:6–11. The charging mechanism may be
`online charging (where the user is provided with a prepaid service) or offline
`charging (where the user is provided with a post-paid service). Id. at 4:11–
`13, 9:9–20. CRF 203 may select the charging rules according to input from
`Application Function (AF) 204 or Online Charging System (OCS) 206, as
`well. Id. at 4:33–35. Credit Control Function (CCF) 202 manages and
`controls the user’s credit and provides the related information used to
`determine the charging rules to CRF 203. Id. at 4:43–46. When the user
`uses a certain packet data service, CCF 202 also authenticates the user’s
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`credit and provides TPF 205 with the available credit upon request. Id. at
`4:48–56, 5:16–18. TPF 205 charges for IP flows according to the charging
`rules. Id. at 4:17–20.
`Thus, when the bearer is established according to the 3GPP standard,
`the TPF requests the user’s credit from the OCS, and the OCS returns the
`credit to the TPF. Id. at 7:1–6. According to the ’575 patent, however, the
`means by which the TPF may address the correct OCS is not described in
`the 3GPP standard. Id. at 7:6–9. To address this problem, the invention of
`the ’575 patent provides a system for improving service data flow based
`charging where the CRF provides the TPF with the address information of
`the charging system. Id. at 7:33–36. In particular, the CRF may provide the
`TPF with the address information of an OCS or Offline Charging System
`(OFCS), so that the TPF can address the appropriate OCS and request the
`user’s credit information, or so that it can address the appropriate OFCS and
`send collected charging data information to the OFCS. Id. at 7:60–8:1. In
`this way, “the charging implementation procedure based on the FBC
`mechanism may be more complete and more reasonable.” Id. at 8:1–3.
`
`
`C. Challenged Claims
`Petitioner challenges claims 1–3, 5, 8, 9, 11, 16, 17, and 19 of the
`’575 patent. Claim 1 is independent and illustrative of the claims under
`challenge:
`1. A method for improving service data flow based charging in
`a communications network, comprising:
`a Charging Rules Function (CRF) determining a charging
`method and charging rules in response to a service request
`or other trigger event, and
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`the CRF providing a Traffic Plane Function (TPF) with the
`charging rules and address information of a charging
`system.
`
`
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–3, 5, 8, 9, 11, 16, 17, and 19 of the
`’575 patent on the following grounds. Pet. 3, 35–70.
`References
`Basis
`Claims Challenged
`TS 23.1251 and the Tdoc list2
`§ 103
`1–3, 5, 8, 9, 11, 16, 17,
`and 19
`1–3, 5, 8, 9, 11, 16, 17,
`and 19
`In support of its arguments, Petitioner proffers the declarations of Paul S.
`Min, Ph.D. (Ex. 1003) and Balazs Bertenyi (Ex. 1004). See id.
`
`
`TS 23.125 and Tdoc ’9303
`
`§ 103
`
`E. Claim Construction
`We construe claims in an unexpired patent by applying the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under this standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`
`
`1 Overall High Level Functionality and Architecture Impacts of Flow Based
`Charging; Stage 2 (Release 6) (3GPP TS 23.125 V6.0.0), Technical
`Specification (3rd Generation P’ship Project), Mar. 2004 (Ex. 1006,
`“TS 23.125”).
`2 3GPP TSG SA WG2 Meeting #40, tdoc list draft 02, Temporary Document
`(3rd Generation P’ship Project), May 17–21, 2004 (Ex. 1012, “Tdoc list”).
`3 3GPP TSG SA WG2 Meeting #40, Tdoc S2-041930, Temporary Document
`(3rd Generation P’ship Project), May 17–21, 2004 (Ex. 1013, “Tdoc ’930”).
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`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A “claim term will not receive its ordinary meaning if the patentee
`acted as his own lexicographer,” however, and clearly set forth a definition
`of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`Petitioner provides proposed interpretations for various limitations of
`the claims. Pet. 26–29. Patent Owner responds. Prelim. Resp. 10–12. For
`purposes of this Decision, we conclude that no term requires express
`construction to resolve a controversy in this proceeding. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`
`
`III. DISCUSSION
`A. Effective Filing Date for the Challenged Claims
`As a preliminary matter, we first consider the effective filing date for
`challenged claims 1–3, 5, 8, 9, 11, 16, 17, and 19. The ’575 patent issued
`from U.S. Patent Application No. 11/558,774, which has a filing date of
`November 10, 2006. Ex. 1001, at [21], [22]. The application for the ’575
`patent is a continuation of International Patent Application No.
`PCT/CN2005/000665 (“PCT application”), which has a filing date of May
`12, 2005. Id. at [63], 1:5–9. The PCT application claims priority to Chinese
`Application No. 200410044433.3, which has a filing date of May 12, 2004.
`Id. at [30], 1:5–9. The parties dispute whether the challenged claims of the
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`’575 patent are entitled to the benefit of the filing date of the Chinese
`application.
`Under 35 U.S.C. § 119, “the claims set forth in a United States
`application are entitled to the benefit of a foreign priority date if the
`corresponding foreign application supports the claims in the manner required
`by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989).
`Section 112, ¶ 1 contains a written description requirement, which is
`satisfied here if “the disclosure of the [foreign] application relied upon
`reasonably conveys to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” See Ariad
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
`Petitioner argues that the challenged claims of the ’575 patent are not
`entitled to the benefit of the filing date of the Chinese application. Pet. 20–
`21. Rather, Petitioner asserts, the effective filing date for the challenged
`claims is the filing date of the PCT application. Id. According to Petitioner,
`the Chinese application does not disclose “determining a charging method”
`or “determine a charging method,” as recited in independent claims 1 and
`16, respectively. Id. at 25. Petitioner explains that the Chinese application
`could not disclose these disputed limitations because it “did not disclose a
`CRF determining that the charging method was offline.” Id. (emphasis
`added). Petitioner further points out that “Patent Owner sought to cure this
`defect in the PCT and U.S. applications.” Id. at 21.
`In response, Patent Owner argues that claims 1 and 16 do not require
`determining a charging method to be offline. See Prelim. Resp. 14–16.
`Patent Owner points out that “Petitioner does not explain why the [Chinese]
`application must disclose ‘a CRF determining that the charging method
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`was offline’ in order to support independent claims 1 and 16, which recite
`only ‘determining a charging method’ with no mention of the charging
`method being ‘offline.’” Id. at 14. Patent Owner also directs us to several
`portions of the Chinese application that describe a CRF determining the
`charging method of a packet data service to be online. Prelim. Resp. 14–16.
`For instance, Patent Owner points us to where the Chinese application
`discloses that “the CRF may determine that the charging method of the
`current packet data service is online charging method.” Id. at 14 (citing Ex.
`1031, 19). According to Patent Owner, such disclosures “teach[]
`straightforward examples of ‘determining a charging method’ as recited in
`the challenged claims.” Id. at 16.
`Despite arguing that claims 1 and 16 do not require determining a
`charging method to be offline, Patent Owner notes that the Chinese
`application nevertheless “plainly taught that the charging method (e.g.,
`‘charging mechanism’) determined (‘selected’) by the CRF may be either
`online or offline charging.” Id. As support, Patent Owner directs us to
`where the Chinese application discloses that “the CRF 203 selects
`appropriate charging rules according to the input information provided by
`the TPF 205 described above, and returns to the TPF 205 the selected
`charging rules including the charging mechanism,” where “[t]he charging
`mechanism may be online charging or offline charging.” Id. at 16 (citing
`Ex. 1031, 11).
`Based on the record before us, we are unpersuaded by Petitioner’s
`argument that the challenged claims of the ’575 patent are not entitled to the
`benefit of the filing date of the Chinese application. As Patent Owner points
`out, independent claims 1 and 16 do not require determining a charging
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`method to be offline. Prelim. Resp. 14. Rather, the claims recite
`“determining a charging method” or “determine a charging method,”
`without specifying offline as a required charging method. Patent Owner
`points us to where the Chinese application discloses a CRF determining a
`charging method to be online, as discussed above. See, e.g., Ex. 1031, 19
`(cited at Prelim. Resp. 14). We find that such disclosure sufficiently
`describes the disputed limitations “determining a charging method” and
`“determine a charging method.”
`Even if the claims were to require determining that a charging method
`is offline, however, Patent Owner directs us to where the Chinese application
`discloses that “the CRF 203 selects appropriate charging rules according to
`the input information provided by the TPF 205 described above, and returns
`to the TPF 205 the selected charging rules including the charging
`mechanism,” where “[t]he charging mechanism may be online charging or
`offline charging,” as discussed above. Prelim. Resp. 16 (citing Ex. 1031,
`11). We find that this disclosure in the Chinese application describes a CRF
`determining a charging method to be offline, and, more broadly, a CRF
`determining a charging method, which is all that is required by claims 1 and
`16. See id. at 16.
`In view of the plain meaning of the claims, as well as the cited portions
`of the Chinese application, we find that the Chinese application provides
`written description support for the disputed limitations, namely “determining
`a charging method” and “determine a charging method.” Accordingly, we
`determine for purposes of this Decision that the effective filing date of
`challenged claims 1–3, 5, 8, 9, 11, 16, 17, and 19 of the ’575 patent is the
`filing date of the Chinese application, which is May 12, 2004.
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`B. Obviousness over TS 23.125 and Tdoc ’930
`Petitioner argues that claims 1–3, 5, 8, 9, 11, 16, 17, and 19 of the
`’575 patent would have been obvious over TS 23.125 and Tdoc ’930.
`Pet. 66–70. For the reasons explained below, we are not persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`asserted ground.
`Tdoc ’930 is a “temporary document” that contains 3GPP member
`“contributions for consideration by the Technical Specification Group or
`Working Group.” Ex. 1013; Ex. 1004 ¶ 17 (declaration testimony
`explaining that “Tdocs” refer to “temporary documents”). Petitioner asserts
`that Tdoc ’930 “was publicly available as early as May 23, 2004,” the date
`on which Petitioner relies as the prior art date. Pet. 33. Petitioner supports
`this assertion with the declaration testimony of both Dr. Min (Ex. 1003) and
`Balazs Bertenyi (Ex. 1004). See id. (citing Ex. 1003 ¶ 124; Ex. 1004 ¶ 37).
`According to Petitioner, Tdoc ’930 qualifies as prior art under 35 U.S.C.
`§ 102(a)4 “because the ’575 Patent is not entitled to the priority date of the []
`Chinese priority document.” Id. As discussed above, however, we find that
`the challenged claims are entitled to the benefit of the filing date of the
`Chinese application, namely, May 12, 2004. Accordingly, Tdoc ’930 does
`not qualify as prior art against the challenged claims of the ’575 patent under
`35 U.S.C. § 102(a).
`
`
`4 Because the application for the ’575 patent was filed before the enactment
`of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), the pre-AIA version of 35 U.S.C. § 102(a) applies in this
`proceeding.
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`In view of the foregoing, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in showing that claims 1–
`3, 5, 8, 9, 11, 16, 17, and 19 would have been obvious over TS 23.125 and
`Tdoc ’930.
`
`
`C. Obviousness over TS 23.125 and the Tdoc List
`Petitioner argues that claims 1–3, 5, 8, 9, 11, 16, 17, and 19 of the
`’575 patent would have been obvious over TS 23.125 and the Tdoc list.
`Pet. 35–66. For the reasons explained below, we are not persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`asserted ground.
`
`
`1. TS 23.125
`TS 23.125 is a 3GPP technical specification that describes flow based
`charging. Ex. 1006, 1, 7. According to TS 23.125, there are many different
`services that can be used within a network, and data flows from these
`services can be charged in many different ways. Id. at 10. Charging rules
`are used for defining how a service data flow is to be charged. Id. at 11. For
`example, a charging rule may contain information on whether a particular
`service data flow, such as web service data flow, is to be charged online or
`offline. Id. at 10 (describing a web service), 12 (describing information
`included in charging rules). Figures 6.1 and 6.2 of TS 23.125, which are
`reproduced below, show the overall architectures for online and offline
`service data flow based charging.
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`Figure 6.1 in particular shows the architecture for online service data flow
`based charging, while Figure 6.2 shows the architecture for offline service
`data flow based charging. Id. at 14–15. As shown in the figures, each
`system includes a Traffic Plane Function (TPF), a Service Data Flow Based
`Charging Rules Function (CRF), and a charging system that is either online
`(see id. at Fig. 6.1) or offline (see id. at Fig. 6.2).
`Figure 7.1 of TS 23.125, which is reproduced below, shows how
`information flows between the different system components.
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`Figure 7.1 shows how information flows between system components
`specifically in the context of bearer service establishment. Id. at 21. At
`step 1, the user sends to the TPF a request to establish a bearer service. Id.
`At step 2, the TPF sends to the CRF a request for the applicable charging
`rules and provides relevant input information for the charging rule decision.
`Id. The CRF determines the charging rules based on information from the
`TPF at step 3, and then sends to the TPF the charging rules at step 4. Id.
`The TPF installs the charging rules as indicated at step 5. Id. Finally, at step
`6, the TPF continues with the bearer service establishment procedure. Id.
`
`
`2. Tdoc List
`The Tdoc list is a list of “temporary documents” that contain 3GPP
`member “contributions for consideration by the Technical Specification
`Group or Working Group.” Ex. 1012; Ex. 1004 ¶ 17. The Tdoc list shows
`that the company Huawei submitted a temporary document called “Add
`OCS address to charging rule” for consideration with respect to TS 23.125.
`Ex. 1012, at 1, 6.
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`3. Analysis
`Independent claim 1 recites “the CRF providing a Traffic Plane
`Function (TPF) with . . . address information of a charging system.”
`Independent claim 16 similarly recites “wherein the CRF is configured . . .
`to provide the TPF with the . . . address information of the charging system.”
`For these limitations, Petitioner points out that TS 23.125 “discloses
`that the TPF should use the Gy and Gz interfaces to report charging
`information to the charging systems.” Pet. 48 (citing Ex. 1006 ¶ 13); see
`also Ex. 1006, Figs. 6.1, 6.2. Relying on the declaration testimony of
`Dr. Min, Petitioner explains that, “‘[i]n order to report information to the
`charging system, a POSITA would understand that the TPF would need to
`know the address information of the charging system.’” Pet. 48 (quoting
`Ex. 1003 ¶ 147). According to Dr. Min, “[a] POSITA would have further
`known that the address information could either be pre-configured in the
`TPF or provided by another node.” Ex. 1003 ¶ 157 (cited at Pet. 51).
`Petitioner argues that, “[i]f provided by another node, TS 23.125 [] renders it
`obvious that the address information should come from the CRF.” Pet. 51.
`In support of this argument, Petitioner explains that “[a] CRF could provide
`any information that would ‘define[] how [a] service data flow is to be
`charged.’” Id. (citing Ex. 1006, 11). Relying again on the declaration
`testimony of Dr. Min, Petitioner further explains that “‘[a] POSITA would
`understand that by providing the address information of a charging system, a
`charging rule could define whether the subscriber would be charged to, for
`example, Online Charging System #1 or Online Charging System #2,” and,
`therefore, “‘would consider the address information of a charging system to
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`be information that would define how a service data flow is to be charged.’”
`Id. (citing Ex. 1003 ¶ 149).
`We are not persuaded by Petitioner’s argument. Petitioner directs us
`to where TS 23.125 teaches that “[c]harging rules contain information that
`. . . allow for defining how the service data flow is to be charged.” Pet. 51;
`Ex. 1006, 11 (emphasis added). We note that TS 23.125 further teaches that
`[c]harging rules contain information on . . . [h]ow a particular service data
`flow is to be charged: online/offline.” Ex. 1006, 12 (emphasis added).
`Thus, in the context of TS 23.125, “defining how the service data flow is to
`be charged” refers specifically to defining whether the service data flow is to
`be charged online or offline. See Ex. 1006, 11–12. This does not encompass
`defining whether the subscriber would be charged to Online Charging
`System #1 or to Online Charging System #2, as Petitioner argues. See
`Pet. 51. In view of the teachings in TS 23.125, neither Petitioner nor
`Dr. Min explains sufficiently why it would have been “obvious that the
`address information [of a charging system] should come from the CRF.”
`See id. Accordingly, based on the record before us, we are not persuaded
`that a CRF providing a TPF with address information of a charging system
`would have been obvious in the context of TS 23.125.
`Alternatively, Petitioner argues that, “[i]f additional disclosure is
`needed, [the Tdoc list] discloses or renders obvious a CRF providing a TPF
`with the charging rules and address information of a charging system.”
`Pet. 51. As support, Petitioner directs us to where the Tdoc list indicates that
`“Huawei disclosed that ‘Add OCS address to charging rule’ should be added
`to TS 23.125,” where “OCS” refers to “Online Charging System.” Id. at 52
`(citing Ex. 1012, 6); Ex. 1006, 8. According to Petitioner, “the combination
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`of [the Tdoc list] and TS 23.125 [] discloses the entirety of [the disputed
`limitations].” Pet. 52.
`In addition, Petitioner asserts that its argument “is supported by the
`’575 APA [(admitted prior art5)], which also discloses a CRF providing a
`TPF with the charging rules and address information of a charging system.”
`Pet. 52. For instance, Petitioner points out that the ’575 APA teaches that,
`“when the charging method is ‘online,’ the TPF’s first step after receiving
`the charging rules is to send a message to the online charging system.” Id. at
`54 (citing Ex. 1001, 5:12–24). Relying on the declaration testimony of
`Dr. Min, Petitioner explains that “‘a POSITA would have understood that
`the only way for a network element to contact a remote network element was
`with some sort of address information,’” which “‘could either be pre-
`configured in the TPF or provided by another node.’” Id. (quoting Ex. 1003
`¶ 157). As to the latter case, Petitioner notes that the CRF “was the only
`node connected to the TPF . . . other than the [charging system].” Id. at 54–
`55 (citing Ex. 1001, Figs. 2A, 2B); see also Ex. 1003 ¶ 158. Petitioner
`further explains that, according to Dr. Min, the TPF would not have received
`address information from the charging system because “‘the flow-based
`charging architecture placed the burden on the TPF to send the first message
`to a charging system,’” and “‘the TPF could send this first message only if it
`had address information of a charging system.’” Pet. 55 (quoting Ex. 1003
`
`
`5 With respect to the admitted prior art, Petitioner states: “The Grounds for
`invalidity do not directly rely on the ’575 APA. But because Patent Owner
`was describing the disclosure of TS 23.125 [], each Ground notes where
`Patent Owner admitted that certain aspects of its purported invention were
`already known and described in existing 3GPP specification documents.”
`Pet. 31.
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`IPR2017-00592
`Patent 8,798,575 B2
`
`¶ 159). Therefore, Petitioner concludes, “‘it would have been obvious to a
`POSITA that the address information [of a charging system] could either be
`pre-configured or dynamically allocated [“provided”] by the CRF.’” Id.
`(quoting Ex. 1003 ¶ 159).
`In light of Petitioner’s arguments and evidence, including Dr. Min’s
`declaration testimony, we are persuaded that a person of ordinary skill in the
`art would have known that the address information of a charging system
`could have been provided by the CRF to the TPF. See Pet. 54; Ex. 1003
`¶ 157. We note that both TS 23.125 and the ’575 APA show that the CRF is
`indeed connected to the TPF. Ex. 1006, Fig. 6.1; Ex. 1001, Figs. 2A, 2B.
`It is not sufficient, however, for Petitioner to demonstrate that each of
`the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 418 (2007). Petitioner must also provide “some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that
`regard, Petitioner argues that one of ordinary skill in the art would have
`found it obvious to combine TS 23.125 and the Tdoc list because, according
`to Dr. Min, “a POSITA would have followed the instructions explicitly
`provided by [the Tdoc list], namely include an OCS address.” Pet. 36;
`Ex. 1003 ¶ 131.
`We are not persuaded by Petitioner’s argument. Petitioner does not
`explain sufficiently why one of ordinary skill in the art would have
`considered combining TS 23.125 and the Tdoc list to arrive at the claimed
`invention, namely a CRF providing a TPF with address information of a
`charging system. As to the case where the address information is provided
`to the TPF by another node (as opposed to being preconfigured in the TPF),
`
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`IPR2017-00592
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`
`we note Petitioner’s explanation that the CRF is the only node that would
`have provided the TPF with address information because the CRF and the
`charging system are the only nodes connected to the TPF, and the charging
`system would not have provided its own address to the TPF. See Pet. 54–55;
`Ex. 1003 ¶¶ 158–59. However, we find this explanation to be inconsistent
`with the teachings in TS 23.125 and the ’575 APA.
`For example, TS 23.125 teaches that “[a] TPF may be served by one
`or more CRF nodes,” and that “[t]he appropriate CRF is contacted based on
`UE identity information,” where “UE” refers to “User Equipment.”
`Ex. 1006, at 8, 16; see also id. at Fig. 7.1 (showing the UE communicating
`with the TPF). Similarly, the ’575 APA teaches that “the UE sends an
`Establish Bearer Service Request to the TPF.” Ex. 1001, 4:65–66. These
`teachings indicate that at least another node, namely the UE, is connected to
`the TPF. Accordingly, we find that these teachings also indicate that the
`address information of a charging system could have been provided by the
`CRF or the UE in the case where the address information is provided to the
`TPF by another node.
`As Patent Owner points out, neither Petitioner nor Dr. Min explains
`why a person of ordinary skill in the art would have combined TS 23.125
`and the Tdoc list to arrive specifically at a CRF providing a TPF with
`address information of a charging system, rather than to arrive at a UE
`providing a TPF with the address information or at a TPF that is already
`preconfigured with the address information. See Prelim. Resp. 36 (“Neither
`Petitioner nor its declarant articulate a reasoning with rational underpinnings
`as to . . . why such modification would occur specifically to the CRF
`element of TS 23.125.”); id. at 37 (“the Petitioner had a burden to show why
`
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`IPR2017-00592
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`a POSITA in 2004 would have modified the ‘CRF’ element, in particular, of
`TS 23.125 to add the OCS address rather than modifying another element of
`TS 23.125”). Accordingly, on this record, we are not persuaded that
`Petitioner has provided adequately articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness. See Kahn, 441
`F.3d at 988.
`Based on the record before us, we are not persuaded that a CRF
`providing a TPF with address information of a charging system would have
`been obvious over TS 23.125 and the Tdoc list. We therefore determine that
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`showing that claims 1 and 16 would have been obvious over TS 23.125 and
`the Tdoc list. As claims 2, 3, 5, 8, 9, 11, 17, and 19 depend from claims 1 or
`16, and Petitioner has not provided separate arguments that would overcome
`the shortcomings with respect to claims 1 and 16, we also determine that
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`showing that these dependent claims would have been obvious over
`TS 23.125 and the Tdoc list.
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to any challenged
`claim of the ’575 patent.
`
`
`V. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
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`
`PETITIONER:
`
`S. Benjamin Pleune
`Scott Stevens
`Robert Caison
`J. Ravindra Fernando
`John D. Haynes
`Nokia-Huawei@alston.com
`Ben.pleune@alston.com
`Scott.stevens@alston.com
`Robert.caison@alston.com
`Ravi.fernando@alston.com
`John.haynes@alston.com
`
`
`PATENT OWNER:
`
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`Dan Smith
`Thomas H. Reger II
`Neil A. Warren
`AXF-PTAB@fr.com
`PTABInbound@fr.com
`monaldo@fr.com
`devoto@fr.com
`
`
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`
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