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`
`Paper 11
`Entered: October 6, 2017
`
`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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`IPR2017-00592
`Patent 8,798,575 B2
`
`
`I. INTRODUCTION
`Nokia Solutions and Networks US LLC as well as Nokia Solutions
`and Networks Oy (collectively, “Petitioner”) filed a Request for Rehearing
`(Paper 10, “Rehearing Request” or “Req. Reh’g”) of our Decision Denying
`Institution of Inter Partes Review (Paper 8, “Institution Decision” or “Inst.
`Dec.”) of U.S. Patent No. 8,798,575 B2 (Ex. 1001, “the ’575 patent”).
`Petitioner seeks rehearing of our determination not to institute inter partes
`review of claims 1–3, 5, 8, 9, 11, 16, 17, and 19 of the ’575 patent over the
`first of two asserted grounds: obviousness over TS 23.1251 and the Tdoc
`list.2 Req. Reh’g 1. In our Institution Decision, we determined that
`Petitioner had not explained 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 [Charging Rule Function (CRF)] providing
`a [Traffic Plane Function (TPF)] with address information of a charging
`system.” Inst. Dec. 18. According to Petitioner, we “misapprehended
`Petitioners’ argument regarding obviousness” and “overlooked evidence of
`obviousness cited by Petitioners and their expert.” Req. Reh’g 1. For the
`reasons that follow, Petitioner’s request for rehearing is denied.
`
`
`
`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”).
`
`2
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`IPR2017-00592
`Patent 8,798,575 B2
`
`
`II. BACKGROUND
`The Petition challenged 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 23.125 and the Tdoc list
`§ 103
`1–3, 5, 8, 9, 11, 16, 17, and 19
`TS 23.125 and Tdoc ’930
`§ 103
`1–3, 5, 8, 9, 11, 16, 17, and 19
`For the first ground, Petitioner relied on the combined teachings of TS
`23.125 and the Tdoc list for the disputed limitation: “the CRF providing a
`Traffic Plane Function (TPF) with the . . . address information of a charging
`system.” We denied institution of review on that ground because we were
`not persuaded that Petitioner had provided adequately articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness over TS 23.125 and the Tdoc.
`We also denied institution of review based on Petitioner’s second
`asserted ground. Petitioner does not challenge this determination in its
`Rehearing Request.
`
`
`III. STANDARD OF REVIEW
`When considering a request for rehearing of a decision, the Board
`reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c).
`An abuse of discretion occurs when a “decision [i]s based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
`judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d
`1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should
`be modified lies with the party challenging the decision.” Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its
`request for rehearing, the dissatisfied party must (1) “specifically identify all
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`IPR2017-00592
`Patent 8,798,575 B2
`
`matters the party believes the Board misapprehended or overlooked,” and
`(2) identify the place “where each matter was previously addressed.”
`37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48,768. We address Petitioner’s arguments with these principles in mind.
`
`
`IV. ANALYSIS
`In our Institution Decision, we were persuaded by Petitioner’s
`argument that a skilled artisan would have known that the CRF could have
`provided the address information of a charging system to the TPF. Inst.
`Dec. 17–18. We found that Petitioner did not explain sufficiently, however,
`the rationale for why a skilled artisan would have implemented a CRF
`providing a TPF with address information of a charging system, rather than
`implementing either a User Equipment (UE) providing a TPF with the
`address information or a TPF that is already preconfigured with the address
`information, in view of the teachings of TS 23.125 and the Tdoc list. Id. at
`18–20.
`Petitioner now contends that our “analysis misapprehends or
`overlooks significant evidence” that Petitioner presented. Req. Reh’g 5.
`Petitioner first argues that it showed there is an explicit teaching to combine
`the Tdoc list with TS 23.125. Id. at 6–8. In support of that argument,
`Petitioner identifies evidence cited in the Petition, which Petitioner now
`contends was proffered in support of demonstrating a motivation to combine
`the Tdoc list with TS 23.125. Id. Petitioner has not identified, however, any
`matters that we have misapprehended or overlooked. We considered
`Petitioner’s evidence and argument. In our Decision, we determined that
`Petitioner had not sufficiently shown a rationale to combine the references in
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`IPR2017-00592
`Patent 8,798,575 B2
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`order to arrive at the claimed invention. Inst. Dec. 18–20. It is insufficient
`to show that a skilled artisan would have combined the references. Id.
`Petitioner had the burden of also demonstrating that a skilled artisan would
`have arrived at the claimed invention, namely a CRF providing a TPF with
`address information of a charging system, which we found Petitioner had not
`shown. Id.
`Petitioner further argues that we “overlooked [its] evidence as to why
`the combination would have led a [skilled artisan] to arrive specifically at a
`CRF providing address information of a charging system.” Req. Reh’g 8.
`In particular, Petitioner states that it “offered ample evidence that in
`TS 23.125 [], charging rules are provided from—and only from—a CRF,”
`and asserts that “[t]he Board agreed.” Id. (citing Inst. Dec. 12–14, 18).
`Petitioner also notes that “neither Patent Owner nor the Board cited any
`evidence that anything besides a CRF ever provides charging rules.” Id. at 9
`(original emphasis omitted).
`We disagree with Petitioner that we overlooked the evidence
`identified by Petitioner in the Rehearing Request. We considered the
`evidence Petitioner identifies. See, e.g., Inst. Dec. 14–20. Mere
`disagreement by Petitioner with our findings and conclusions does not mean
`we misapprehended or overlooked Petitioner’s evidence.
`We also disagree with Petitioner’s characterization that in our
`Institution Decision we agreed that the charging rules are provided “from—
`and only from—a CRF.” Although we acknowledged that the charging
`rules in TS 23.125 could be provided by a CRF, nowhere did we purport to
`agree that the rules could only be provided by a CRF. See id. at 14. Indeed,
`TS 23.125 teaches that “charging rules may be statically configured at the
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`IPR2017-00592
`Patent 8,798,575 B2
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`Traffic Plane Function, or dynamically provisioned.” Ex. 1006, 11 (cited at
`Pet. 60).
`In addition, we note that Petitioner’s argument that neither Patent
`Owner nor the Board cited evidence that anything but a CRF provides
`charging rules is not persuasive. Our discussion in the Institution Decision
`focused on the disputed limitation at issue: “the CRF providing a Traffic
`Plane Function (TPF) with the . . . address information of a charging
`system” (emphasis added). See generally Inst. Dec. 15–20. Any “evidence
`that anything besides a CRF ever provides charging rules” was not germane
`to our analysis of whether a CRF providing a TPF with the address
`information of a charging system would have been obvious over TS 23.125
`and the Tdoc list. We further note that Petitioner incorrectly shifts the
`burden onto Patent Owner and the Board by asserting a requirement to show
`that something other than a CRF provides charging rules.
`Moreover, even if Petitioner had shown that the charging rules were to
`be provided only by a CRF, which Petitioner did not show, we note that the
`address information of a charging system could be preconfigured in the TPF
`and then added to a charging rule at the TPF once the rule has already been
`provided to the TPF. See Pet. 54 (directing us to expert testimony that “[t]he
`address information could either be pre-configured in the TPF or provided
`by another node”) (quoting Ex. 1003 ¶ 157). That scenario does not require
`a CRF providing a TPF with the address information of a charging system,
`as claimed.
`Petitioner next argues that our “[t]heory [r]egarding the UE is
`[w]holly [u]nsupported.” Req. Reh’g 11–15. Petitioner is referring to our
`finding that the address information of a charging system could have been
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`6
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`IPR2017-00592
`Patent 8,798,575 B2
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`provided by the CRF or the UE. Id. at 4 (citing Inst. Dec. 19). Petitioner
`argues that we “overlooked evidence that a UE could not send charging
`rules to a TPF because there is no interface between a UE and a TPF.” Id.
`at 12. We note that Petitioner did not argue in the Petition that a UE could
`not send charging rules to a TPF. Accordingly, any evidence cited by
`Petitioner in the Rehearing Request was not proffered in the Petition for the
`purpose of showing that a UE could not send charging rules to a TPF.
`Nonetheless, we did not overlook this evidence, and Petitioner’s
`identification of it does not persuade us that our Institution Decision should
`be modified.
`Relying on Dr. Min’s declaration testimony, Petitioner argues that,
`“[e]ven though the UE and TPF are able to exchange packet data, there is no
`interface between them: they are separated by a cell phone tower (NodeB),
`and RNC, and a SGSN.” Id. at 13 (citing Ex. 1003 ¶ 64). Petitioner also
`argues that it “explained that the CRF ‘was the only node connected to the
`TPF in Figs. 2A and 2B [of the ’575 patent] other than the OCS and the
`OFCS’” and notes that “[a] UE does not appear in either figure.” Id. at 13–
`14. According to Petitioner, it relied on the components and interfaces
`shown in Figures 2A and 2B of the ’575 patent. Id. at 14–15. Based on
`those figures, Petitioner asserts that “[t]he lack of interface—combined with
`the fact that a UE is not even part of the flow-based charging architecture—
`means that a UE would not provide charging rules or address information to
`a TPF.” Id. at 15.
`Petitioner’s arguments are not persuasive. As discussed above, we
`focused our discussion in the Institution Decision on the disputed limitation
`at issue, namely a “CRF providing a [TPF] with the . . . address information
`
`7
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`IPR2017-00592
`Patent 8,798,575 B2
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`of a charging system.” See generally Inst. Dec. 15–20. That a UE could not
`send charging rules to a TPF was not germane to our analysis of whether a
`CRF providing a TPF with the address information of a charging system
`would have been obvious over TS 23.125 and the Tdoc list.
`We note Petitioner’s assertion that a UE would not provide charging
`rules or address information to a TPF due to the lack of an interface between
`the UE and the TPF, as well as the fact that a UE is not part of the
`flow-based charging architecture. Req. Reh’g 15. That assertion is not
`credible. In the context of the teachings of the ’575 patent, Petitioner
`appears to rely exclusively on Figures 2A and 2B to support its new theory
`that there is no interface between a UE and the TPF, noting that “[a] UE
`does not appear in either figure.” Id. at 13–14. Figure 3A of the ’575
`patent, however, depicts a UE communicating with the TPF. Ex. 1001, Fig.
`3A.3 The ’575 patent explains that Figures 2A and 2B are “systematic
`configuration[s]” of flow based charging, while Figure 3A is an
`“implementation procedure.” Id. at 3:29–30, 42, 4:62–63. In addition, as
`discussed in our Institution Decision, the ’575 patent further explains that
`“the UE sends an Establish Bearer Service Request to the TPF,” thereby
`implying that there is an interface between the UE and the TPF. See Inst.
`Dec. 19 (quoting Ex. 1001, 4:65–66) (emphases added). According to
`Petitioner, column 1, line 18 through column 6, line 67 and Figures 1
`through 4 of the ’575 patent describe TS 23.125. Req. Reh’g 14.
`
`
`3 We note that Figure 3A of the ’575 patent is similar to Figure 7.1 of
`TS 23.125, which we cited in our Institution Decision as showing a UE
`communicating with the TPF. Compare Ex. 1001, Fig. 3A, with Ex. 1006,
`Fig. 7.1; Inst. Dec. 19.
`
`8
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`IPR2017-00592
`Patent 8,798,575 B2
`
`
`As to Petitioner’s reasoning that there is no interface between the UE
`and the TPF because they are separated by a cell phone tower, an RNC, and
`a SGSN, we note that it is not clear that the UE and the TPF in Figure 3A of
`the ’575 patent are separated in such a manner. Compare Ex. 1001, Fig. 3A
`(no cell phone tower, RNC, or SGSN appears in the figure), and id. at 4:65–
`66 (referring to Figure 3, explaining that the UE communicates with the
`TPF), with id. at Fig. 1 (showing the UE and the GGSN separated by a
`SGSN), and id. at 1:26–27, 49–50, 4:57 (referring to Figure 1, explaining
`that the UE communicates with the SGSN, which, in turn, communicates
`with the GGSN, where the TPF resides). Nevertheless, the claims do not
`exclude communications between components that are separated by a cell
`phone tower, an RNC, and a SGSN. Moreover, we also note that Petitioner
`does not explain persuasively why a UE and a TPF separated in such a
`manner are able to exchange packet data but are unable to exchange address
`information of a charging system.
`Lastly, even if the address information of a charging system could not
`be provided by a UE, as Petitioner urges, we note that the address
`information could be preconfigured in the TPF and then added to a charging
`rule at the TPF once the rule has already been provided to the TPF, as
`discussed above. Again, that scenario does not require a CRF providing a
`TPF with the address information of a charging system, as required by the
`claims.
`
`
`V. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion by not instituting inter partes review of the challenged
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`IPR2017-00592
`Patent 8,798,575 B2
`
`claims of the ’575 patent on the asserted ground of obviousness over
`TS 23.125 and the Tdoc list.
`
`
`VI. ORDER
`Accordingly, it is ORDERED that Petitioner’s request for rehearing is
`denied.
`
`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
`
`
`
`10
`
`
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