Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: July 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NOKIA SOLUTIONS AND NETWORKS US LLC, and NOKIA
`SOLUTIONS AND NETWRKS OY
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD,
`Patent Owner.
`_______________
`
`Case IPR2017-00657
`Patent 8,031,677 B1
`_______________
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: July 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NOKIA SOLUTIONS AND NETWORKS US LLC, and NOKIA
`SOLUTIONS AND NETWRKS OY
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD,
`Patent Owner.
`_______________
`
`Case IPR2017-00657
`Patent 8,031,677 B1
`_______________
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00657
`Patent 8,031,677 B1
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`I. INTRODUCTION
`A. Background
`Nokia Solutions and Networks US LLC and Nokia Solutions and
`Networks Oy (“Petitioner”) filed a Petition seeking to institute an inter
`partes review of claims 1–3 and 8–10 (“the challenged claims”) of
`U.S. Patent No. 8,031,677 B1 (Ex. 1001, “the ’677 patent”) pursuant to
`35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). Huawei Technologies Co. Ltd.
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have statutory authority under 35 U.S.C. § 314(a), which provides that
`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.”
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we determine that Petitioner has
`established a reasonable likelihood that it would prevail in showing the
`unpatentability of at least one challenged claim. Accordingly, we institute
`an inter partes review.
`
`B. Additional Proceedings
`According to the parties, Patent Owner has asserted the ’677 patent in
`Huawei Technologies Co., v. T-Mobile US, Inc., Case No. 2:16-cv-0056
`(E.D. Tex). Pet. 1; Paper 6, 2. Furthermore, Petitioner alleges that it filed a
`successful motion to intervene in the district court proceeding, and joined
`the proceeding on June 14, 2016. Pet. 1.
`C. The ’677 Patent
`The ’677 patent specification (“Specification”) discloses a method for
`detaching a user equipment (“UE”), such as a cell phone, from a 3rd
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`generation partnership project (“3GPP”) network when the UE is handed
`over from a 3GPP network to a non-3GPP network. Ex. 1001, Abstract,
`1:28–30, 3:10–55. During a handover procedure, a packet data network
`(“PDN”) gateway (“GW”) sends a request to the serving GW to delete the
`UE’s bearer resources (connections) in the 3GPP network. Id. at 2:45–59.
`The request is forwarded to the mobility management entity (“MME”),
`which deletes the UE’s bearer resources. Id. The Specification alleges that
`a problem with the prior art is that, during handover from 3GPP to non-
`3GPP, prior art systems deleted the UE’s bearer resources in response to a
`delete bearer request, but did not detach the UE from the 3GPP network. Id.
`at 3:10–26. The Specification alleges that a detach procedure includes
`deleting the UE’s mobility management (“MM”) context in addition to
`deleting the UE’s bearer resources. Id. Accordingly, the Specification
`proposes detaching the UE from the 3GPP network by deleting the UE’s
`bearer resources and deleting the UE’s MM context. Id. The Specification
`further discloses sending a cause information element (“IE”) with a delete
`bearer request, wherein the cause IE indicates the reason, or cause, for
`deletion. Id. at 12:44–54. When the cause of deletion is handover from
`3GPP to non-3GPP, the cause IE, in one embodiment, is set to “UE’s
`accessing RAT [radio access technology] changed from a 3GPP network to a
`non-3GPP network.” Id. at 12:55–59.
`D. Challenged Claims of the ’677 Patent
`Of the challenged claims noted above, claims 1 and 8 are independent,
`and claims 2, 3, 9, and 10 depend either from claim 1 or claim 8. Claim 1,
`reproduced below, is illustrative:
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`1. A method for detaching a user equipment (UE) when a
`handover from a 3rd generation partnership project (3GPP)
`network to a non-3GPP network occurs, comprising:
`receiving, by a Mobility Management Entity (MME) of the 3GPP
`network, a delete bearer request sent by a serving gateway (GW)
`of the 3GPP network which carries a cause information element
`(IE), wherein the cause IE indicates the UE handovers from the
`3GPP network to the non-3GPP network;
`deleting, by the MME, bearer resources of the UE;
`detaching, by the MME, the UE from the 3GPP network when
`all the bearer resources of the UE are deleted.
`Ex. 1001, 29:65–30:9.
`E. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–3 and 8–10 of the
`’677 patent based on the following grounds (Pet. 2):
`Challenged Claims
`Basis
`References
`1–3, 8–10
`§ 103(a)
`CATT1 and TS 23.4012
`1–3, 8–10
`§ 103(a)
`’677 APA3 and TS 23.401
`
`
`
`1 3GPP TSG SA WG2 Architecture S2—#59, S2-072603 (June 25–29,
`2007) (Ex. 1006) (“CATT”).
`2 3GPP TS 23.401, V.1.1.0 (3rd Generation Partnership Project; Technical
`Specification Group Services and System Aspects; GPRS enhancements for
`E-UTRAN access (Release 8) (Ex. 1007) (“TS 23.401”).
`3 Portions of the ’677 patent alleged by Petitioner to be admitted prior art
`(Ex. 1001) (“’677 APA”) (Ex. 1001, 1:30–48 (describing Figure 1), 2:3–51
`(describing Figure 2), 4:61–65 (describing the prior art Figures), and Figures
`1–2. Pet. 41.).
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`II. ANALYSIS
`
`
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their 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, 2144–45 (2016) (upholding the use of
`the broadest reasonable interpretation standard). Consistent with that
`standard, we assign claim terms their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art at the time of the
`invention, in the context of the entire patent disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those claim terms
`that are in controversy need be construed, and only to the extent necessary to
`resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999).
`The parties propose constructions for various claim terms. Pet. 34–
`39; Prelim. Resp. 12–13. For purposes of this Decision, we do not find it
`necessary to the resolution of any controversy to construe expressly any
`claim terms.
`
`B. The CATT submission (Ex. 1006)
`Petitioner asserts that CATT is a contribution to the 3GPP Working
`Group known as SA-2 for meeting #58, which took place in Orlando,
`Florida from June 25 to 29, 2007. Pet. 41–42. Petitioner asserts further that
`CATT was publicly available as of June 19, 2007. Id. (citing Ex. 1004
`¶ 29).
`
`CATT is titled, “EPS bearer release procedure during handover from
`3GPP to non 3GPP,” and describes a procedure for releasing EPS bearer(s)
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`of a UE during handover. Ex. 1006, 1. CATT discloses that in order to
`ensure that the service of the UE is not disrupted when it is handed over
`from one network to another, it is necessary for the IP address of the UE to
`remain unchanged. Id. In order to achieve the desired service continuity,
`CATT provides that
`PDN GW shall check and release all of EPS bearers
`associated with UE in 3GPP system and ensure IP address
`of UE is unchanged after the UE has completed attachment
`procedure in non 3GPP access system.
`Id. Figure 1 of CATT depicts the EPS bearer release procedure, and is
`reproduced below.
`
`
`Id. at Fig. 1. Figure 1 shows, in step 4, that PDN GW sends a “Delete EPS
`Bearer Request ( cause )” to Serving GW, and Serving GW sends this
`request to the MME. Id. at 2, Fig. 1. In step 5, the MME sends a Delete
`Bearer Request to eNodeB, and eNodeB releases all radio bearers. Id. In
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`steps 7 and 8, eNodeB sends a response message to the MME to let it know
`all radio bearers have been released, and the MME sends a response message
`to Serving GW and PDN GW after the resources between the PDN GW and
`MME have been released. Id.
`
`
`
`C. TS 23.401 (Ex. 1007)
`TS 23.401 is a technical specification titled, “3rd Generation
`Partnership Project; Technical Specification Group Services and System
`Aspects; GPRS enhancements for E-UTRAN access (Release 8).” Ex. 1007.
`Petitioner’s declarant, Balazs Bertenyi, states that he requested a copy of the
`technical specification, and received via e-mail the copy produced by
`Petitioner as Exhibit 1007 on July 16, 2007. Ex. 1004 ¶¶ 30–31. Patent
`Owner does not dispute that TS 23.401 qualifies as a patent or printed
`publication under 35 U.S.C. § 311(b).
`TS 23.401 “defines the stage 2 service description for the Evolved
`3GPP Packet Switched Domain – also known as the Evolved Packet System
`(EPS).” Ex. 1007, 7. “The Evolved 3GPP Packet Switched Domain
`provides IP connectivity using the Evolved Universal Terrestrial Radio
`Access Network (E-UTRAN).” Id. “The Radio Access Network
`functionality is documented only to the extent necessary to describe the
`overall system.” Id.
`With respect to this document, Petitioner relies specifically on
`disclosure of a home subscriber server (“HSS”)-initiated detach procedure.
`Id. at 46–47, § 5.3.9.3. Figure 5.3.9.3 of TS 23.401, reproduced below,
`illustrates this procedure.
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`Id. at 46, Fig. 5.3.9.3. Figure 5.3.9.3 in step 1 depicts the HSS sending a
`Cancel Location (IMSI, Cancellation Type) message to the MME to request
`deletion of a subscriber’s (i.e., UE’s) mobility management (“MM”) context
`and evolved packet system (“EPS”) bearers. Id. If the Cancellation Type is
`set to “implicit detach because of UE ‘s [sic] accessing RAT [radio access
`technology] changed from 3GPP to Non-3GPP,” i.e., cancellation is due to
`handover, the packet data network (“PDN”) deletes the EPS bearer but does
`not release the UE’s PDP address. Id. Figure 5.3.9.3 in step 9 depicts the
`mobility management entity (“MME”) sending a Cancel Location Ack
`(IMSI) message that confirms deletion of the MM contexts and EPS
`bearer(s). Id. at 46–47, § 5.3.9.3.
`
`D. ’677 APA (Ex. 1001)
`Petitioner asserts that the following portions of the Specification of
`the ’677 patent are admitted prior art: Ex. 1001, 1:30–48 (describing
`Figure 1), 2:3–51 (describing Figure 2), 4:61–65 (describing the prior art
`Figures), and Figures 1–2. Pet. 41.
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`E. Eligibility of References under 35 U.S.C. § 311(b)
`Patent Owner argues that, as a threshold matter, CATT and the ’677
`APA are ineligible to serve as grounds for unpatentability in an inter partes
`review because the references have not been shown to be patents or printed
`publications, as required under 35 U.S.C. § 311(b). Prelim. Resp. 13–38.
`Patent Owner argues that we should, on this basis, deny institution of inter
`partes review. Id.
`
`1. The CATT submission
`We look to the underlying facts to make a legal determination as to
`whether a reference is a printed publication. Suffolk Techs., LLC v. AOL
`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
`given reference qualifies as a prior art “printed publication” involves a case-
`by-case inquiry into the facts and circumstances surrounding its disclosure to
`members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
`2004). The key inquiry is whether the reference was made “sufficiently
`accessible to the public interested in the art” before the critical date. In re
`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221,
`226 (CCPA 1981).
`In the present case, we are not persuaded by Patent Owner’s
`contention that, because Petitioner has not shown the CATT submission was
`indexed or disseminated, the CATT submission has not been shown to be
`disseminated sufficiently to the interested public. Prelim. Resp. 13–25. “A
`given reference is ‘publicly accessible’ upon a satisfactory showing that
`such document has been disseminated or otherwise made available to the
`extent that persons interested and ordinarily skilled in the subject matter or
`art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground
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`Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). We
`are not persuaded by Patent Owner’s arguments related to indexing of
`CATT. Petitioner provides a declarant, Balazs Bertenyi, who testifies to the
`practices and procedures of the 3GPP TSG-SA Working Group that support
`the document being published and made publicly accessible. Pet. 40–41
`(citing Ex. 1004 ¶¶ 13–24); see also Ex. 1004 ¶ 16 (“As can be seen from
`Exhibit NSN779-1050, the title of a TS document [(the CATT submission is
`a TS document)] follows the same structured numbering system to that of
`the TR documents that provides details regarding the subject matter and
`technology to which the TS document pertains.”). The document Mr.
`Bertenyi relies on, Exhibit 1050, states that “clear, manageable and efficient
`mechanisms are necessary to handle version control, change control,
`document updating, distribution and management.” Ex. 1050, 5. Also, a
`Support Team “shall make all approved versions of all specifications
`available as soon as possible after their approval (or after approval of CRs
`thereto) on a file server. The server shall allow anonymous access by any
`interested party.” Id. at 21. “A clear and unambiguous directory structure
`shall be adopted, and a guide to that structure provided on the server. A
`‘status list’ shall also be provided, showing the latest version of each Release
`of each specification.” Id.
`At this stage, Petitioner has provided sufficient evidence and
`argument that CATT actually was disseminated, and made available to
`ordinarily skilled artisans in the context of 3GPP. See generally Ex. 1004;
`Ex. 1050, 5, 21. Also, Mr. Bertenyi’s testimony, based on his personal
`knowledge of 3GPP practices, provides sufficient support, at this stage of the
`proceeding, to establish the public accessibility of CATT for purposes of this
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`Decision on Institution. See generally Ex. 1004; see also Klopfenstein, 380
`F.3d at 1348 (noting that we are not limited “to finding something to be a
`‘printed publication’ only when there is distribution and/or indexing”).
`2. The ’677 APA
`Regarding the ’677 APA, we need not decide whether it qualifies as a
`patent or printed publication under § 311(b) because, for reasons discussed
`below, we deny institution with respect to the ground that relies on the ’677
`APA for other reasons. Accordingly, the issue of whether the ’677 APA is
`eligible under § 311(b) is moot.
`
`F. Asserted Obviousness over CATT and TS 23.401
`Petitioner contends that claims 1–3 and 8–10 of the ’677 patent would
`have been obvious over the combination of CATT and TS 23.401. Pet. 48–
`63. Petitioner relies on the declaration of its expert, Mark Lanning, to
`support its contentions. See Ex. 1003 (Declaration of Mark Lanning). For
`reasons discussed below, based on the current record, we determine
`Petitioner has demonstrated a reasonable likelihood that it would prevail
`with respect to at least one challenged claim of the ’677 patent.
`1. Independent Claim 1
`With respect to the preamble of claim 1, which recites “[a] method for
`detaching a user equipment (UE) when a handover from a 3rd generation
`partnership project (3GPP) network to a non-3GPP network occurs,”
`Petitioner relies on CATT’s disclosure of an “EPS bearer release procedure
`during handover from 3GPP to non 3GPP.” Pet. 51 (citing Ex. 1006, 1).
`Petitioner argues that a person of ordinary skill in the art would have
`understood that an EPS bearer release procedure involves a procedure for
`detaching a UE during handover. Pet. 51 (citing Ex. 1003 ¶ 150).
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`Claim 1 also recites
`receiving, by a Mobility Management Entity (MME) of
`the 3GPP network, a delete bearer request sent by a
`receiving gateway (GW) of the 3GPP network which
`carries a cause information element (IE).
`For this limitation, Petitioner relies on CATT’s disclosure in step 4 of
`a serving GW forwarding a Delete EPS Bearer Request message from a
`Packet Data Network (“PDN”) GW to a MME. Pet. 54–55 (citing Ex. 1006,
`2, Fig. 1). Petitioner argues CATT discloses that the Delete EPS Bearer
`Request message carries a cause IE. Pet. 55. Specifically, CATT discloses
`sending “Delete EPS Bearer Request ( cause )” to the MME. Pet. 55 (citing
`Ex. 1006, 2). According to Petitioner, the notation “( cause )” indicates a
`cause IE because 3GPP standards routinely portray IE’s through the use of
`parentheses in the same manner as in CATT, e.g., “( cause ).” Pet. 55–56
`(citing Ex. 1003 ¶¶ 158–159). Petitioner argues that a skilled artisan,
`therefore, would have understood CATT as disclosing a cause IE. Pet. 55.
`Patent Owner’s expert, Scott Denning, acknowledges CATT’s Delete EPS
`Bearer Request includes a cause IE. Ex. 2001 ¶ 32.
`Claim 1 also recites
`wherein the cause IE indicates the UE handovers from the
`3GPP network to the non-3GPP network.
`For this limitation, Petitioner argues that a skilled artisan would have
`understood the cause IE in CATT indicates handover because CATT
`discloses the need to meet the “requirement of service continuity” during
`handover from 3GPP to non-3GPP by ensuring that the IP address of the UE
`remains unchanged during handover. Pet. 56–57 (citing Ex. 1006, 1;
`Ex. 1003 ¶ 162). According to Petitioner, a person of ordinary skill in the
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`art at the time of the invention would have understood that CATT’s cause IE
`was the mechanism for signaling to the MME that the IP address needed to
`remain unchanged by indicating handover is taking place. Pet. 57 (citing
`Ex. 1003 ¶ 162).
`Petitioner argues that to the extent we find CATT’s cause IE does not
`indicate handover, TS 23.401 discloses this feature. Pet. 57. Petitioner
`relies on TS 23.401’s disclosure of an IE called “Cancellation Type” that
`indicates handover from LTE, i.e., a 3GPP network, to Wi-Fi, i.e., a non-
`3GPP network. Id. According to Petitioner, the TS 23.401 document
`discloses that the need for including this IE is the same as in CATT, namely
`that in the event of a handover the network needs to know whether to release
`the UE’s PDP address. Id. at 57–58 (citing Ex. 1007, 46–47, § 5.3.9.3).
`Petitioner argues that TS 23.401 confirms, therefore, that the problem of
`needing a UE’s IP address to remain unchanged during handover from 3GPP
`to non-3GPP was well known, as was the solution of including in a request
`for a detach process an IE indicating handover. Pet. 58 (citing Ex. 1003
`¶ 164). Petitioner argues that a skilled artisan would have had reason to
`combine CATT with TS 23.401 because CATT was disclosed to the same
`working group responsible for updating TS 23.401 and both references relate
`to detach procedures when a UE is handed over from a 3GPP network to a
`non-3GPP network. Pet. 48–50.
`Patent Owner does not dispute that CATT discloses a cause IE.
`Indeed, Patent Owner’s expert acknowledges “[t]he ‘cause’ information in
`the ‘Delete EPS Bearer Request’ message . . . is [] a placeholder for a
`parameter that indicates the cause of the [] message.” Ex. 2001 ¶ 32.
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`Rather, Patent Owner argues that CATT does not explicitly state what the
`cause IE specifies. Prelim. Resp. 38.
`Patent Owner specifically argues that Petitioner’s rationale for
`sending a cause IE to the MME, namely the need for the UE to maintain the
`same IP address during handover, is flawed because the MME is not
`involved in ensuring that the UE’s IP address remains unchanged. Id. at 38–
`39 (citing Ex. 2001 ¶ 32). In support of this argument, Patent Owner relies
`on CATT’s disclosure that the “PDN GW shall check and release all of EPS
`bearers associated with UE in 3GPP system and ensure IP address of UE is
`unchanged [during handover].” Prelim. Resp. 39 (citing Ex. 1006, 1
`(emphasis added)). Relying on its expert’s, Mr. Denning’s, testimony,
`Patent Owner argues, therefore, that it is the PDN GW in CATT, rather than
`the MME, that maintains the continuity of the UE’s IP address. Prelim.
`Resp. 39 (citing Ex. 2001 ¶ 32). Petitioner’s expert, however, opines that
`unless the MME in CATT receives notice that the UE is still connected
`through a Wi-Fi (non-3GPP) access point, the UE’s mobile IP address could
`change. Ex. 1003 ¶ 162. The disclosure in CATT upon which Patent
`Owner, and its expert, relies is not dispositive of whether the MME is
`involved in ensuring continuity of the UE’s IP address. Specifically, CATT
`discloses that the “PDN GW shall check and release all of EPS bearers
`associated with UE in 3GPP system,” but the PDN GW nonetheless sends a
`Delete EPS Bearer Request ( cause ) to the MME to delete such bearers
`despite disclosure that the PDN GW deletes these bearers. Ex. 1006, 1–2
`(emphasis added). Accordingly, there is a factual dispute created by the
`testimony of Patent Owner’s expert as to whether the MME in CATT is
`involved in ensuring continuity of the UE’s IP address. “[A] genuine issue
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`of material fact created by such testimonial evidence will be viewed in the
`light most favorable to the petitioner for the purposes of deciding whether to
`institute an inter partes review.” 37 C.F.R. § 42.108. We, therefore, view
`Mr. Denning’s testimony in the light most favorable to the Petitioner at this
`stage of the proceeding.
`We note that the title of CATT, “EPS bearer release procedure during
`handover from 3GPP to non 3GPP,” itself indicates that the cause of the
`Delete Bearer Request message is handover from 3GPP to non-3GPP.
`Ex. 1006, 1. The Abstract of the CATT submission similarly states that
`“[t]his contribution describes EPS bearer release procedure during handover
`from 3GPP to non 3GPP.” Id. We do not find disclosure in CATT of
`another cause for sending a Delete Bearer Request message other than
`handover. This evidence is consistent with a finding that a skilled artisan
`would have understood that the cause IE in CATT’s Delete Bearer Request
`message indicates handover, or that it would have been an obvious choice
`given the title and purpose of CATT.
`Regarding the combination of CATT with TS 23.401, Patent Owner
`argues first that CATT alone already solves the problem of ensuring that the
`UE maintain the same IP address during handover through use of the PDN
`GW. Prelim. Resp. 41. A skilled artisan, therefore, would not have looked
`to another reference for a solution. Id. Patent Owner argues further that the
`procedure in TS 23.401 is different from the one described in CATT, such
`that a skilled artisan would not have combined the two references. Id. at 41–
`44. Specifically, TS 23.401 relates to a request to the MME to delete EPS
`bearers that come from a HSS, whereas the delete EPS bearer request in
`CATT comes from a PDN GW. Id. According to Patent Owner, the
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`difference is significant because the Cancel Location message in TS 23.401
`is initiated by HSS for operator-determined purposes (such as cancelling a
`user’s service subscription), whereas the Delete EPS Bearer Request
`message in CATT is initiated by the PDN GW after handover from 3GPP to
`non-3GPP. Id. at 43–44 (citing Ex. 2001 ¶ 37). As further evidence that the
`Cancel Location message serves a different function from a Delete EPS
`Bearer Request message, Patent Owner argues that elsewhere TS 23.401
`describes a Delete EPS Bearer Request message. Prelim. Resp. 44 (citing
`Ex. 2001 ¶ 38). Patent Owner argues that Petitioner does not address the
`differences between CATT and TS 23.401. Prelim. Resp. 44. We are not
`persuaded that the source of the request, a PDN GW versus a HSS, would
`have precluded a skilled artisan from looking to TS 23.401’s teachings
`regarding use of an IE indicating handover to ensure IP address continuity of
`a UE during handover.
`Claim 1 also recites
`deleting, by the MME, bearer resources of the UE;
`detaching by the MME, the UE from the 3GPP network
`when all the bearer resources of the UE are deleted.
`For the limitation “deleting, by the MME, bearer resources of the
`UE,” Petitioner relies on CATT’s disclosure, after step 4 (sending Delete
`EPS Bearer Request from the PDN GW to the MME), of step 5, which states
`“[a]ll of radio access bearers between MME and eNodeB shall be released.”
`Pet. 60–61 (citing Ex. 1006, 2, Fig. 1; Ex. 1003 ¶ 171).
`For the limitation relating to detaching the UE from the 3GPP
`network when all bearer resources of the UE are deleted, Petitioner states
`that CATT does not expressly disclose the specific detaching solution that is
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`expressed in the ’677 patent. Pet. 61. Petitioner relies on TS 23.401 for
`disclosure of this feature. Id.
`The specific detaching solution to which Petitioner refers is described
`as follows in the Specification of the ’677 patent. The Specification explains
`that a problem with prior art systems was that during handover from a 3GPP
`network to a non-3GPP network, no specific method was provided for
`detaching the UE from the 3GPP network because the 3GPP network deleted
`only the bearer resources of the UE, but not the MM context of the UE. Ex.
`1001, 3:10–14, 21–23. This disclosure suggests, therefore, that the process
`of detaching a UE from a 3GPP network includes deleting both the UE’s
`bearer resources and the UE’s MM context. The Specification confirms this
`understanding a few lines later:
`detaching, by the 3GPP network, the UE includes that the
`3GPP network deletes the bearer resources of the UE on
`the 3GPP network side, and the mobility management
`[MM] context of the UE in the MME.
`Id. at 3:32–36.
`As noted above, Petitioner relies on TS 23.401 for disclosure of
`detaching the UE from the 3GPP network when all bearer resources of the
`UE are deleted. Specifically, Petitioner relies on TS 23.401’s disclosure of a
`HSS-Initiated Detach procedure, particularly steps 1 and 9 of this procedure.
`Pet. 61–63; see also Ex. 1007, 46–47, § 5.3.9.3. In step 1, a home subscriber
`server (“HSS”) wants to delete a subscriber’s (e.g., UE’s) MM context and
`EPS bearers. Ex. 1007, 46, § 5.3.9.3. To initiate these deletions, the HSS
`sends a Cancel Location (IMSI, Cancellation Type) message to the MME.
`Id. If the reason for wanting to delete the MM context and EPS bearer is a
`change in radio access technology (“RAT”), i.e., handover, from a 3GPP
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`network to a non-3GPP network, the Cancellation Type is set to “implicit
`detach because of UE ‘s [sic] accessing RAT changed from 3GPP to Non-
`3GPP.” Id. In the event that the Cancellation Type is set as just described,
`the PDN deletes the EPS bearer. Id. Section 5.3.9.3 of TS 23.401 does not
`disclose when the MM context is deleted. See generally id. at 46–47,
`§ 5.3.9.3. However, step 9 confirms that deletion of the MM context occurs
`as part of the detach procedure—the MME confirms deletion of the MM
`contexts and the EPS Bearer(s) with a Cancel Location Ack (IMSI) message.
`Id. at 47, § 5.3.9.3. Petitioner argues that TS 23.401 therefore discloses that
`when the EPS bearers are deleted, the UE is detached because the MM
`context also is deleted. Pet. 61–62. We are persuaded that TS 23.401
`discloses detaching the UE from the 3GPP network when all bearer
`resources of the UE are deleted because step 9 confirms that the UE’s MM
`contexts and EPS bearer(s) have been deleted, and this is consistent with the
`Specification’s disclosure that detaching includes deleting the UE’s MM
`context and bearer resources, as discussed above.
`Petitioner argues that it would have been obvious for a skilled artisan
`to implement TS 23.401’s HSS-Initiate Detach procedure in CATT because,
`“at the time, the standards body contemplated that procedure might be used
`for 3GPP (LTE) to non-3GPP (Wi-Fi) handover.” Id. (citing Ex. 1003, 46–
`47, § 5.3.9.3).
`Patent Owner argues that Petitioner “fails to provide evidence of the
`timing requirements” of the “detach/[ing] when all the bearer resources of
`the UE are deleted” limitation. Prelim. Resp. 45. Patent Owner does not
`explain what it contends are the timing requirements of the claim limitation.
`Rather, Patent Owner cites to an argument by Petitioner’s expert that is
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`contingent on Patent Owner arguing that the MM context must be deleted
`when all EPS bearers are deleted, not before. Id. (citing Ex. 1003 ¶ 174).
`Patent Owner has not explained, nor do we discern, why the claim language
`would require the MM context to be deleted before deleting all EPS bearers,
`and we do not rely on Mr. Lanning’s testimony regarding this contingent
`argument. Accordingly, we are not persuaded by Patent Owner’s arguments.
`We have reviewed the parties’ evidence and arguments regarding
`independent claim 1. Based on the present record, Petitioner has made a
`sufficient preliminary showing that the combination of CATT and TS 23.401
`renders obvious claim 1.
`
`2. Independent Claim 8
`Independent claim 8 is substantially similar to independent claim 1,
`except that it recites an apparatus, whereas claim 1 recites a method. For
`claim 8’s preamble, which recites “[a] mobility management entity,”
`Petitioner relies on CATT’s disclosure of a mobility management entity,
`abbreviated as “MME.” Pet. 52–53. For the remaining recitations of
`claim 8, Petitioner relies on the same evidence and arguments as it does for
`claim 1. Id. at 53–58, 60–63.
`We have reviewed the parties’ evidence and arguments regarding
`independent claim 8. Based on the present record, Petitioner has made a
`sufficient preliminary showing that the combination of CATT and TS 23.401
`renders obvious claim 8.
`3. Dependent Claims 2, 3, 9, and 10
`Petitioner contends that the combination of CATT and TS 23.401 also
`renders obvious dependent claims 2, 3, 9, and 10. Pet. 48–56, 58, 59. Patent
`Owner provides separate contentions with respect to the challenged
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`dependent claims, namely with respect to limitations relating to whether it is
`the PDN GW that sets the cause IE. Prelim. Resp. 48–51. With respect to
`the challenged dependent claims, we have reviewed and considered the
`evidence and arguments presented by the parties. Based on the present
`record, Petitioner has made a sufficient showing that the combination of
`CATT and TS 23.401 renders obvious claims 2, 3, 9, and 10.
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`G. Asserted Obviousness over the ’677 APA and TS 23.401
`Petitioner contends that claims 1–3 and 8–10 of the ’677 patent would
`have been obvious over the combination of the ’677 APA and TS 23.401.
`Pet. 48–63. Petitioner relies on the declaration of its expert, Mr. Lanning, to
`support its contentions. See Ex. 1003 (Declaration of Mark Lanning). For
`reasons discussed below, based on the current record, we determine
`Petitioner has not demonstrated a reasonable likelihood that it would prevail
`with respect to any one of the challenged claims of the ’677 patent.
`Central to our decision is whether Petitioner has shown that the
`combination of prior art references discloses a delete bearer request that
`carries a cause IE indicating handover from a 3GPP network to a non-3GPP
`network, as required by independent claims 1 and 8. Petitioner’s arguments
`here are not compelling because the ’677 APA, unlike CATT, does not
`discloses inclusion of a cause IE, does not disclose that the cause of
`detachment is handover, and does not disclose the need to maintain a UE’s
`IP
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