Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`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 IPR2017-00658
`Patent 8,537,779 B2
`_______________
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`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 IPR2017-00658
`Patent 8,537,779 B2
`_______________
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`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, 4, and 9–11 (“the challenged claims”) of
`U.S. Patent No. 8,537,779 B2 (Ex. 1001, “the ’779 patent”) pursuant to
`35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). Huawei Technologies Co. Ltd.
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“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 conclude Petitioner has not
`established a reasonable likelihood it would prevail in showing the
`unpatentability of at least one challenged claim. Therefore, we deny the
`Petition for an inter partes review.
`B. Additional Proceedings
`According to the parties, Patent Owner has asserted the ’779 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 ’779 Patent
`The ’779 patent generally relates to a handover procedure for when a
`User Equipment (“UE”), such as a cell phone, is handed over from a non-3rd
`
`2
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`Generation Partnership Project (“non-3GPP”) network to a 3rd Generation
`Partnership Project (“3GPP”) network. Ex. 1001, 1:23–31. The ’779
`patent’s specification (“Specification”) does not define the terms 3GPP
`network and non-3GPP network, but Petitioner’s expert, Mark Lanning,
`explains that 3GPP is a standards-setting organization that “began in 1988 as
`a joint partnership between several telecommunications companies to
`develop and standardize various aspects of 2G, 3G, and 4G mobile network
`operator systems.” Ex. 1003 ¶ 42.
`According to the Specification, in the context of 3GPP networks, there
`are two different types of Attach processes whereby a UE is attached to a
`network—a normal Attach process, and a handover Attach process in which
`a UE is being handed over from one network to another. Ex. 1001, 1:32–35.
`In a normal Attach process, the network deletes all bearers (e.g.,
`connections), between the UE and the network’s Packet Data Network
`Gateway (“PDN GW”). Id. at 1:35–37. In a handover Attach process,
`however, the network needs to re-create all bearers in the network associated
`with the UE prior to handover. Id. at 1:40–42. The Specification, therefore,
`describes reporting an Attach type, i.e., normal or handover, to a Mobility
`Management Entity (“MME”) before initiating registration into (attaching
`to) the 3GPP network. Id. at 6:31–49. In one embodiment, an information
`element (“IE”) called an Attach Type IE is included in an Attach Request
`message sent from the UE to the MME, wherein assigning the value “0” to
`the IE indicates the Attach type is normal and assigning a value of “1”
`indicates the Attach type is handover. Id.
`
`3
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`D. Challenged Claims of the ’779 Patent
`Of the challenged claims noted above, claims 1 and 11 are
`independent, and claims 4, 9, and 10 depend from claim 1. Claim 1,
`reproduced below, is illustrative:
`1. A handover processing method, comprising:
`receiving, by a Mobility Management Entity (MME), an attach
`request message sent by a User Equipment (UE) during a
`handover from a non 3rd Generation Partnership Project (non-
`3GPP) network to a 3rd Generation Partnership Project (3GPP)
`network, wherein the attach request message comprises an
`information element (IE) indicating handover;
`identifying, by the MME, a Packet Data Network Gateway (PDN
`GW) whose address is used by the UE in the non-3GPP network
`by communicating with a Home Subscriber Server (HSS); and
`requesting, by the MME, the PDN GW to initiate a bearer
`creation procedure.
`
`4
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`E. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 4, and 9–11 of the
`’779 patent based on the following grounds (Pet. 2–3):
`Challenged
`Basis
`References
`Claims
`1, 4, 9–11
`1, 4, 9–11
`1, 4, 9–11
`1, 4, 9–11
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`APA1 and Soderbacka2
`APA and Nokia3
`Motorola4 and Nokia
`Motorola and Soderbacka
`
`
`
`II. ANALYSIS
`A. Motion to Seal
`Concurrently with the Petition, Petitioner filed a Motion to Seal under
`37 C.F.R. §§ 42.14 and 42.55. Paper 3 (“Motion to Seal”). Petitioner’s
`motion seeks to seal Exhibit 1022, which purports to be Patent Owner’s
`preliminary infringement contentions in a district court proceeding.5 Motion
`to Seal 2–3. Petitioner seeks to seal the infringement contentions because
`they were marked “CONFIDENTIAL” by Patent Owner, and are subject to a
`protective order, in the district court proceeding. Id. at 3.
`
`
`1 Portions identified by Petitioner of the translation of the Chinese priority
`application leading to the ’779 patent contained in the File History of U.S.
`Patent No. 8,537,779 (Appl. No. 12/581,575) (Ex. 1002) (“APA”).
`2 U.S. Publication No. 2003/0114158 A1 (Ex. 1007) (“Soderbacka”).
`3 GPRS functionality for IMS emergency services support, 3GPP TSG-SA2
`Meeting #57, S2-072255 (Apr. 23–27, 2007) (Ex. 1008) (“Nokia”).
`4 Handover from non-3GPP Access to E-UTRAN (TS 23.402), 3GPP TSG
`SA WG2 Architecture—S2#57 (Apr. 23–27, 2007) (Ex. 1009) (“Motorola”).
`5 Huawei Technologies Co. v. T-Mobile USA, Inc., Case No.2:16-cv-00056.
`
`5
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`Petitioner also seeks to seal documents that include allegedly
`confidential information disclosed in the infringement contentions, namely
`the unredacted declaration of its expert declarant, Mark Lanning,
`Exhibit 10036, and an unredacted version of the Petition, Paper 4, both of
`which Petitioner filed as confidential in this proceeding. Motion to Seal 2–
`3. Petitioner also filed as public a redacted version of the Petition, Paper 2,
`and a redacted version of Mr. Lanning’s declaration, Exhibit 1003.
`Neither party has requested a default protective order or filed a
`proposed protective order in this proceeding. See 37 C.F.R. § 42.55. Patent
`Owner has not made any request in this proceeding to maintain the
`confidentiality of Exhibit 1022, or its subject matter. Also, neither party has
`explained why the contents of the infringement contentions are confidential,
`including why they are confidential under the Federal Rules of Civil
`Procedure 26(c)(1)(G). See 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
`We need not decide Petitioner’s Motion to Seal, however, because the
`information alleged to be confidential does not affect our decision on
`institution. Petitioner’s reliance on Exhibit 1022 relates to interpretation of
`claim terms that need not be interpreted to resolve any controversy in this
`proceeding. Accordingly, we deny Petitioner’s Motion to Seal, and hereby
`expunge Exhibit 1022, Paper 4, and the unredacted version of Ex. 1003 that
`Petitioner filed as confidential.
`
`
`6 Petitioner filed two documents as Exhibit 1003. A redacted version and an
`unredacted version of Mr. Lanning’s declaration were each filed as
`Exhibit 1003. Petitioner filed the unredacted version as confidential, and the
`redacted version as public.
`
`6
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`B. Eligibility of References under 35 U.S.C. § 311(b)
`Patent Owner argues that, as a threshold matter, the references
`Petitioner relies upon 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. 1, 13–28, 32–38. Patent Owner argues that we should, on this
`basis, deny institution of inter partes review. Id.
`We need not decide, however, whether the references upon which
`Petitioner relies are patents or printed publications under § 311(b) because,
`for reasons discussed below, we deny institution for other reasons.
`Accordingly, the issue of whether the references upon which Petitioner relies
`are eligible under § 311(b) is moot.
`C. 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). For the purposes of this Decision, we
`
`7
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`do not find it necessary to the resolution of any controversy to construe
`expressly any claim terms.
`D. Asserted Obviousness of the Challenged Claims
`Of the challenged claims, claims 1 and 11 are independent and claims
`4, 9, and 10 depend from claim 1. Central to our Decision is whether
`Petitioner has made a sufficient showing that at least one of the various
`combinations proposed by Petitioner discloses “an attach request message,”
`“wherein the attach request message comprises an information element (IE)
`indicating handover,” as recited in independent claim 1, and the similarly
`recited limitation in independent claim 11.
`For reasons discussed below, Petitioner has not made a sufficient
`showing. Based on the current record, therefore, we determine Petitioner
`has not demonstrated a reasonable likelihood that it would prevail with
`respect to at least one challenged claim of the ’779 patent.
`1. Asserted Obviousness over APA and Soderback
`a. Overview of APA (Ex. 1002)
`Petitioner asserts that portions of the earliest filed Chinese priority
`application for the ’779 patent is admitted prior art. Pet. 37. Petitioner
`specifically alleges that the following portions of the translation of the
`Chinese priority application is admitted prior art: Ex. 1002, 1025, lines 11–
`30 (describing prior art architecture), 1026, lines 8–35, 1027, lines 1–6
`(describing prior art processes), 1028, lines 13–17 (describing prior art
`figures), Figures 1–4 and corresponding text at 1035–37. Pet. 37.
`b. Overview of Soderbacka (Ex. 1007)
`Soderbacka is a U.S. Patent Application that was published by the
`Patent Office on June 19, 2003. Pet. 38. Soderbacka discloses “a method
`
`8
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`for performing an intersystem handover of a mobile terminal accessing a
`communication network via a radio access network of a first type.”
`Ex. 1007, Abstract. Soderbacka discloses a mobile communication system
`that supports several different radio access technologies (“RAT”), including
`technologies such as 3G and 2G. Id. ¶ 2. Soderbacka discloses further that
`there are various reasons to handover a mobile device from one RAT
`network to another. Id. ¶ 4. By way of example, quality of service (“QoS”)
`requirements associated with services requested by a mobile phone may
`necessitate handover from one RAT network to another because different
`RAT technologies offer varying levels of quality and coverage. Id. ¶¶ 5–7.
`Soderbacka discloses one embodiment in which “handover depends on a
`desired service, e.g., because this service is only available via a specific type
`of radio access network.” Id. ¶ 31. “Based on service related information
`provided by the mobile terminal at the beginning of the call, the mobile
`terminal is handed over, if handover is required for this service.” Id.
`Soderbacka discloses that if this embodiment is realized in a 3G system, an
`information element (“IE”) is added to a SETUP message transmitted by the
`mobile terminal to the communication network. Id. ¶ 32. The information
`element “inform[s] the communication network about the radio access
`technology the mobile terminal would like to use for the requested service.”
`Id.
`
`c. Analysis
`With respect to the challenged independent claims, 1 and 11,
`Petitioner relies on APA for disclosure of the claim recitations, except with
`respect to the limitation requiring “an attach request message” that
`comprises an “information element [] indicating handover.” Pet. 44–53.
`
`9
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`Petitioner relies on Soderbacka for disclosure of this feature. Id. at 48–49.
`Specifically, Petitioner relies on Soderbacka’s disclosure of a SETUP
`message, sent by a mobile phone to a SGSN, that includes “an information
`element added to the current establishment signaling.” Id. at 48 (citing
`Ex. 1007 ¶ 113).
` The information element (“IE”) disclosed in the cited portion of
`Soderbacka signals a “request for a preferred radio access technology.” Id.
`(citing Ex. 1007 ¶ 113). We look, therefore, to whether Petitioner has
`provided sufficient evidence and argument to explain why an IE signaling a
`request for a preferred radio access technology would have been understood
`to indicate handover.
`Soderbacka discloses that a mobile terminal is dual-band, capable of
`accessing a radio communication network using either of two different radio
`access technologies. Ex. 1007 ¶ 113. Soderbacka describes various means
`by which a preferred radio access technology may be stored, but also
`discloses that connection establishment signaling may include an IE as a
`means for signaling a preferred radio access technology. Id. Patent Owner
`argues that the IE in Soderbacka does not indicate handover, but instead
`specifies a preferred radio access technology. Prelim. Resp. 42–43. In the
`Petition, Petitioner makes no attempt to explain why specifying a radio
`access technology would have indicated a handover. Pet. 48. Petitioner
`states only that “Soderbacka discloses ‘an information element added to the
`current connection establishment signaling,” without acknowledging the
`type of information indicated by the IE in Soderbacka, much less explaining
`why the information would have indicated handover. Pet. 48 (citing
`
`10
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`Ex. 1007 ¶ 113). The cited portion of Soderbacka likewise does not explain
`why the IE would have indicated handover. Ex. 1007 ¶ 113.
`Rather than explain why specifying a preferred radio access
`technology would have indicated handover, Petitioner asserts that
`Soderbacka “states that the information in the information element
`‘indicat[es] that an intersystem handover . . . should be performed.’” Pet. 48
`(citing Ex. 1007 ¶ 57) (emphasis added). The paragraph relied on by
`Petitioner for this disclosure, however, makes no such statement. The relied
`upon paragraph states, in its entirety:
`To this end, the first radio access technology has to be
`known which the 3G/2G mobile terminal is currently
`using. When the 3G-SGSN receives a request for a
`content, the radio access technology is inherently known,
`since the 3G-SGSN is connected to the UTRAN 1, which
`is a 3G-only network element.
`Ex. 1007 ¶ 57. This disclosure does not refer to an IE indicating that a
`handover should be performed, and Petitioner does not explain how this is a
`statement of such. Pet. 48 (citing Ex. 1007 ¶ 57).
`Also, the IE in Soderbacka is included in a SETUP message rather
`than an attach request message, as recited in the claims. According to
`Petitioner, however, SETUP messages are like attach request messages
`because they, too, are part of initial connection establishment signaling.
`Pet. 48 (citing Ex. 1003 ¶ 187). Patent Owner counters that a SETUP
`message is distinguishable from an attach request message because the
`former involves sending a request to a service for which a UE is already
`registered, whereas the latter involves sending a request to a network that the
`UE is not currently registered with. Prelim. Resp. 38. This distinction is
`significant, according to Patent Owner, because it means that the IE in
`
`11
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`Soderbacka is used prior to a handover, and therefore cannot indicate a
`handover. Id. Patent Owner’s argument that the IE in Soderbacka is used
`prior to handover is consistent with Petitioner’s assertion that the IE in
`Soderbacka “indicat[es] that an intersystem handover . . . should be
`performed.” See Pet. 48 (citing Ex. 1007 ¶ 57) (emphasis added).
`Also, we note the peculiarity of Petitioner’s assertion that the
`information element in Soderbacka indicates a handover should be
`performed, because the claim language does not use the term “should be
`performed.” Pet. 48. Petitioner does not explain why the limitation
`“information element indicating handover” is satisfied by an “information
`element indicating handover should be performed.” The challenged claims
`do not include express language to that effect, and Petitioner has not cited to
`any portion of either the claim language or the Specification to support its
`position.
`Upon review of the record before us, therefore, we are not persuaded
`Petitioner has shown sufficiently that Soderbacka discloses the “information
`element indicating handover” limitation.
`2. Asserted Obviousness over APA and Nokia
`a. Overview of Nokia (Ex. 1008)
`Nokia is titled, “GPRS functionality for IMS emergency services
`support,” and discloses a “Combined GPRS / IMSI Attach” procedure.
`Ex. 1008, 2. In step 1 of the procedure, a mobile station (“MS”) initiates the
`attach procedure by transmitting an Attach Request message to the SGSN.
`Id. at 4. The Attach Request message includes an Attach Type element that
`indicates which type of attach is to be performed, namely a GPRS attach
`
`12
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`only, GPRS Attach while already IMSI attached, or combined GPRS / IMSI
`attach. Id.
`
`
`
`
`
`b. Analysis
`With respect to the challenged independent claims, Petitioner relies on
`APA for disclosure of the claim recitations, except with respect to the
`limitation requiring “an attach request message” that comprises an
`“information element [] indicating handover.” Pet. 55–61. Petitioner relies
`on Nokia for disclosure of this feature. Id. at 56–60. Specifically, Petitioner
`relies on Nokia’s disclosure of an Attach Request message that includes an
`Attach Type. Id. at 58 (citing Ex. 1008, 4). Petitioner argues that the Attach
`Type in Nokia is an IE that includes information to distinguish Attach
`Request messages. Id. at 59 (citing Ex. 1003 ¶¶ 252, 255). Petitioner
`acknowledges that the information does not indicate handover. Id. Rather,
`the information indicates attach types including “GPRS only” and
`“GPRS/IMSI combined.” Id. at 59; see also Ex. 1008, 4 (describing attach
`types).
`Petitioner argues, however, that it would have been trivial to include
`an IE indicating handover in Nokia’s Attach Request message. Pet. 59.
`Petitioner argues that “[a] POSITA would have needed to look no further
`than [] Nokia [] to find that the information element called ‘Attach Type’
`serves to distinguish Attach Request messages,” and “it would have been
`trivial for a POSITA could have easily added ‘handover or initial’ attach into
`[Nokia’s] pre-existing information element field.” Id. (citing Ex. 1003
`¶ 253). In support of this argument, Petitioner relies on the Chinese priority
`application for the ’779 patent, namely the description of an alleged problem
`that needed to be solved. Id. at 58–59. The Federal Circuit has noted that
`
`13
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`“[o]ften the inventive contribution lies in defining the problem in a new and
`revelatory way. In other words, when someone is presented with the
`identical problem and told to make the patented invention, it often becomes
`virtually certain that the artisan will succeed in making the invention.”
`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). Thus,
`we look to see if the Petitioner has provided evidence that the alleged
`problem was a known problem in the art or just a problem defined by the
`patentee.
`According to Petitioner, the problem described in the Chinese priority
`application that needed to be solved was that the network needed to know
`whether the attach procedure was caused by handover, but that existing
`mechanisms did not provide this information to the network. Pet. 58–59
`(citing Ex. 1002, 1027,7 lines 15–17). Petitioner argues that a skilled artisan,
`therefore, would have looked to Nokia to solve the problem described in the
`Chinese priority application. Pet. 59 (citing Ex. 1003 ¶¶ 252, 255).
`The portion of the Chinese priority application upon which Petitioner
`relies is not alleged by Petitioner to be prior art. In particular, Petitioner
`expressly sets forth which portions of the Chinese priority application it
`alleges to be prior art. Pet. 37. Notably absent from Petitioner’s allegations
`is the portion of the Chinese priority application Petitioner cites to as
`describing the problem that needed to be solved, i.e., Ex. 1002, 1027, lines
`15–17. Id.; see also Ex. 1002, 1027, lines 15–17. In addition, the Chinese
`priority application does not describe the alleged problem as being well
`
`
`7 Petitioner cites to Bates Nos., provided by Petitioner, in the right hand
`corner of Ex. 1002. Herein, we adopt Petitioner’s citation convention for
`consistency.
`
`14
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`known in the art. Ex. 1002, 1026, lines 30–35, 2017, lines 1–6. The
`Chinese priority application describes the handover protocols depicted in
`Figures 3 and 4 as “existing protocol[s],” but in contrast, ascribes discovery
`of the alleged problem to the inventor: “the inventor finds that the
`processing mechanism of an Attach or TAU process caused by handover
`differs sharply from the processing mechanism of a normal Attach/TAU
`process.” Ex. 1002, 1027, lines 7–9 (emphasis added). The Chinese priority
`application states, therefore, that “the network side needs to know” whether
`the attach is caused by handover, but “the existing mechanism cannot
`distinguish them.” Id. at lines 15–17. Because this disclosure describes the
`problem as something the inventor realized, the Chinese priority application
`does not support a finding that the alleged problem was known in the art.
`Accordingly, Petitioner has not provided sufficient evidence and argument
`that a skilled artisan would have added an IE indicating handover to the
`Attach Request message in Nokia.
`Upon review of the record before us, therefore, we are not persuaded
`Petitioner has made a sufficient showing regarding the “information element
`indicating handover” limitation with respect to APA and Nokia.
`3. Asserted Obviousness over Motorola and Nokia
`a. Overview of Motorola (Ex. 1009)
`Motorola is titled, “Handover from non-3GPP Access to E-UTRAN
`(TS 23.402),” and discloses a procedure for handover from a non-3GPP
`network to a LTE (e.g., 3GPP) network. Ex. 1009, 1. The Figure labeled
`5.x, and accompanying description, set forth the steps involved in the
`handover. Id. at 3–4, Figure 5.x.
`
`15
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`b. Analysis
`With respect to the challenged independent claims, Petitioner relies on
`Motorola for disclosure of the claim recitations, except with respect to the
`limitation requiring “an attach request message” that comprises an
`“information element [] indicating handover.” Pet. 65–73. Petitioner relies
`on Nokia for disclosure of this feature. Id. at 69. Petitioner does not include
`any additional argument beyond those arguments made with respect to the
`combination of APA and Nokia, and Petitioner incorporates those arguments
`by reference. Id. Discussed above with respect to the combination of the
`APA and Nokia, the Attach Type in Nokia, upon which Petitioner relies,
`does not indicate handover. With respect to the APA and Nokia
`combination, Petitioner relies on APA’s definition of an alleged problem to
`be solved as providing motivation to include a “handover” indication in
`Nokia’s Attach Type. Id. at 59. Petitioner has not provided a reason in
`Motorola that would have led a skilled artisan to include a “handover” IE in
`Nokia. Id. at 69.
`In a separate section of the Petition generally addressing motivation to
`combine Motorola and Nokia, that does not specifically call out the
`“information element [] indicating handover” limitation, Petitioner asserts
`that Motorola and Nokia raise the same problem, namely that both disclose
`“an Attach Request message can be used for multiple purposes.” Id. at 62.
`Petitioner, however, does not show that either reference was concerned with
`a need to indicate, in an Attach Request message, whether the attach request
`is due to a handover. Petitioner has not provided evidence or argument
`sufficient to explain why the IE in Nokia’s Attach Request message would
`have been modified to indicate handover.
`
`16
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`Upon review of the record before us, therefore, we are not persuaded
`Petitioner has shown sufficiently that Nokia, either alone or in combination
`with Motorola, discloses the “information element indicating handover”
`limitation.
`4. Asserted Obviousness over Motorola and Soderbacka
`With respect to the challenged independent claims, Petitioner relies on
`Motorola for disclosure of the claim recitations, except with respect to the
`limitation requiring “an attach request message” that comprises an
`“information element [] indicating handover.” Pet. 76–78. Petitioner relies
`on Soderbacka for disclosure of this feature. Id. at 77. Petitioner does not
`include any additional argument beyond those arguments made with respect
`to the combination of APA and Soderbacka, and Petitioner incorporates
`those arguments by reference. Id. The information element in Soderbacka
`specifies a preferred radio access technology (Ex. 1007 ¶ 113), which for
`reasons discussed above regarding the combination of APA and Soderbacka,
`we are not persuaded indicates handover. Petitioner has not provided
`additional argument with respect to the combination of Motorola and
`Soderbacka. Pet. 77.
`In a separate section of the Petition generally addressing motivation to
`combine Motorola and Soderbacka, that does not specifically call out the
`“information element [] indicating handover” limitation, Petitioner provides
`the following assertions. Id. at 74–76. Petitioner asserts that a person
`having ordinary skill in the art would have been motivated, in view of
`Soderbacka, to include necessary information in the handover procedure
`disclosed in Motorola so that mobile phones could “access ‘networks for
`which the mobile terminal is not currently registered.’” Id. at 74. In support
`
`17
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`of this assertion, Petitioner argues that, not only does Soderbacka identify a
`problem with handover procedures, but that Soderbacka provides the
`solution, namely an IE that allows the network to make decisions as to the
`type of registration to perform. Id. Petitioner does not explain what it
`means by “type of registration to perform.” Id. Discussed above, the
`information element in Soderbacka specifies a preferred radio access
`technology, for example WCDMA technology or GSM technology.
`Ex. 1007 ¶ 35. Petitioner has not shown, however, that either reference was
`concerned with a need to indicate, in an Attach Request message, whether
`the attach request is due to a handover. It is unclear from Petitioner’s
`arguments, therefore, why a skilled artisan would have modified the Attach
`Request message in Motorola to include an IE indicating handover because
`Petitioner has not shown that there was a well known problem associated
`with whether an Attach Request message is due to handover.
`Upon review of the record before us, therefore, we are not persuaded
`Petitioner has shown sufficiently that Soderbacka discloses the “information
`element indicating handover” limitation.
`5. Summary
`For the foregoing reasons, Petitioner has not shown sufficiently that
`the combinations argued by Petitioner disclose the “information element []
`indicating a handover” limitation recited in the challenged independent
`claims. Therefore, on the record before us, we are not persuaded Petitioner
`has demonstrated a reasonable likelihood that it would prevail in showing
`independent claims 1 and 11 of the ’779 patent are unpatentable, or that
`claims 4, 9, and 10, which depend from claim 1, are unpatentable.
`
`18
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`
`
`
`
`
`III. CONCLUSION
`For the foregoing reasons, Petitioner has not established that there is a
`reasonable likelihood Petitioner would prevail in showing the
`unpatentability of any one of the challenged claims, 1, 4, and 9–11, of the
`’779 patent.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that Exhibit 1022 shall be expunged from the record in
`this proceeding;
`FURTHER ORDERED that Paper 4 shall be expunged from the
`record in this proceeding;
`FURTHER ORDERED that the unredacted version of Exhibit 1003,
`filed as confidential by Petitioner, shall be expunged from the record in this
`proceeding; and
`FURTHER ORDERED that Petitioner’s request for an inter partes
`review of claims 1, 4, and 9–11 of the ’779 patent is denied.
`
`
`PETITIONER:
`
`S. Benjamin Pleune
`Derek S. Neilson
`John D. Haynes
`Scott Stevens
`Robert Caison
`J. Ravindra Fernando
`Christpher Douglas
`Derek Neilson
`Ross Barton
`Samuel Merritt
`Michael Deane
`
`19
`
`
`
`
`
`
`
`IPR2017-00658
`Patent 8,537,779 B2
`
`Alston & Bird LLP
`Ben.pleune@alston.com
`Derek.neilson@alston.com
`John.haynes@alston.com
`scott.stevens@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
`Michael.deane@alston.com
`
`PATENT OWNER:
`
`Michael T. Hawkins
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`Stuart A. Nelson
`Kevin K. Su
`Conrad A. Gosen
`Fish & Richardson P.C.
`hawkins@fr.com
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`snelson@fr.com
`su@fr.com
`gosen@fr.com
`
`20
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
