Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 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 NETWORKS OY,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00661
`Patent 9,060,268 B2
`____________
`
`
`Before JENNIFER MEYER CHAGNON,
`MICHELLE N. WORMMEESTER, and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 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 NETWORKS OY,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00661
`Patent 9,060,268 B2
`____________
`
`
`Before JENNIFER MEYER CHAGNON,
`MICHELLE N. WORMMEESTER, and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00661
`Patent 9,060,268 B2
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`
`I.
`
`INTRODUCTION
`Nokia Solutions and Networks US LLC, and Nokia Solutions and
`Networks Oy (collectively, “Petitioner”)1 filed a Petition for inter partes
`review of claims 1–3 (“the challenged claims”) of U.S. Patent No. 9,060,268
`B2 (Ex. 1001, “the ’268 patent”). Paper 2 (“Pet.”). Petitioner relies on the
`Declarations of David Lyon, Ph.D. (Ex. 1003) and Balazs Bertenyi
`(Ex. 1004) to support its positions. Huawei Technologies Co. Ltd. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, and for the reasons explained
`below, we determine that the information presented shows a reasonable
`likelihood that Petitioner would prevail with respect to all of the challenged
`claims. See 35 U.S.C. § 314(a). Accordingly, we institute trial as to
`claims 1–3 of the ’268 patent.
`
`A. Related Proceedings
`The parties indicate that the ’268 patent is the subject of the following
`ongoing district court proceeding: Huawei Techs. Co. v. T-Mobile US, Inc.,
`Case No. 2:16-cv-00057 (E.D. Tex.). Pet. 1; Paper 6, 2.
`
`B. The ’268 Patent
`The ’268 patent is titled “Negotiating Security Capabilities During
`Movement of UE,” and was filed as U.S. application No. 12/717,385 on
`March 4, 2010. Ex. 1001, at [21], [22], [54]. The ’268 patent claims
`
`1 Petitioner identifies T-Mobile USA, Inc. and T-Mobile US, Inc. as
`additional real parties-in-interest. Pet. 1.
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`priority to application PCT/CN2008/072486, filed on September 24, 2008.
`Id. at [63]. The ’268 patent also claims priority to Chinese application No.
`CN 2007 1 0181068, filed September 29, 2007. Id. at [30].
`The ’268 patent “relates to communication technologies, and in
`particular, to a method, system, and apparatus for negotiating security
`capabilities during movement of a User Equipment (UE).” Id. at 1:16–19.
`Specifically, the ’268 patent describes a method and system “for negotiating
`security capabilities during movement of a UE, so that the security
`capabilities can be negotiated when the UE in the idle state moves from an
`LTE network to a 2G/3G network.” Id. at 1:66–2:8.
`Figure 1 of the ’268 patent is reproduced below.
`
`Figure 1, reproduced above, is a flow chart of a method for negotiating a
`security capability during movement of a UE, according to an embodiment
`of the ’268 patent. Id. at 3:17–19. According to the method illustrated in
`
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`Figure 1, a UE sends a Routing Area Update (RAU) request to the 3G
`Serving GPRS Support Node (SGSN), at step 100. Id. at 4:16–17. The
`RAU request includes, among other things, the “security capabilities
`supported by the UE, for example, a ciphering algorithm and/or an integrity
`protection algorithm.” Id. at 4:18–23. At steps 101–103, “[t]he 3G SGSN
`obtains the AV-related keys from the MME through a mobility management
`context message, where the AV-related keys are deduced according to the
`root key.” Id. at 4:24–27.
`At step 104, the “SGSN sends a Security Mode Command (SMC)
`message to the RNC. The message carries the security capabilities
`supported by the UE, security capabilities allowed by the system, and a
`security key.” Id. at 4:51–54. At step 105, “the RNC selects security
`algorithms, including a ciphering algorithm and an integrity protection
`algorithm,” and at step 106, the RNC “sends an SMC message that carries
`the security capabilities supported by the UE and the selected security
`algorithm to the UE.” Id. at 4:57–61.
`At step 107, the “UE deduces the AV-related keys according to its
`own root key, where the AV-related keys include IK and CK, or an IK' and a
`CK' further derived from the IK and the CK through unidirectional
`transformation.” Id. at 4:64–67. At steps 108 and 109, “the UE . . . sends an
`SMC Complete message to the RNC [and t]he RNC sends an SMC
`Complete message that carries the selected security algorithm to the 3G
`SGSN.” Id. at 5:4–7. Finally, at step 110, the “3G SGSN sends a RAU
`Accept message to the UE” and at step 111, the “UE returns an RAU
`Complete message to the 3G SGSN.” Id. at 5:10–12.
`
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`
`C. Challenged Claims
`Each of the challenged claims is independent. Claims 1–3 of the ’268
`patent are reproduced below. For convenience of the discussion, the claims
`are annotated with Petitioner’s labeling of the claim elements.
`1. [1 Pre] In a mobility management entity (MME) of a
`long term evolution (LTE) network, a method for negotiating
`security keys comprising:
`[1A] receiving a context request for requesting a mobility
`management context sent by a serving GPRS support node
`(SGSN) in a second or third generation (2G/3G) network,
`according to a routing area update (RAU) request from a user
`equipment (UE) in an idle mode; and
`[1B] sending the mobility management context to the
`SGSN, wherein the mobility management context comprises
`information for determining security capacities supported by
`the UE and authentication vector (AV)-related keys that are
`deduced according to a root key of the MME, [1C] wherein the
`AV-related keys comprise an Integrity Protection Key (IK) and
`a Ciphering Key (CK), or comprise values derived from the IK
`and the CK through an unidirectional transformation.
`Ex. 1001, 11:12–28.
`2. [2 Pre] A mobility management entity (MME) of a
`long term evolution (LTE) network for negotiating security
`keys, comprising:
`[2A] a receiver configured to receive a context request for
`requesting a mobility management context sent by a serving
`GPRS support node (SGSN) in a second or third generation
`(2G/3G) network according to a routing area update (RAU)
`request from a user equipment (UE) in an idle mode;
`[2B] a processor configured to deduce authentication
`vector (AV)-related keys according to a root key of the MME,
`wherein the AV-related keys comprise an Integrity Protection
`Key (IK) and a Ciphering Key (CK), or comprise values
`derived from the IK and the CK through an unidirectional
`transformation; and
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`[2C] a transmitter configured to send the mobility
`management context to the SGSN, wherein the mobility
`management context comprises information for determining
`security capacities supported by the UE and the AV-related
`keys.
`Id. at 11:29–12:13.
`3. [3 Pre] A system for negotiating security keys,
`comprising:
`[3A] a serving GPRS support node (SGSN) in a second
`or third generation (2G/3G) network, configured to receive a
`routing area update (RAU) request from a user equipment (UE)
`when the UE is in an idle mode and moves from a long term
`evolution (LTE) network to the 2G/3G network, and to send a
`context request to a mobility management entity (MME) in the
`LTE network to request a mobility management context
`according to the RAU request; and
`[3B] the MME configured to receive the context request,
`and send the mobility management context to the SGSN,
`wherein
`the mobility management
`context
`comprises
`information for determining security capacities supported by
`the UE and authentication vector (AV)-related keys that are
`deduced according to a root key of the MME, [3C] wherein the
`AV-related keys comprise an Integrity Protection Key (IK) and
`a Ciphering Key (CK);
`[3D] wherein the SGSN is further configured to send the
`AV-related keys to a radio network controller (RNC).
`Id. at 12:14–33.
`
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`
`D. The Applied References
`Petitioner relies on the following references in the asserted grounds.
`Pet. 2.
`
`3GPP, Technical Specification Group Services and System Aspects;
`GPRS enhancements for E-UTRAN access (Release 8) (3GPP TS 23.401
`V1.1.0), (July 2007) (Ex. 1005, “TS 23.401”);
`
`3GPP, Technical Specification Group Services and System Aspects;
`Rationale and track of security decisions in Long Term Evolved (LTE) RAN /
`3GPP System Architecture Evolution (SAE) (Release 8) (3GPP TR 33.821
`V0.4.0), (July 2007) (Ex. 1006, “TR 33.821”);
`
`3GPP, Technical Specification Group Services and System Aspects;
`General Packet Radio Service (GPRS); Service description; Stage 2
`(Release 7) (3GPP TS 23.060 V7.4.0), (Mar. 2007) (Ex. 1007, “TS 23.060”);
`
`U.S. Patent No. 8,462,742 B2, issued June 11, 2013, to Song et al.
`(Ex. 1008, “Song”).
`
`E. The Asserted Grounds
`Petitioner challenges claims 1–3 as having been obvious under
`35 U.S.C. § 103(a) in view of the following three combinations of
`references: TS 23.401 and TR 33.821; TS 23.060 and TR 33.821; and Song
`and TR 33.821. Pet. 2, 26–72.
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`
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`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 the broadest
`reasonable construction standard, claim terms generally are given their
`ordinary and customary meaning, as would be 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). The claims, however,
`“‘should always be read in light of the specification and teachings in the
`underlying patent,’” and “[e]ven under the broadest reasonable
`interpretation, the Board’s construction ‘cannot be divorced from the
`specification and the record evidence.’” Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted). Further, any
`special definition for a claim term must be set forth in the specification with
`reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, however,
`limitations are not to be read from the specification into the claims. In re
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`The parties propose constructions for several claim terms. See
`Pet. 19–23; Prelim. Resp. 5–9. For purposes of this Decision, we address
`Petitioner’s arguments regarding certain limitations of claim 2—namely, the
`recited “receiver,” “processor,” and “transmitter,” each being “configured
`to” perform certain functions. Pet. 22–23. In the co-pending district court
`proceeding, Petitioner has argued that these limitations are
`means-plus-function limitations that lack sufficient corresponding structure.
`See Pet. 22–23; Ex. 1019, 54–59 (the parties’ Joint Claim Construction and
`Prehearing Statement in the co-pending district court proceeding). For
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`purposes of this inter partes review Petition, Petitioner asserts that “the
`broadest reasonable interpretation of each of these limitations [is] software
`or hardware capable of performing the claimed function.” Pet. 23.
`Patent Owner does not address the construction of these limitations of
`claim 2. At this stage of the proceeding, we have not reached a final
`decision with regard to whether such limitations are means-plus-function
`limitations under 35 U.S.C. § 112, ¶ 6, which requires identification of
`sufficient structure, material, or acts in the specification. See In re
`Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). We,
`however, are able to analyze Petitioner’s asserted prior art grounds without
`making such a determination at this stage of the proceeding. For purposes of
`this Decision on Institution, we construe these terms to mean software or
`hardware for performing the functions recited in the claim.
`We direct the parties, in their subsequent briefing in this proceeding,
`to address specifically whether or not the “receiver,” “processor,” and
`“transmitter” limitations of claim 2 invoke 35 U.S.C. § 112, ¶ 6. If so, the
`parties are directed to identify the corresponding structure from the
`Specification. If not, the parties are directed to explain their reasoning and
`address the construction of the terms under the broadest reasonable
`interpretation.
`Upon review of the parties’ contentions and supporting evidence, we
`determine no issue in this Decision requires express construction of any
`other claim terms. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the
`extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly,
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`for purposes of this Decision, we do not provide any express claim
`construction beyond that discussed above.
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art2;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). A prima facie
`case of obviousness is established when the prior art, itself, would appear to
`have suggested the claimed subject matter to a person of ordinary skill in the
`art. See In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
`
`2 Patent Owner argues that Petitioner does not appropriately address this
`Graham factor. Prelim. Resp. 23–32. At this stage of the proceeding, we
`determine that Petitioner has sufficiently addressed the Graham factors, and
`do not find Patent Owner’s argument persuasive.
`3 At this stage of the proceeding, the parties have not directed our attention
`to any objective evidence of non-obviousness.
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`We analyze the asserted grounds of unpatentability in accordance with
`these principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`had a Bachelor’s degree in electrical engineering, computer science, or
`computer engineering with at least 2–3 years of experience in the
`telecommunications industry, including experience with operating and/or
`implementing [Third Generation Partnership Project (3GPP)] networks.
`Additional education might substitute for some of the experience, and
`substantial experience might substitute for some of the educational
`background.” Pet. 27 (citing Ex. 1003 ¶ 20). Patent Owner does not address
`the level of ordinary skill in the art in its Preliminary Response. For
`purposes of this Decision, we adopt Petitioner’s proposal regarding the level
`of ordinary skill in the art. The level of ordinary skill in the art further is
`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. Whether TR 33.821 Qualifies as Prior Art
`Patent Owner argues in its Preliminary Response that Petitioner has
`failed to show that TR 33.821 qualifies as a printed publication. See Prelim.
`Resp. 9–23. Because each of Petitioner’s asserted grounds relies, in part, on
`TR 33.821 (see Pet. 2), we first address this issue. For the reasons discussed
`
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`below, we determine that Petitioner has made at least a threshold showing
`that this asserted reference qualifies as a printed publication.4
`To establish that TR 33.821 qualifies as a printed publication,
`Petitioner relies on the testimony of Mr. Bertenyi (Ex. 1004). See Pet. 23–
`25. Mr. Bertenyi details his experience with the 3GPP, including his work
`as chairman for 3GPP’s SA-2 Working Group, as well as for the overall
`TSG-SA plenary group. Ex. 1004 ¶¶ 3, 9–12. Mr. Bertenyi also testifies
`that “[b]ased on [his] experience [with 3GPP], [he] can speak with authority
`as to how the 3GPP standards are developed across the working groups and
`how 3GPP documents are drafted, distributed, stored and made available to
`the public without restriction.” Id. ¶ 3.
`Mr. Bertenyi testifies that there are “over a hundred
`telecommunications industry participants” in 3GPP. Id. ¶ 2. According to
`Mr. Bertenyi:
`In the ordinary course of 3GPP’s regularly-conducted
`business activities and pursuant to its standard business
`practices, 3GPP published all proposals, technical reports,
`technical specifications and other documents related to the
`development of cellular telecommunications standards to the
`3GPP’s publicly-available, unrestricted, online ftp server:
`http://www.3gpp.org/ftp/. Draft proposals, technical reports,
`technical specifications, change requests, and other documents
`(“Tdocs”) were assigned a document number (“Tdoc number”)
`and uploaded to 3GPP’s public ftp server before, during, and
`after meetings. Making the documents publicly available
`encouraged discussion and promoted establishment of industry
`standards for cellular telecommunications.
`
`4 Although Patent Owner has not challenged whether TS 23.401 and
`TS 23.060 qualify as printed publications, we note that we also are
`persuaded that Petitioner has made at least a threshold showing with respect
`to these asserted references. See Pet. 23–25; Ex. 1004 ¶¶ 29, 31.
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`Id. ¶ 20. Documents uploaded to the ftp server received a date and time
`stamp, indicating when the upload occurred. Id. ¶ 21. Mr. Bertenyi also
`provides a detailed explanation regarding the naming conventions used by
`3GPP with respect to proposals, technical reports, technical specifications,
`and other related documents (e.g., Tdocs). Id. ¶¶ 13–19 (citing Ex. 1050
`(3GPP TR 21.900 v6.0.0) (describing the procedures for naming and
`changing 3GPP documents)). Mr. Bertenyi testifies specifically that “the
`format for the filename of a TR document on the 3GPP server at least
`includes aabbb_xyz, which provides information regarding the contents . . .
`of the document.” Id. ¶ 15 (citing Ex. 1050, 21) (emphasis added); see also
`id. ¶ 16 (providing the same testimony with respect to TS documents on the
`3GPP server). Mr. Bertenyi then identified TR 33.821 as a document that
`was published and made available on the ftp server. Id. ¶ 30.
`Patent Owner argues that “regardless of whether some 3GPP
`documents were publicly available, neither Petitioner nor Mr. Bertenyi show
`that the specific TR 33.821 document was publicly accessible prior to
`September 29, 2007.” Prelim. Resp. 10.
`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
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`Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221,
`226 (CCPA 1981).
`According to the Federal Circuit, “[b]ecause there are many ways in
`which a reference may be disseminated to the interested public, ‘public
`accessibility’ has been called the touchstone in determining whether a
`reference constitutes a ‘printed publication’” under 35 U.S.C. § 102.
`Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed.
`Cir. 2008) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)).
`A 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.” SRI Int’l, Inc. v. Internet
`Security Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
`At this stage of the proceeding, we credit Mr. Bertenyi’s testimony
`and are persuaded that this is sufficient to show that “persons interested and
`ordinarily skilled in the subject matter or art exercising reasonable diligence,
`[could have] locate[d]” TR 33.821. See Bruckelmyer v. Ground Heaters,
`Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).
`
`E. Asserted Obviousness in View of TS 23.401 and TR 33.821
`Petitioner asserts that claims 1–3 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious in view of TS 23.401 and TR 33.821. Pet. 27–43. In
`addition to the arguments that TR 33.821 does not qualify as prior art, and
`that Petitioner does not appropriately address the Graham factors (both
`discussed above), Patent Owner argues that the cited combination does not
`disclose all elements of the challenged claims (Prelim. Resp. 32–47), and
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`that Petitioner has not provided sufficient reasons to combine the references
`(id. at 65–66).
`We have reviewed the parties’ contentions and supporting evidence.
`Given the evidence on this record, and for the reasons explained below, we
`determine that the information presented shows a reasonable likelihood that
`Petitioner would prevail on this asserted ground.
`
`1. Summary of TS 23.401 (Ex. 1005)
`TS 23.401 is a Technical Specification produced by a working group
`of 3GPP. Ex. 1005, Forward. TS 23.401 addresses enhancements to the
`existing General Packet Radio Service (GPRS) network to support access to
`the E-UTRAN5 network, and “covers both roaming and non-roaming
`scenarios and . . . all aspects, including mobility between E-UTRAN and
`pre-E-UTRAN 3GPP radio access technologies, policy control and charging,
`and authentication.” Id. § 1; Pet. 27.
`
`
`5 E-UTRAN stands for Evolved Universal Terrestrial Radio Access Network
`and is another term used to describe 4G or LTE networks. See Pet. 27
`(citing Ex. 1003 ¶ 116).
`
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`Sections 5.3.3.2.2 and 5.3.3.3.2 of TS 23.401 address the RAU update
`procedure for an idle state UE transitioning from an E-UTRAN network to a
`pre-E-UTRAN network (e.g., 2G or 3G). Figure 5.3.3.2-2 is reproduced
`below.
`
`
`Figure 5.3.3.2-2, reproduced above, shows an LTE-to-3G RAU update
`procedure. Ex. 1005 § 5.3.3.2.2. Figure 5.3.3.3-2 illustrates a similar
`procedure for an LTE-to-2G transition. Id. § 5.3.3.3.2. As seen in
`Figure 5.3.3.2-2, a UE sends an RAU Request to the 3G-SGSN (via the
`RNC) at steps 2a/2b. Id. § 5.3.3.2.2. The 3G-SGSN sends a Context
`Request to the MME (step 3), and receives a Context Response back from
`
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`the MME (step 4). Id. Authentication and security functions may be
`executed at step 5. Id.
`
`2. Summary of TR 33.821 (Ex. 1006)
`TR 33.821 is a Technical Report produced by a working group of
`3GPP. Ex. 1006, Forward. TR 33.821 “addresses security aspects of the
`new LTE/SAE network, including how security is handled during mobility
`events to/from the new LTE network and legacy 2G/3G networks.” Pet. 28
`(citing Ex. 1003 ¶ 116); see Ex. 1006 § 1.
`Figure 13 of TR 33.821 is reproduced below.
`
`
`Figure 13, reproduced above, illustrates a procedure for key handling during
`idle mode mobility. Id. § 7.4.11.3. In relevant part, Figure 13 and the
`corresponding discussion describe that the MME Context Response includes
`specific authentication keys and the UE’s security capabilities. Id.
`
`3. Analysis
`We first address Petitioner’s reasons to combine the references and
`then turn to particular disclosures of the references upon which Petitioner
`relies to teach each element of the independent claims. We use the element
`numbering provided by Petitioner (see supra Section I.C.). Where Patent
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`Owner has presented arguments in its Preliminary Response, we also address
`them below.
`
`a. Reasons to Combine
`Petitioner asserts that a person of ordinary skill in the art would have
`combined the teachings of TS 23.401 and TR 33.821 because “they are both
`concerned with cellular technology and more particularly they both address
`mobility issues between radio access networks and the implications of the
`addition of the 4G/LTE network to existing infrastructure.” Pet. 27 (citing
`Ex. 1003 ¶ 116). Petitioner further explains that the “documents provide
`views of the same subject matter from the different perspectives of the
`working groups which authored the documents” and that a person of
`ordinary skill in the art “would know that in order [to] implement the
`security negotiation in 4G/LTE networks in the architecture proposed in
`TS 23.401, they would need to look at both the architecture and security
`documentation.” Id. at 28 (citing Ex. 1003 ¶ 116); see also Ex. 1003 ¶ 115
`(“A person of ordinary skill in the art would have been familiar with the
`working groups and would have known that many 3GPP documents must
`necessarily be read together in order to implement the design features
`contained therein.”). Finally, Petitioner asserts that TR 33.821 explicitly
`directs the reader to TS 23.401 when considering idle mode mobility.
`Pet. 28–29 (citing Ex. 1006 § 7.4.11.3); see also Ex. 1003 ¶ 117 (“[T]he
`documents themselves direct those of ordinary skill to evaluate both
`documents in conjunction with one another.”). Thus, according to
`Petitioner, “a person of ordinary skill in the art would have been motivated
`to combine the teachings of TS 23.401 and TR 33.821 to fully describe a
`known solution to a known problem.” Pet. 29; Ex. 1003 ¶ 119.
`
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`Patent Owner argues that “a ‘Petitioner’s observation that both
`references . . . are from the same field of endeavor falls short of an adequate
`rationale.’” Prelim. Resp. 65 (citing Spectrum Brands, Inc. v. ASSA ABLOY
`AB, Case IPR2015-01563, slip op. at 19 (PTAB Jan. 15 2016) (Paper 7)).
`While we agree with Patent Owner that such an assertion alone may be
`insufficient rationale, as noted above, Petitioner provides more than a simple
`assertion that the references are from the same field, and provides additional
`reasons a person of ordinary skill in the art would have combined the
`references.
`Patent Owner further argues that a person of ordinary skill in the art
`“seeking to support key handling during idle mode mobility between an LTE
`and a 2G/3G network, for example, would have found no solution in
`TR 33.821.” Id. at 66. Based on the record now before us, however we
`credit Dr. Lyon’s testimony in this regard and are persuaded that “a person
`of ordinary skill in the art would have been motivated to combine the
`teachings of TS 23.401 and TR 33.821 to fully describe a known solution to
`a known problem.” Ex. 1003 ¶ 119; see also Estee Lauder Inc. v. L’Oreal,
`S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“[A]rguments of counsel cannot
`take the place of evidence lacking in the record.”) (internal citations and
`quotation marks omitted).
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`Based on the record now before us, we are persuaded that Petitioner
`has articulated sufficient reasoning6 why it would have been obvious to
`combine these references in the proposed manner.
`
`b. Claim 1
`Claim Element 1 Pre – Preamble
`Claim 1 recites a “method for negotiating security keys” “[i]n a
`mobility management entity (MME) of a long term evolution (LTE)
`network.” According to Petitioner, each of TS 23.401 and TR 33.821
`teaches a method of negotiating security keys in an MME of an LTE
`network. See Pet. 29–30 (citing Ex. 1003 ¶ 120; Ex. 1005 §§ 5.3.3.2.2,
`5.3.3.3.2; Ex. 1006 §§ 7.4.10, 7.4.11).
`Patent Owner, at this stage of the proceeding, has not presented
`specific arguments regarding this claim limitation. On the record now
`before us, we are persuaded that Petitioner has shown a reasonable
`likelihood of demonstrating that the asserted combination teaches or
`suggests this limitation of claim 1.
`Claim Element 1A – Receiving a Context Request
`Claim 1 recites “receiving a context request for requesting a mobility
`management context sent by a serving GPRS support node (SGSN) in a
`
`
`6 Petitioner also argues that “the inter-dependent nature of these documents
`was recognized by applicant, who disclosed the documents . . . during
`prosecution, and the examiner who cited to both TS 23.401 and TR 33.821
`during prosecution.” Pet. 29. We agree with Patent Owner that “the fact
`that the applicant cited the TS 23.401 and TR 33.821 references to the
`examiner is in no way an admission or recognition that these references are
`‘inter-dependent’” (Prelim. Resp. 66), and we do not find this portion of
`Petitioner’s argument persuasive.
`
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`second or third generation (2G/3G) network, according to a routing area
`update (RAU) request from a user equipment (UE) in an idle mode.”
`Regarding this claim feature, Petitioner points to Figures 5.3.3.2-2 and
`5.3.3.3-2 of TS 23.401, each of which illustrates “the signaling of various
`network elements when a UE is operating in an idle mode and performs a
`Routing Area Update (RAU).” Pet. 30 (citing Ex. 1003 ¶ 121; Ex. 1005
`§§ 5.3.3.2.2, 5.3.3.3.2). At Steps 2a and 2b in Figures 5.3.3.2-2 and
`5.3.3.3-2 of TS 23.401, a UE sends RAU Request to the SGSN of the 2G/3G
`network, and at Step 3, a Context Request is sent from the 2G or 3G-SGSN
`to an MME of an LTE network. Id. at 30–33 (citing Ex. 1003 ¶¶ 122, 123,
`126; Ex. 1005 §§ 5.3.3.2.2, 5.3.3.3.2).
`As further support, Petitioner points to Step 2 of Figure 13 of
`TS 33.821, which shows an MME receiving a context request for requesting
`a mobility management context. Id. at 33–34 (citing Ex. 1003 ¶¶ 127–128;
`Ex. 1006 § 7.4.11.3). This context request is “according to” the “TAU
`request” because it is indicated in the figure as being within the “MME
`context request” message in Step 2 of Figure 13. Id.; see also Ex. 1003
`¶ 128 (“[E]ven though Fig. 13 of TR 33.821 contemplates a move from an
`LTE network to another LTE network, the security steps performed by the
`‘old MME’ (i.e., the claimed MME), would be usable in the inter-RAT
`procedure of TS 23.401 and the claims. Indeed, both references refer to the
`context request as a ‘context request.’ Accordingly, the person of skill in the
`art would look to the disclosure of the ‘context request’ of TR 33.821 when
`attempting to perform an idle mode RAU to a 2G or 3G network.”).
`Patent Owner, at this sta
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