Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: July 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE US, INC. and T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO. LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00671
`Patent 8,638,750 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, PATRICK M. BOUCHER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
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`IPR2017-00671
`Patent 8,638,750 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Petitioners, T-Mobile US, Inc. and T-Mobile USA, Inc. (“T-Mobile”
`or “Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of claims 1–4, 6–10, and 12–17 of U.S. Patent No. 8,638,750 B2 (Ex.
`1001, “the ’750 patent”) pursuant to 35 U.S.C. §§ 311–319. T-Mobile relies
`on the Declarations of Dr. Sundeep Rangan (Ex. 1002) and Mr. Craig
`Bishop (Ex. 1009) in support of its Petition. Patent Owner, Huawei
`Technologies Co. Ltd. (“Huawei” or “Patent Owner”) filed a Preliminary
`Response (Paper 8, “Prelim. Resp.”) to the Petition, citing the Declaration of
`Mr. Scott Andrew Denning (Ex. 2001) in support of its response.
`We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted unless the
`information presented in the Petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” After considering the Petition,
`Preliminary Response, and associated evidence, we conclude that Petitioner
`has demonstrated a reasonable likelihood that it would prevail in showing
`the unpatentability of claims 1–4, 6–10, and 12–17 of the ’750 patent.
`
`B. Related Proceedings
`The parties indicate that the ’750 patent is involved in Huawei
`Technologies Co. Ltd. v. T-Mobile US, Inc., Case No. 2:16-cv-0056 (E.D.
`Tex). Pet. 1; Paper 7, 2.
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`Patent 8,638,750 B2
`
`C. The ʼ750 Patent
`The ’750 patent relates to handover between a 3rd Generation
`Partnership Project (3GPP) network and a non-3GPP network, such as
`Wireless Local Area Network (WLAN). See Ex. 1001, 1:53–56, 3:23–5:18.
`An access process during handover from a non-3GPP system to a 3GPP
`system differs from a normal 3GPP access process. Id. at 2:53–61; 6:10–
`8:58.
`
`In a normal 3GPP access process, the 3GPP system creates a default
`bearer for the user equipment (UE). Id. at 2:53–61. In an access process
`involving a handover from a non-3GPP system to the 3GPP system, the
`3GPP needs to recover the resources used by the UE in the non-3GPP
`system for continuity of service for the UE. Id. at 2:47–57. The ’750 patent:
`provide[s] a method for creating resources, a method for deleting
`resources, and a network device. The method for creating
`resources includes: notifying, by a first network element, a
`second network element at network side of a process type for
`creating resources for a UE; and performing, by the second
`network element, a process for creating resources for the UE
`according to the process type. With the embodiments of the
`present invention, a problem in the prior art that the network
`element at network side (i.e., the second network element at
`network side) cannot differentiate different access requests (i.e.,
`initial access request and access request caused by handover
`between access systems)[.]
`Id. at Abstract.
`Figure 3 below illustrates the signal interaction process for creating
`resources according to a first embodiment of the ’750 patent invention. Id.
`at 5:25–27.
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`IPR2017-00671
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`
`Figure 3 depicts in step 1 that “1. A UE may get access to a Non-3GPP
`access network though a Non-3GPP GW and a PDN GW” and in step 2 that
`“2. The UE may initiate a handover from the Non-3GPP access system to a
`3GPP access system.” Id. at 6:10–13. In step 3, the UE may send an Attach
`Request for performing the handover from the non-3GPP system the 3GPP
`system. Id. at 6:14–16. In step 6,
`For a normal access process, the first network element at network
`side may select a PDN GW for the UE according to a default
`Access Point Name (APN) in the subscriber data. For a handover
`access process, the first network element at network side may use
`the PDN GW that was used by the UE in the Non-3GPP access
`system (the first network element at network side may obtain the
`address information of the PDN GW from the HSS/AAA Server,
`or the HSS/AAA Server may send the stored address information
`of the PDN GW to the first network element at network side). If
`the 3GPP system is an SAE system, the first network element at
`network side may send a Create Default Bearer Request message
`to a Serving GW. If the 3GPP system is a GPRS/UMTS system,
`the first network element at network side may send a Create
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`IPR2017-00671
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`Default PDP Context Request message to the Serving GW. A
`flag may be included in the message to indicate the process type
`for creating the bearer.
`Id. at 6:64–7:13. In step 7, “the Serving GW may send a Create Default
`Bearer Request message to the PDN GW” and “[a] flag may be included in
`the message to indicate the process type for creating the bearer.” Id. at
`7:36–43.
`
`D. Illustrative Claim
`T-Mobile challenges claims 1–4, 6–10, and 12–17 of the ’750 patent.
`Claims 1, 7, and 13 are independent. Claim 1, reproduced below with
`sublabels added according to the scheme used by the parties, is illustrative of
`the claims at issue:
`1.
`[1a] A mobility management network device comprising:
`[1b] a receiver; and
`[1c] a transmitter configured to communicatively connect
`with the receiver,
`[1d] wherein, during a handover from a non-3rd
`Generation Partnership Project (non-3GPP) access system to a
`3GPP access system,
`[1e] the receiver is configured to receive, from a user
`equipment (UE), an access request message for access the 3GPP
`access system; and
`[1f] the transmitter is configured to send a resource request
`message to a packet data network gateway (PDN GW) to create
`resources for the UE to be used in the 3GPP access system,
`[1g] wherein the access request message includes first
`handover indication information indicating that the access is a
`handover access;
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`[1h] wherein, in response to the first handover indication
`information being included in the access request message, the
`resource request message is configured to include second
`handover indication information, which indicates that the
`resource request message is caused by a handover access; and
`[1i] wherein the second handover indication information
`is configured to be carried by an indication flag of the resource
`request message, the indication flag including one of a handover
`indication flag, a create type flag which is set to be handover
`create, and cause flag which is set to be handover cause.
`Ex. 1001, 32:12–40 (bracketed numbering added)
`E. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth the grounds of
`unpatentability of claims 1–4, 6–10, and 12–17 of the ’750 patent as follows
`(see Pet. 4, 33–62):
`
`References
`Motorola Proposal,1 Huawei
`Proposal,2 Starent Proposal,3
`and Edlund4
`
`Basis
`
`Claims Challenged
`
`§ 103(a)
`
`1, 2, 4, 6–8, 10, 12–
`14, 16, and 17
`
`
`1 S2-072252, Handover from non-3GPP Access to E-UTRAN (TS 23.402),
`Motorola, 3rd Generation Partnership Project (“3GPP”) TSG SA WG2
`S2#57, April 23-27, 2007 (Ex. 1003, “Motorola Proposal”).
`2 S2-071132, Handover from non 3GPP to 3GPP, Huawei, 3GPP TSG SA
`WG2 S2#56c, March 26-30, 2007 (Ex. 1004, “Huawei Proposal”).
`3 S2-072099, Handover Scenarios between 3GPP (EUTRA) and non-3GPP
`Access systems using S2a Reference Point with PMIP6, Starent, Marvell,
`Sprint, KDDI, 3GPP TSG SA WG2 S2#57, April 23-27, 2007 (“Starent
`Proposal”) (Ex. 1005), (Ex. 1005, “TR 23.809”).
`4 U.S. Published Patent Application No. 2004/0242199, published December
`2, 2004 (Ex. 1006, “Edlund”).
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`IPR2017-00671
`Patent 8,638,750 B2
`
`References
`Motorola Proposal, Huawei
`Proposal, Starent Proposal,
`Edlund, and S2-0722555
`
`Basis
`
`Claims Challenged
`
`§ 103(a)
`
`3, 9, and 15
`
`II. ANALYSIS
`A. Claim Interpretation
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). In applying a broadest reasonable
`construction, 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). Any special definition for a claim term must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`1. “receiver [] configured to receive” and “transmitter configured to
`communicatively connect” (claim 1) and “mobility management network
`device [] configured to . . . “ (claim 13)
`Claim 1 recites “a receiver . . . [where] the receiver is configured to
`receive, from a user equipment (UE), an access request message for access
`[sic] the 3GPP access system; . . . wherein the access request message
`includes first handover indication information indicating that the access is a
`
`
`5 S2-072255, GPRS functionality for IMS emergency services support, Nokia
`Siemens Networks, Nokia, 3GPP TSG SA WG2 S2#57, April 23-27, 2007
`(Ex. 1007, “S2-072255”).
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`handover access” and “a transmitter configured to communicatively connect
`with the receiver, . . . the transmitter is configured to send a resource request
`message to a packet data network gateway (PDN GW) . . . wherein, in
`response to the first handover indication information being included in the
`access request message, the resource request message is configured to
`include second handover indication information . . . carried by an indication
`flag of the resource request message.” Claim 13 recites “a mobility
`management network device configured to be responsible for mobility
`management, . . . the mobility management device is configured to[:] receive
`. . . an access request message . . .; and send a resource request message.”
`T-Mobile asserts that the receiver and transmitter limitations of claim
`1 and the mobility management network device of claim 13 are mean-plus-
`function limitations that fall within Section 112, ¶ 6, and recite a function
`without reciting sufficient structure for performing the claimed function.
`Pet. 18–23 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
`(Fed. Cir. 2015)).
`Huawei argues that receiver and transmitter limitations are
`presumptively not means plus function limitations and recite sufficient
`definite structures used in the art to refer to known network structures that
`the limitations do no invoke 35 U.S.C. Section 112, ¶ 6. Prelim. Resp. 15
`(citing EnOcean GmbH v. Face Int'l Corp., 742 F.3d 955, 959 (Fed. Cir.
`2014) and Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275,
`1287 (Fed. Cir. 2010)). Huawei further argues that the mobility
`management network device of claim 13 is a definite structure ordinarily
`
`used in the art. Prelim. Resp. 16 (Ex. 1001, 6:17–20). For example, Huawei
`
`notes that when “mobility management network device” appears in in the
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`preamble of claim 1, Petitioner describes it as a Mobility Management
`Entity (“MME”) that is known by those of ordinary skill in the art as an
`MME in an LTE network. Prelim. Resp. 16–17 (citing Pet. 34; Ex. 1002
`¶ 78).
`Based on the record before us, we find that the claims, read in light of
`the specification by a person of ordinary skill in the art, recite sufficiently
`definite structure that they do not fall within Section 112, ¶ 6. Reading the
`claims in light of the specification, the receiver and transmitter limitations of
`claim 1 and the mobility management network device limitation of claim 13
`recite sufficiently definite structure as understood by one of ordinary skill in
`the art. See Pet. 10–16 (discussing state of the art at time of patenting), 18
`(stating that a person of ordinary skill in the art would have a Master’s
`degree with three years of wireless communication for cellular systems or a
`Bachelor’s degree with five years of similar experience) (citing Ex. 1003
`¶ 59).
`Based on the record before us, we determine that the claim terms are
`not means-plus-function limitations and do not require express construction
`for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that those terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`
`B. Printed Publication Prior Art
`Huawei contends that the 3GPP proposals T-Mobile relies on— the
`Motorola, Huawei, Starent, and S2-072255 Proposals—are not prior art
`because Petitioner does not show that they were actually disseminated to
`
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`members of the public or indexed in a manner to provide sufficient public
`accessibility. Prelim. Resp. 18–21. Huawei argues that the Petition is
`deficient because it does not prove or show that persons exercising diligence
`could locate these 3GPP proposals as they were not indexed or cataloged.
`Id. at 22–25 (citing SRI Intern., Inc. v. Internet Sec. Systems, Inc., 511 F.3d
`1186, 1196-98 (Fed. Cir. 2008), In re Cronyn, 890 F.2d 1158, 1161 (Fed.
`Cir. 1989)).
`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 at 1160; In re Wyer, 655 F.2d 221, 226 (CCPA 1981).
`“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 Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)
`(citation omitted). In the present case, we disagree with Huawei’s
`contention, and find that T-Mobile has provided sufficient argument and
`evidence via the Declaration of Mr. Bishop that the proposals, including
`those proposals relied upon to discern the state of the art at the time of
`patenting, were available via the 3GPP website for the relevant working
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`group and that Mr. Bishop participated in this group and downloaded the
`proposals. Pet. 30–33 (citing Ex. 1009 ¶¶ 5–11, 20–25, 30–32, 39–42). We
`are not persuaded by Huawei’s arguments related to indexing of the 3GPP
`proposals. T-Mobile provides a declarant, Mr. Bishop, who testifies to the
`practices and procedures of the 3GPP TSG-SA Working Group that support
`the documents in question being published and available to the interested
`public. Pet. 30–33; Ex. 1009 ¶¶ 20–42. At this stage, T-Mobile has
`provided sufficient evidence and argument that the 3GPP proposals were
`disseminated, and made available to ordinarily skilled artisans in the context
`of the 3GPP working groups. Pet. 30–33; Ex. 1009 ¶¶ 20–42; see also
`Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) at 1348 (noting that we
`are not limited “to finding something to be a ‘printed publication’ only when
`there is distribution and/or indexing”), LG Elecs. v. Core Wireless Licensing
`S.A.R.L., Case IPR2015-01988, slip op. at 12–14 (PTAB Apr. 1, 2016)
`(Paper 7) (instituting inter partes review based on 3GPP working group
`documents).
`
`C. Obviousness based on the Motorola Proposal,
`Huawei Proposal, Starent Proposal, and Edlund
`T-Mobile contends that the combination of the Motorola Proposal,
`Huawei Proposal, Starent Proposal, and Edlund teaches or suggests the
`limitations of claims 1, 2, 4, 6–8, 10, 12–14, 16, and 17 of the ’750 patent.
`Pet. 33–66.
`
`1. The Motorola Proposal (Ex. 1003)
`The Motorola Proposal, entitled “Handover from non-3GPP Access to
`E-UTRAN (TS 23.402),” was proposed by the 3GPP TSG SA WG2
`working group in April 2007, and relates to “a procedure for handover from
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`non-3GPP access to LTE access.” Ex. 1003 at 1. Figure 5.x below discloses
`a “UE” sending an “Attach Request” message to an “MME,” the “MME”
`sending a “Create Default Bearer Request” message to a “Serving GW,” and
`a “Proxy BU” message to a “PDN GW.”
`
`
`
`Ex. 1003 at 3. Figure 5.x shows a step 2, where “[t]he UE discovers the E-
`UTRAN access system and determines to transfer its current sessions (i.e.
`handover) from the currently used non-3GPP access system to the
`discovered E-UTRAN access system.” Id. With respect to step 6, the MME
`selects a serving gateway (GW) and sends a Create Default Bearer Request
`message to the serving GW, and includes the IP address of the PDN GW
`provided by the HSS. Id. at 4. “Based on the Create Default Bearer Request
`from the MME, the Serving GW initiates . . . registration procedure towards
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`the PDN GW by sending a Proxy Binding Update.” Id. The PDN GW
`responds in step 8 and updates its mobility binding, effectively switching the
`tunnel from the non-3GPP access network to the Serving GW. Id.
`2. The Huawei Proposal (Ex. 1004)
`The Huawei Proposal, entitled “Handover from non 3GPP to 3GPP,”
`proposed by Huawei to the 3GPP TSG SA WG2 working group, relates to
`“service continuity in handover . . . between 3GPP and non 3GPP.” Ex.
`1004 at 1. Huawei proposes two methods to maintain service continuity,
`stating that for “service continuity in handover procedure between 3GPP and
`non 3GPP, an important assumption is keeping the PDN SAE GW
`unchanged. . . . . This paper discusses the two mechanisms to keep the PDN
`SAE GW unchanged in case of handover between 3GPP and non-3GPP.”
`Id.
`In the second method, the UE sends the attach request with the PDN
`
`SAE GW address included to ensure that the MME indicates to the serving
`SAE GW to use the PDN SAE GW. Id. at 3 (step 2). Figure 2 below
`depicts the handover from non-3GPP to LTE.
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`Id. at 3. Figure 2 shows step 2, attach request, including bearer
`establishment and proxy binding in step 3.
`3. The Starent Proposal (Ex. 1005)
`The Starent Proposal, entitled “Handover Scenarios between 3GPP
`(EUTRA) and non-3GPP Access systems using S2a Reference Point with
`PMIP6,” proposed to the 3GPP TSG SA WG2 working group in April 2007,
`relates generally to handover procedures between non-3GPP and 3GPP
`systems. Ex. 1005 at 4. Specifically, it discloses a PDN GW that detects
`handover between non-3GPP and 3GPP access, stating that “[t]he PDN-GW
`also detects that the UE is moving from non-3GPP access system to 3GPP
`access.” Ex. 1005 at 4.
`
`4. Edlund (Ex. 1006)
`Edlund is a U.S. patent application that discusses handover flags to
`indicate whether a mobile device can use the same preconfiguration data as
`handover takes place between networks. Ex. 1006 ¶ 0060. Edlund teaches
`that a flag indicating handover type can be used during handover. Id.
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`5. Analysis
`T-Mobile asserts that the Motorola Proposal teaches the preamble
`[1a], receiver [1b], and transmitter [1c] limitations of claim 1. Pet. 33–38;
`Ex. 1002 ¶¶ 77–84. In addition, T-Mobile provides evidence and argument
`that the Motorola Proposal teaches a receiver configured to receive an access
`request message for accessing the 3GPP system during a handover from a
`non-3GPP system as required in claim 1 [limitations 1d and 1e]. Pet. 38–40,
`Ex. 1002 ¶¶ 85–86.
`With respect to limitation [1f] of claim 1, requiring the transmitter to
`send a resource request message to the PDN GW to create resources for the
`UE on the 3GPP access system, T-Mobile identifies the transmitter resource
`message in steps 6 and 7 of Figure 5.x of Motorola. Pet. 40–41 (citing Ex.
`1003 ¶¶ 87–90; Ex. 1003 at 4 (step 6 sending a Create Default Bearer
`Request). T-Mobile provides argument and evidence that the Motorola
`Proposal teaches that additional messages may be necessary and that the
`Proxy Binding Update message in step 7 of the Motorola Proposal provides
`equivalent functionality to the Create Bearer Request Message from the
`MME to the PDN GW as required in claim 1. Pet. 41–42 (citing Ex. 1002
`¶¶ 88–90, Ex. 1003 at 4 (“Editor's note: It is FFS whether the Proxy Binding
`Update suffices to provide equivalent functionality to the GTP ‘Create
`Bearer Request’ message and if additional messages are required”).
`For claim limitation [1g], “wherein the access request message
`includes first handover indication information indicating that the access is a
`handover access,” T-Mobile relies on the second method discussed in the
`Huawei Proposal to maintain service continuity arguing that “[a] POSITA
`would realize that the ‘PDN SAE GW address’ included in the ‘attach
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`request’ received by the MME in this Huawei Proposal embodiment is
`‘handover indication information indicating that the access is a handover
`access.’” Pet. 44 (quoting Ex. 1002 ¶ 92). T-Mobile provides argument and
`evidence regarding reasons to combine the Motorola Proposal and Huawei
`Proposal, noting they both discuss handover from non-3GPP to LTE or
`3GPP and they were proposals to the same working group. Pet. 45–46. T-
`Mobile also notes that “both proposals recognize the need for service
`continuity in handing over from non-3GPP to 3GPP access” (Pet. 46), and
`that a person of ordinary skill in the art would have been aware of a
`problem, that is “the need to differentiate between an initial attach and an
`attach due to handover” (Pet 47 (citing Ex. 1002 ¶ 97).6
`On the present record, we are not persuaded by Huawei’s arguments
`that focus on the Huawei Proposals first mechanism or the testimony cited in
`support of those arguments. Prelim. Resp. 37–42 (citing Ex. 2001). We
`disagree with Huawei’s argument and testimony that T-Mobile has not
`provided sufficient reasoning to support the combination of the Motorola
`Proposal and Huawei Proposal. Prelim. Resp. 43–46. Huawei proffers
`testimony and argument that a skilled artisan would not have been motivated
`
`
`6 The Federal Circuit has noted that “[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). In the present case at this stage of the
`proceedings, Petitioner presents sufficient argument and evidence that the
`alleged problem of differentiating between an initial attach and an attach due
`to handover was known in the art. See Pet. 10–16 (discussing state of prior
`art at time of patenting the ’750 patent), 46–47.
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`to combine the Huawei Proposal’s second mechanism with the Motorola
`Proposal. Id. at 43 (citing Ex. 2001 ¶ 40). In addition, Huawei asserts that
`the Motorola Proposal already provides a solution and would not require
`modification by the Huawei Proposal and would not produce benefits from
`such modification. Id. at 44 (citing Ex. 2001 ¶ 40).
`We are not persuaded, on this record, by Huawei’s evidence and
`argument regarding the insufficiency of the reasons to combine the Motorola
`and Huawei Proposals proffered by T-Mobile. Huawei’s testimony and
`evidence raise issues of fact that are best addressed by a full proceeding. See
`37 C.F.R. § 42.108 (stating that “a genuine issue 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.”). Upon review of the parties’ evidence and argument, we find, on
`this record, that T-Mobile presents more than one articulated reason with a
`rational underpinning to justify the combination of the Motorola Proposal
`and Huawei Proposal, and the legal conclusion of obviousness. See KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`With respect to claim limitation [1h], T-Mobile asserts that the Starent
`Proposal in combination with the Huawei Proposal teaches the limitation
`that the resource request message includes second handover indication
`information as required by claim 1. Pet. 49–53; Ex. 1002 ¶¶ 100–107.
`T-Mobile relies on the PDN GW detecting handover from non-3GPP to
`3GPP access as disclosed in the Starent Proposal, based on the teaching that
`“handover indication information, such as that set forth in the Huawei
`Proposal, could also be transmitted from the MME to the PDN GW in a
`resource request message so that the PDN GW could detect that the UE is
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`moving from non-3GPP access to 3GPP access.” Pet. 50 (citing Ex. 1002
`¶¶ 100–101). Thus, T-Mobile argues it would have been an obvious design
`choice of a person of ordinary skill in the art to include a handover indicator
`in a message sent by the MME to the PDN GW. Pet. 49–50 (citing Ex. 1002
`¶¶ 100–101).
`T-Mobile provides a reason to combine the references, noting that
`they deal with the non-3GPP access to 3GPP access handovers, the
`proposals were made to the same 3GPP working group, and address the
`same problem. Pet. 50–52. In addition, T-Mobile provides argument and
`evidence that all three proposals—Motorola, Huawei, and Starent—
`recognize the need to differentiate between an initial attach and attach due to
`handover. Pet. 51–52. Finally, Petitioner provides testimonial evidence that
`applying the mechanisms in the proposals would combine known elements
`in a known way, and used for their intended purposes. Pet. 48, 52.
`We are not persuaded by Huawei’s argument and testimony evidence
`that T-Mobile has provided insufficient evidence that the message sent by
`the MME to the PDN GW indicates the UE is handing over from a non-
`3GPP network to a 3GPP network. Prelim. Resp. 47. On this record, T-
`Mobile has provided sufficient evidence that the Starent Proposal indicates
`that the PDN-GW detects the UE moving from non-3GPP access to 3GPP
`access and that an ordinarily skilled artisan would have designed a handover
`indicator. Pet. 49–50 (citing Ex. 1002 ¶¶ 100–101); Ex. 1005 at 4 (item 11).
`Although Huawei’s testimony that Starent does not teach or suggest such an
`indicator message (Ex. 2001 ¶ 43) raises a genuine issue of material fact,
`viewing the evidence in the light most favorable to T-Mobile, we find that
`Petitioner has provided sufficient evidence that the combination of the
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`Motorola Proposal, Huawei Proposal, and Starent Proposal teach the [1h]
`limitation of claim 1.
`With respect to claim limitation [1i], we agree with T-Mobile that the
`proposals in combination with Edlund teach that “the second handover
`indication . . . [i]s carried by an indication flag.” Pet. 53–54. Contrary to
`Huawei’s arguments (Prelim. Resp. 49–54), T-Mobile has presented
`sufficient argument and evidence at this stage to establish that flags and
`indicators were well known to distinguish handover types. Pet. 15–16, 53–
`54; Ex. 1002 ¶¶ 108–111; Ex. 1006 ¶ 0060.
`Huawei argues that with respect to dependent claim 4, and related
`claims 10 and 17, T-Mobile has not shown that the resource request message
`includes a Create Default Bearer Request Message as required in claims 4,
`10, and 17. Prelim. Resp. 54–60. As discussed above with respect to
`limitation [1f] of claim 1, we find that T-Mobile has presented sufficient
`evidence that a person of ordinary skill in the art would understand that in
`lieu of a “Proxy Binding Update” message, it would be obvious to use
`another “Create Default Bearer Request” message. Pet. 40–42, 55–56; Ex.
`1002 ¶ 90; Ex. 1003 at 4 (step 6, Figure 5.x). In addition, we are persuaded,
`on this record by T-Mobile, that the Starent Proposal discloses, in the case of
`handover from a non-3GPP network to a 3GPP network, that the PDN GW
`detects that a handover is occurring (Pet. 56; Ex. 1005 at 4) and that the
`Huawei Proposal discloses providing handover indication information
`indicating that the access is a handover access (Pet. 42–49, 56). Thus, T-
`Mobile asserts that the “Create Default Bearer Request” message from the
`Motorola Proposal could include the handover indication information of the
`Huawei Proposal so that the PDN GW could detect handover from non-
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`3GPP to 3GPP, as taught by the Starent Proposal. Pet. 56; Ex. 1002 ¶¶ 114–
`116.
`
`On the present record, we are also not persuaded by Huawei’s
`argument and testimony that distinguishes the Proxy Binding Update
`message from the Create Default Bearer Request in the Motorola Proposal.
`Prelim. Resp. 54–57 (citing Ex. 2001 ¶¶ 32–35). On this record, we find
`that T-Mobile has presented sufficient information to demonstrate that the
`Motorola Proposal, Huawei Proposal, Starent Proposal, and Edlund teach the
`limitations of dependent claim 4.
`Based on our review of the present record, T-Mobile presents
`sufficient evidence and argument that demonstrates a likelihood of showing
`that the Motorola Proposal, Huawei Proposal, Starent Proposal, and Edlund
`teach the limitations of independent claims 1, 7 and 13, and dependent
`claims 2, 4, 6, 8, 10, 12, 14, 16, and 17. Pet. 33–66.
`On this record, T-Mobile has provided sufficient evidence and
`argument showing that there is a reasonable likelihood that it would prevail
`in demonstrating the unpatentability of claims 1, 2, 4, 6–8, 10, 12–14, 16,
`and 17 of the ’750 patent as obvious over the Motorola Proposal, Huawei
`Proposal, Starent Proposal, and Edlund.
`
`D. Obviousness based on the Motorola Proposal, Huawei Proposal, Starent
`Proposal, Edlund, and S2-072255
`T-Mobile contends that the combination of the Motorola Proposal,
`Huawei Proposal, Starent Proposal, and Edlund with S2-072255 teaches or
`suggests the limitations of dependent claims 3, 9, and 15. Pet. 66–70.
`Claim 3 (and related limitations in claims 9 and 15) requires that the “first
`handover indication information is configured to be carried by an attach type
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`of the attach request, the attach type being set to be a handover attach.”
`T-Mobile relies on the S2-072255 proposal that discloses an “Attach
`Request” message in the 3GPP standard includes an “Attach Type,” which
`may be used to “indicate[] which type of attach is to be performed.” Ex.
`1007 at 4.
`The S2-072255 Proposal is entitled “GPRS functionality for IMS
`emergency services support,” and was made to the 3GPP TSG SA2 working
`group in April 2007. Ex. 1007 at 1. This proposal discloses that an Attach
`Request can include an “Attach Type [that] indicates which type of attach is
`to be performed, i.e. GPRS attach only, GPRS Attach while already IMSI
`attached, or combined GPRS / IMSI attach.” Id.