U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`
`DOCKET NO.: 2210287-00128US2
`Filed on behalf of T-Mobile US, Inc. and T-Mobile USA, Inc.
`By: Evelyn C. Mak, Reg. No. 50,492
`Joseph F. Haag, Reg. No. 42,612
`Peter M. Dichiara, Reg. No. 38,005
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`
`Boston, MA 02109
`Tel: (617) 526-6000
`Email: Evelyn.Mak@wilmerhale.com
`
` Joseph.Haag@wilmerhale.com
`
` Peter.Dichiara@wilmerhale.com
`
`
`
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`
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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.,
`Petitioners
`
`v.
`
`Huawei Technologies Co., Ltd.,
`Patent Owner
`
`Case IPR2017-00698
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,531,971
`CHALLENGING CLAIMS 1-2, 4-6, 8 AND 11
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`i
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`

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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`TABLE OF CONTENTS
`
`I. 
`
`Mandatory Notices ........................................................................................... 1 
`
`A. 
`B. 
`C. 
`D. 
`
`Real Party-in-Interest ............................................................................ 1 
`Related Matters ...................................................................................... 1 
`Counsel .................................................................................................. 1 
`Service Information ............................................................................... 2 
`
`Certification of Grounds for Standing ............................................................. 2 
`II. 
`III.  Overview of Challenge and Relief Requested ................................................. 2 
`
`A. 
`B. 
`
`Prior Art Patents and Printed Publications ............................................ 2 
`Grounds for Challenge .......................................................................... 4 
`
`IV.  Technology Background .................................................................................. 4 
`
`Charging and Billing in Telecommunication Networks ....................... 4 
`A. 
`Third Generation Partnership Project (3GPP) ....................................... 6 
`B. 
`Charging and Quality of Service (QoS) Control ................................... 7 
`C. 
`D.  Dynamic Charging Rules and QoS Policies........................................ 11 
`E. 
`Event Triggers for Dynamic Policy and Charging Control ................ 13 
`
`V.  Overview of the ’971 Patent .......................................................................... 17 
`
`A. 
`B. 
`
`The Claimed Invention ........................................................................ 18 
`The Challenged Claims ....................................................................... 22 
`
`VI.  Prosecution History ....................................................................................... 23 
`VII.  Overview of the Prior Art References ........................................................... 25 
`
`Summary of the Prior Art .................................................................... 25 
`A. 
`Overview of TS 23.125 (Ex. 1103) ..................................................... 26 
`B. 
`Overview of TS 29.207 (Ex. 1105) ..................................................... 32 
`C. 
`D.  Overview of Chaskar (Ex. 1106)......................................................... 37 
`
`VIII.  Level of Ordinary Skill In The Art ................................................................ 38 
`IX.  Claim Construction ........................................................................................ 38 
`X. 
`Specific Grounds for Petition ........................................................................ 39 
`
`A.  Ground 1: Claims 1-2, 4-6, 8 and 11 are rendered obvious by TS
`23.125 in view of TS 29.207, alone or alternatively in combination
`with Chaskar ........................................................................................ 39 
`
`ii
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`XI.  Conclusion ..................................................................................................... 63 
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`iii
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Huawei Technologies Co., Ltd. v. T-Mobile US, Inc. et al.,
`Case No. 2:16-cv-00055 (E.D. Tex. Jan. 15, 2016) ............................................. 1
`
`Kyocera Wireless Corp. v. ITC,
`545 F.3d 1340 (Fed. Cir. 2008) .................................................................... 26, 27
`
`LG Elecs. V. Core Wireless Licensing S.A.R.L.,
`IPR2015-01988, Paper 7 (PTAB Apr. 1, 2016) ................................................. 29
`
`In re NTP,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 27
`
`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 27
`
`Federal Statutes
`
`35 U.S.C. § 102 .................................................................................. 3, 26, 29, 33, 37
`
`35 U.S.C. § 103 .......................................................................................................... 4
`
`35 U.S.C. §§ 311-19................................................................................................... 1
`
`35 U.S.C. § 314(a) ..................................................................................................... 4
`
`Rules and Regulations
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`37 C.F.R. § 42.1 ......................................................................................................... 1
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`37 C.F.R. § 42.22 ....................................................................................................... 2
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`37 C.F.R. § 42.100 ................................................................................................... 38
`
`37 C.F.R. § 42.104 ............................................................................................... 2, 39
`
`77 Fed. Reg. 48764 (Aug. 14, 2012) ....................................................................... 38
`
`iv
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`Petitioners T-Mobile US, Inc. and T-Mobile USA, Inc. respectfully request
`
`Inter Partes Review of claims 1-2, 4-6, 8 and 11 of U.S. Patent No. 8,531,971 (the
`
`“’971 patent”) (Ex. 1101) pursuant to 35 U.S.C. §§ 311-19 and 37 C.F.R. § 42.1 et
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`seq.
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`I. MANDATORY NOTICES
`A. Real Party-in-Interest
`T-Mobile US, Inc. and T-Mobile USA, Inc. (“Petitioners”) and Nokia
`
`Solutions and Networks US LLC and Nokia Solutions and Networks OY are the
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`real parties-in-interest.
`
`B. Related Matters
`The following litigation matter would affect or be affected by a decision in
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`this proceeding: Huawei Technologies Co., Ltd. v. T-Mobile US, Inc. et al., Case
`
`No. 2:16-cv-00055 (E.D. Tex. Jan. 15, 2016). Petitioners are concurrently filing a
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`petition for Inter Partes Review of the ’971 patent on January 20, 2017 (IPR2017-
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`00673). In addition, Petitioners have or soon will file Inter Partes Review
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`petitions for U.S. Patent Nos. 8,069,365; 8,625,527; 8,638,750; and 8,719,617,
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`which are also asserted in cases between the same parties in litigation before the
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`same court.
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`C. Counsel
`Lead Counsel: Evelyn C. Mak (Registration No. 50,492).
`
`Backup Counsel: Joseph F. Haag (Registration No. 42,612); Peter M.
`1
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`

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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`
`Dichiara (Registration No. 38,005).
`
`D. Service Information
`E-mail: Evelyn.Mak@wilmerhale.com; Joseph.Haag@wilmerhale.com;
`
`Peter.Dichiara@wilmerhale.com.
`
`Post and hand delivery: Wilmer, Cutler, Pickering, Hale and Dorr, LLP
`
`60 State Street
`
`Boston, MA 02109
`
`Telephone: (617) 526-6000 Fax: (617) 526-5000
`
`Electronic Service on lead and back up counsel is approved and preferred.
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`II. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioners certify pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioners are not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioners challenge
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`claims 1-2, 4-6, 8 and 11 of U.S. Patent No. 8,531,971 (Ex. 1101).
`
`A. Prior Art Patents and Printed Publications
`The ’971 patent was filed on October 20, 2011 and purports to claim
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`priority, indirectly through two U.S. applications and a Patent Cooperation Treaty
`
`(PCT) application, to Chinese Application Nos. 2004 1 0030955, filed on April 1,
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`2
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`2004, and 2004 1 0033721, filed on April 9, 2004.1 Petitioners rely upon the
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`patents and printed publications listed in the List of Exhibits, including:
`
`1. 3GPP TS 23.125 V2.0.0 (2004-03), Technical Specification, “3rd
`
`Generation Partnership Project; Technical Specification Group
`
`Services and System Aspects; Overall High Level Functionality and
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`Architecture Impacts of Flow Based Charging; Stage 2 (Release 6)”
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`(“TS 23.125”) (Ex. 1103), which is prior art under at least 35 U.S.C.
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`§§102(a) and (b);2
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`2. 3GPP TS 29.207 V5.6.0 (2003-12), Technical Specification, “3rd
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`Generation Partnership Project; Technical Specification Group Core
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`Network; Policy control over Go interface (Release 5)” (“TS 29.207”)
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`(Ex. 1105), which is prior art under at least 35 U.S.C. §§102(a) and
`
`(b); and
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`3. Chaskar et al., U.S. Patent No. 7,280,505 (“Chaskar”) (Ex. 1106),
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`which is prior art under at least 35 U.S.C. § 102(e).
`
`1 Petitioners use the claimed priority date for the ’971 patent for purposes of this
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`petition. However, Petitioners reserve the right to challenge the validity of the
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`claimed priority date.
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`2 Because the ’971 patent was filed prior to the AIA, Petitioners have used the pre-
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`AIA statutory framework to refer to the prior art.
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`3
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
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`B. Grounds for Challenge
`Petitioners request cancellation of claims 1-2, 4-6, 8 and 11 of the ’971
`
`patent (“challenged claims”) as unpatentable under 35 U.S.C. § 103. This Petition,
`
`supported by the Declaration of Ozan Tonguz, Ph.D. (“Decl.”) (Ex. 1102),
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`demonstrates that there is a reasonable likelihood that Petitioners will prevail with
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`respect to at least one challenged claim and that each challenged claim is not
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`patentable. See 35 U.S.C. § 314(a). The ground for the petition is as follows:
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`Ground 1: Claims 1-2, 4-6, 8 and 11 would have been obvious over TS
`
`23.125 in view of TS 29.207, alone or alternatively in combination with Chaskar.
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`IV. TECHNOLOGY BACKGROUND
`A. Charging and Billing in Telecommunication Networks
`
`The ’971 patent relates generally to charging of packet data service. See
`
`’971 (Ex. 1101) at Abstract. Charging and billing have been routine functions of a
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`telecommunication network from the start. They allow network providers to
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`control the types of services available to a user (e.g., unlimited weekend calls, 200
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`text messages a month), collect and process information relating to chargeable
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`events (e.g., an International call lasting 10 minutes, 5 text messages), and
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`calculate the charge for which the user should be billed (e.g., $10.00 for a 10-
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`minute International call rated at $1.00 per minute). Decl. (Ex. 1102) ¶39.
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`The traditional voice-only services are usually charged according to a time-
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`4
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`based pricing model. For instance, a subscriber to fixed line telephone networks is
`
`charged on a monthly basis and then for metered usage of the service that is
`
`measured in units of time. Decl. (Ex. 1102) ¶40; see also Cushnie (Ex. 1107) at
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`318.
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` The introduction of 3G (“third-generation”) mobile technologies, in
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`particular, the General Packet Radio Service (GPRS), brought Internet to mobile
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`subscribers, providing high-speed Internet data communication services on top of
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`voice services. With the addition of new data services came the challenge of
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`charging mobile data. Unlike voice, data usage is not simply a function of time.
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`Moreover, the same mobile subscriber may use data services of different “quality.”
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`See, e.g., TS 29.207 (Ex. 1105) at 12 (describing different Quality of Services
`
`(QoS) classes). A higher quality of service often corresponds to a higher data rate
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`(measured by the amount of data delivered to the subscriber per second), that is,
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`more network resources which may demand a higher charge. See, e.g., Cushnie
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`(Ex. 1107) at 320 (“This charging model…introduces the concept of public auction
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`of bandwidth or network resources. The network subscribers place monetary bids
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`that will influence the quality of service they receive from their network-based
`
`applications.”). Decl. (Ex. 1102) ¶41.
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`The telecommunication industry had developed, well before the ’971 patent,
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`a set of solutions for charging mobile data. The industry recognized that mobile
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`5
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`subscribers may be charged based on how much data they use in the network, in
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`addition to the amount of talk-time consumed. Decl. (Ex. 1102) ¶42; Cushnie (Ex.
`
`1107) at 315; TS 23.125 (Ex. 1103) at 9 (“Volume based charging”). Further,
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`different charging rates may apply to services of different qualities; and relatedly,
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`subscribers’ data plans may limit the quality of services (e.g., data rate) they are
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`authorized to receive from the network provider. Decl. (Ex. 1102) ¶42; TS 23.125
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`(Ex. 1103) at 10 (“For example, a service data flow may be charged with different
`
`rates depending on what QoS is applicable.”); Cushnie (Ex. 1107) at 320 (“The
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`network subscribers place monetary bids that will influence the quality of service
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`they receive from their network-based applications.”).
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`B. Third Generation Partnership Project (3GPP)
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`“Third Generation Partnership Project” (3GPP) is an ongoing, collaborative
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`project of the telecommunication industry involving many engineers from many
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`companies. Members of the various 3GPP working groups submit written
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`contributions and discussion documents on various topics (including charging),
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`and ultimately capture accepted proposals and changes in Technical Reports and
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`Technical Specifications. 3GPP stores and controls all of these documents
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`electronically and retains them on the public 3GPP server indefinitely, without
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`password protection. Bishop Decl. (Ex. 1113) ¶16. Major changes to the 3GPP
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`standards are introduced as “Releases,” which comprise several Technical
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`6
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`Specifications. Certain groups of releases are informally referred to as a
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`generation. Id. at ¶17. Decl. (Ex. 1102) ¶43.
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`C. Charging and Quality of Service (QoS) Control
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` As explained above, it was well known before the ’971 patent that selecting
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`an appropriate charging rate and controlling the quality of service (QoS) go hand in
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`hand. In order to provide a higher quality of service, more network resources are
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`often consumed, therefore demanding a higher charging rate. Decl. (Ex. 1102)
`
`¶44.
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`3GPP had developed, before the ’971 patent, several network architectures –
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`one for controlling QoS (labeled “QoS Policy Control Architecture” in the
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`diagram below) and another for controlling charging rates (labeled “Charging
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`Control Architecture” in the diagram below).3 As shown below, these two
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`architectures paralleled each other. 4
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`3 To be clear, the patent does not cover the actual systems used by the parties-in-
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`interest, given the implementation details of those systems; nonetheless, as
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`explained below in detail, long-known ideas in the industry invalidate the patent.
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`4 The network architecture diagrams shown in this section are simplified, and they
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`omit several components in a 3G packet-switched network. Decl. (Ex. 1102) ¶45.
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`7
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`
`
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`In both architectures, mobile data are transferred in “packet mode,” which means
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`that data is divided into small packets before transmission and reassembled at their
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`destination. A user equipment (UE) is connected to the Packet Data Network
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`(PDN) through a Serving GRPS Support Node (SGSN) and a Gateway GPRS
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`Support Node (GGSN). This connection activates a Packet Data Protocol (PDP)
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`context, where mobile data may be exchanged between the UE and the PDN. ’971
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`(Ex. 1101) at 1:30-2:53 (illustrating the activation, data transmission, and de-
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`activation of a PDP context), Fig. 1 (step 106 – “Packet Flow Traffic”). Decl. (Ex.
`
`1102) ¶45.
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`8
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`QoS is controlled according to the following procedure, as shown in the
`
`figure below. Each PDP context corresponds to a certain QoS which must be
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`authorized before the data flow between the UE and the PDN can be established.
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`TS 29.207 (Ex. 1105) at 9-10. The QoS information includes the data rate at
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`which mobile data may be transmitted within a given PDP context. Id. at 10
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`(“Authorised QoS”). QoS authorization is performed by a Policy Decision
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`Function (PDF), which provides the authorized QoS policy to a Policy
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`Enforcement Point (PEP) within the GGSN. Id. at 8 (“Policy Decision Function
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`(PDF)”), 18-19. The GGSN/PEP then enforces the QoS policy on the data flows.
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`Id. at 11-12. Decl. (Ex. 1102) ¶46.
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`
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`Charging control follows a similar procedure, as shown in the figure below.
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`Data flows between the UE and the PDN cannot be established until a set of
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`“charging rules” have been selected for a PDP context. See, e.g., TS 23.125 (Ex.
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`1103) at 21 (“Bearer Service Establishment”). “Charging rules” contain
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`9
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`

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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`information regarding a charging rate for a particular data flow (also known as a
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`flow based “bearer”). Id. at 8 (“Charging key: information used by the online and
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`offline charging system for rating purposes.”), 12 (“Charging rules contain
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`information on…Charging key….”). Charging rules are determined by a Charging
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`Rules Function (CRF), which provides the selected charging rules to a Traffic
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`Plane Function (TPF) within the GGSN. See, e.g., id. at 21 (“Bearer Service
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`Establishment”). The GGSN/TPF then enforces the charging rules on the data
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`flows. Id. at 16-17. Decl. (Ex. 1102) ¶47.
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`
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`Both QoS and charging control were well known before the ’971 patent.
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`Indeed, Figs. 3A-3C of the ’971 patent, labeled as “prior art,” illustrate the
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`issuance of charging rules when an IP flow is established, modified, or deleted.
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`’971 (Ex. 1101) at 7:56-61. They are almost identical to the flowcharts in Figs.
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`10
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`7.1-7.3 of 3GPP Technical Specification (TS) 23.125, as shown in the side-by-side
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`comparison provided in Dr. Tonguz’s declaration. See Decl. (Ex. 1002) ¶48
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`(comparing ’971 patent, Figs. 3A-3C with TS 23.125, Figs. 7.1-7.3).
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`D. Dynamic Charging Rules and QoS Policies
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`Both charging and QoS control faced a similar issue with their respective
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`processes. After a data flow is established between a UE and the PDN, certain
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`characteristics of the data flow might change, resulting in inconsistency with the
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`initial authorization. A typical scenario is when the mobile user requests a
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`different QoS than initially authorized. See, e.g., TS 29.207 (Ex. 1105) at 17
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`(“Requested QoS exceeds ‘Authorised QoS’”); TS 23.125 (Ex. 1103) at 10 (“[A]
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`service data flow may be charged with different rates depending on what QoS is
`
`applicable. The charging rate may thus be modified when a bearer is created or
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`removed, to change the QoS provided for a service data flow.”); see also ’971 (Ex.
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`1101) at 3:67-4:2 (“[W]hen QoS parameters of the same service are different,
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`charging rules may be different accordingly.”). Decl. (Ex. 1102) ¶49.
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`To address the dynamic nature of a data flow, a similar solution was adopted
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`for both policy and charging control. In essence, this solution allows the
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`modification of a previously authorized QoS level or previously provided charging
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`rules. Decl. (Ex. 1102) ¶50.
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`Dynamic policy control is implemented as follows. The GGSN/PEP
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`11
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`notifies the PDF when a previously authorized PDP context is modified and sends
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`an authorization request to the PDF if the newly requested QoS exceeds previous
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`authorization. The PDF then authorizes a new QoS policy for the modified PDP
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`context and conveys its decision back to the GGSN. TS 29.207 (Ex. 1105) at 16-
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`17. Decl. (Ex. 1102) ¶51.
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`Dynamic charging control follows a similar procedure. The GGSN/TPF
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`notifies the CRF when an IP flow bearer is modified and sends a request for
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`charging rules to the CRF based on the modified bearer information (e.g., a
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`modified QoS). TS 23.125 (Ex. 1103) at 10 (“The flow based bearer level
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`charging can support dynamic selection of charging to apply…a service data flow
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`may be charged with different rates depending on what QoS is applicable.”); ’971
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`(Ex. 1101) at 4:2-4 (“[T]he charging rate may [] decrease as QoS parameters
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`decrease. Therefore it is necessary to re-confer on QoS parameters.”). The CRF
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`then determines what charging rules should apply to the modified bearer and sends
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`its determinations back to the GGSN/TPF. TS 23.125 (Ex. 1103) at 22. Decl. (Ex.
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`1102) ¶52.
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`For both policy and charging control, the modified data flow cannot be
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`established until the GGSN receives the new QoS policies or charging rules. Decl.
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`(Ex. 1102) ¶53.
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`Dynamic control of QoS policies and charging rules was well known before
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`12
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`the ’971 patent. See, e.g., TS 29.207 (Ex. 1105) at 16-17 (“Modification of
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`previously authorized PDP context”); TS 23.125 (Ex. 1103) at 22 (“Bearer Service
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`Modification”); Decl. (Ex. 1102) ¶54.
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`E. Event Triggers for Dynamic Policy and Charging Control
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`Dynamic control of QoS policies and charging rules brought flexibility to
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`mobile subscribers, who can now modify key characteristics of a data flow, such as
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`QoS, without the need to establish a new flow. However, with this dynamic
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`control came the additional signaling between the GGSN and PDF/CRF (as
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`described above). If implemented in the most straightforward way, these
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`procedures would require the GGSN (PEP/TPF) to request a new QoS policy or
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`charging rule from the PDF/CRF whenever a data flow is modified—even in the
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`slightest. This would often unnecessarily burden the network resources. Decl.
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`(Ex. 1102) ¶55; see also ’971 (Ex. 1101) at 6:29-50.
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`A solution had been developed—before the ’971 patent—to address this
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`issue. Basically, this solution limits the conditions (or “events”) that trigger the
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`GGSN/PEP to request a new QoS policy from the PDF to those situations where a
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`new policy or charging rule is likely necessary:
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`The GGSN on receiving the PDP context modification request from the UE
`will verify the authorisation. If the GGSN does not have sufficient
`information to authorize the PDP context modification request then the
`GGSN shall interrogate the PDF for modification request authorisation.
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`13
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`If the requested QoS is within the already “Authorized QoS” and the
`binding information is not changed, the GGSN need not send an
`authorization request to the PDF. 5
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`TS 29.207 (Ex. 1105) at 17.
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`The COPS client (PEP) can request a policy decision from the PDF triggered
`by a QoS signalling request. One PEP request may be followed by one or
`more asynchronous PDF decisions. Each of the decisions will allow the PDF
`to notify the PEP in the GGSN whenever necessary to change earlier
`decisions, generate errors etc.
`
`Id. at 22. The benefits of such a solution – reducing signaling load – were also
`
`well understood before the ’971 patent. See, e.g., Honkasalo (Ex. 1104) at 5:1-7
`
`(“The network signaling load can be optimized when the communication control
`
`network element, such as the GGSN or ISN, is able to discriminate services for
`
`which no further consultation with the policy control network function or entity,
`
`such as the PDF, is necessary….”). Decl. (Ex. 1102) ¶56.
`
`
`
`The event trigger mechanism disclosed in the policy control architecture was
`
`also contemplated for charging control before the ’971 patent. Just as PDP context
`
`modification events could trigger the GGSN/PEP to request new policies from the
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`PDF, bearer modification events could trigger the GGSN/TPF to request new
`
`charging rules from the CRF:
`
`5All emphasis in text has been added unless otherwise specified.
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`14
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`If the bearer is modified by changing the bearer characteristics relevant
`for the selection of the charging rules, the Traffic Plane Function shall
`request charging rules for the new bearer characteristics from the charging
`rules function.
`
`TS 23.125 (Ex. 1103) at 17; Decl. (Ex. 1102) ¶57.
`
`It was also well known before the ’971 patent that certain events are relevant
`
`for the selection of charging rules or policies, and thus they may properly trigger a
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`new request from the GGSN (PEP/TPF) to the PDF/CRF. Decl. (Ex. 1102) ¶58.
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`Such events include a change of:
`
` Public Land Mobile Network (PLMN). See TS 23.125 (Ex. 1103) at 12
`
`(“Different charging rules can be applied based on the location of the
`
`user (e.g. based on identity of the roamed to network).”);
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` Quality of Service (QoS). See id. at 13 (“[I]t shall be possible for the
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`OCS to apply re-authorisation of credit in case of particular events e.g. …
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`GPRS events such as … QoS changes….”); see also TS 29.207 (Ex.
`
`1105) at 17 (“To authorise the PDP context modification the GGSN shall
`
`send an authorisation request to the PDF including the binding
`
`information received from the UE in the following cases: Requested QoS
`
`exceeds ‘Authorised QoS’….”);
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` Serving GRPS Support Node (SGSN). See TS 23.125 (Ex. 1101) at 13
`
`(“[I]t shall be possible for the OCS to apply re-authorisation of credit in
`15
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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`case of particular events e.g. …GPRS events such as SGSN
`
`change….”);
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` Traffic Flow Template (TFT). See id. at 9 (“It shall be possible to apply
`
`differentiated charging for the traffic flows belonging to different
`
`services (a.k.a. different service data flows) even if they use the same
`
`PDP Context.”);
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` Radio Access Technology (RAT) type. See Chaskar (Ex. 1106) at 3:29-
`
`35 (“WLAN access at a hot spot could be free of charge….On the other
`
`hand, cdma2000 cellular access would typically always be charged to a
`
`user’s subscription account with the (home) cellular operator.”); see also
`
`Cushnie (Ex. 1107) at 316 (“An added complication for GPRS charging
`
`is the overlap and convergence to the Internet and the multitude of
`
`diverse systems connected to it. In addition to the inter-charging between
`
`the mobile and fixed telephone networks inter-charging between the
`
`mobile networks and Internet providers will be required….”).
`
`The one remaining technical detail involved how to configure these events into the
`
`network infrastructure. Only a limited number of possibilities existed and all of
`
`them were known before the ’971 patent. Decl. (Ex. 1102) ¶58.
`
`
`
`The ’971 patent explains that in the prior art charging solution, the event
`
`trigger is set by the TPF. ’971 (Ex. 1101) at 6:37-40 (“In this way, the event
`
`
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`16
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`

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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`trigger of the Charging Rule Request is controlled by the TPF. The event trigger
`
`of the Charging Rule Request shall be set in the TPF in advance.”). Decl. (Ex.
`
`1102) ¶59.
`
`In addition, it was known before the ’971 patent that the event trigger that
`
`causes the GGSN (PEP/TPF) to send a charging rule or policy request can be set
`
`by an entity other than the GGSN. It was further known that this entity is the
`
`same entity that receives the charging rule or policy request. For example, TS
`
`29.207 discloses that the Policy Decision Function (PDF) “shall also inform the
`
`GGSN what types of events shall trigger policy control requests.” TS 29.207 (Ex.
`
`1105) at 26. As another example, Honkasalo discloses a policy control entity such
`
`as a PDF that generates and sends to the GGSN “a list of currently
`
`activated/allowed services and associated control policies.” Honkasalo (Ex. 1104)
`
`at 11:52-53, Fig. 2A (steps S30, S40). “For a particular service, the policy tells
`
`whether (or not) a further authorization of flows within the service definition is
`
`needed from the PDF []. In other words, the PDF [] determines which services has
`
`to be authorized again by PDF [] (if identified) and which services can be GGSN
`
`controlled….” Id. at 11:58-63. Decl. (Ex. 1102) ¶60.
`
`V. OVERVIEW OF THE ’971 PATENT
`The ’971 patent is titled “Method for Controlling Charging of Packet Data
`
`Service.” It was filed on October 20, 2011 and issued on September 10, 2013.
`
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`17
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`

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`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`The ’971 patent is purportedly directed to a specific method of charging control of
`
`packet data service that is both “reasonable and perfect.” ’971 (Ex. 1101) at 6:54-
`
`56. Decl. (Ex. 1102) ¶61.
`
`A. The Claimed Invention
`
`The ’971 patent claims a system and method for controlling the charging of
`
`packet data service, in the context of a known charging approach referred to as IP
`
`Flow Based Charging (FBC):
`
`IP Flows of different services that the same PDP Context bears are
`separately screened out through some filters similar to sieves, then the IP
`Flows that are screened out by different filters are separately charged so as
`to reach the object of separately charging different Service Data Flows [i.e.,
`the Service Data Flow is a set of a plurality of IP Flows].
`
`’971 (Ex. 1101) at 3:20-25, 3:17-18.
`
`The background section of the ’971 patent references the current 3GPP
`
`specification, which defines the charging rule procedure between the Traffic Plane
`
`Function (TPF) and Charging Rule Function (CRF):
`
`The TPF sends a Charging Rule Request to the CRF when a certain trigger
`event is met. The trigger event may be an event of establishing, modifying
`or deleting the bearer. The CRF selects a proper charging rule according to
`the information carried in the Charging Rule Request and sends the selected
`charging rule to the TPF.
`
`’971 (Ex. 1101) at 6:30-37; see also section IV (Technology Background). With
`
`
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`18
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`

`
`U.S. Patent No. 8,531,971 Claims 1-2, 4-6, 8, 11
`Petition for Inter Partes Review
`this charging rule procedure, the event trigger of the Charging Rule Request is
`
`controlled by the TPF and set in the TPF in advance. ’971 (Ex. 1101) at 6:37-40.
`
`This results in the TPF sending the Charging Rule Request to the CRF each time
`
`that the event of establishing, modifying, or deleting is met. Id. at 6:40-42.
`
`The ’971 patent identifies the following problem with this prior art
`
`approach:
`
`However, for some cases, the QoS [Quality of Service] parameters
`modified have little differences compared with original QoS parameters
`when the QoS parameters are modified during the modification