`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`____________
`
`Record of Oral Hearing
`Held: September 27, 2018
`____________
`
`
`
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JARED W. NEWTON, ESQUIRE
`MARISSA R. DUCCA, ESQUIRE
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`1300 I Street NW, Suite 900
`Washington, D.C. 20005
`jarednewton@quinnemanuel.com
`marissaducca@quinnemanuel.com
`
`BRIAN E. MACK, ESQUIRE
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, California 94111
`brianmack@quinnemanuel.com
`
`CHRISTOPHER BURRELL, ESQUIRE
`SAMSUNG ELECTRONICS CO., LTD.
`1200 New Hampshire Ave. NW
`Washington, D.C. 20036
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`IRENE I. YANG, ESQUIRE
`SIDLEY AUSTIN LLP
`555 California Street, Suite 2000
`San Francisco, California 94104
`irene.yang@sidley.com
`
`
`2
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`
`
`
`JEFFREY P. KUSHAN, ESQUIRE
`SAMUEL A. DILLON, ESQUIRE
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, D.C. 20005
`jkushan@sidley.com
`samuel.dillon@sidley.com
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, September
`27, 2018, commencing at 1:00 PM ET, at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`3
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE JEFFERSON: Good afternoon, be seated. I’ll give you a second to
`start opening. Good afternoon. This is a trial in hearing numbers IPR case
`2017-01471 for patent number 8,412,197, IPR 2017-01474, for patent
`number 8,639,246, and IPR 2017-01475 with patent number 8,996,003. The
`patent owner here is Huawei Technologies, and the petitioner in this case is
`Samsung Electronics.
`I’m Judge Jefferson. With me in the room is Judge Wormmeester and
`remotely is Judge Horvath. At this time, counsel, please introduce
`yourselves at the lectern. Please let us know who is with you at the panel
`table and also in the gallery and you can do it, start with petitioner.
`
`MR. NEWTON: Thank you. Good afternoon. Jared Newton from
`Quinn Emanuel Urquhart and Sullivan for Samsung. With me is Marissa
`Ducca, Brian Mack, and Christopher Burrell from Samsung.
`
`JUDGE JEFFERSON: Thank you. Welcome. And for the patent
`owner?
`
`MR. KUSHAN: Good afternoon, Your Honors. Jeff Kushan from
`Sidley Austin for patent owner. With me is Irene Yang and Sam Dillon. I
`just want to note that the two of them will be dividing up the remarks today.
`Ms. Yang will start and Mr. Dillon will cover the remaining issues. Thank
`you very much.
`
`JUDGE JEFFERSON: Thank you. Before we begin, I want to
`remind the parties that the hearing is open to the public even though there is
`no place left for them to sit. As you know from our trial order, each party
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`4
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`has 45 minutes in total to present its argument in the case. Petitioner has the
`burden to show unpatentability of the original claims and so petitioner
`speaks first, patent owner follows. You may reserve rebuttal issues for those
`issues which you carry the burden.
`
`For clarity of the transcript obviously please state the Slide number or
`Exhibit number you are referring to not only for the record but for the ability
`of Judge Horvath to follow along remotely. We will stop between -- we
`have a second case I did not give an introduction to. We will stop between,
`go off the record and start a new record and I'll introduce that case at that
`time. We will try to keep the breaks short so we can hopefully end at a
`reasonable time for the staff here.
`Obviously, demonstratives are not evidence and since this is the last
`day of our multiday case, everyone here seems like they know the rules and
`how we are going to proceed so we will just get started with the petitioner
`who can let me know how much time you are going to reserve.
`
`MR. NEWTON: Good afternoon. We would like to reserve 15
`minutes.
`
`JUDGE JEFFERSON: You may begin.
`
`MR. NEWTON: So today we're talking about, in the first hearing, we
`are talking about a family of three patents, the 197 patent, the 246 patent, the
`003 patent. These are directed to methods and apparatuses for cell
`reselection and I’m going to refer, probably throughout the presentation, I'll
`refer to the patents collectively as the cell reselection patents as a shorthand.
`If there are any differences among one of the patents I'll refer to that one
`specifically.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`5
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`
`So why don’t we go to Slide 17. What we have here in Slide 17 is
`Exhibit 1 from each of the 1474 and 1475 proceedings. These are Claims 1
`from the 246 patent and the 003 patent, and the claims across all three of
`these patents are very simple and very straightforward. They are directed as
`I mentioned to a method or an apparatus or computer readable medium for
`cell reselection and in particular for an inter-system or inter-radio access
`technology cell reselection.
`And we have talked about radio access technologies a little bit but
`they generally refer to different network technologies such as LTE, UTRAN,
`GERAN and also the shorthand 2G and 3G. So the claims are directed to
`inter-system or inter-RAT cell reselection and the mobile device uses what is
`called a dedicated priority list to implement this cell reselection procedure
`and the list includes associated with it a time during which the priorities and
`the list are valid.
`And the mobile device, it receives from the LTE network this list and
`this validity time and carries it with it to the non-LTE network and then uses
`it to perform cell reselection. That’s the basic elements of the independent
`claims.
`I do want to mention, if we could go back to Slide 16, while I have got
`the 246 and 003 patents on Slide 17, on Slide 16 we have a reproduction of
`Claim 1 from the 197 patent and the reason I’m pointing to the version from
`the prosecution history is because this shows that Claim 1 of the 197 patent
`had some additional limitations added by way of an Examiner’s amendment
`during prosecution, and you can see them underlined here on Slide 16.
`And the parties have generally been treating these limitations as
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`6
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`almost repetitive of the limitations that were already in the claim, so we
`don’t see this as materially adding anything different to the subject matter of
`the independent claims and what is in the independent claims of the 246 and
`the 003 patents that I had on Slide 17.
`Why don’t we go to Slide 40. So to frame this in the context of the
`LTE standard development, cell reselection is set forth in 3GPP technical
`specification, 36.304. And here on Slide 40 we have version 2.0.0 of the TS
`36.304 reference which was prior art, and this was released six months prior
`to the earliest foreign priority date of the cell reselection patents. And for
`the record, this is Exhibit 1010 at section 5.2.4.1 and it’s cited at pages 24
`through 27 of our petition.
`But what I want to point out here is that in the context of LTE, cell
`reselection was known, and the concept of using a dedicated priority list for
`cell reselection was known, and if you look at the first highlight, it says
`absolute priorities of different inter-RAT frequencies or E-UTRAN inter-
`frequencies may be provided to the UE, that’s the mobile device as we
`talked about yesterday.
`And they can be provided in two ways. One is system information,
`which is also referred to as a public priority list, and the other way is an
`RRC messaging which is referred to as a dedicated priority list. And then
`the bottom highlight also shows that this concept of a validity time
`associated with the dedicated priority list was also part of the standard six
`months before these patents were filed.
`Why don’t we go back to Slide 17. So the only difference in the
`challenged claims and what was already in the standard, is this concept of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`7
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`using, receiving the dedicated priority list from the LTE network, having the
`mobile device carry it with it or remember it when it moves to the non-LTE
`network and then perform reselection when it is camped in that non-LTE
`network.
`This concept however, was already known in the prior art before the
`alleged foreign priority date of the cell reselection patents, and in particular
`it’s taught in the primary reference that we are relying on in our petition,
`which if we go to Slide 24, is the R2-080338 document, and this is Slide 24,
`Exhibit 1007 at page 1. This is discussed in our petition at pages 23 through
`24.
`
`And what the 338 paper is dealing with is the same problem that the
`inventor of the 19 -- of the cell reselection patents was dealing with, which is
`what are the different cell reselections scenarios that a mobile device is
`going to have when it’s dealing, when it is able to connect with and
`communicate over different radio access technologies? And so you see in
`the title here, which we have highlighted, this is reselection scenarios for
`multi-RAT terminals in Release eight. Multi-RAT means that it supports
`LTE, it supports 3G, it supports 2G. So what are the different scenarios that
`this phone might have to go through to perform cell reselection?
`If we go to Slide 25, this is page 2 --
`JUDGE HORVATH: In this -- I’m sorry, in this slide, what does
`
`Release eight refer to?
`
`MR. NEWTON: Release 8 is -- so Release 8 is the generation of the
`standard that was being released and they refer to them in shorthand as
`Release six, Release seven, Release eight. Release eight is a shorthand, it’s
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`8
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`referring to LTE.
`However, you can see on the next Slide, if we go to Slide 25, there
`can be, if you look at the second row, it will say Release eight mobile station
`or user equipment not supporting E-UTRAN. So while Release eight
`generally refers to LTE it’s possible that you have what is characterized as a
`Release eight phone that doesn't support LTE.
`So staying on Slide 25 and this is Exhibit 1007 of page 2, this table
`maps out these different scenarios that the multi-RAT terminal may find
`itself in, and where it might perform cell reselection. And the two scenarios
`that are relevant to our petition are scenarios 7 and 8, and if you look at the
`bottom row you see that this is a Release eight mobile station or UE
`supporting E-UTRAN, so supporting LTE. And then in scenario 7, it may
`be performing cell reselection when it is in a legacy network. Scenario 8, it
`may be performing cell reselection when it is in our Release eight network
`that’s not providing priorities.
`Why don’t we go to Slide 26. So for these two scenarios, the paper
`sets forth three options, and option three is the one that we have been
`focusing on in our petition, and it is the one that teaches the same concept
`that the inventor of the cell reselection patents put in its patents, that is that
`the mobile device stores the parameters received from the E-UTRAN
`network of the current PLMN or of an equivalent PLMN and uses these
`parameters for the priority algorithm.
`Now to unpack a couple things there, the priority algorithm is the
`algorithm that the mobile device follows to actually perform cell reselection,
`and the parameters that are inputs to that algorithm can include, if you look
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`9
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`at the very top sentence of this call out, it includes priorities, so the
`dedicated priority list that the network provides to the phone, and then
`thresholds which are signal quality levels of the cells that the phone is
`measuring in order to decide whether it should perform reselection to those
`cells.
`Why don’t we go to Slide 27. Slide 27 is Exhibit 1007 at 3. This is
`further discussion of option three, and looking at the top of the call out, it
`says that option three would allow some predictability in UE behavior once
`the UE has camped in E-UTRAN or LTE. In this case the UE would
`remember the thresholds and priorities received while in E-UTRAN. And it
`goes on to say, however, it would still introduce some unreliability once the
`UE reselects in UTRA as the thresholds may be totally different and non-
`applicable. And then he gives an example of this scenario, and that's what I
`have highlighted. The example is the UE camps or starts out in the E-UTRA
`macro-cell, that’s an LTE cell. It reselects to a neighboring UTRA or 3G
`macro-cell, and then it uses the same priorities that it got from the LTE
`network to reselect again to another UTRA, this time an indoor micro-cell.
`So why don’t we go now to Slide 29. So the last reference we talked
`about, the 338 reference, it has the same concepts, the same basic concept
`that really differentiated, you know, that the inventor of the cell reselection
`patents thought differentiated his idea from the prior art, which is this idea of
`the UE getting priorities from the LTE network, carrying those priorities
`with it to the non-LTE network, using them to perform cell reselection.
`That’s taught in -- the R2-080338 reference. However, that reference does
`not specify that those priorities include a validity timer associated with them.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`10
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`So for that, we rely on the R2-075161 reference.
`If you can go to Slide 30. And the 161 reference is Exhibit 1005 and
`here we have a call out from page 1 of that exhibit. And you can see from
`the titles we have highlighted here that this is addressing the same problems
`as the 338 reference, same problems that are relevant to the cell reselection
`patents, which is inter-frequency or inter-radio access technology idle mode
`mobility control. And the reference goes on to specify that idle mode
`mobility includes cell reselection which is an idle mode process.
`Let’s go to Slide 32 please. Consistent with the existing standard
`specification that we saw, that 36.304 reference, the 161 reference teaches
`that the UE specific control information would include a list of frequency
`layers, radio access technologies that the UE should handle with specific
`priorities. So that’s the dedicated priority list. And then if we go to Slide 33.
`And it teaches expressly that there may also be an expiry timer signalled as
`part of the UE specific control information. So again, consistent with the
`existing standard at the time, they explained that the UE specific control
`information or the dedicated priority list can include an expiry timer
`associated with it during which the priorities in that list are valid.
`If we go to Slide 34 we will turn to the issue of motivation to combine
`these two references.
`And let’s go to Slide 35. So the first point is that these proposals
`came out of the exact same working group, and they came out of back to
`back meetings of that working group, and we see here in the call outs that
`the 161 reference at the top was the TSG RAN working group 2, and number
`60 indicates meeting number 60, which was held in November of 2007. And
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`11
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`if we look at the call out for R2-080338, that’s at the very next meeting. It’s
`the TSG brand working group 2, meeting number 60 BIS. BIS is kind of a
`shorthand for an extension of the prior meeting but it’s the meeting
`immediately following the one before it.
`So these two references, they're coming out of the same working
`group, they're addressing this same problem of we have LTE now, we have
`the standard, you know, specified in terms of what is going to be in the
`control information that the mobile device gets from the LTE network, and
`now we are going to talk about reselection scenarios that the mobile device
`might go through using that priority information.
`If we can go to Slide 36 please. So Slide 36, this is Exhibit 1003, the
`declaration from our expert, Dr. Tim Williams. Paragraph 225. And he
`explained this same point, that the two prior art references were
`contributions made during the RAN 2, 3 GPP meetings where participants
`were developing technology for the LTE network and specifically trying to
`develop the procedure for cell reselection for inter-RAT communications for
`the UE.
`Let’s go to Slide 37. So Slide 37, this is a call out from our petition at
`page 7, I’m sorry, page 27 where we address the motivation to combine.
`And as we explained, one of ordinary skill in the art would have been
`motivated to apply the teachings of the list of frequencies/RATs and timers
`as disclosed in R2-075161 with the teaching in R2-080338 that priority
`information obtained from the LTE network should be used in cell
`reselection when only non-LTE networks are available, so in this scenario of
`the 338 reference. And the next sentence as the R2-080338 already
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`12
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`discloses this procedure using certain priority information, it would be
`obvious and natural for one of ordinary skill in the art to use the dedicated
`lists, public lists, which is another feature taught in the 161 reference, and
`the expiry timer provided in R2-075161 as the priority information provided
`by the LTE network.
`So let’s go to Slide 39. As I mentioned at the very outset of my
`presentation, the concept of this validity timer being associated with this
`dedicated priority list was already part of the standard, and we pointed to
`Exhibit 1010 which is version 2.0.0 of the TS 36.304 reference, and we also
`cited it, and Dr. Williams here cited it in paragraph 224 of Exhibit 1003 as
`support to say that the LTE standard -- it already discloses the LTE network
`providing absolute priorities which are priorities of different frequencies and
`a validity timer for those priorities.
`So the argument here is that we have got in the 338 reference, the
`working group talking about specific scenarios and looking at specific
`scenarios where the mobile device should perform cell reselection between
`different radio access technologies.
`One of those specific scenarios is what the inventor of the cell
`reselection patent came up with, inventors, I’m sorry, which is that when the
`mobile device gets the dedicated priority list from the LTE network, it
`should remember that list, carry it with it to the non-LTE network and use it
`to perform cell reselection. The only difference that was missing was that
`the 338 reference doesn’t specify a validity timer being associated with those
`priorities. But that was already part of the standard.
`So combining those two things, having the dedicated priority list in
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`13
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`the 338 publication include a validity timer would have been completely
`obvious to a person of ordinary skill in the art. They would have found it
`obvious to use what is set in the standard, which is a validity timer that can
`be signaled as part of these dedicated priorities that the mobile device is
`using when it moves from LTE to non-LTE.
`
`JUDGE HORVATH: What do you make of the fact that in this LTE
`standard it says the optional -- the validity timer is optional -- versus going
`back to let me see your slide here, the slide on the -- moving to the non-LTE.
`It's Slide 26. Where it says the terminals support the priorities algorithm,
`however, the necessary parameters are priorities and thresholds. I mean, I
`guess what I’m asking is, does that exclude including optional parameters?
`
`MR. NEWTON: No. To answer your question, and why don’t we go
`to Slide 26 so we have that in front of us. So where it specifies here the
`necessary parameters for the algorithm, i.e. priorities and thresholds, I think
`what that is saying is for the algorithm to actually do what it needs to do to
`look at a cell, look at its priority value, look at its threshold value, for that
`algorithm to take those inputs and generate an output, the two things it needs
`are priorities and thresholds.
`However, that’s not excluding a validity timer. A validity timer is
`saying, and the optional language and the 161 reference is saying, that the
`validity timer is something you want to associate with the list in the instance
`that there is a reason to just expire the priorities and have the phone use
`another mechanism. For example, use the public priority list that it got from
`the LTE system. Does that answer your question?
`
`JUDGE HORVATH: Yes, thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`14
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`MR. NEWTON: And I think that's a good segue to what is the patent
`
`owner's response to the fact that this concept of a validity timer is already in
`the standard.
`Why don’t we go to Slide 41? Actually, I'll touch on Slide 41 and
`then get to the patent owner's argument. Slide 41 is the institution decision
`in the -- this is from the 1471 proceeding. But what the Board recognized
`was that this is a simple substitution of one known element in order to
`achieve a predictable result. And that’s exactly what is happening.
`The 338 reference describes the specific scenario that is claimed in the
`patent, which is get a priority list from the LTE network, carry it with you to
`the non-LTE network and use it to perform reselection. The simple
`substitution is just taking what was already in the standard which is taught in
`the 161 reference that this optional validity timer and using it when -- within
`that specific context described in the 338 reference.
`So now why don’t we turn to patent owner’s argument and we can go
`to Slide 47. So patent owner doesn’t take issue very much with this idea that
`it would have been a simple substitution. They don’t point to any difficulty
`that there would have been with using the validity timer in the context of the
`338 publication and they don’t say that, you know, the 338 publication
`discloses a dedicated priority list already. It would be somehow problematic
`or, you know, complicated to just add in this validity timer that was already
`known and already part of the standard.
`What they do instead is they focus on the individual teachings of this
`161 reference, and they say that the -- that a person of ordinary skill in the
`art would not have a reason to use that validity timer in the context of the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`15
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`338 reference.
`And so here we have on Slide 47, this is from their patent owner
`response at page 20, and as they said in the heading here, R2-075161
`discards UE specific priorities when leaving an LTE tracking area which it
`would do if it left LTE entirely. And then, kind of the shorthand that we
`have used for this argument in our reply, and I have got the cite here, pages
`13 to 14, is they say this is a spatial limitation on the validity timer and the
`priorities that are taught in the 161 reference. And what the argument
`basically is, is that patent owner is saying the 161 reference says when you
`leave your LTE tracking area and you go to another LTE tracking area,
`discard priorities.
`So they look at that teaching in isolation, and they say that means that
`any time mobile device leaves LTE, a person of skill in the art would follow
`that teaching and get rid of the dedicated priorities, and therefore you
`wouldn't have a need for a timer because you are getting rid of your
`priorities based on this spatial limitation or this spatial restriction taught in
`the 161 reference.
`In our view, that argument ignores the combined teachings of the two
`prior art references. And why don’t we go to Slide 49?
`
`JUDGE JEFFERSON: While we are in transition, let me ask a
`foundation question, which is, my reading is that the patent owner is not
`challenging that the individual isolated teachings are there. They're not
`challenging the mapping of the limitations to the 161 and the 338. Do you
`agree with this position or agree with that?
`
`MR. NEWTON: I agree with that.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`16
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`JUDGE JEFFERSON: Okay. So then, but there -- when it comes to
`
`the 161, where we have this sort of overarching argument which borders on
`sort of saying it’s not there but one, a person of ordinary skill in the art
`reading this would know per the last slide we were talking about to discard
`the list anytime you leave the LTE network.
`Now setting aside the, I think they called it teaching away, I mean, is
`it -- isn’t it also an argument to say that they're saying that the overarching
`teaching -- that the only thing that you would take away from this reference,
`or I should say the only thing that the -- the only thing we take away when
`you -- when the LTE mobile is leaving or a mobile is leaving the LTE area is
`that it does not maintain the list regardless of the timers, regardless of the
`instructions.
`How does that deal -- first off, what is your response to that, and I
`want to hear, did you make an argument that talked about the motivation to
`combine and keep the, I can't remember the name of the reference.
`
`MR. NEWTON: The 338.
`
`JUDGE JEFFERSON: 338, yes. That sort of explains why it’s the
`timer is always there. I mean, is that the response, or help me understand
`what the -- how the timer fits into this, the 161 which they see as, in a
`different way and the 838.
`
`MR. NEWTON: Sure. So --
`
`JUDGE JEFFERSON: 338, I’m sorry.
`
`MR. NEWTON: So your explanation is consistent with our
`understanding of their arguments, and that is that the only teaching they say,
`the only teaching a person of ordinary skill in the art would take from this
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`17
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`161 reference is that any time you leave LTE you have to get rid of your
`priorities. So any time you are leaving LTE the timer is not necessary.
`And our response to that is that first, so we address -- we saw this
`argument in their patent owner response, we addressed it in our reply. And
`this is Slide 49 for the record, and it is Exhibit 1024, which is a reply
`declaration from our expert, Dr. Williams at paragraph 23.
`And he said first, the teaching of the 161 reference is not that narrow.
`It is talking about a UE moving from LTE tracking area 1 to LTE tracking
`area 2 and that specific situation is where it talks about discarding the
`priorities. It’s not this broader teaching that we believe patent owner has
`turned it into, which is no matter what, when you leave LTE, a person of
`ordinary skill in the art would get rid of those priorities. You know, whether
`it is to another LTE network or it's to a 3G or 2G network. And so we think
`what they are doing is one, trying to expand the teaching of the 161
`reference a little bit to any situation when a mobile device leaves LTE.
`And then if we go to Slide 50, as Dr. Williams explained, this is
`paragraph 24 of his reply declaration, and this is discussed in pages 18
`through 23 of our reply. It is my opinion that patent owner’s argument
`ignores the fact that there is situations when the mobile devices leaves an
`LTE network and maintains that dedicated priority list that the LTE network
`provided. And that is exactly what the 338 paper teaches. It teaches this
`very situation where the mobile device has been given a dedicated priority
`list by the LTE network and it doesn’t discard it when it leaves the LTE
`network. It deliberately says to maintain or remember those priorities when
`it is leaving the LTE network. So in this situation there’s a very good reason
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`18
`
`

`

`Case IPR2017-01471 (Patent 8,412,197 B2)
`Case IPR2017-01474 (Patent 8,639,246 B2)
`Case IPR2017-01475 (Patent 8,996,003 B2)
`
`why you would want that validity timer associated with the list.
`Why don’t we go to Slide 42. And that reason is because eventually
`these priorities that you have are going to become stale. They're not going
`to reflect the current load conditions on the cell.
`And so when you have the situation where, as in the 338 reference,
`where the mobile device is deliberately taking the priorities with it, you want
`to be able to get -- have the mobile device, have a mechanism to get rid of
`those priorities, delete those, that priority list, before the load conditions
`become stale, before the priorities no longer reflect what is on the cell.
`And in terms of whether there is more motivation to apply that timer
`in the context of 338, well that’s exactly what the 161 patent, I’m sorry,
`paper says, and here we have this is Slide 42, the Exhibit 1005 at 2. It gives
`a specific reason for why the expiry timer is useful. It says since load
`conditions may be temporal it should be possible to set an expiry timer of
`the UE special control information.
`If we can go to Slide 45. And Dr. Williams in his reply declaration,
`responding to this argument that patent owner made, he explained that here
`is why this expiry timer taught in the 161 is directly relevant, directly useful
`to the situation of option three of the 338 paper. The dedicated priority list
`that the mobile device carries with it from LTE to non-LTE will eventually
`become stale and applying an expiry tim