Trials@uspto.gov
`571-272-7822
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` Paper 42
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` Entered: December 11, 2018
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`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 IPR2017-01474
`Patent 8,639,246 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
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` Paper 42
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` Entered: December 11, 2018
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`
`
`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 IPR2017-01474
`Patent 8,639,246 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2017-01474
`Patent 8,639,246 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Samsung Electronics Co., Ltd. (“Petitioner”)1 filed a Petition (Paper 2,
`
`“Pet.”) requesting inter partes review of claims 1–20 of U.S. Patent No.
`
`8,639,246 B2 (Ex. 1001, “the ’246 patent”). Huawei Technologies Co., Ltd.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”)
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`and we instituted an inter partes review of all the challenged claims. Paper
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`12 (“Inst. Dec.”); see 35 U.S.C. § 314(a).
`
`Following institution, Patent Owner filed a Patent Owner Response
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`(Paper 21, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Pet. Reply”).
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`With our authorization, Patent Owner subsequently filed a Sur-Reply (Paper
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`35, “PO Sur-Reply”). Patent Owner also filed a Motion to Exclude (Paper
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`32), which we address below. On September 27, 2018, we conducted an
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`oral hearing. A copy of the transcript (Paper 41, “Tr.”) is included in the
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`record.
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`We have jurisdiction under 35 U.S.C. § 6(b). For the reasons that
`
`follow, we determine that Petitioner has shown by a preponderance of the
`
`evidence that claims 1–20 of the ’246 patent are unpatentable. This final
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`written decision is issued pursuant to 35 U.S.C. § 318(a).
`
`B. Related Proceedings
`
`The parties identify one related district court case: Huawei
`
`Technologies Co. v. Samsung Electronics Co., Case No. 3:16-cv-02787 (N.D.
`
`Cal.). Pet. 2; Paper 5, 1. Patent Owner further identifies two related requests
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`for inter partes reviews: IPR2017-01471 and IPR2017-01475.
`
`
`1 Petitioner identifies Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., and Samsung Research America as real parties in interest.
`
`2
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`IPR2017-01474
`Patent 8,639,246 B2
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`C. The ʼ246 Patent (Ex. 1001)
`
`The ’246 Patent, titled “Method, Terminal, and System for Cell
`
`Reselection,” is directed to cell reselection. Ex. 1001, [54], [57], 1:23–25.
`
`In prior art LTE (Long Term Evolution or 4G) systems, a terminal decides
`
`what cell to camp on according to the priority. Id. at 1:49–53; see Pet. 8
`
`(discussing cell reselection). The terminal measures a frequency/system
`
`having a higher priority, and if that measurement meets the terminal’s cell
`
`reselection criteria, it will reselect that cell. Id. at 1:52–60. Otherwise, the
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`terminal will measure a cell having a lower priority. Id. The ’245 patent
`
`states that:
`
`If a terminal camps on a cell having a lower priority, a cell having
`a higher priority might be measured periodically. The priority-
`based cell reselection method may reduce the measurements by
`the terminal and save power energy. Meanwhile, a good priority
`setting may lead to load balance.
`
`Ex. 1001, 1:58–63.
`
`The ’246 patent discloses having a mobile station receive from the
`
`LTE system a dedicated priority list for the particular mobile station. Id. at
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`Abstract, 2:11–39, 2:56–3:9. When necessary, a mobile station performs a
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`cell reselection according to the dedicated priority list when the terminal
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`camps on a cell of a second non-LTE system, eliminating the need for the
`
`second system to establish the dedicated priority list when moving from an
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`LTE system to a non-LTE system. Id. at Abstract, 2:11–39, 2:61–3:9.
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`D. Illustrative Claims
`
`Petitioner challenges claims 1–20 of the ’246 patent, with claims 1
`
`and 11 being independent. Claims 1 and 11 are illustrative and reproduced
`
`below:
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`3
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`IPR2017-01474
`Patent 8,639,246 B2
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`1. A method for inter-system cell reselection, comprising:
`
`[1A] when a terminal is in a cell of a Long Term Evolution
`(LTE) system, receiving, by the terminal, a message including a
`dedicated priority list from the LTE system; and
`
`[1B] when the terminal camps on a cell of a non-LTE
`system, performing, by the terminal, the inter-system cell
`reselection in accordance with the dedicated priority list before a
`valid time of the dedicated priority list expires.
`
`11. A terminal comprising:
`
`[11A] a receiver; and
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`[11B] a processor, wherein
`
`[11C] when the terminal is in a cell of a Long Term
`Evolution (LTE) system, the receiver is configured to receive a
`message including a dedicated priority list from the LTE system;
`and
`
`[11D] when the terminal camps on a cell of a non-LTE
`system, the processor is configured to perform inter-system cell
`reselection in accordance with the dedicated priority list before a
`valid time of the dedicated priority list expires.
`
`Ex. 1001, 11:56–11:63, 12:27–37 (bracketed numbering added).
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`E. The Instituted Grounds
`
`Trial was instituted on each of Petitioner’s asserted grounds of
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`unpatentability of claims 1–20 of the ’246 (Inst. Dec. 17; see Pet. 4–5):
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`4
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`IPR2017-01474
`Patent 8,639,246 B2
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`References
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`Basis
`
`Claims Challenged
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`R2-0751612 and R2-0803383
`R2-075161, R2-080338, and
`Eerolainen4
`
`§ 103(a)
`
`§ 103(a)
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`1–20
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`11–20
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`II. ANALYSIS
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`A. Patent Owner’s Motion to Exclude
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`Patent Owner moves to exclude portions of R2-075161 (Petitioner’s
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`Exhibit 1005) and R2-080338 (Petitioner’s Exhibit 1007). Paper 32, 1–2
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`(“PO Mot.”). Patent Owner also moves to exclude certain declaration
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`testimony of Petitioner’s expert Dr. Yaqub, namely, paragraphs 54 through
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`59 of Exhibit 1012, cited for public availability. Id. at 2. Petitioner opposes
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`Patent Owner’s motion to exclude. Paper 36 (“Pet. Opp.”). In response,
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`Patent Owner filed a reply to Petitioner’s opposition to the motion to
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`exclude. Paper 38. Having reviewed the parties’ arguments and evidence,
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`we deny Patent Owner’s motion to exclude.
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`1. Declaration of Dr. Yaqub (Exhibit 1012)
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`In paragraphs 54 through 59 of his declaration, Dr. Yaqub opines on
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`the authenticity, public availability, and publication dates of R2-075161 and
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`R2-080338. See Ex. 1012 ¶¶ 54–59. Dr. Yaqub bases his opinion, in part,
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`on his ability to find these documents on the 3GPP ftp (file transfer protocol)
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`2 NTT DoCoMo, Inc., Inter-frequency/RAT idle mode mobility control,
`3GPP TSG RAN WG2 #60, Tdoc-R2-075161 (Nov. 2007) (Ex. 1005, “R2-
`075161”).
`3 Nokia Corp. & Nokia Siemens Networks, Reselection scenarios for multi-
`RAT terminals in Rel-8, 3GPP TSG-RAN WG2 Meeting #60bis, R2-080338
`(Jan. 2008) (Ex. 1007, “R2-080338”).
`4 U.S. Pub. No. 2008/0176565, published July 24, 2008 (Ex. 1006,
`“Eerolainen”).
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`server and listserv server, and the time stamps associated with these
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`documents on those servers. Id. His testimony includes screenshots of
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`portions of the 3GPP ftp server webpage listing R2-075161 and R2-080338,
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`and URLs (universal resource locators) pointing to R2-075161 and R2-
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`080338 on the 3GPP ftp server. Id.
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`On December 21, 2017, Patent Owner objected to Dr. Yaqub’s
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`declaration to the extent that it “rel[ies] on web pages that were not filed as
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`exhibits in this proceeding,” and asserted that “[t]hose web pages lack
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`authentication and contain hearsay.” Paper 14, 1–2. On January 8, 2018,
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`Petitioner provided the webpages to Patent Owner in the form of
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`supplemental evidence. See Paper 15, 1; see also 37 C.F.R. § 42.64(b)(2).
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`On January 11, 2018, Patent Owner objected to the webpages “as lacking
`
`authentication and containing hearsay.” Paper 15, 1.
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`Patent Owner moves to exclude paragraphs 54 through 59 of
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`Dr. Yaqub’s declaration “because they rely on unauthenticated webpages for
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`the truth of the matter asserted in those webpages.” PO Mot. 3. Patent
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`Owner argues that the webpages lack authentication and contain
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`inadmissible hearsay on which Dr. Yaqub relied in determining when R2-
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`075161 (Exhibit 1005) and R2-080338 (Exhibit 1007) were publicly
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`accessible on the 3GPP ftp server. Id. at 3–4. Petitioner argues that the
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`webpages to which Patent Owner objects are self-authenticating and have
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`been authenticated by Dr. Yaqub’s testimony regarding their distinctive
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`characteristics. Pet. Opp. 3–4. Petitioner further argues that the webpages
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`“are exempt from the rule against hearsay under Federal Rules of Evidence
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`803(6) and 807.” Id. at 5. Patent Owner’s reply asserts that Dr. Yaqub is
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`not qualified to certify the authenticity of the webpages as regularly kept
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`business records because “[h]is declaration is silent as to his role in the
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`[3GPP] group’s recordkeeping or his role, if any, in maintaining the
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`accuracy of the 3GPP webpages.” Paper 38, 2.
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`Under Federal Rule of Evidence 803(6), records of a regularly
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`conducted activity are not hearsay, provided the opposing party has not
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`established that the source of information or the method or circumstances of
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`their preparation indicate a lack of trustworthiness, and the party offering the
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`records establishes through the testimony of a qualified witness that the
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`records are (a) made at or near the time from information transmitted by
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`someone with knowledge, (b) kept in the course of a regularly conducted
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`business activity, and (c) made as a regular practice of that activity. Fed. R.
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`Evid. 803(6). Under Federal Rule of Evidence 902(11), such records are
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`self-authenticating, provided (a) they are originals or copies that meet the
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`requirements of Rule 803(6)(a)–(c) as shown by certification of a qualified
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`person, (b) notice of intent to offer the records is given to the opposing party
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`before a hearing, and (c) the records and certifications are made available to
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`the opposing party so that the opposing party has a fair opportunity to
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`challenge them. Id. at 902(11).
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`We note that, “[b]ecause of the general trustworthiness of regularly
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`kept records and the need for such evidence in many cases, the business
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`records exception [to the hearsay rule] has been construed generously in
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`favor of admissibility.” Conoco Inc. v. Dept. of Energy, 99 F.3d 387, 391
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`(Fed. Cir. 1996). Moreover, “the ‘custodian or other qualified witness’ who
`
`must authenticate business records need not be the person who prepared or
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`maintained the records, or even an employee of the record-keeping entity, as
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`long as the witness understands the system used to prepare the records.” Id.
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`Lastly, “documents that are standard records of the type regularly
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`maintained by firms in a particular industry may require less by way of
`
`foundation testimony than less conventional documents proffered for
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`admission as business records.” Id. at 392; see also Gjokaj v. U.S. Steel
`
`Corp., 700 F. App’x 494, 502 (6th Cir. 2017) (finding a business record
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`certified by a qualified witness is self-authenticating under Federal Rule of
`
`Evidence 902(11)).
`
`We are persuaded by Dr. Yaqub’s testimony and find that the 3GPP
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`webpages on which he relied in his declaration are authentic, and that their
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`contents, including the publication dates of R2-075161 and R2-080338, are
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`not hearsay. Dr. Yaqub is a qualifying witness for the purposes of Rules
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`806(b) and 902(11). See Conoco, 99 F.3d at 391; see also Gjokaj, 700 F.
`
`App’x at 502. We credit the facts qualifying Dr. Yaqub. Notably, from
`
`1998 until 2010, Dr. Yaqub worked for various entities having an interest in
`
`developing or understanding 3GPP technologies. Ex. 1012 ¶¶ 7–12. During
`
`that time, he both participated in and contributed to 3GPP standards setting
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`organizations, was an active member in various 3GPP plenary level and
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`working group level meetings, and served as a rapporteur of Technical
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`Feasibility Report TR 33.817. Id. ¶¶ 8, 11.
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`In addition, Dr. Yaqub testifies that 3GPP “produce[s] reports and
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`specifications that define technologies covering cellular communications
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`networks.” Id. ¶ 19. The specifications are “contribution-driven by 3GPP
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`member companies,” and produced via regular and quarterly plenary
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`meetings “where member companies’ contributions, draft specification[s],
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`and other discussion documents are presented for approval.” Id. ¶ 20. Dr.
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`Yaqub further testifies that 3GPP follows “[a] well-established process . . .
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`IPR2017-01474
`Patent 8,639,246 B2
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`for capturing accepted proposals and changes in Technical Specifications
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`(TS) and Technical Reports (TR).” Id. ¶ 24. This process includes a file
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`naming convention so that “changes that are brought into the standard, from
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`the past, present, and in the future, are well documented and controlled.” Id.
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`¶ 28 (quoting Ex. 1016, 5). 3GPP documents are stored on 3GPP’s ftp
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`server in zip-compressed format, where the filename of the zip file is the
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`same as the name of the source document. Id. ¶ 29 (citing Ex. 1016 § 5A).
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`Member-contributed documents (“TDocs”) are assigned unique document
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`numbers, and “members upload these documents to 3GPP’s public FTP
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`server before, during, and after Working Group meetings.” Id. ¶ 30. The
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`documents are uploaded “[s]oon after the end of the meeting—the same day,
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`or at worst within a few days.” Id. ¶ 37. The “TDocs are publically-
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`available and unrestricted on the online FTP server,” and are “openly
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`published and no password is needed to access any information on the 3GPP
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`website.” Id. ¶ 30; see also Ex. 1016 § 7.6. Documents uploaded to the
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`3GPP ftp server “receive a date and time stamp.” Ex. 1012 ¶ 33. The
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`documents are “retained on the public 3GPP server indefinitely, and the date
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`and time stamp can be relied upon to indicate when the upload occurred.”
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`Id. ¶¶ 33, 37.
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`Based on the foregoing testimony, we find that Dr. Yaqub
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`“understands the system used to prepare [3GPP] records,” and is a “qualified
`
`witness” or “qualified person” as those terms are used in Federal Rules of
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`Evidence 803(6) and 902(11). See Conoco, 99 F.3d at 391; see also Gjokaj,
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`700 F. App’x at 502.
`
`For the particular documents relevant to this proceeding, namely, R2-
`
`075161 and R2-080338, Dr. Yaqub testifies that he “navigated to the
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`IPR2017-01474
`Patent 8,639,246 B2
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`relevant file” on the 3GPP ftp server and “confirm[ed] that it had been
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`correctly uploaded.” Ex. 1012 ¶ 51. Dr. Yaqub provides the URLs that he
`
`used to navigate to the documents and testifies that he recognizes the
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`documents located by those URLs as “true and correct” copies. Id. ¶¶ 54,
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`57. Dr. Yaqub also provides screenshots of the 3GPP ftp server directories
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`that include the identically named zip files containing R2-075161 and R2-
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`080338. Id. As discussed above, when Patent Owner objected to these
`
`screenshots, Petitioner served complete printouts of the 3GPP ftp server
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`directories from which Dr. Yaqub took the screenshots. Paper 14, 1–2; Pet.
`
`Opp. 4–5; Exs. 1025–1028; see also Paper 15, 1.
`
`Patent Owner provides no evidence that the 3GPP ftp server, the
`
`webpages disclosing the contents of the ftp server directories relied on, or
`
`the methods or circumstances by which those webpages or the contents
`
`disclosed in those webpages were prepared lack trustworthiness. See PO
`
`Mot. 2–4; Paper 38, 1–4. Dr. Yaqub, by contrast, testifies that the contents
`
`of the 3GPP ftp server directories (webpages) on which he relied were made
`
`and kept in the course of 3GPP’s regularly conducted business activity, and
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`were made at or near the times indicated by their upload date and time
`
`stamps from information transmitted by 3GPP contributing members. See
`
`Ex. 1012 ¶¶ 24, 28–30, 33, 37, 54, 57. Dr. Yaqub’s declaration and the
`
`webpages (3GPP ftp server directory printouts) on which he relied were
`
`served on Patent Owner with notice of intent to use them, and Patent Owner
`
`was provided with the opportunity to challenge the webpages, their content,
`
`and Dr. Yaqub’s testimony regarding how that content and the webpages
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`disclosing that content were created. See 37 C.F.R. § 42.51(b)(1)(ii).
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`10
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`IPR2017-01474
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`Based on the evidence presented, as summarized above, we find that
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`Dr. Yaqub’s testimony sufficiently authenticates the 3GPP ftp server
`
`directories (webpages) as well as their contents such that they are admissible
`
`under Federal Rule of Evidence 902(11) and are not hearsay under Federal
`
`Rule of Evidence 803(6). Accordingly, we deny Patent Owner’s motion to
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`exclude paragraphs 54 through 59 of Dr. Yaqub’s declaration (Exhibit
`
`1012).
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`Petitioner also argues that the 3GPP ftp server directories (webpages)
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`on which Dr. Yaqub relies can be authenticated under Federal Rule of
`
`Evidence 901(b)(4), and that their contents are not hearsay under Federal
`
`Rules of Evidence 807. Pet. Opp. 3–5, 7–9. Patent Owner argues to the
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`contrary. Paper 42, 1–4. Because we find that Petitioner has shown that the
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`webpages are self-authenticating business records and that their contents are
`
`not hearsay, we need not address these issues. See Beloit Corp. v. Valmet
`
`Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency
`
`is at liberty to reach a decision based on a single dispositive issue “not only
`
`[to] save the parties, the [agency], and [the reviewing] court unnecessary
`
`cost and effort,” but also to “greatly ease the burden on [an agency] faced
`
`with a . . . proceeding involving numerous complex issues and required by
`
`statute to reach its conclusion within rigid time limits”).
`
`2. R2-075161 (Exhibit 1005) and R2-080338 (Exhibit 1007)
`
`Patent Owner moves to exclude as hearsay portions of R2-075161
`
`(Exhibit 1005) and R2-080338 (Exhibit 1007) “[t]o the extent Petitioner
`
`relies on the dates within Exhibit 1005 [and Exhibit 1007] for the purported
`
`truth of the matter asserted to show the date of public accessibility of Exhibit
`
`1005 [and Exhibit 1007].” PO Mot. 1–2. Petitioner argues that the contents
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`of R2-075161 and R2-080338 are “exempt from the rule against hearsay
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`under Federal Rules of Evidence 803(6) and 807.” Pet. Opp. 9; see also id.
`
`at 9–12. Patent Owner argues that “Dr. Yaqub’s role as a ‘participant in
`
`3GPP’ is insufficient to render him a qualified individual to support
`
`admission under FRE 806(b),” and that “FRE 807 is an ‘exceptional’
`
`remedy that Petitioner has not justified in this case.” Paper 42, 4–5.
`
`For the reasons discussed above with respect to Exhibit 1012, we find
`
`that Dr. Yaqub is a qualified witness who has authenticated R2-075161 and
`
`R2-080338, and established their trustworthiness, so that they are not
`
`hearsay under Fed. R. Evid. 803(6). Patent Owner relies on Kolmes v.
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`World Fibers Corp., 107 F.3d 1534, 1542–43 (Fed. Cir. 1997), to argue that
`
`Dr. Yaqub is not a qualified witness. Paper 32, 4. We disagree. In Kolmes,
`
`a witness who “testified that he had seen [certain] documents while
`
`attending a meeting,” but failed to “testify concerning the record-keeping
`
`process related to them” was found not to be a “qualified witness” under
`
`Federal Rule of Evidence 803(6). Kolmes, 107 F.3d at 1542–43. In the
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`instant case, however, Dr. Yaqub has provided extensive testimony
`
`regarding 3GPP’s record-development and record-keeping process,
`
`including the fact that member-contributed documents uploaded to the 3GPP
`
`ftp server are indefinitely maintained on that server as of their upload dates.
`
`See Ex. 1012 ¶¶ 24, 28–30, 33, 37, 54, 57. Dr. Yaqub is, therefore, a
`
`qualifying witness. See Conoco, 99 F.3d at 391. Moreover, regarding R2-
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`075161 and R2-080338 in particular, Dr. Yaqub testifies that these
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`documents are “true and correct” copies of the documents uploaded to the
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`3GPP ftp server as of their upload dates, and provides specific URLs to the
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`3GPP ftp server by which they are downloadable. Id. ¶¶ 54, 57.
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`Accordingly, for the reasons given, we find that R2-075161 (Exhibit
`
`1005) and R2-080338 (Exhibit 1007) are admissible business records under
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`Federal Rule of Evidence 902(11), and that their contents are not hearsay
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`under Federal Rule of Evidence 803(6). We, therefore, deny Patent Owner’s
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`motion to exclude any portions of Exhibits 1005 and 1007. Moreover,
`
`because we find Exhibits 1005 and 1007 are admissible and not hearsay
`
`under Federal Rule of Evidence 803(6), we do not address the parties’
`
`additional arguments (see Pet. Opp. 10–12; Paper 32, 5) regarding whether
`
`these documents are admissible and not hearsay under Federal Rule of
`
`Evidence 807. See Beloit, 742 F.2d at 1423.
`
`B. Claim Interpretation
`
`The claim construction standard applicable to this inter partes review
`
`proceeding is the broadest reasonable interpretation in light of the patent
`
`specification. See 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC
`
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard).5 Under this standard, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`
`5 The revised claim construction standard for interpreting claims in inter
`partes review proceedings as set forth in the final rule published October 11,
`2018, does not apply to this proceeding, because the new “rule is effective
`on November 13, 2018 and applies to all IPR, PGR and CBM petitions filed
`on or after the effective date.” Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51340 (Nov. 13, 2018) (to be codified at 37
`C.F.R. pt. 42).
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`2007). Only those terms that are in controversy, however, need to be
`
`construed, and only to the extent necessary to resolve the controversy. Vivid
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner provides a proposed interpretation of “camps/camping” as
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`recited in claims 1, 2, 7, 14, and 15. Pet. 13–14. Petitioner also contends
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`that processor (claims 11, 13, and 16) requires no construction, in
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`accordance with Patent Owner’s position in related litigation. Pet. 14
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`Patent Owner responds that “[t]his term [camps/camping] does not
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`require express interpretation to resolve any controversy in this proceeding,
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`so there is no need for the Board to provide a construction.” PO Resp. 8.
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`Patent Owner also argues that the scope of “processor” is not relevant to the
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`issues raised in the Petition and need not be decided. Id. at 9.
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`In light of the parties’ arguments, we agree with Patent Owner and
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`determine that no term requires express interpretation to resolve any
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`controversy in this proceeding.
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`C. Legal Standard
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` A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`14
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`IPR2017-01474
`Patent 8,639,246 B2
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`In that regard, an obviousness analysis “need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
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`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`
`Translogic, 504 F.3d at 1259, 1262 (quoting KSR, 550 U.S. at 418). On the
`
`record before us, we find that the level of ordinary skill in the art is reflected
`
`by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. Prior Art Cited
`
`1. R2-075161 (Ex. 1005)
`
`R2-075161 is a Third Generation Partnership Project (3GPP) paper
`
`that relates to cell reselection. See Ex. 1005, 1 (“inter-frequency/RAT[6]
`
`mobility control in idle mode”). According to the paper, “[t]he UE specific
`
`inter-frequency control should be based on absolute priorities.” Id. at 2.
`
`The paper states that UE specific control information may be created by the
`
`eNB. Id. Such information “would include a list of frequency layers/RATs
`
`that the UE should handle with specific priorities.” Id. The paper also states
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`that, “since the load conditions maybe temporal, it should be possible to set
`
`an expiry timer for the UE specific control information.” Id. Upon
`
`expiration of that timer, the UE discards the UE specific control information
`
`and proceeds with some other cell reselection process. Id.
`
`
`6 RAT stands for Radio Access Technology. See, e.g., Pet. v; Ex. 1003 ¶ 52.
`Petitioner explains that a RAT refers to a cellular system, such as LTE,
`UMTS, and GSM. Pet. 28.
`
`15
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`
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`IPR2017-01474
`Patent 8,639,246 B2
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`2. R2-080338 (Ex. 1007)
`
`R2-080338 is also a 3GPP paper, which discusses reselection
`
`scenarios for multi-RAT terminals. Ex. 1007, 1. R2-080338 explains that
`
`“a UE located in an area where a E-UTRAN, a UTRAN and a GERAN
`
`network coexist will use the priorities algorithm to determine which RAT it
`
`should be camping on.” Id. According to one scenario, neither the UTRAN
`
`network nor the GERAN network provides the mobile (i.e., terminal or UE)
`
`with the necessary parameters (i.e., priorities and thresholds) for the
`
`priorities algorithm. Id. at 3. The paper proposes that one option in that
`
`scenario is to have the E-UTRAN network instead provide the parameters,
`
`which the mobile in turn stores and uses for the priority algorithm. Id.
`
`(discussing “Option 3”).
`
`3. Eerolainen (Ex. 1006)
`
`Eerolainen also relates to cell reselection. See Ex. 1006 ¶¶ 78–84.
`
`Eerolainen’s system includes a wireless network that communicates with a
`
`UE via a Node-B (base station). Id. ¶ 63. The UE includes a data processor
`
`and a memory that stores a program with program instructions. Id. When
`
`the UE executes the instructions, the UE will operate according to the
`
`embodiments described. Id.; see also ¶¶ 78–84 (describing cell reselection).
`
`Eerolainen teaches that its invention may be implemented by computer
`
`software executable by the UE’s data processor, or by hardware, or by a
`
`combination of software and hardware. Id. ¶ 67.
`
`E. Obviousness based on R2-075161 and R2-080338
`
`Petitioner asserts that claims 1–20 of the ’246 patent would have been
`
`obvious over R2-075161 and R2-080338. Pet. 23–52. For the reasons
`
`explained below, we determine that Petitioner’s argument and evidence
`
`16
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`IPR2017-01474
`Patent 8,639,246 B2
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`establish by a preponderance of the evidence that claims 1–20 would have
`
`been obvious over R2-075161 and R2-080338.
`
`1. Independent Claims 1 and 11
`
`Claim 1 recites a method for inter-system cell reselection, and
`
`Petitioner cites R2-075161 as discussing a priority approach to inter-system
`
`cell reselection. Pet. 27; Ex. 1005, 1; Ex. 1003 ¶ 196. Petitioner also
`
`identifies the UE in R2-080338 as a “terminal device.” See Pet. 28–29.
`
`Petitioner directs us to the title of R2-080338 (i.e., “Reselection scenarios
`
`for multi-RAT terminals in Rel-8”), and submits that “R2-080338 [] teaches
`
`a method for inter-system cell reselection.” Pet. 28; Ex. 1007, 1. Petitioner
`
`explains that “[a] ‘multi-RAT’ terminal is a UE that can operate on more
`
`than one RAT, or, a terminal that can operate on, for example, LTE, UMTS,
`
`and GSM.” Pet. 28.
`
`Limitation 1A of claim 1 recites two steps—the first step is terminal
`
`“receiving,” “when in a terminal is in a cell of a Long Term Evolution (LTE)
`
`system, . . . a message including a dedicated priority list from the LTE
`
`system.” For this step, Petitioner directs us to R2-075161 for the LTE
`
`network communicating a dedicated priority list to the terminal, relying on
`
`UE specific control information communicated to the UE from the LTE
`
`network. See Pet. 29–30. Petitioner also argues that R2-080338 teaches
`
`that “[t]he mobile stores the parameters received from the E-UTRAN
`
`network . . . and uses these parameters for the priority algorithm,” and that
`
`“the UE would remember the thresholds and priorities received whilst in E-
`
`UTRAN.” Pet. 33–34; Ex. 1007, 3. Petitioner explains that E-UTRAN
`
`refers to an LTE network.” Pet. 31 (citing Ex. 1003 ¶ 197). We note that
`
`the parameters for the priority algorithm in R2-080338 include “priorities
`
`17
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`IPR2017-01474
`Patent 8,639,246 B2
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`and thresholds.” Ex. 1007, 3 (that is, “necessary parameters for the
`
`algorithm (i.e., priorities and thresholds)”).
`
`The second step in limitation 1B is “performing,” “when the terminal
`
`camps on a cell of a non-LTE system, . . . “cell reselection in accordance
`
`with the dedicated priority list before a valid time of the dedicated priority
`
`list expires.” For this step, Petitioner argues that R2-080338 “teaches
`
`performing cell reselection in accordance with cell reselection priorities
`
`received from the LTE network when camping on a cell of a non-LTE
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`system.” Pet. 33. Petitioner directs us again to where R2-080338 teaches
`
`that “[t]he mobile stores the parameters received from the E-UTRAN
`
`network . . . and uses these parameters for the priority algorithm,” and that
`
`“the UE would remember the thresholds and priorities received whilst in E-
`
`UTRAN.” Pet. 33 (quoting Ex. 1007, 3) (emphases omitted). Petitioner
`
`explains that, “when the terminal is in an area where there is no LTE
`
`network (for example, an area where there is only UMTS or GSM
`
`networks), the terminal should use the priorities from the LTE network to
`
`perform cell reselection.” Id. at 34 (citing Ex. 1003 ¶ 198). Petitioner relies
`
`on the declaration testimony of Dr. Williams. Id. (citing Ex. 1003 ¶ 156
`
`(cross-referencing Ex. 1003 ¶¶ 119–122)).
`
`Petitioner does not argue that R2-080338 teaches performing cell
`
`reselection according to the dedicated priority list “before a valid time of the
`
`dedicated priority list expires.” For this aspect of the “performing” step of
`
`limitation 1B, Petitioner directs us to where R2-075161 teaches that “UE
`
`specific control information is created by the eNB” and “would include a list
`
`of frequency layers/RATs that the UE should handle with specific
`
`priorities.” Pet. 31–32, 35 (quoting Ex. 1005, 2) (emphases omitted).
`
`18
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`IPR2017-01474
`Patent 8,639,246 B2
`
`Petitioner also cites to where R2-075161 teaches that “[a]n expiry timer can
`
`be signaled as part of the UE specific control information,” and that, “[u]pon
`
`expiry of the timer, the UE shall discard the UE specific control information
`
`and continue with the normal cell reselection procedure.” Id. at 32 (quoting
`
`Ex. 1005, 2) (emphasis omitted). Petitioner identifies the UE specific
`
`control information in R2-075161 as a “dedicated priority list,” and explains
`
`that the eNB is a base station on an LTE system. Id. at 30.
`
`In addition to showing that each claim element is known, however,
`
`Petitioner must provide “some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” In re Kahn,
`
`441 F.3d 977, 988 (Fed. Cir. 2006); KSR, 550 U.S. at 418. Petitioner argues
`
`that “one of ordinary skill in the art would have been
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