Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: February 17, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC., ZTE (USA) INC., and ZTE CORPORATION,
`Petitioner,
`v.
`3G LICENSING S.A.,
`Patent Owner.
`
`IPR2020-01157
`Patent 7,274,933 B2
`
`
`
`
`
`
`
`
`
`Before TERRENCE W. McMILLIN, AMANDA F. WIEKER, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`571-272-7822
`
`Paper 12
`Date: February 17, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC., ZTE (USA) INC., and ZTE CORPORATION,
`Petitioner,
`v.
`3G LICENSING S.A.,
`Patent Owner.
`
`IPR2020-01157
`Patent 7,274,933 B2
`
`
`
`
`
`
`
`
`
`Before TERRENCE W. McMILLIN, AMANDA F. WIEKER, and
`RUSSELL E. CASS, Administrative Patent Judges.
`CASS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
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`IPR2020-01157
`Patent 7,274,933 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Dell Inc., ZTE (USA) Inc., and ZTE Corporation (“Petitioner”) filed a
`Petition requesting an inter partes review of claims 1–4, 6–9, 11–14, and 19
`(the “challenged claims”) of U.S. Patent No. 7,274,933 B2 (Ex. 1001, “the
`’933 patent”). Paper 4 (“Pet.”). 3G Licensing S.A. (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”). With our authorization
`(Paper 9), Petitioner filed a Preliminary Reply (Paper 10, “Prelim. Reply”)
`and Patent Owner filed a Preliminary Sur-reply (Paper 11, “Prelim. Sur-
`reply”).
`We have authority to determine whether to institute an inter partes
`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review
`may not be instituted unless it is determined that “the information presented
`in the petition filed under section 311 and any response filed under section
`313 shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (“The Board institutes
`the trial on behalf of the Director.”).
`For the reasons provided below and based on the record before us, we
`determine that Petitioner has demonstrated a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one of the
`challenged claims. Accordingly, we institute an inter partes review on all
`grounds set forth in the Petition.
`
`B. Real Parties in Interest
`Petitioner states that “Dell Inc., ZTE (USA) Inc., and ZTE
`Corporation (collectively, ‘Petitioners’), as well as Dell Marketing L.P., Dell
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`Products L.P., Denali Intermediate Inc., and Dell Technologies Inc.” are the
`real parties in interest. Pet. 68.
`Patent Owner states that 3G Licensing S.A. is the real party in
`interest. Paper 5, 1.
`
`C. Related Proceedings
`The parties identify the following matters related to the ’933 patent:
`Sisvel Int’l S.A. et al. v. Dell Inc., No. 1:19-cv-1247 (D. Del.);
`Sisvel Int’l S.A. et al. v. ZTE (USA), Inc. et al., No. 3:19-cv-1694
`(N.D. Tex.);
`Sisvel Int’l S.A. et al. v. AnyDATA Corp., No. 1:19-cv-1140 (D. Del.);
`Sisvel Int’l S.A. et al. v. Verifone, Inc., No. 1:19-cv-1144 (D. Del.);
`Sisvel Int’l S.A. et al. v. Blu Products, Inc., No. 1:20-cv-20813 (S.D.
`
`Fl.);
`
`IPR2020-01158, challenging U.S. Patent No. 7,460,868;
`IPR2020-01159, challenging U.S. Patent No. 7,596,375;
`IPR2020-01160, challenging U.S. Patent No. 8,275,374; and
`IPR2020-01162, challenging U.S. Patent No. 8,948,756.
`Pet. 68–69; Paper 5, 1–2.
`
`D. The ’933 Patent (Ex. 1001)
`The ’933 patent “relates generally to mobile stations and home
`network name displaying methods.” Ex. 1001, 1:18–19, 3:31–32.
`The ’933 patent explains that wireless mobile stations communicate
`through “a plurality of base stations, each of which provides near-exclusive
`communication coverage within a given geographic area.” Id. at 1:25–28.
`“Although different networks are available, a mobile station automatically
`selects and registers with its home communication network (i.e.[,] the
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`network of the contracted service provider) for operation.” Id. at 1:34–37.
`When connecting to a network, the ’933 patent explains, “the mobile station
`receives a Mobile Country Code (MCC) and a Mobile Network Code
`(MNC) from each network and operates with a preference towards choosing
`that network having the MCC/MNC pair uniquely associated with the home
`network.” Id. at 1:37–41. However, in an area in which the home service
`provider lacks a network infrastructure, the mobile device may connect to “a
`different network associated with an MCC/MNC pair different from that of
`the home network,” which may “incur additional service charges (e.g.[,]
`‘roaming’ charges)” to the user. Id. at 1:58–1:65.
`Additionally, the ’933 patent explains that a service provider may
`enter into a “cooperative network relationship” with other providers in a
`different area. Id. at 2:1–3. In such a case, roaming charges are not incurred
`when a subscriber connects to the cooperative network. Id. However,
`despite the cooperative relationship, “a service provider name different from
`that of the home network is displayed on the mobile station. This may be
`confusing to a subscriber who may believe that, for example, roaming
`charges are being incurred due to use of the alternative network when in fact
`they are not.” Id. at 2:3–8. To avoid this confusion, the ’933 patent
`describes an alternative naming technique called “Enhanced Operator
`Named String,” in which “instead of displaying a name that is different from
`that of the home network . . . the same or substantially similar ‘home
`network’ name may be displayed even though a different network is actually
`being used.” Id. at 2:8–19.
`The ’933 patent also describes a situation in which a “service provider
`becomes the new owner of one or more networks which have MCC/MNC
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`pairs different from that of the primary home network’s” MCC/MNC pair.
`Id. at 2:23–26. In such a situation, the “mobile station might be provided
`with multiple MCC/MNC pairs corresponding to all of these ‘home’
`networks, and operate to preferentially select and register with these
`networks over others.” Id. at 2:26–29. Again, however, “the name
`displayed on the mobile station may not correspond to the home network
`[name],” leading to confusion. Id. at 2:29–32. Accordingly, the ’933 patent
`seeks to provide an improved method for displaying a home network name.
`Id. at 2:33–39.
`Figure 7 of the ’933 patent is reproduced below.
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`Figure 7 depicts a flowchart of the claimed method for displaying the name
`of a network to which a mobile station is connected. Id. at 3:25–26.
`First, at step 704, “a mobile station scans to receive a plurality of
`Mobile Country Code (MCC) and Mobile Network Code (MNC) pairs
`which correspond to a plurality of wireless communication networks within
`a given coverage area” and, at step 706, the device compares the received
`pair “with multiple MCC/MNC pairs associated with a home communication
`network.” Id. at 13:53–57. These home communication network pairs “may
`be stored in a Home Public Land Mobile Network (HPLMN) list on a
`Subscriber Identity Module (SIM)” or “in memory of the mobile station.”
`Id. at 13:60–63. Then, at step 708, the device queries whether there is a
`match between the received pair and the pairs stored in the HPLMN list. If a
`match exists, the mobile device selects this “home” network (step 712); if no
`match exists, the device selects a different non-home network (step 710). Id.
`at 13:64–2. Then, the device again “compares the received MCC and MNC
`pair associated with the selected network with each one of the multiple home
`network MCC/MNC pairs (step 716)” and, if there is a match (step 718),
`“causes a home network name associated with the home network
`MCC/MNC pairs to be displayed in its visual display (step 722).” Id. at
`14:6–12. If no match exists, an alternate network name is displayed
`(step 720). Id. at 14:14–17.
`Thus, according to the ’933 patent, by comparing a received
`MCC/MNC pair to a plurality of MCC/MNC pairs stored in a single
`HPLMN list, the method advantageously displays the home network name
`whenever the device connects to any network having a MCC/MNC pair
`stored in the HPLMN list. Id. at 2:62–65.
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`
`E. Illustrative Claims
`Of the challenged claims, claims 1, 6, 11, and 19 are independent.
`Claim 1 is illustrative and is reproduced below.
`1. A network name displaying method in a mobile station,
`the method comprising:
`[a] scanning to receive a plurality of Mobile Country Code
`(MCC) and Mobile Network Code (MNC) pairs
`corresponding to a plurality of wireless communication
`networks within a coverage area;
`[b] selecting and registering with a wireless communication
`network associated with one of the received MCC and
`MNC pairs, giving a preference to home networks of a
`Home Public Land Mobile Network (HPLMN) list over
`non-home networks of a Preferred PLMN (PPLMN) list;
`[c] comparing the MCC and MNC pair of the selected
`network with a plurality of home network MCC and
`MNC pairs corresponding to the home networks of the
`HPLMN list;
`[d] for the step of comparing: using a plurality of home
`network MCC and MNC pairs from the HPLMN list
`stored on a Subscriber Identify Module (SIM) in the
`comparing step based on identifying that the plurality of
`home network MCC and MNC pairs are stored on the
`SIM, and otherwise using a plurality of home network
`MCC and MNC pairs stored in the memory of the mobile
`station in the comparing step;
`[e] causing a home network display name which is the same
`for all of the home network MCC and MNC pairs to be
`visually displayed in a visual display of the mobile
`station based on identifying a match between the MCC
`and MNC pair of the selected network and one of the
`home network MCC and MNC pairs; and
`[f] otherwise causing an alternate display name to be visually
`displayed in the visual display based on identifying no
`match between the MCC and MNC pair of the selected
`network and the home network MCC and MNC pairs.
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`Ex. 1001, 15:56–16:22 (bracketed paragraph identifiers added).
`
`F. Applied References
`Petitioner relies upon the following references:
`McElwain et al., U.S. Patent Publication
`No. 2003/0022689 A1, published Jan. 30, 2003 (Ex. 1004,
`“McElwain”);
`Uchida et al., U.S. Patent Publication No. 2004/0204136
`A1, published Oct. 14, 2004 (Ex. 1005, “Uchida”);
`Hicks et al., U.S. Patent No. 7,027,813 B2, issued
`Apr. 11, 2006 (Ex. 1006, “Hicks”);
`3rd Generation Partnership Project, Technical
`Specification Group Core Network, “NAS Functions related to
`Mobile Station (MS) in idle mode,” TS 23.122, Ver. 5.2.0,
`Dec. 2002 (Ex. 1007, “TS 23.122”);
`3rd Generation Partnership Project, Technical
`Specification Group Services and System Aspects, “Service
`aspects; Service principles,” TS 22.101, Ver. 5.8.0, Dec. 2002
`(Ex. 1008, “TS 22.101”);
`3rd Generation Partnership Project, Technical
`Specification Group Terminals, “Characteristics of the USIM
`Application,” TS 31.102, Ver. 5.3.0, Dec. 2002 (Ex. 1009,
`“TS 31.102”).1
`Pet. 3–4.
`
`Petitioner submits the Declaration of Dr. Apostolos K. Kakaes
`
`(Ex. 1003), and Patent Owner submits the Declaration of Mr. Stuart Lipoff
`(Ex. 2001).
`
`
`1 The three 3rd Generation Partnership Project Technical Specifications
`relied upon by Petitioner (Exs. 1007, 1008, 1009) are referred to collectively
`as the “3GPP Standards.” See, e.g., Pet. 3–4; Prelim. Resp. 20–21.
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`G. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–4, 6–9, 11–14, and
`19 of the ’933 patent based on the following grounds:
`Claims Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–3, 6–8, 11–13, 19
`103(a)2
`McElwain
`1–3, 6–8, 11–13, 19
`103(a)
`McElwain, Uchida
`4, 9, 14
`103(a)
`McElwain, Uchida, Hicks
`1–4, 6–9, 11–14, 19
`103(a)
`McElwain, Hicks
`1–4, 6–9, 11–14, 19
`103(a)
`3GPP Standards, McElwain
`
`
`
`II. DISCUSSION
`
`A. Claim Construction
`For petitions filed on or after November 13, 2018, a claim “shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R.
`§ 42.100(b) (2019). Petitioner submits that no term requires express
`construction. Pet. 4. Patent Owner proffers a construction for the term
`“home network.” Prelim. Resp. 14. Additionally, based on the parties’
`obviousness arguments, there appears to be a dispute concerning the
`construction of the term “home network display name,” although neither
`party proposes an express construction of that term.
`
`1. “Home Network”
`Patent Owner argues that “home network” should be construed as “a
`network for which a user will not incur roaming charges.” Prelim. Resp. 14.
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
`after the filing of the application that led to the ’933 patent. Therefore, we
`apply the pre-AIA version of 35 U.S.C. § 103.
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`Patent Owner argues that the claim language supports this construction
`because it contemplates multiple “home networks,” as reflected in the plural
`use of “home networks” within the claims themselves. Id. (citing Ex. 1001,
`claims 1, 6, 11, 19). Patent Owner also argues that the ’933 patent
`Specification uses the term “home network” to “include any network for
`which the user did not pay additional charges, even if it were not the primary
`home network.” Id. at 15 (citing Ex. 1001, 1:54–67, 2:1–14, 2:15–19, 2:20–
`37). Thus, according to Patent Owner, the ’933 patent teaches “to expand
`the definition of ‘home network’ to include not only the network owned and
`operated by the user’s own cellular provider, but also those other networks
`with whom the user’s cellular provider has a contractual relationship that
`would obviate roaming charges.” Id. at 16 (citing Ex. 1001, 2:1–19;
`Ex. 2001 ¶ 41).
`In its Reply to the Preliminary Response, Petitioner argues that Patent
`Owner’s construction is incorrect because it would mean that “the
`challenged claims would not cover a plurality of home networks all operated
`by the same cellular carrier, e.g., by virtue of an acquisition.” Prelim.
`Reply 1. Patent Owner responds that Petitioner misunderstands its
`construction of “home networks,” because Patent Owner’s construction
`“includes networks currently operated by a user’s cellular provider, which
`would include networks recently acquired by that provider.” Prelim Sur-
`reply 1.
`Based on the above briefing, it does not appear that there is a present
`dispute between the parties as to the construction of “home network.” We
`agree with both parties that “home network” includes networks operated by
`a user’s cellular provider, including networks acquired by that provider, as
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`well as networks with whom the provider has a contractual relationship that
`would obviate roaming charges. To the extent the parties believe that any
`further disputes remain relating to the construction of this term, such
`disputes may be addressed during trial.
`
`2. “Home Network Display Name”
`Neither party proffers an express claim construction for the term
`“home network display name,” which appears in all of the independent
`claims. In its discussion of Petitioner’s obviousness arguments, however,
`Patent Owner appears to interpret “home network display name” to mean
`“the name of the user’s primary home network.” Prelim. Resp. 22
`(“McElwain does not even teach displaying the name of the user’s primary
`home network” and does not “discuss displaying network names at all.”);
`see § II.D.3.i, infra. Patent Owner distinguishes this from McElwain’s
`“alphatags” on the basis that the alphatags are “simple text-based displays”
`that “merely identify a level of service provided to the user.” Id. From this
`discussion, it is not entirely clear what Patent Owner means by “the name of
`the user’s primary home network,” but it appears that Patent Owner may be
`contending that the actual network name (i.e., the name of the network
`provider, such as “AT&T”) must be displayed, rather than an identifier
`representing the home network, such as “Home.”
`Petitioner, on the other hand, argues that McElwain displays a “home
`network display name” because the mobile station “display[s] a message to a
`user that the user is operating in the P[r]epaid mode with one of a plurality
`of system providers having SIDs [system identification codes] that are
`associated with a geographical area that is the user’s home geographic area.”
`Pet. 31–32. Additionally, Petitioner argues that McElwain discloses “a
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`single alphatag for all ‘Cousin’ SIDs, which . . . would be a home network
`display name.” Id. at 31 (citing Ex. 1004 ¶ 54; Ex. 1003 ¶¶ 339–340). From
`this, we understand Petitioner to be construing “home network display
`name” to encompass displayed information that indicates that a user is on a
`home network, but not to require inclusion of the actual network name (i.e.,
`the name of the network provider, such as AT&T) or any other specific
`content or format.
`To resolve this apparent dispute, we focus on the intrinsic evidence.
`The ’933 patent Specification refers to “[h]ome network display name 530
`(e.g. ‘T-Mobile’ or ‘AT&T Wireless’), the name string used for mobile
`station’s display for all home-related networks.” Ex. 1001, 12:57–59; see
`also id. at 13:36–39 (“[h]ome network display name 530 (e.g. ‘T-Mobile’ or
`‘AT&T Wireless’), the name string used for mobile station’s display for all
`home-related networks”). Thus, the Specification indicates that a “home
`network display name” is a “name string used for the mobile station’s
`display for all home-related networks.” The parenthetical phrase “e.g. ‘T-
`Mobile’ or ‘AT&T Wireless’” suggests that the “home network display
`name” may include, the name of the carrier (such as “T-Mobile” or “AT&T
`Wireless”), but the use of “e.g.” indicates that this is only an example and is
`not limiting or required. Based on the present record, and in light of the
`Specification, we preliminarily construe the term “home network display
`name” to mean “a name string used for the mobile station’s display for all
`home-related networks,” and that this name string may, but need not, include
`the name of the network provider. The parties may further address the
`construction of this term during trial.
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`3. Other Terms
`Based on our review of the Petition and Preliminary Response, we
`agree that no other claim terms require express construction at this stage of
`the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, objective evidence
`of non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior
`art elements would have produced a predictable result weighs in the ultimate
`determination of obviousness. Id. at 416–417.
`In an inter partes review, the petitioner must show with particularity
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`
`
`3 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
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`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art at the time
`of the alleged invention “would have had a degree in electrical engineering
`or a similar discipline, with at least three years of relevant industry or
`research experience (or additional education).” Pet. 10 (citing Ex. 1003
`¶ 42) (also contending that relevant experience includes “a working
`understanding of the then-existing wireless cellular communications
`standards”).
`Patent Owner contends that a person of ordinary skill in the art would
`have had “a bachelor’s degree in electrical engineering or computer sciences
`and wireless telecommunications networks, along with at least three or more
`years or practical experience in the field or equivalent experience.” Prelim.
`Resp. 7 (citing Ex. 2001 ¶ 23).
`We discern that the parties’ contentions are substantially similar.
`At this stage of the proceeding, we adopt Petitioner’s assessment of the level
`of skill in the art, which encompasses that proposed by Patent Owner and is
`consistent with the Specification and asserted prior art of record. Our
`preliminary conclusions would not change under either assessment.
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`D. Obviousness of Claims 1–3, 6–8, 11–13, and 19 over McElwain or
`McElwain and Uchida
`Petitioner contends that claims 1–3, 6–8, 11–13, and 19 are
`unpatentable as obvious over McElwain, or over the combined teachings of
`McElwain and Uchida. Pet. 10–38. Patent Owner disagrees, making two
`arguments: (1) the prior art does not teach displaying a home network
`display name when outside the user’s cellular provider’s service area and
`(2) the prior art does not teach or suggest a “HPLMN list identifying a
`plurality of HPLMNs of the mobile station,” as claimed. Prelim. Resp. 21–
`25, 25–30.
`
`1. Overview of McElwain (Ex. 1004)
`McElwain discloses methods by which a mobile station may “select a
`particular wireless service provider from which service is to be obtained,”
`when multiple wireless service providers are capable of servicing the mobile
`station. Ex. 1004 ¶ 3.
`McElwain explains that a mobile station includes a memory device,
`such as number assignment module (NAM) 15A, in which a “system
`identification code (SID) and/or System Operator Code (SOC) is stored to
`uniquely identify the home service provider for the unit.” Id. ¶ 40.
`Typically, a mobile station will determine whether it is operating in its home
`network by reading the SID or SOC “that is broadcast in the cellular area
`where [the mobile station] is located, and comparing it to a stored Home SID
`(or SOC) stored in the NAM 15A.” Id. ¶ 45.
`In a preferred embodiment, McElwain explains that the mobile station
`also stores “a plurality of geographically-related SIDs . . . in a list or
`database,” e.g., “Cousin SID list 200.” Id. ¶ 46; see also id. ¶ 47 (explaining
`that wireless service providers may have business relationships with other
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`providers having other SIDs). McElwain explains that when the device
`receives a broadcasted SID, it compares the received SID to Cousin SID list
`200 and to the SID stored in NAM 15A and, if the received SID matches
`either, the mobile station determines that device is operating in the Home
`service provider network and is not roaming. Id. ¶¶ 49–50 (describing
`Figures 4A and 4B, in which the method queries for matches in both the
`Cousin SID list and NAM 15A, wherein a match with either declares the
`device to be operating in the Home service provider). On the other hand, if
`the received SID does not match the SIDs stored in either Cousin list 200 or
`NAM 15A, the device is determined to be roaming. Id. ¶ 55.
`McElwain also describes that, after connecting to a network, “mobile
`station 10 may provide a visual or other display to the user to inform the user
`of the current service provider status.” Id. ¶ 54. McElwain explains that this
`can be done by displaying an alphatag, as shown by the following pseudo-
`code:
`
`
`Pseudo code disclosed by McElwain for displaying an alphatag to inform the
`user of the current service provider. Ex. 1004 ¶ 54.
`Finally, although McElwain uses the SID and SOC identifiers
`employed in the North American cellular system, McElwain states that, “[i]n
`alternate embodiments[,] any suitable identifier may be used.” Id. ¶ 40; see
`also id. ¶ 36 (ANSI-136, AMPS, CDMA, or GSM protocols).
`
`16
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`
`2. Overview of Uchida (Ex. 1005)
`Uchida relates to “techniques for downloading and displaying system
`tags in wireless communication systems.” Ex. 1005 ¶ 2.
`Uchida discloses that, for conventional CDMA systems, each system
`is identified by a specific system identification (SID) code and each network
`is identified by a specific network identification (NID) code, both of which
`are transmitted by base stations within the system. Id. ¶ 5; see also id. ¶ 26.
`Uchida explains that a wireless terminal in the system will compare a
`received (SID, NID) pair with “a list of one or more home systems, with
`each home system being identified by its unique (SID, NID) pair.” Id. ¶ 6;
`see also id. ¶ 27. “The terminal is deemed to be roaming if the (SID, NID)
`pair . . . does not match any one of the home (SID, NID) pairs.” Id. ¶ 6.
`Uchida discloses that the terminal may display an indicator of the
`provider from which it is receiving service, whether home or roaming. Id.
`¶ 7. For example, in the disclosed invention, Uchida explains that the home
`system may include “multiple home system tags . . . (e.g., one home system
`tag for each home (SID, NID) pair)” (id. ¶ 34), or may include a single
`“home system tag [that] is displayed by the terminal whenever it receives
`service from any one of the systems included in the home SID/NID list” (id.
`¶ 37). Additionally, Uchida explains that the terminal may display an
`indicator that it is obtaining service from a roaming system. Id. ¶¶ 35, 38–
`40.
`
`17
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`Uchida’s Figure 7 is reproduced below.
`
`
`
`Figure 7 depicts a “flow diagram of a process for displaying the proper
`system tag” for a terminal. Id. ¶ 23. As shown, the method acquires a valid
`system (steps 712, 714) and determines if the “acquired system is the most
`preferred one for the identified geographic area,” using a system table
`(step 716). Id. ¶ 80. If so, the system then determines “whether or not the
`serving system is a home system for the terminal (step 730). This
`determination may be made based on the home SID/NID list for the terminal
`and the (SID, NID) pair for the serving system.” Id. ¶ 81. “If the serving
`system is a home system, then the home system tag is displayed” (step 732).
`Id. Otherwise, the method determines whether the system is associated with
`a roaming specific tag (step 740) or a roaming group tag (step 750), and the
`appropriate roaming tag is displayed (steps 742, or 752). Id. ¶¶ 82–83.
`
`18
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`
`3. Analysis of Independent Claims 1, 6, 11, and 19
`a) 1[pre], 6[pre], 11[pre] and 19[pre]: “[a] network name
`displaying method in a mobile station” / “[a] mobile station” /
`“[a] computer program product” / “a network name
`displaying method in a mobile station”
`Petitioner asserts that, to the extent the preamble of the challenged
`claims are limiting, McElwain teaches the subject matter of the preamble.
`Pet. 18. Specifically, Petitioner states that McElwain’s mobile station 10
`performs a network name displaying method by “provid[ing] a visual or
`other display to the user to inform the user of the current service provider
`status.” Id. (quoting Ex. 1004 ¶ 54; citing Ex. 1004 ¶¶ 33, 37, Figs. 1–2).
`Petitioner also contends that McElwain’s mobile station “includes memories
`12 and 12A storing ‘instructions that control[] the operation of processor
`170’ (Id. ¶ 33), which a POSITA [(person of ordinary skill in the art)] would
`understand comprises a computer program that is embodied in a computer
`program product as required by claim 11.” Id. at 18 (citing Ex. 1003 ¶¶
`311–312).
`Patent Owner does not present arguments regarding the preamble.
`See generally Prelim. Resp.
`We determine that, on the record before us, Petitioner’s cited evidence
`sufficiently supports its contentions regarding the preamble.4
`
`
`4 Because we are persuaded that Petitioner has shown that McElwain teaches
`the subject matter recited in the preamble, we need not decide whether the
`preamble is limiting for purposes of this Decision.
`
`19
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`b) 1[a], 6[a], 11[d], and 19[a]: “scanning to receive a plurality
`of Mobile Country Code (MCC) and Mobile Network Code
`(MNC) pairs corresponding to a plurality of wireless
`communication networks within a coverage area”
`Petitioner contends that McElwain teaches that its mobile station 10
`“includes a wireless transceiver, comprised of a transmitter 20 and a
`receiver 22, which can ‘tune to different frequency channels when scanning
`and otherwise acquiring service.’” Pet. 19 (quoting Ex. 1004 ¶ 37).
`According to Petitioner, “[a]s part of the scanning process, the mobile
`station 10 receives a SID,” which “is a fifteen-digit system identification
`code used in certain cellular networks to identify a network.” Id. (citing
`Ex. 1004 ¶¶ 40, 48). Petitioner contends that although a SID is disclosed,
`McElwain also states that “any suitable identifier may be used,” e.g., a
`Public Land Mobile Network (PLMN) identifier may be used for GSM
`networks. Id. (citing Ex. 1004 ¶ 40).
`Petitioner relies upon Dr. Kakaes’s testimony that a person of
`ordinary skill in the art “would have known that a PLMN is identified by . . .
`MCC/MNC pair[s],” and that “the scanning process is caused by the
`computer instructions stored on a computer medium, as required by
`claim 11.” Pet. 18 (citing Ex. 1003 ¶¶ 116, 314).
`Petitioner also contends that a person of ordinary skill in the art
`“would have understood that McElwain’s MS operating on the GSM
`network receives a plurality of MCC/MNC pairs, each corresponding to one
`of the plurality of available PLMNs within a coverage area.” Pet. 20 (citing
`Ex. 1004 ¶¶ 5, 6, 10, 36, 42–45, 49, Figs. 2–3). Petitioner relies upon, inter
`alia, McElwain’s Figure 5, which depicts that a plurality of identifiers, e.g.,
`SIDs (or PLMNs in a GSM network), “may be available in a single coverage
`area” labeled “overlap.” Id. (citing Ex. 1004 ¶ 47, Fig. 5). According to
`
`20
`
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`Petitioner, McElwain “further teaches that ‘scanning may be continuous,’
`meaning that the MS continually receives MCC/MNC pairs of wireless
`communication networks in a coverage area, until the MS locates one that is
`a ‘home’ network.” Id. (citing Ex. 1004 ¶ 49; Ex. 1003 ¶ 315).
`Patent Owner does not present arguments regarding this limitation.
`See generally Prelim. Resp.
`We determine that, on the record before us, Petitioner’s cited evidence
`sufficiently supports its contentions regarding this limitation.
`
`c) 6[b]: “a Subscriber Identity Module (SIM) interface for
`receiving a SIM”
`Petitioner contends that McElwain’s mobile system “comprises ‘non-
`volatile memory 12A which may be embedded or which may be removable,
`such as a removable subscriber Identification Module (SIM).’” Pet. 21
`(quoting Ex. 1004 ¶ 33). Petitioner argues that a mobile station “with a
`removable SIM possesses an interface for receiving the SIM, and it would
`have been obvious to a POSITA to design the MS with such an interface.”
`Id. at 21–2
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