UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL, INC.,
`ZTE (USA) INC.,
`and
`ZTE CORPORATION,
`Petitioners
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner
`
`Case IPR2020-1157
`Patent No. 7,274,933
`
`SECOND DECLARATION OF STUART LIPOFF
`IN SUPPORT OF PATENT OWNER
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`Case IPR2020-1157
`Patent No. 7,274,933
`Second Declaration of Stuart Lipoff
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. PROFESSIONAL QUALIFICATIONS, BACKGROUND AND
`EXPERIENCE ......................................................................................................... 1
`
`III. MATERIALS REVIEWED ........................................................................... 6
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN THE
`ART ........................................................................................................................... 8
`
`V. UNDERSTANDING OF THE LAW............................................................. 8
`
`VI. BACKGROUND ........................................................................................... 12
`
`A. Relevant Technology ...................................................................................... 12
`
`VII. OVERVIEW OF THE PRIOR ART ....................................................... 12
`
`A. Cited Reference – McElwain (Ex. 1004) ........................................................ 12
`
`B. Cited Reference – Uchida (Ex. 1005) ............................................................. 13
`
`C. Cited Reference – Hicks (Ex. 1006) ............................................................... 16
`
`D. Cited Reference – “3GPP Standards” (Ex. 1007-9) ....................................... 17
`
`VIII. CLAIM CONSTRUCTION ...................................................................... 18
`
`A. “home network” .............................................................................................. 18
`
`B. “home network display name” ........................................................................ 18
`
`IX. ADDITIONAL OPINIONS REGARDING PETITIONERS’ GROUNDS
`FOR INVALIDITY OF THE CHALLENGED CLAIMS ................................. 20
`
`A. None of Petitioners’ References Disclose Displaying a Home Network
`Display Name When Outside the User’s Cellular Provider’s Service Area .. 20
`
`B. The Asserted Prior Art Does Not Disclose the Use of Multiple MCC/MNC
`Pairs as Home Network Identifiers on a Home Network Display List .......... 23
`
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` The 3GPP Standards and Hicks Show That the HPLMN List File Did Not
`1.
`Exist in GSM Prior to the ’933 Patent ................................................................. 24
`
`2. McElwain and Uchida do not Disclose Applicable Methods to the ’933
`Patent’s Methods .................................................................................................. 26
`
`C. Secondary Considerations Support the Non-Obviousness of the ’933 Patent’s
`Innovations ...................................................................................................... 29
`
`1. Long Felt but Unsolved Need ......................................................................... 29
`
`2. Acceptance in the Industry ............................................................................. 30
`
`D. Substitute Claims 20-21 are Patentable Over McElwain, Uchida, Hicks, and
`the 3gpp References ........................................................................................ 31
`
`X. CONCLUSION ............................................................................................. 34
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`Case IPR2020-1157
`Patent No. 7,274,933
`Second Declaration of Stuart Lipoff
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`I.
`
`INTRODUCTION
`
`1.
`
`For this second declaration, I have been asked by Patent Owner to
`
`provide additional opinions regarding U.S. Patent No. 7,274,933 (“the ’933
`
`patent”). Specifically, Patent Owner has requested that I address Petitioners’
`
`grounds for invalidity of the challenged claims in view of the asserted prior art.
`
`Patent Owner has also requested that I address Patent Owner’s Motion to Amend
`
`and the substitute claims found therein. My opinions on these matters follows in
`
`this second declaration.
`
`2.
`
`The details of my engagement have not changed since my first
`
`declaration. Please note that I will refer to Ex. 2001 as my “first declaration” in
`
`this matter.
`
`II.
`
`PROFESSIONAL QUALIFICATIONS, BACKGROUND AND
`EXPERIENCE
`
`3.
`
`I am currently president of IP Action Partners Inc., a consulting
`
`practice that serves the telecommunications, information technology, media,
`
`electronics, and e-business industries.
`
`4.
`
`I earned a Bachelor of Science degree in Electrical Engineering in
`
`1968 and a second Bachelor of Science degree in Engineering Physics in 1969,
`
`both from Lehigh University. I earned a Master of Science degree in Electrical
`
`
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`Engineering from Northeastern University in 1974, and then a Master of Business
`
`Administration degree from Suffolk University in 1983.
`
`5.
`
`I hold a Federal Communications Commission (“FCC”) General
`
`Radiotelephone License. I also hold a Certificate in Data Processing from the
`
`Institute for the Certification of Computing Professionals (“ICCP”), which is
`
`supported by the Association for Computing Machinery (“ACM”). I am also a
`
`registered professional engineer (PE) in the Commonwealth of Massachusetts and
`
`in the State of Nevada.
`
`6.
`
`I am a fellow of the Institute of Electrical and Electronics Engineers
`
`(“IEEE”) Consumer Electronics, Communications, Computer, Circuits, and
`
`Vehicular Technology Groups. I have been a member of the IEEE Consumer
`
`Electronics Society National Board of Governors (formerly known as the
`
`Administrative Committee) since 1981, and I was Boston Chapter Chairman of the
`
`IEEE Vehicular Technology Society from 1974 to 1976. I served as the 1996-
`
`1997 President of the IEEE Consumer Electronics Society, and from 1999 to 2018
`
`I served as Chairman of the Society’s Technical Activities and Standards
`
`Committee and as Vice President of Publications for the Society. Since 2018 I
`
`have served as Vice President of Standards and Industry Activities for the Society.
`
`I have also served as an Ibuka Award committee member for the IEEE’s Award in
`
`the field of consumer electronics.
`
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`I have prepared and presented numerous papers at the IEEE and at
`
`7.
`
`other professional meetings. For example, in fall 2000, I served as general
`
`program chair for IEEE’s Vehicular Technology Conference on advanced wireless
`
`communication technology. I have organized sessions at The International
`
`Conference on Consumer Electronics, and I was the 1984 program chairman. I
`
`conducted an eight-week IEEE-sponsored short course on Fiber Optics System
`
`Design. I received IEEE’s Centennial Medal in 1984, and I received IEEE’s
`
`Millennium Medal in 2000. In 2011, I was elected to membership in The Cable
`
`Television Pioneers.
`
`8.
`
`As Vice President and Standards Group Chairman for the Association
`
`of Computer Users (“ACU”) from 1980 to 1983, I served as the ACU
`
`representative to the ANSI X3 Standards Group. From 1976 to 1978, I served as
`
`Chairman of the task group on user rule compliance for the FCC’s Citizens
`
`Advisory Committee on Citizen’s Band Radio.
`
`9.
`
`Over the last 35 years, I have been a member of the Society of Cable
`
`Television Engineers, the Association for Computing Machinery, and The Society
`
`of Motion Picture and Television Engineers. From 2001 to 2004, I served as a
`
`member of the USA advisory board to the National Science Museum of Israel. In
`
`1998, I presented a short course on international product development strategies as
`
`a faculty member for Technion Institute of Management in Israel.
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`10. From 2001 to 2003, I served as a member of the board or directors of
`
`The Massachusetts Future Problem Solving Program. I am currently a member of
`
`the board of directors and a Paul Harris Fellow of The Las Vegas Rotary Club. I
`
`serve on The Advocacy Board of The University of Las Vegas College of Fine
`
`Arts. When I have spare time, I substitute teach science in The Clark County
`
`Nevada Public Schools and donate my earnings back to school district.
`
`11.
`
`I am a named inventor on seven United States patents and have
`
`several publications on data communications in publications, including Electronics
`
`Design, Microwaves, EDN, the Proceedings of the Frequency Control Symposium,
`
`Optical Spectra, and IEEE publications.
`
`12. During my professional career dating from 1969 to the present, I have
`
`been heavily engaged in the study, analysis, evaluation, design, and
`
`implementation of products and technology associated with private and public
`
`network wired and wireless telecommunications systems, services, and
`
`technologies. A particular focus of my professional activities has been associated
`
`with public wireless networks such as paging and cellular systems. I have worked
`
`with all stakeholders in public wireless networks including service providers (i.e.
`
`carriers), cellphone manufacturers, cellular infrastructure providers, billing system
`
`service providers, software developers, investors, and complementary solution
`
`providers who interact with the cellular industry.
`
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`In my work related to the public network cellular industry I have
`
`13.
`
`assisted clients plan for the introduction and launch of their services, evaluated
`
`alternative technologies, prepare license applications, forecast technology
`
`developments and costs, and support R&D engineering development of subscriber
`
`and infrastructure products.
`
`14. For approximately three years, from 1969 to 1972, I served as Project
`
`Engineer for Motorola’s Communications Division, where I had project design
`
`responsibilities for paging and wireless communication products. Projects I
`
`worked on while employed at Motorola included work on projects that interfaced
`
`wireless data communications terminals to public safety computer systems for
`
`mobile data retrieval and data entry.
`
`15. For approximately four years, from 1972 to 1976, I served as Section
`
`Manager for Bell & Howell Communications Company, where I also had project
`
`design responsibilities for paging and wireless communication products. The
`
`projects I supported included public network paging terminals and value added
`
`server based enhancements to basic voice services.
`
`16. For 25 years from 1976 to 2001, I worked for Arthur D. Little, Inc.
`
`(ADL), where I became the Vice President and Director of Communications,
`
`Information Technology, and Electronics (CIE) and served in that role for 10
`
`years, from 1991 to 2001. At ADL, I was responsible for the firm’s global CIE
`
`
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`practice in laboratory-based contract engineering, product development, and
`
`technology-based consulting. I was also involved in multiple pioneering efforts to
`
`identify and explore customer-to-business and business-to-business electronic
`
`commerce and transactions information processing opportunities (e-commerce).
`
`These projects involved technology assessment and analysis as well as developing
`
`architectures and systems to support multiple applications, and typically involved
`
`an information retrieval component.
`
`17. My curriculum vitae is provided as Exhibit A.
`
`III. MATERIALS REVIEWED
`
`18.
`
`In forming my opinions, I have reviewed the ’933 patent, the
`
`materials submitted by Petitioners, and the Patent Owner’s substitute claims. In
`
`reaching my opinions, I have relied upon my experience in the field and also
`
`considered the viewpoint of a person of ordinary skill in the art (“POSITA”) at the
`
`time of the earliest relevant date of the ʼ933 patent, i.e., September 3, 2003. As
`
`explained below, I am familiar with the level of skill of a POSITA regarding the
`
`relevant technology at issue as of that time. As such, my opinions presented below
`
`are through the viewpoint of a POSITA. I have cited to the following documents
`
`in my analysis below.
`
`
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`Exhibit No. Description of Document
`
`Ex. 1001
`
`U.S. Patent No. 7,274,933
`
`Ex. 1004
`
`U.S. Patent Appl. Publ. No. 2003/0022689
`
`Ex. 1005
`
`U.S. Patent Appl. Publ. No. 2004/0204136
`
`Ex. 1006
`
`U.S. Patent No. 7,027,813
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2011
`
`
`
`3rd Generation Partnership Project; Technical
`Specification
`Group Core Network; NAS Functions related to Mobile
`Station
`(MS) in idle mode (Release 5) (3GPP TS 23.122 V5.2.0)
`
`3rd Generation Partnership Project; Technical
`Specification
`Group Services and System Aspects – Service aspects;
`Service
`principles (Release 5) (3GPP TS 22.101 V5.8.0)
`3rd Generation Partnership Project; Technical
`Specification
`Group Terminals; Characteristics of the USIM Application
`(Release 5) (3GPP TS 31.102 V5.3.0)
`3rd Generation Partnership Project; Technical
`Specification Group Core Network; NAS Functions
`related to Mobile Station (MS) in idle mode (Release 7)
`(3GPP TS 23.122 V7.0.0) (“TS 23.122 V7.0.0”)
`3rd Generation Partnership Project; Universal Mobile
`Telecommunications (UMTS); Characteristics of the
`USIM application (Release 6) (3GPP TS 31.102 V6.8.0)
`(“TS-31.102 V6.8.0”)
`“The North American Official Cellular User’s Guide”
`Available to Help Cellular Telephone Users, Business
`Wire, December 18, 1990
`Amy Zuckerman, Those Black Holes in Your Mobile
`Phone Service, New York Times, December 24, 2000
`Judy Strausbaugh, Oh, Give me a Cell Phone Where the
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`Signals Won’t Roam, Sunday News (Lancaster, PA), May
`19, 2002
`Andrew Hunter, PRL Enhancements for International
`Roaming, CDH Workshop (2004).
`
`Ex. B
`
`
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART
`
`19.
`
`I have been informed that the Board has adopted Petitioners’ proposed
`
`level of skill in the art. My opinions in this second declaration are based on the
`
`perspective of a POSITA that I laid-out in my first declaration. Nevertheless,
`
`applying Petitioners’ proposed level of skill in the art would not change my
`
`opinions.
`
`V. UNDERSTANDING OF THE LAW
`
`20.
`
`I am not an attorney. For the purposes of this declaration, Patent
`
`Owner’s counsel has informed me about certain aspects of the law that are relevant
`
`to my opinions. I have applied those legal principles in arriving at my conclusions
`
`expressed in this declaration.
`
`21.
`
`I have been instructed as to the definition of “obviousness” in the
`
`context of the patent laws.
`
`22.
`
`It is my understanding that a patent claim may be found invalid as
`
`obvious if, at the time when the invention was made (which in these proceedings I
`
`am assuming to be September 3, 2003), the subject matter of the claim, considered
`
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`as a whole, would have been obvious to a person having ordinary skill in the field
`
`of the technology (the “art”) to which the claimed subject matter belongs.
`
`23.
`
`I understand that the following factors should be considered in
`
`analyzing obviousness: (1) the scope and content of the prior art; (2) the
`
`differences between the prior art and the claims; and (3) the level of ordinary skill
`
`in the pertinent art. I also understand that certain other factors known as
`
`“secondary considerations” such as commercial success, unexpected results, long
`
`felt but unsolved need, industry acclaim, simultaneous invention, copying by
`
`others, skepticism by experts in the field, and failure of others may be utilized as
`
`indicia of nonobviousness.
`
`24.
`
`I understand that a person of ordinary skill in the art is assumed to
`
`have knowledge of all prior art. I understand that one skilled in the art can combine
`
`various prior art references based on the teachings of those prior art references, the
`
`general knowledge present in the art, or common sense. I understand that for a
`
`reference or combination of references to render a claim obvious, the reference or
`
`combination of references, along with the knowledge of a skilled artisan, must
`
`teach or suggest each and every limitation recited in the claim, as arranged in the
`
`claim as a complete whole. I have been advised by counsel that a claimed
`
`invention may be obvious if some teaching, suggestion, or motivation exists that
`
`would have led a person of ordinary skill in the art to combine the references.
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`In considering whether a claimed invention is obvious, I understand
`
`25.
`
`that one may find obviousness if, at the time of the patent’s effective filing date,
`
`there was a reason or motivation that would have prompted a POSITA to combine
`
`the known elements in a way the claimed invention does, taking into account such
`
`factors as (1) whether the claimed invention was merely the predictable result of
`
`using prior art elements according to their known function(s); (2) whether the
`
`claimed invention provides an obvious solution to a known problem in the relevant
`
`field; (3) whether the prior art teaches or suggests the desirability of combining
`
`elements claimed in the invention; (4) whether the prior art teaches away from
`
`combining elements in the claimed invention; (5) whether it would have been
`
`obvious to try the combinations of elements, such as when there is a design need or
`
`market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions; and (6) whether the change resulted more from design
`
`incentives or other market forces.
`
`26.
`
` To find that the prior art renders the invention obvious, I understand
`
`that one must find that the prior art provided a reasonable expectation of success
`
`and that “obvious to try” is not sufficient in unpredictable technologies. I also
`
`understand that it is impermissible to find obviousness based on hindsight
`
`reasoning, and it must be found only by considering what was known at the time of
`
`the patent’s effective filing date.
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`I also understand that a showing of obviousness must include
`
`27.
`
`demonstrating that the cited references disclose each element of a challenged
`
`claim.
`
`28. Additionally, I have been informed of the following legal principles
`
`concerning claim construction.
`
`29.
`
`I have been informed by Patent Owner’s counsel that “a claim of a
`
`patent . . . shall be construed using the same claim construction standard that would
`
`be used to construe the claim including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.”
`
`30.
`
`I understand that claim terms that are not construed by the Board are
`
`to be given their ordinary and customary meaning as would have been understood
`
`by a person of ordinary skill in the art at the time of the claimed invention.
`
`31. Finally, I have been instructed as to the definition of “anticipation” in
`
`the context of patent laws. I understand that for a claim to be invalid as
`
`anticipated, all of the requirements of that claim must be present in a single
`
`previous device or method that was known of, used, or described in a single
`
`previous printed publication or patent. Further, to anticipate the invention, the
`
`prior art need not use the same words as the claim, but all of the requirements of
`
`the claim must be disclosed—either expressly or impliedly—to a POSITA in the
`
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`technology at the time of invention. In other words, a POSITA looking at that one
`
`reference should be able to make and use the claimed invention.
`
`VI. BACKGROUND
`
`A.
`
`Relevant Technology
`
`32. The inventions of the ’933 patent generally pertain to the systems and
`
`methods regarding tracking which cellular network a user is connected to and
`
`displaying information about that network to a user’s phone. The goal of the ’933
`
`patent is to reduce a user’s confusion regarding whether they will be incurring
`
`additional service (e.g., roaming) charges. My first declaration contains additional
`
`detail on the background of the ’933 patent, the history of the relevant art, and an
`
`overview of the ’933 patent.
`
`VII. OVERVIEW OF THE PRIOR ART
`
`A.
`
`Cited Reference – McElwain (Ex. 1004)
`
`33. As I note in my first declaration, Petitioners base part of each of their
`
`analyses on United States patent Application Publ. No. 2003/0022689 entitled
`
`“Method and Apparatus for Relating Communications System Identifications
`
`(SIDS)” (“McElwain,” Ex. 1004). McElwain discusses a method and apparatus for
`
`a user equipment (“UE”) selecting a network to connect to depending on whether
`
`the user would be on a home network or roaming. (Ex. 1004 at ¶¶ 3, 9, 20-21.)
`
`McElwain accomplishes this by storing system identification (SID) code values
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`and network identification (NID) values and matches those identifiers against
`
`identifiers provided by the network to which the UE is connected. In this manner,
`
`a UE may display a “tag” that serves to tell a user that he or she is on a home
`
`network or is roaming. (Ex. 1004 at ¶ 54.)
`
`B.
`
`Cited Reference – Uchida (Ex. 1005)
`
`34.
`
`I address Petitioners’ asserted reference “Download and Display of
`
`System Tags in Wireless Communication Systems” (“Uchida,” Ex. 1005 at 1) in
`
`my first declaration as well. As with the prior reference, McElwain, Uchida
`
`discloses a system that uses SID/NID pairs and “tags.” As Uchida defines the
`
`term, a “tag” is a pre-defined string of text and/or other graphics that serve to
`
`indicate a user’s connection status—namely, whether they are roaming. (Ex. 1005
`
`at Abstract, Figs. 3A-3C.)
`
`35. Uchida discloses the use of SID/NID pairs matched between user
`
`equipment and network that lead to the display of a tag due to a device’s internal
`
`indexing. (Id. at ¶ 40.) Under Uchida, a group of consecutively-numbered
`
`SID/NID pairs (or a subgroup thereof) may share one or more tags. (Id. at ¶ 40.)
`
`36.
`
`I note once more that Uchida lacks any disclosure of indicating that a
`
`user is on his/her cellular provider’s network when, in fact, the user is instead on
`
`another network with whom the user’s cellular provider has a contractual
`
`relationship—that contractual relationship precluding billing the user for roaming
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`charges. Rather, it is my opinion that Uchida teaches that when a UE is connected
`
`to a network that is not the user’s primary home network, the UE will merely
`
`display a tag shared among networks that are not the user’s primary home network.
`
`(Ex. 1005 at Figs. 3A-3C.)
`
`37. Of particular relevance is that in Uchida, each tag must be either
`
`mapped to a single SID or a consecutive range of SIDS (Id. At ¶ 40), and there is
`
`no disclosure of a random list of many SIDs out of order that cause the display of a
`
`single tag. It is this in addressing this latter situation that renders the ’933 patent
`
`particularly innovative, and where Uchida falls short.
`
`38.
`
`It is also crucial to note that when Uchida refers to using a single tag
`
`for a number of “home networks,” these are not networks separate from the
`
`user’s cellular provider. Rather, Uchida contains a paragraph early in its
`
`disclosure that sets the context for the reference:
`
`A network operator/service provider may deploy one or more
`wireless communication systems
`to provide services for
`its
`subscribers. Each deployed system convers a particularly geographic
`region (e.g., a city) and may in turn include one or more smaller
`networks. For CDMA, each system can be uniquely identified by a
`specific system identification (SID) code value, and each network
`may also be uniquely identified by a specific network identification
`(NID) code value. Each base station operated by the network operator
`would then transmit the SID and NID values of the specific system
`and network to which it belongs.
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`(Ex. 1005 at ¶ 5) (emphasis added). It is my opinion that what Uchida calls “home
`
`networks” are simply smaller networks that belong to and are operated by a user’s
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`cellular carrier; Uchida does not take the step of calling networks owned and
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`operated by separate carriers “home networks” by virtue of their contractual
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`relationships with a user’s cellular carrier. (Id. at ¶ 5.)
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`39. Finally, as I noted in my first declaration, like McElwain, Uchida does
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`not describe the use of MCC/MNC pairs stored on an HPLMN list. Rather, both
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`primarily address methods in a CDMA network environment, which at the time
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`made no use of MCC/MNC pairs whatsoever, as evidenced in the CDG Workshop:
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`PRL Enhancements for International Roaming published in 2004—attached as
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`Exhibit B to my first declaration.
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`40. There were publications such as the CDG Workshop: PRL
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`Enhancements for International Roaming in the 2003 time-frame of the ’933
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`patent’s priority date that revealed plans to have the CDMA networks described in
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`McElwain and Uchida broadcast MCC/MNC in addition to their long standing
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`broadcasting of SID/NID network identification signals. There is no disclosure in
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`these two references to make use of MCC/MNC stored data structures in a
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`HPLMN phone memory or an equivalent MCC/MNC data structure.
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`Case IPR2020-1157
`Patent No. 7,274,933
`Second Declaration of Stuart Lipoff
`Cited Reference – Hicks (Ex. 1006)
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`C.
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`41. As addressed in my first declaration, Petitioners also point to a
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`reference entitled “System and Method for Home Network Determination in a
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`Mobile Phone” (“Hicks,” Ex. 1006 at 1). Hicks pertains to ways for a UE to
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`determine if it is on a user’s primary home network. (Id. at 1, Abstract). Hicks
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`focuses on known 3GPP systems and methods, such as the use of Location Area
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`Information (“LAI”) to determine whether a user is on their primary home
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`network—but these methods are not employed by the ’933 patent.
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`42. By the teachings of Hicks, if a UE determines that it is not on a user’s
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`cellular provider’s network, it will display “an indicator such as a special tone, a
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`screen display icon, or a lit indicator bulb” that will signal “to the user that
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`roaming charges” are now applicable. (Id. at 3:18-22).
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`43.
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`I note that Hicks does not disclose what a UE should display when on
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`a user’s primary home network.
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`44. As with the two references mentioned above, Hicks fails to teach any
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`indication that the user is on his or her primary home network when the user is
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`instead on a network that has a contractual relationship with the user’s primary
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`home network.
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`45. Finally, in my review, I notice that while the ’933 patent relies on
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`multiple MCC/MNC pairs to serve as a plurality of HPLMN identifiers, Hicks
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`explicitly rejects this method as practical—or even possible: “A problem arises in
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`that a mobile phone can only have one HPLMN identifier.” (Id. at 1006 at 1:20-
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`21.)
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`46.
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`I find Hick’s rejection of the methods of the ’933 patent significant.
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`Hicks discloses that the Zinn methods of having multiple MCC/MNC pairs in an
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`HPLMN file would not have been possible because the 3GPP industry
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`specifications (also cited by Petitioners and discussed below as the prior industry
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`standard) did not and could not support more than a single MCC/MNC pair in an
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`HPLMN file.
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`D.
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`Cited Reference – “3GPP Standards” (Ex. 1007-9)
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`47. There are three references that petitioners refer to as the “3GPP
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`Standards”: 3GPP TS 23.122 V5.2.0 (“TS-23.122”) (Ex. 1007), 3GPP TS 22.101
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`V5.8.0 (“TS-22.101”) (Ex. 1008) and 3GPP TS 31.102 V5.3.0 (“TS-31.102”) (Ex.
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`1009). As I previously noted in my first declaration, the 3GPP Standards merely
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`disclose displaying whether a UE is connected to a home or roaming network—
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`they do not touch on the subject of whether a UE should (or even if one could)
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`display the name of a user’s primary home network while actually connected to a
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`network that has a contractual relationship with that user’s primary home network.
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`48. Specifically, I note that TS-23.122 pertains to what a UE should do
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`when it is not connected to a network—such as scanning for valid networks to
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`Second Declaration of Stuart Lipoff
`which it may connect. (Ex. 1007 at 8.) TS-31.102 describes PLMN lists and their
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`uses and construction (Ex. 1009 at 54), while TS-22.101 discloses standards for the
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`display of network names on a UE. (Ex. 1008 at 28.) Even taken together, the
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`3GPP Standards do not address whether a user’s cellular provider’s name can or
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`should be displayed when actually connected to another network, nor do they
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`disclose the use of multiple MCC/MNC pairs on an HPLMN list.
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`VIII. CLAIM CONSTRUCTION
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`A. “home network”
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`49.
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`I understand that the Board has determined that the parties are in
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`agreement that the term “home network” includes networks operated by a user’s
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`cellular provider, including networks acquired by that provider, as well as
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`networks with whom the provider has a contractual relationship that would obviate
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`roaming charges.
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`50. For the purposes of my analysis, I apply this construction.
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`B. “home network display name”
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`51.
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`I understand that the Board has preliminarily construed the term
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`“home network display name” to mean “a name string used for the mobile station’s
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`display for all home-related networks.” Counsel for Patent Owner has informed
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`me that the Board also stated that “this name string may, but need not, include the
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`name of the network provider.”
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`Second Declaration of Stuart Lipoff
`52. Respectfully, my opinion differs from that of the Board. It is my
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`opinion that the term “home network display name” refers to the name of a user’s
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`cellular provider.
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`53. There are three locations in the patent that use the example “(e.g., ‘T-
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`Mobile’ or ‘AT&T Wireless’).” (See, Ex. 1001 at 1:48-49; 12:57-58; 13:36-37.) I
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`do not think that it is the case that these parenthetical examples indicate that the
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`home network display name may include, but is not limited to, the name of the
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`carrier, as the Board states. I do not see any teaching in the specification that the
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`“e.g.” is to suggest anything other than another potential wireless service provider
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`of a user. In other words, it appears to me that the examples listed here are
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`examples of the names of service providers, not just strings of letters for potential
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`display. Indeed, it is my opinion that it wo