Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`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
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`
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`PATENT OWNER’S MOTION TO AMEND
`AND REQUEST FOR PRELIMINARY GUIDANCE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`1
`
`
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`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
`
`
`
`PATENT OWNER’S MOTION TO AMEND
`AND REQUEST FOR PRELIMINARY GUIDANCE
`
`
`
`
`
`
`
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`
`
`
`
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`1
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ............................................................................................... 1
`II.
`STATEMENT OF RELIEF REQUESTED ..................................................... 2
`III. THE SUBSTITUTE CLAIMS MEET ALL THE REQUIREMENTS OF 37
`C.F.R. § 42.121 .......................................................................................................... 3
`A. Reasonable Number of Substitute Claims ..................................................... 3
`B. The Proposed Claims Are Responsive to the Instituted Ground .................. 4
`C. The Proposed Claims Do Not Enlarge the Scope of the Original Claims .... 4
`IV. THE SUBSTITUTE CLAIMS DO NOT INTRODUCE NEW SUBJECT
`MATTER ................................................................................................................... 5
`A.
`Support for Substitute Claim 20 .................................................................... 5
`B.
`Support for Substitute Claim 21 .................................................................... 8
`V.
`SUBSTITUTE CLAIMS 20-21 ARE PATENTABLE OVER MCELWAIN,
`UCHIDA, HICKS, AND THE 3GPP REFERENCES ............................................ 10
`VI. CONCLUSION .............................................................................................. 14
`
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Aqua Prods. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ..........................................................................2, 3
`Bosch Automotive Serv. Solutions LLC v. Matal,
`878 F.3d 1027 (Fed. Cir. 2017) .............................................................................. 2
`
`Statutes
`35 U.S.C. § 316(d) ............................................................................................ 1, 2, 3
`
`Regulations
`35 U.S.C. § 316(e) ..................................................................................................... 3
`37 C.F.R. § 42.121 ........................................................................................... passim
`37 C.F.R. § 42.22(a)(1) .............................................................................................. 3
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`TABLE OF EXHIBITS
`
`Description
`Declaration of Stu Lipoff in Support of Patent Owner
`Affidavit of Stephanie Berger
`Affidavit of Neil Benchell
`Affidavit of Andrew DeMarco
`Second Declaration of Stu Lipoff in Support of Patent Owner
`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
`Nancy Gohring, Falling Short of Replacement: Wireless Carrier Plans
`Compete with Landline but Don’t Cut it Out of the Equation,
`Telephony, April 27, 2998
`Judy Strausbaugh, Oh, Give me a Cell Phone Where the Signals Won’t
`Roam, Sunday News (Lancaster, PA), May 19, 2002
`
`
`
`Exhibit
`2001
`2002
`2003
`2004
`2005
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`iv
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`INTRODUCTION
`Patent Owner, Sisvel International S.A. (“Sisvel”) respectfully submits this
`
`
`I.
`
`Motion to Amend under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 contingent
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`upon a finding of unpatentability with respect to the original challenged claims 2
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`and 3 (the “Challenged Claims”) of U.S. Patent No. 7,274,933 (“the ’933 patent”)
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`(Ex. 1001). In addition, Patent Owner requests that the Patent Trial and Appeal
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`Board (“PTAB”) provide preliminary guidance in accordance with the pilot
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`program.
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`Patent Owner attaches the proposed substitute claims as Appendix A. Patent
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`Owner proposes to substitute claims 2 and 3 with claims 20 and 21, respectively.
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`Proposed substitute claims 20 and 21 include additional limitations not found in
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`the prior art. The proposed substitute claims are presented on a contingent basis in
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`the event the Board finds that the original claims are unpatentable.
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`As this motion and the First and Second Declaration of Stuart Lipoff in
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`Support of Patent Owner (Ex. 2001; Ex. 2005) demonstrate, the substitute claims
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`meet all of the requirements of 37 C.F.R. § 42.121. Namely, each amendment is
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`responsive to a ground of unpatentability involved in this proceeding, none of the
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`amendments seek to enlarge the scope of the claims or to introduce new subject
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`matter, and the motion shows the changes that are sough and the support in the
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`original disclosure of the patent for each substitute claim.
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
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`Moreover, although the burden of persuasion for any substitute claims is on
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`
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`the Petitioners to show that such claims are unpatentable, see Aqua Prods. v.
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`Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc); Bosch Automotive Serv. Solutions
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`LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017), this motion and the supporting
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`declarations demonstrate that the substitute claims are patentable over the
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`references in this trial involving the ’933 patent.
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`To satisfy the requirement of 37 C.F.R. 42.121(a), the parties had a
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`conference call with the Board on May 18, 2021 to discuss filing a motion to
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`amend.
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`II.
`
`STATEMENT OF RELIEF REQUESTED
`Patent Owner hereby moves to amend the ’933 patent contingent upon
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`whether the Challenged Claims are found unpatentable in the present IPR
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`proceeding. See, 37 C.F.R. 42.121. If all Challenged Claims are found to be
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`unpatentable, Patent Owner requests the Board order the following:
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`• The replacement of dependent claim 2 with substitute claim 20;
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`• The replacement of dependent claim 3 with substitute claim 21.
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`No other changes are proposed. See, 37 C.F.R. § 42.22(a)(1); see also, 35
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`U.S.C. § 316(d).
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`2
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`III. THE SUBSTITUTE CLAIMS MEET ALL THE REQUIREMENTS
`OF 37 C.F.R. § 42.121
`Under 35 U.S.C. § 316(d)(1)(B), a patent owner may propose a reasonable
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`number of substitute claims for each challenged claim. A patent owner must show
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`that the amendment in the proposed substitute claims is responsive to a ground of
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`unpatentability involved in the trial, does not seek to broaden a challenged claim,
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`and is supported by the filed or earlier-filed disclosures. 35 U.S.C. § 316(d)(3); 37
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`C.F.R. § 42.121(a)(2).
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`If a patent owner has met these statutory requirements, then the Board
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`considers whether the substitute claims are unpatentable by a preponderance of the
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`evidence. Western Digital Corp. v. Spec Tech, Inc., IPR 2018-00082, Paper 13 at 4
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`(PTAB April 25, 2018). The petitioners have the burden to show that the amended
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`claims are unpatentable over the prior art. 35 U.S.C. § 316(e); Aqua Prods. Inc.,
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`872 F.3d 1324.
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`A. Reasonable Number of Substitute Claims
`As shown in the Appendix A, Patent Owner proposes only one substitute
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`claim for each conditionally canceled claim, and thus satisfies the general
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`presumption that “only one substitute claim would be needed to replace each
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`challenged claim.” 37 C.F.R. § 42.121(a)(3).
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
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`The Proposed Claims Are Responsive to the Instituted Ground
`B.
`The substitute claims 20 and 21 are responsive to one or more grounds of
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`
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`unpatentability at issue in this proceeding. See, 37 C.F.R. § 42.121(a)(2)(i).
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`Specifically, Petitioners have asserted that the prior art discloses the elements of
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`original claims 2 and 3, which this motion conditionally seeks to amend. (See
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`Paper 1 at 2.)
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`C.
`
`The Proposed Claims Do Not Enlarge the Scope of the Original
`Claims
`Proposed substitute claims 20 and 21 narrow the scope of claims 2 and 3,
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`respectively. Each substitute claim imposes additional limitations: (1) the
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`requirement that the mobile station runs a test to determine whether the HPLMN
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`list, containing a plurality of home network MCC and MNC pairs, is stored in the
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`Subscriber Identity Module (“SIM”), in the mobile station’s memory, or neither,
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`(2) the condition that method of claim 1 is implemented if the HPLMN list is
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`contained on the mobile station’s SIM or in its memory; and the additional
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`requirement that (3) the aforementioned test is performed at explicitly noted times.
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`These limitations impose a requirement that the user equipment (“UE”) only
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`carry out the methods of claim 1 when a specific test for an HPLMN list returns a
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`confirmation of the HPLMN list’s presence on the UE’s SIM card or in its
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
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`memory. Further, these limitations state that this test is to be carried out in
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`response to certain stimuli.
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`As discussed in more detail below, each of the newly added limitations has
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`support in the specification as originally filed.
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`IV. THE SUBSTITUTE CLAIMS DO NOT INTRODUCE NEW SUBJECT
`MATTER
`The originally-filed disclosure of the ’933 patent supports each proposed
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`substitute claim. See, 37 C.F.R. § 42.121 (b)(1)-(2). The ’933 patent issued from
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`U.S. App. Ser. No. 10/932,899, which claims priority to European Patent
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`application 03255483. (Ex. 1001 at 1.) The charts below provide support for each
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`of the proposed substitute claims 20-21 from the European and U.S. Applications.
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`Support for Substitute Claim 20
`A.
`Support for Substitute Claim 20 in the
`Claim Limitation
`original disclosure of European
`application No. 03255483 / US
`Application No. 10/932,899
`European Application
`
`Claim 20
`
`The method of claim 1, wherein each
`time the mobile station is to display a
`network name, the mobile station runs
`a test to determine whether the
`HPLMN list, containing a plurality of
`home network MCC and MNC pairs,
`are is stored in the memory of the
`mobile station., in the SIM, or neither;
`and
`
`Ex. 1002 at 116 (19:9-11) (“The
`mobile station may identify or detect
`whether there is a multiple home
`network list on the SIM by testing if a
`predetermined designated area of
`memory on the SIM includes this list or
`associated data.”), (19:14-16) (“This
`test may be performed every time the
`mobile station goes through the
`network name displaying technique or,
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`alternatively, only once during or
`shortly after a SIM initialization
`procedure performed by the mobile
`station.”) (19:23-25) (“In one
`implementation, compatibility is
`provided between previous, current,
`and future versions mobile stations and
`SIMS by providing a test to identify the
`availability of such a list on the SIM
`and a similar backup list on the mobile
`station.”).
`
`US Application
`
`Ex. 1002 at Pg. 25 (“In a slight
`variation of the method of Fig. 7, the
`mobile station utilizes a multiple home
`network list on the SIM if it is stored
`on the SIM, but if such a list is not
`stored on the SIM, the mobile station
`utilizes a multiple home network list
`stored in its own memory.”) (“The
`mobile station may identify or detect
`whether there is a multiple home
`network list on the SIM by testing if a
`predetermined designated area of
`memory on the SIM includes this list or
`associated data.”) (“In one
`implementation, compatibility is
`provided between previous, current,
`and future versions mobile stations and
`SIMS by providing a test to identify the
`availability of such a list on the SIM
`and a similar backup list on the mobile
`station.”), (“This test may be
`performed every time the mobile
`station goes through the network name
`displaying technique, or alternatively,
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`6
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`
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`implementing the steps of claim 1 only
`if the HPLMN list is contained on the
`mobile station’s SIM or in its memory.
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`only once during or shortly after a SIM
`initialization procedure performed by
`the mobile station.”) claim 7, and claim
`14.
`European Application
`
`Ex. 1002 at 116 (19:6-8) (“. . . the
`mobile station utilizes a multiple home
`network list on the SIM if it is stored
`on the SIM but, if such a list is not
`stored on the SIM, the mobile station
`utilizes a multiple home network list
`stored in its own memory.”), (19:21-
`22) (“Visually displaying the (same)
`service provider name for these
`networks is
`suitably performed based on the
`present techniques.")
`
`
`US Application
`
`Ex. 1002 at 25 (“In a slight variation of
`the method of Fig. 7, the mobile station
`utilizes a multiple home network list on
`the SIM if it is stored on the SIM, but if
`such a list is not stored on the SIM, the
`mobile station utilizes a multiple home
`network list stored in its own
`memory.”) (“The mobile station may
`identify or detect whether there is a
`multiple home network list on the SIM
`by testing if a predetermined
`designated area of memory on the SIM
`includes this list or associated data.”)
`(“In one implementation, compatibility
`is provided between previous, current,
`and future versions mobile stations and
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`SIMS by providing a test to identify the
`availability of such a list on the SIM
`and a similar backup list on the mobile
`station.”), claim 7, and claim 14.
`
`Support for Substitute Claim 21
`B.
`Support for Substitute Claim 21 in the
`Claim Limitation
`original disclosure of European
`application No. 03255483 / US
`Application No. 10/932,899
`European Application
`
`Claim 21
`
`The method of claim 1, wherein the
`mobile station runs a single test to
`determine whether the HPLMN list,
`containing a plurality of home network
`MCC and MNC pairs, are is stored in
`the memory of the mobile station., in
`the SIM, or neither, the test being run
`during or after a SIM initialization
`procedure is performed by the mobile
`station; and
`
`Ex. 1002 at 116 (19:9-11) (“The
`mobile station may identify or detect
`whether there is a multiple home
`network list on the SIM by testing if a
`predetermined designated area of
`memory on the SIM includes this list or
`associated data.”), (19:14-16) (“This
`test may be performed every time the
`mobile station goes through the
`network name displaying technique or,
`alternatively, only once during or
`shortly after a SIM initialization
`procedure performed by the mobile
`station.”), (19:23-25) (“In one
`implementation, compatibility is
`provided between previous, current,
`and future versions mobile stations and
`SIMS by providing a test to identify the
`availability of such a list on the SIM
`and a similar backup list on the mobile
`station.”).
`
`
`US Application
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`
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`implementing the steps of claim 1 only
`if the HPLMN list is contained on the
`mobile station’s SIM or in its memory.
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`Ex. 1002 at Pg. 25 (“In a slight
`variation of the method of Fig. 7, the
`mobile station utilizes a multiple home
`network list on the SIM if it is stored
`on the SIM, but if such a list is not
`stored on the SIM, the mobile station
`utilizes a multiple home network list
`stored in its own memory.”) (“The
`mobile station may identify or detect
`whether there is a multiple home
`network list on the SIM by testing if a
`predetermined designated area of
`memory on the SIM includes this list or
`associated data.”) (“In one
`implementation, compatibility is
`provided between previous, current,
`and future versions mobile stations and
`SIMS by providing a test to identify the
`availability of such a list on the SIM
`and a similar backup list on the mobile
`station.”), (“This test may be
`performed every time the mobile
`station goes through the network name
`displaying technique, or alternatively,
`only once during or shortly after a SIM
`initialization procedure performed by
`the mobile station.”), claim 7, and
`claim 14.
`European Application
`
`Ex. 1002 at 116 (19:6-8) (“. . . the
`mobile station utilizes a multiple home
`network list on the SIM if it is stored
`on the SIM but, if such a list is not
`stored on the SIM, the mobile station
`utilizes a multiple home network list
`stored in its own memory.”), (19:21-
`22) (“Visually displaying the (same)
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`service provider name for these
`networks is
`suitably performed based on the
`present techniques.")
`
`US Application
`
`Ex. 1002 at Pg. 25 (“In a slight
`variation of the method of Fig. 7, the
`mobile station utilizes a multiple home
`network list on the SIM if it is stored
`on the SIM, but if such a list is not
`stored on the SIM, the mobile station
`utilizes a multiple home network list
`stored in its own memory.”) (“The
`mobile station may identify or detect
`whether there is a multiple home
`network list on the SIM by testing if a
`predetermined designated area of
`memory on the SIM includes this list or
`associated data.”) (“In one
`implementation, compatibility is
`provided between previous, current,
`and future versions mobile stations and
`SIMS by providing a test to identify the
`availability of such a list on the SIM
`and a similar backup list on the mobile
`station.”), claim 7, and claim 14.
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`
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`
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`V.
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`SUBSTITUTE CLAIMS 20-21 ARE PATENTABLE OVER
`MCELWAIN, UCHIDA, HICKS, AND THE 3GPP REFERENCES
`No prior art of record known to Patent Owner anticipates or renders obvious
`
`proposed substitute claims 20-21. Proposed substitute claims limit claims 2 and 3
`
`by further (1) requiring the execution of a test by the user equipment (“UE”) to
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`determine whether an HPLMN list is stored on the UE’s SIM or in its memory, (2)
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`allowing the mobile station to implement the method of claim 1 if the HPLMN list
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`is found in the UE’s SIM or in its memory, and (3) requiring the test to be
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`performed either once in the event of a SIM initialization procedure (substitute
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`claim 21) or every time the UE is to display a network name (substitute claim 20).
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`Petitioners allege that McElwain (Grounds 1-5), Uchida (Grounds 2-3), Hicks
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`(Grounds 3-4), and TS 23.122, TS 22.101, and TS 31.102 (collectively, the 3GPP
`
`Standards) (Ground 5), in various combinations, render obvious the Challenged
`
`Claims. (See, Paper No. 1 at 2.)
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`None of the asserted prior art references discloses the features of substitute
`
`claims 20 and 21, and so none of the references, either individually or in
`
`combination, render any substitute claim anticipated or obvious. Specifically, the
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`asserted references cannot invalidate substitute claims 20 and 21 as anticipatory or
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`obvious because no prior art reference discloses conducting a test—either once
`
`during or after SIM initialization (substitute claim 21), or every time the UE is to
`
`display a network name (substitute claim 20)—for a HPLMN list comprising a
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`plurality of MCC/MNC pairs on a UE and implementing the methods of the ’933
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`patent in the event that UE’s test reveals that the HPLMN list resides on either the
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`UE’s SIM or in the UE’s memory. (Ex. 2005 at ¶ 85.)
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`The ’933 patent establishes that the purpose of the tests for an HPLMN list
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`
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`is to ensure that “compatibility is provided between previous, current, and future
`
`versions mobile stations and SIMS[.]” (Ex. 1001 at 14:46-49.) By enforcing a
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`limitation that the methods of the ’933 patent are implemented when an HPLMN
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`list is found either on a UE’s SIM or in its memory, the ’933 patent confirms that
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`older phones with newer SIM cards, or newer phones with older SIM cards, are
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`capable of operating without facing issues with compatibility between older and
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`newer technology. (Ex. 2005 at ¶ 86.)
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`This focus on compatibility—or indeed, any disclosure on the subject—is
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`entirely absent from McElwain and Uchida. (Ex. 2005 at ¶ 87.) Both references
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`disclose systems wherein a file with multiple SID/NID pairs is presumed to be
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`present in the system. (Ex. 2005 at ¶ 87; see, Ex. 1004 at claim 1; Ex. 1005 at
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`abstract.) Similarly, Hicks and the 3GPP Standards make no references to
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`compatibility testing and do not describe how such testing would ensure
`
`compatibility. (Ex. 2005 at ¶ 88.) No POSITA would understand Hicks or the
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`3GPP standards to disclose a test for an HPLMN list containing a plurality of
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`MCC/MNC pairs, let alone disclose that such a test be conducted every time the
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`UE is to display a network name or only once during or after a SIM initialization
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`procedure. (Ex. 2005 at ¶¶ 88-89.) Indeed, no reference discloses the limitation
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
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`that the test for an HPLMN list containing a plurality of home network MCC/MNC
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`pairs is conducted (1) every time the UE is to display a home network name, or (2)
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`only once during or after a SIM initialization procedure is performed by the UE.
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`(Ex. 2005 at ¶ 89.)
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`Thus, the prior art does not disclose a test used specifically to determine if an
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`HPLMN list file containing a plurality of home network MCC/MNC pairs exists on
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`a UE’s SIM card or in its memory. Petitioners’ references also fail to disclose the
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`step of implementing the ’933 patent’s home network display name methods,
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`contingent upon the UE’s test successfully locating the HPLMN list file in the UE’s
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`SIM card or in its memory. Similarly, the prior art does not disclose the UE
`
`executing this test every time the UE is to display a home network name, or only
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`once during or after a SIM initialization procedure. With none of the prior art of
`
`record disclosing any of the above steps, they cannot anticipate or render obvious
`
`proposed substitute claims 20 and 21.
`
`Nevertheless, even if some combination of Petitioners’ references could
`
`disclose any of the steps of the substitute claims, a POSITA would have no
`
`motivation to combine either of McElwain or Uchida with Hicks or the 3GPP
`
`Standards. McElwain and Uchida, however, are directed toward a CDMA
`
`environment. (Ex. 2001 at ¶¶ 52, 74; Ex. 2005 at ¶ 74.) Although McElwain and
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`13
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`
`Uchida reference subscriber identification module (“SIM”) cards and the ’933
`
`patent’s GSM environment, they provide no guidance on how to apply their
`
`CDMA disclosures in a GSM environment. (Ex. 2005 at ¶¶ 74, 78.) A person of
`
`ordinary skill in the art (“POSITA”) relying on McElwain and Uchida would not
`
`know how implement this configuration on a SIM card since CDMA-compliant
`
`phones were not capable of using SIM cards. (Ex. 2005 at ¶ 74.) It would not
`
`have been obvious to a POSITA in view of McElwain or Uchida—separately or in
`
`combination with any other asserted reference—to implement CDMA techniques
`
`in GSM on a module not known in CDMA. (Ex. 2005 at ¶ 78.) Thus, a POSITA
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`would have no motivation to combine McElwain with Uchida, or either CDMA
`
`reference with the GSM-directed Hicks and 3GPP Standards to design a test for
`
`determining if an HPLMN list is in the UE’s memory or on a SIM card, and then
`
`implementing the methods of claim 1.
`
`VI. CONCLUSION
`For each original claim that the Board finds unpatentable, Patent Owner
`
`respectfully requests that the Board grant this motion to amend as to the substitute
`
`claims.
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
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`
`
`/s/ Timothy Devlin
`Timothy Devlin
`Registration No. 41,706
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`tdevlin@devlinlawfirm.com
`
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`Dated: May 21, 2021
`
`
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`15
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`CLAIMS APPENDIX A
`
`Proposed amended claims are shown in marked-up form below, beginning
`
`
`
`
`
`with claim 20.
`
`Underlining and bracketed text show modifications to the original claim
`
`being made in the corresponding substitute claim.
`
`20 (substitute for claim 2, if found unpatentable)
`
`The method of claim 1, wherein each time the mobile station is to
`display a network name, the mobile station runs a test to determine
`whether the HPLMN list, containing a plurality of home network
`MCC and MNC pairs, are is stored in the memory of the mobile
`station., in the SIM, or neither; and
`
`implementing the method of claim 1 only if the HPLMN list is
`contained on the mobile station’s SIM or in its memory.
`
`21 (substitute for claim 3, if found unpatentable)
`
`The method of claim 1, wherein the mobile station runs a single test to
`determine whether the HPLMN list, containing a plurality of home
`network MCC and MNC pairs, are is stored in the memory of the
`mobile station., in the SIM, or neither, the test being run during or
`after a SIM initialization procedure is performed by the mobile
`station; and
`
`implementing the steps of claim 1 only if the HPLMN list is contained
`on the mobile station’s SIM or in its memory.
`
`16
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`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing document was served
`
`
`
`electronically via electronic mail on May 21, 2021 on the following counsel of
`
`record for Petitioners:
`
`
`LEAD COUNSEL
`
`John R. Hutchins (Reg. 43,686)
`jhutchins@bannerwitcoff.com
`
`Banner & Witcoff, Ltd.
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
`Tel: 202-824-3000
`
`
`Counsel for ZTE (USA) Inc. and ZTE Corporation
`
`FIRST BACKUP COUNSEL
`
`C. Andy Mu (Reg. 58,216)
`amu@bannerwitcoff.com
`
`ADDITIONAL BACKUP COUNSEL
`
`Wesley W. Jones (Reg. 56,552)
`wjones@bannerwitcoff.com
`
`Shambhavi Patel (Reg. No. 73,478)
`spatel@bannerwitcoff.com
`
`Banner & Witcoff, Ltd.
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
`Tel: 202-824-3000
`Additional email for service: ZTEIPRService@bannerwitcoff.com
`
`
`LEAD COUNSEL
`
`Brian M. Buroker (Reg. 39,125)
`bburoker@gibsondunn.com
`
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Ave. NW
`
`Counsel for Dell, Inc.
`
`FIRST BACKUP COUNSEL
`
`Paul Torchia (Reg. 55,683)
`ptorchia@gibsondunn.com
`
`Gibson, Dunn, & Crutcher LLP
`200 Park Avenue
`
`17
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`
`
`
`
`
`
`
`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`Washington, DC 20036
`Phone: (202) 955-8500
`
`
`New York, NY 10166
`Phone: (212) 351-3953
`
`ADDITIONAL BACKUP COUNSEL
`
`Nathan R. Curtis (Reg. 70,471)
`ncurtis@gibsondunn.com
`
`Gibson, Dunn & Crutcher LLP
`2001 Ross Ave., Ste. 2100
`Dallas, TX 75201
`Phone: (214) 698-3100
`Additional email for service: Dell-IPRService@gibsondunn.com
`
`
`LEAD COUNSEL
`
`Jacob K. Baron (Reg. No. 48,961)
`jacob.baron@hklaw.com
`
`Holland & Knight LLP
`10 St. James Avenue, 11th Floor
`Boston, MA 02116
`
`Counsel for Cradlepoint, Inc.
`
`FIRST BACKUP COUNSEL
`
`Allison M. Lucier (Reg. No. 70,205)
`allison.lucier@hklaw.com
`
`ADDITIONAL BACK-UP COUNSEL
`
`Holland & Knight LLP
`10 St. James Avenue, 11th Floor
`Boston, MA 02116
`Additional Email for service: Cradlepoint-IPRService@hklaw.com
`
`
`LEAD COUNSEL
`
`Kourtney Mueller Merrill (Reg. 58,195)
`kmerrill@perkinscoie.com
`
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`
`Counsel for Sierra Wireless, Inc.
`
`FIRST BACKUP COUNSEL
`
`Amanda Tessar (Reg. No. 53,683)
`ATessar@perkinscoie.com
`
`ADDITIONAL BACKUP COUNSEL
`
`David St. John-Larkin (Reg. No. 56,924)
`
`18
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`Case IPR2020-1157
`Patent No. 7,274,933
`Patent Owner’s Motion to Amend
` and Request for Preliminary Guidance
`
`Phone: 303-291-2300
`
`
`DLarkin@perkinscoie.com
`
`Roderick O’Dorisio (Reg. No. 75,363)
`RODorisio@perkinscoie.com
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, Colorado 80202
`Phone: 303-291-2300
`Additional email for service: PerkinsServiceSisvelIPR@perkinscoie.com
`
`
`
`
`
`
`LEAD COUNSEL
`
`Meredith Martin Addy (Reg. 37,883)
`meredith@addyhart.com
`
`Counsel for Thales DIS AIS Deutschland GmbH
`
`FIRST BACKUP COUNSEL
`
`Robert P. Hart (Reg. 35,184)
`robert@addyhart.com
`
`ADDITIONAL BACKUP COUNSEL
`
`Gregory B. Gulliver (Reg. 44,138)
`gbgulliver@addyhart.com
`
`AddyHart P.C.
`401 North Michigan Ave.
`Suite 1200-1
`Chicago, IL 60611
`Phone: 312.834.7701
`
`Additional email for service: Litigation-dkt@addyhart.com
`
`/s/ Timothy Devlin
` Timothy Devlin
`
`
`
`
`
`19
`
`AddyHart P.C.
`10 Glenlake Parkway, Suite 130
`Atlanta, GA 30328
`Phone: 312.320.4200
`
`
`
`
`
`
`
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