UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DELL, INC.,
`ZTE (USA) INC.,
`and
`ZTE CORPORATION,
`Petitioners
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner
`
`Case IPR2020-01157
`Patent No. 7,274,933
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`PATENT OWNER’S RESPONSE
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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
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`1
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`

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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. APPLICABLE LEGAL PRINCIPLES ............................................................ 3
`
`A. Legal Standards ............................................................................................. 3
`
`B.
`
`Person of Ordinary Skill in the Art ............................................................... 7
`
`C. Claim Construction ........................................................................................ 8
`
`1. Home Network .............................................................................................. 8
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`2. Home Network Display Name ...................................................................... 8
`
`III. PETITIONERS FAIL TO DEMONSTRATE THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE .........................................................................10
`
`A. Grounds 1, 2, 3, 4 and 5 Fail Because the Asserted Prior Art Does Not
`Disclose Displaying a User’s Cellular Provider’s Name When Outside a User’s
`Cellular Provider’s Service Area ..........................................................................10
`
`1. McElwain Fails to Disclose Displaying a Home Network Name .............11
`
`2. Uchida Fails to Disclose Displaying a Home Network Name When on a
`Network Apart from that of the User’s Service Provider .................................14
`
`3. Hicks Discloses Display of “Home” or “Roam” ........................................15
`
`B. Grounds 1, 2, 3, 4, and 5 Fail Because the Asserted Prior Art Does Not
`Disclose the Use of Multiple MCC/MNC Pairs as Home Network Identifiers on
`a Home Network Display List to a POSITA ........................................................15
`
`1. The Asserted 3GPP Standards and Hicks Demonstrate That the HPLMN
`List File Did Not Exist in GSM Prior to the ’933 Patent ..................................16
`
`2. McElwain and Uchida do not Disclose Methods a POSITA Would Find
`Applicable to the ’933 Patent’s GSM System ..................................................19
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`C. Secondary Considerations Support a Finding of Non-obviousness ............22
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`1. Long Felt but Unsolved Need .....................................................................22
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`2. Acceptance of Industry ...............................................................................23
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`IV. CONCLUSION ..............................................................................................25
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`i
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`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00442, Paper 9 (PTAB July 13, 2015) ........................................... 5, 6, 7
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .............................................................................. 3
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) ............................................... 4
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) .............................................................................. 5
`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583, Paper 50 (PTAB, Sep. 9, 2015) .................................................. 4
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .............................................................................. 5
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................... 4
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .............................................................................. 3
`In re Depomed, Inc.,
`680 Fed. Appx 947 (Fed. Cir. 2017) ...................................................................... 5
`In re Magnum Oil Tools Int’l.,
`829 F.3d 1364 (Fed. Cir. 2016) ..................................................................... 3, 5, 6
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................................. 7
`In re Omeprazole Patent Litig. v. Apotex Corp.,
`536 F.3d 1361 (Fed. Cir. 2008) .............................................................................. 7
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .............................................................................. 6
`InTouch Techs., Inc. v. VGo Communs., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................................. 7
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 7
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................... 5
`Lectrosonics, Inc. v. Zacsom, Inc.,
`IPR 2018-00129, Paper No. 33 (P.T.A.B. Jan 24, 2020) ....................................... 5
`
`ii
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`

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`Ortho-McNeil Pharm. v. Mylan Labs,
`520 F.3d 1358 (Fed. Cir. 2008) .............................................................................. 7
`P&G v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 7
`Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
`75 F.3d 1568 (Fed. Cir. 1996) ..........................................................................5, 24
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018)............................................................................................ 3
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .............................................................................. 6
`Wasica Finance GmbH v. Continental Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) .............................................................................. 4
`
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 4
`35 U.S.C. § 312(a)(3) ................................................................................................. 3
`
`Regulations
`37 C.F.R. § 42.100 ..................................................................................................... 8
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 4
`37 C.F.R. § 42.65 ....................................................................................................... 4
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`iii
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`
`
`Exhibit
`2001
`2002
`2003
`2004
`2005
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
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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
`
`iv
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`

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`Petitioners Dell, Inc., ZTE (USA) Inc., and ZTE Corporation (collectively,
`
`“Petitioners”) filed a Petition for Inter Partes Review of U.S. Patent No. 7,274,933
`
`(“the ’933 patent”) on June 25, 2020. (IPR2020-01157, Paper No. 1 (“Petition”).)
`
`The Petition was granted by the Board. (Paper No. 12.) Through the undersigned
`
`Counsel, Patent Owner, 3G Licensing S.A. (“3G”), submits the following Patent
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`Owner Response pursuant to 37 C.F.R. § 42.107(a). See also, 37 C.F.R. § 42.120.
`
`I.
`
`INTRODUCTION
`
`Petitioners have failed to show that any of claims 1-4, 6-9, 11-14 or 19 of the
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`’933 patent (“Challenged Claims”) are unpatentable. Specifically, Petitioners have
`
`failed to demonstrate that any of the alleged prior art references disclose (1) the
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`display of the name of a user’s home service provider when operating on another
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`network that will not charge the user a roaming fee, or (2) the use of multiple
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`MCC/MNC1 pairs on an HPLMN list.
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`Instead of disclosing the use of the same home network display name when
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`a user is on their cellular provider’s network or another network with whom their
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`service provider has a contractual relationship, at best, Petitioners’ references
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`disclose the ability for a user equipment (“UE”) to display the same network name
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`for multiple system identifiers (e.g., SID/NID pairs). (Ex. 2005; see also, e.g., Ex.
`
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`1 MCC stands for Mobile Country Code and MNC stands for Mobile Network
`Code. With this information, a GSM system can determine which country and
`specific network is being referred to.
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`1
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`

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`1004 at ¶ 54 Ex. 2001 at ¶¶ 68-69.) None of these references, separately, or
`
`together, would render obvious the ’933 patent’s innovation of using the same
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`home network display name for multiple home network identification pairs. (Ex.
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`2005 at ¶¶ 57-64.)
`
`Petitioners’ references similarly fail to disclose the use of multiple home
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`network MCC/MNC pairs on an HPLMN list. Instead, the TS 23.122, TS 22.101,
`
`and TS 31.102 (collectively, the “3GPP Standards”) references relied upon by
`
`Petitioners fail to contain a single list of home network MCC/MNC pairs on an
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`HPLMN list. (Ex. 2005 at ¶¶ 67-69.) This is unsurprising, as Petitioners’ own
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`Hicks reference remarks that this is one of the issues in the art it needs to address.
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`(Ex. 1006 at 20-21.) Petitioners’ attempt to rely on the CDMA-based references of
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`McElwain and Uchida is also ill-placed, as each of these references’ proposed
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`methods would create substantial compatibility issues in a GSM network that
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`would lead a POSITA to dismiss them outright from consideration. (Ex. 2001 at
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`¶¶ 52, 74; Ex. 2005 at ¶ 76.)
`
`Finally, secondary considerations of nonobviousness further reinforce the
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`inventive aspects of the ’933 patents’ claims. For example, the need for methods
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`to ensure user comfort with whether they would incur roaming charges was known
`
`in the art for a span of at least 13 years. (See, Ex. 2005 at ¶¶ 79-80.) Yet, despite
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`this long felt but unmet need, no obvious solution presented itself during that
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`window—leading to the ’933 patent’s solution. Likewise, the subsequent adoption
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`2
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`of the ’933 patent’s invention into the industry standard demonstrates industry
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`acceptance. The shortcomings of Petitioners’ references, particularly in view of
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`the secondary considerations of long felt but unsolved need and acceptance by the
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`industry, further confirm that Petitioners have failed to meet their burden.
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`II.
`
`APPLICABLE LEGAL PRINCIPLES
`
`A. Legal Standards
`
`The petitioner has the burden to clearly set forth the basis for its challenges
`
`in the petition. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
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`2016) (citing 35 U.S.C. § 312(a)(3) as “requiring IPR petitions to identify ‘with
`
`particularity . . . the evidence that supports the grounds for the challenge to each
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`claim’”). A petitioner may not rely on the Board to substitute its own reasoning to
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`remedy the deficiencies in a petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
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`1355 (2018) (“Congress chose to structure a process in which it’s the petitioner,
`
`not the Director, who gets to define the contours of the proceeding.”); In re
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (rejecting the
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`Board’s reliance on obviousness arguments that “could have been included” in the
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`petition but were not, and holding that the Board may not “raise, address, and
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`decide unpatentability theories never presented by the petitioner and not supported
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`by the record evidence”); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d
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`1359, 1367 (Fed. Cir. 2015) (holding that “a challenge can fail even if different
`
`evidence and arguments might have led to success”); Wasica Finance GmbH v.
`
`3
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`

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`Continental Auto. Sys., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (holding that new
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`arguments in a reply brief are “foreclosed by statute, our precedent, and Board
`
`guidelines”).
`
`To the extent that the petition relies on an expert declaration, it must be more
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`than conclusory and disclose the facts underlying the opinion. See 37 C.F.R.
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`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on
`
`which the opinion is based is entitled to little or no weight.”); Edmund Optics, Inc.
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`v. Semrock, Inc., IPR2014-00583, Paper 50 at 8 (PTAB, Sep. 9, 2015) (affording
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`little or no weight to “experts’ testimony that does little more than repeat, without
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`citation to additional evidence, the conclusory arguments of their respective
`
`counsel.”). Nor may the petition rely on the expert declaration to remedy any gaps
`
`in the petition itself. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated
`
`by reference from one document into another document”); see also Cisco Sys., Inc.
`
`v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9 (PTAB, Aug. 29, 2014)
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`(“This practice of citing the Declaration to support conclusory statements that are
`
`not otherwise supported in the Petition also amounts to incorporation by
`
`reference.”).
`
`To make a prima facie showing of obviousness under 35 U.S.C. § 103, the
`
`Petition must fulfill the requirements set forth in Graham v. John Deere Co., 383
`
`U.S. 1 (1966), including demonstrating that the cited references disclose each
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`element of a challenged claim. In re Magnum Oil Tools Int’l., 829 F.3d 1364,
`
`4
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`

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`1376 (Fed. Cir. 2016); see also Apple Inc. v. Contentguard Holdings, Inc.,
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`IPR2015-00442, Paper 9 at 12-13 (PTAB July 13, 2015).
`
`Among the pertinent Graham factors is the consideration of relevant
`
`secondary considerations, also known as objective indicia of nonobviousness.
`
`In re Depomed, Inc., 680 Fed. Appx 947 at *951 (Fed. Cir. 2017); KSR Int’l Co. v.
`
`Teleflex, Inc., 550 U.S. 398, 406 (2007). Relevant secondary considerations
`
`include, inter alia, long felt but unmet need, the failure of others, acceptance by the
`
`industry, and unexpected results. In re Depomed, Inc., 680 Fed. Appx at *951;
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`Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir.
`
`1996).
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`Objective indicia of nonobviousness are accorded substantial weight when
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`the proponent establishes a nexus between the evidence and the merits of the
`
`invention. Lectrosonics, Inc. v. Zacsom, Inc., IPR 2018-00129, Paper No. 33 at 32
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`(P.T.A.B. Jan 24, 2020) (Precedential) (citing ClassCo, Inc. v. Apple, Inc.,
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`838 F.3d 1214, 1220 (Fed. Cir. 2016)). A patent owner may prove such a nexus by
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`showing that the evidence of secondary considerations is the direct result of the
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`unique characteristics of the claimed invention. Id. at 33 (quoting Fox Factory,
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`Inc. v. SRAM, LLC, 944 F.3d 1366, 1373-74 (Fed. Cir. 2019)). A patent owner
`
`may show, for example, that the claimed combination as a whole serves as a nexus
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`for the objective evidence; proof of nexus is not limited to circumstances where the
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`objective evidence is tied to the “new” features.” Id. at 33. The fact finder must
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`5
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`weigh evidence of secondary considerations in the context of whether the claimed
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`invention as a whole would have been obvious to a person of ordinary skill in the
`
`art at the time of invention. Id. at 33.
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`Petitioners also have the burden to show there would have been some
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`motivation to combine the asserted prior art, and that the proposed combinations
`
`would render the patented claims obvious. “Obviousness requires more than a
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`mere showing that the prior art includes separate references covering each separate
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`limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc.,
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`655 F.3d 1352, 1360 (Fed. Cir. 2011) (internal citation omitted); see also In re
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`Magnum Oil Tools Int’l., 829 F.3d at 1376. Even if individual modifications or
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`choices were obvious, a petition must explain why making all of the changes at
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`once would be obvious. Apple Inc. v. Contentguard, Paper 9 at 16-17 (“[T]he
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`mere fact that individual changes might have been obvious does not make doing all
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`of the changes at once obvious.”).
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`The Federal Circuit has found that, even for an obviousness challenge based
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`on a single reference in view of the knowledge and of a person of ordinary skill in
`
`the art, there must be a motivation to make the combination and a reasonable
`
`expectation that such a combination would be successful, otherwise a skilled
`
`artisan would not arrive at the claimed combination. In re Stepan Co., 868 F.3d
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`1342, 1345-46 (Fed. Cir. 2017). In other words, when a gap in a single prior art
`
`reference requires filling with, for example, the knowledge of one of ordinary skill,
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`6
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`there must be a further showing that the skilled artisan would have arrived at the
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`claimed invention.
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`The lack of a technological obstacle to combining references, in and of
`
`itself, does not justify a finding of obviousness. See In re Omeprazole Patent Litig.
`
`v. Apotex Corp., 536 F.3d 1361, 1380-81 (Fed. Cir. 2008). A reason for combining
`
`disparate prior art references is critical and should be made explicit. InTouch
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`Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (internal
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`citation omitted).
`
`Hindsight analysis is inappropriate. Obviousness must be measured “at the
`
`time the invention was made.” Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d
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`1358, 1364 (Fed. Cir. 2008) (emphasis in original). A petition must demonstrate a
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`rationale to combine prior art references without relying on the patent disclosure
`
`itself. Apple Inc. v. Contentguard, Paper 9 at 15, 17; see also P&G v. Teva
`
`Pharms. USA, Inc., 566 F.3d 989, 995 (Fed. Cir. 2009). In other words, the
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`petitioner must not use the patent as a roadmap. In re NTP, Inc., 654 F.3d 1279,
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`1299 (Fed. Cir. 2011) (internal citation omitted); see also KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 421 (2007).
`
`B.
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`Person of Ordinary Skill in the Art
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`The Board preliminarily adopted Petitioners’ proposed level of skill in the
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`art. (Paper. No. 12 at 14.) Petitioners assert that a person of ordinary skill in the
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`art (“POSITA”) at the time of invention would have had “a degree in electrical
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`7
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`engineering or a similar discipline, with at least three years of relevant industry or
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`research experience (or additional education).” (Petition at 10.)
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`C. Claim Construction
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`In an inter partes review proceeding, “a claim of a patent . . . 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, 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.” 37 C.F.R. § 42.100(b).
`
`1. Home Network
`
`The Board noted that the parties appear to agree that the term “home
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`network,” as used in the ’933 patent, includes networks operated by a user’s
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`cellular provider, networks acquired by that provider, and networks with whom the
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`user’s provider has a contractual relationship that would obviate roaming charges.
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`Patent Owner does not dispute the Board’s understanding of this term.
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`2. Home Network Display Name
`
`The Board has preliminarily construed the term “home network display
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`name” to mean “a name string used for the mobile station’s display for all home-
`
`related networks.” (Paper No. 12 at 12.) The Board further noted that “this name
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`string may, but need not, include the name of the network provider.” (Id. at 12.)
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`8
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`Patent Owner respectfully disagrees with the Board’s preliminary
`
`construction. The Board derived its construction citing to two sections of the ’933
`
`patent’s specification, both of which state that the home network display name is
`
`“the name string used for mobile station’s display for all home-related networks.”
`
`(Paper No. 12 at 12) (citing Ex. 1001 at 12:57-59; 13:36-39.) The Board included
`
`the parenthetical examples provided at both of those citations to show what is to be
`
`displayed as a home network display name, but overlooks the significance of these
`
`examples.
`
`Specifically, the Board opined that the references to “(e.g., ‘T-Mobile’ or
`
`‘AT&T Wireless’)” indicate that the home network display name may include, but
`
`is not limited to, the name of the carrier. (Paper No. 12 at 12.) While the inclusion
`
`of “e.g.” here suggests that the list is broader than just “T-Mobile” and “AT&T
`
`Wireless,” there is no teaching in the specification that the “e.g.” is intended to
`
`mean anything other than another actual wireless service provider of a user. In
`
`contrast, the natural understanding of a POSITA was that the “e.g.” is intended to
`
`include the actual names of such providers. (Ex. 2005 at ¶ 53.)
`
`The Board’s interpretation overlooks the significance of the patentee’s
`
`decision to list only the names of two network providers as examples. Had the
`
`patentee intended words like “Home,” “Cousin,” or “Favored” to be considered
`
`home network display names within the scope of that term, the Patentee would
`
`naturally have included at least one such example other than the name of an
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`9
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`service provider, to convey the breadth of what the term covers. (Ex. 2005 at ¶
`
`55.) But the patentee only included names of actual network providers, indicating
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`that anything other than a network provider name is not a home network display
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`name. (See, Ex. 2005 at ¶¶ 53-55.)
`
`Moreover, relying on the same examples, the specification only discusses
`
`displaying service provider names:
`
`After selecting and registering with a particular network (e.g. the
`home networks), the mobile station retrieves and displays a service
`provider name (e.g., “T-Mobile” or “AT&T Wireless”)2 from the
`SIM which corresponds to the unique MCC and MNC combination of
`the selected network.
`
`(Ex. 1001 at 1:46-50.) The patentee’s choice of the names of two network service
`
`provider names is no accident; the patentee intended a home network display name
`
`to be the name of an actual wireless service provider—specifically, a user’s service
`
`provider.
`
`III. PETITIONERS FAIL TO DEMONSTRATE THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A. Grounds 1, 2, 3, 4 and 5 Fail Because the Asserted Prior Art Does
`Not Disclose Displaying a User’s Cellular Provider’s Name When
`Outside a User’s Cellular Provider’s Service Area
`
`Neither McElwain, Uchida, nor Hicks disclose displaying a home network
`
`display name when outside the service area of a user’s cellular provider, let alone
`
`in the same way as taught by the ’933 patent. The absence of this limitation
`
`throughout the references relied on by Petitioners confirms that the ’933 patent is
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`2 Unless otherwise noted, all emphasis in this brief has been added.
`10
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`not rendered obvious by those references, either individually or in any
`
`combination.
`
`1. McElwain Fails to Disclose Displaying a Home Network
`Name
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`As the Board recognized, McElwain does not disclose that the displayed
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`“home” indicator is an actual network name—let alone the name of a user’s
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`cellular provider. (Paper No. 12 at 35.) Rather, McElwain chooses to have the
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`user equipment (“UE”) display an indication of the relationship between the user’s
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`cellular provider and the network to which it is currently connected:
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`Further in accordance with these teachings the mobile station 10 may
`provide a visual or other display to inform the user of the current
`service provider status. This can be done by displaying an alphatag,
`as shown by the following pseudo-code:
`
`
`
`(Ex. 1004 at ¶ 54.) In the event that a user is on a network that has a contractual
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`relationship with the user’s service provider wherein no roaming charges are
`
`assessed, McElwain teaches the use of designations other than the home network
`
`display name which has the potential to confuse the user, such as “Cousin,”
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`“Partner,” “Favored,” and “Neutral.” In contrast, the ’933 patent simply displays
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`the name of the user’s service provider. (Ex. 1001 at claim 1; Ex. 1004 at ¶ 54.)
`
`11
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`

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`Nowhere in McElwain does the reference discuss displaying network names of any
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`kind. (Ex. 2001 at ¶ 65.)
`
`
`
`Further, it would not have been obvious to a POSITA that McElwain
`
`discloses displaying the user’s service provider name when on another network as
`
`Petitioners argue. The Board observed that a UE displaying the name of a user’s
`
`service provider was generally known in the art at the time of invention (Paper No.
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`12 at 35), but overlooked what is missing in the prior art—and from McElwain in
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`particular—the inclusion of networks owned by other service providers as “home”
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`networks. (Ex. 2005 at ¶ 59.)
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`
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`As Patent Owner explained in its Preliminary Response, the ’933 patent
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`expands the definition of “home network” to include not only the network owned
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`and operated by the user’s own cellular provider, but also includes networks where
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`there is a contractual agreement not to charge the user roaming charges. (Paper
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`No. 8 at 16) (citing Ex. 1001 at 2:1-19; Ex. 2001 at ¶ 41.) McElwain does not
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`disclose how to assign its alphatags beyond the implied, vague relational
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`distinctions between the examples provided in paragraph 54. (Ex. 2005 at ¶ 60; see
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`also, Ex. 1004 at ¶ 54; Ex. 2001 at ¶ 65.)
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`McElwain directs a POSITA to address the problem of user confusion
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`regarding roaming charges in a different manner than the ‘933 patent, namely by
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`displaying relational information, such as “Cousin,” “Partner,” “Favored,” or
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`“Neutral” rather than the home network name as disclosed in the ’933 patent. (Ex.
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`12
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`1004 at ¶ 54; Ex. 2005 at ¶¶ 59-60.) Even if a POSITA were to make the leap to
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`display a service provider’s name, nowhere in McElwain does it disclose the ’933
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`patent’s innovation of treating those additional networks with whom there is a
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`contractual relationship as “home” networks on a user’s display. (See, Ex. 2005 at
`
`¶ 59.)
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`Petitioners assert that McElwain is capable of using the same home network
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`display name for multiple home networks, including those with which the user’s
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`service provider has a contractual relationship. (Paper No. 10 at 3.) This is not so.
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`McElwain does not suggest displaying the name of the user’s cellular provider’s
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`network when outside of that network. On the matter of home network display
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`names, McElwain uses words such as relational words such as “Cousin,”
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`“Partner,” or, in some ill-defined cases where a network is a
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`“ROAMING_SEMI_NON_HOME_TYPE,” as “Favored.” (Ex. 1004 at ¶ 54.)
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`The ’933 patent ensures that there is no difference in the home network
`
`display name displayed on the UE, regardless of whether the user is on their
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`service provider’s network, or a network with whom they have a contractual
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`relationship. (See, Ex. 1001 at 2:1-19.) On the contrary, McElwain highlights
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`these differences between the relations of networks. (Ex. 1004 at ¶ 54.) Under
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`McElwain, a user is to parse relational terms such as “Cousin,” and make a
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`determination if the user is roaming by having connected to a network that is not
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`that of their service provider—even if, perhaps, a contractual relationship does
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`13
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`exist. (See, Ex. 1004 at ¶ 54.) This differs from the ’933 patent, which disregards
`
`the issue of whether the network the user is attached to is part of the user’s service
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`provider’s network, and displays the user’s service provider’s name when the user
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`is connected to a network that will not charge them roaming charges for use. (See,
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`Ex. 1001 at 2:1-19.)
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`2.
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`Uchida Fails to Disclose Displaying a Home Network Name
`When on a Network Apart from that of the User’s Service
`Provider
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`Uchida does not disclose identifying “home” networks as that term is used in
`
`the ’933 patent. Uchida’s definition of what constitutes a home network is
`
`different from what the ’933 patent teaches; specifically, it is limited to geographic
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`branches of the same cellular network that the user is actually contracted with.
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`(Ex. 1005 at ¶ 5; Ex. 2001 at ¶ 68.) In Uchida the UE determines whether a user is
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`on a particular branch of their cellular provider’s network and displays the name of
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`that network only when on their cellular provider’s network. (Ex. 2001 at ¶¶ 68-
`
`69.) Uchida discloses the use of a Home SID/NID list to determine when it is on a
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`branch of the actual home network, and only then displays that service provider’s
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`name. (Petition at 14; Ex. 1005 at ¶¶ 38-40, Figs. 3A-3C.)
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`In contrast, the ’933 patent displays the name of a user’s service provider
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`when on any network that will not charge the user for roaming, even when the
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`network is that of a completely different service provider. (Ex. 1001 at 2:1-22,
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`14:6-14; Ex. 2001 at ¶¶ 39-41.)
`
`14
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`

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`3. Hicks Discloses Display of “Home” or “Roam”
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`The Board observed that Hicks may display a home network display name
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`when outside a user’s cellular provider’s service area. (Paper No. 12 at 46-47.)
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`However, as the Board also noted, the particular file used by Hicks simply denotes
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`“Home” or “Roam” for display, and does not display the name of a user’s service
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`provider. (Id. at 47; Ex. 1006 at Fig. 3.) There is also no disclosure of relying on
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`consumer charges, or the absence thereof, to display the actual user home network
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`name, as claimed in the ‘933 patent. (Ex. 2005 at ¶ 62.) Without the use of
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`hindsight a POSITA would not have considered the use of the PNN file to display
`
`a home network display name obvious, since the short examples of only “HOME”
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`or “ROAM” might suggest the PNN file does not have the capability for longer
`
`more descriptive service provider actual names. (Ex. 2005 at ¶ 63.)
`
`B. Grounds 1, 2, 3, 4, and 5 Fail Because the Asserted Prior Art Does
`Not Disclose the Use of Multiple MCC/MNC Pairs as Home Network
`Identifiers on a Home Network Display List to a POSITA
`
`The ’933 patent relies on a new file capable of listing multiple MCC/MNC
`
`pairs to identify other networks with contractual relationships as home networks.
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`(Ex. 2005 at ¶ 65.) This new file stored on a subscriber identification module
`
`(“SIM”) card or in the UE’s memory in a way that does not compromise
`
`compatibility between previous, current, and future versions of UE and SIMs. (Ex.
`
`1001 at 14:48-49.) Such a file was unknown in the prior art and not obvious in
`
`15
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`view of the disclosures of the prior art references advanced by the petitioner. (Ex.
`
`2005 at ¶ 65.)
`
`The ’933 patent refers to this new file as an HPLMN list. (Ex. 2005 at ¶ 66;
`
`see, Ex. 1001 at claim 1, 5:34-36, 13:30-63.) The claims of the ’933 patent teach
`
`using a plurality of MCC/MNC pairs in this new file to indicate multiple home
`
`networks. None of the cited prior art discloses this type of file. (Ex. 2005 at ¶
`
`66.) Furthermore Petitioners’ assertion the 3GPP Standards made it obvious that
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`the legacy “HPLMN Selector with Access Technology” file would become such a
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`file is not correct, as this legacy file remains unchanged to this day. (Ex. 2005 at ¶
`
`66; see, Ex. 2006 at 13-14; Ex. 20