`
`
`Declaration of Dr. Kakaes
`
`
`
`
`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 No. IPR2021-01157
`
`U.S. Patent No. 7,274,933
`
`
`
`DECLARATION OF DR. APOSTOLOS K. KAKAES IN SUPPORT OF
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dell Inc., Ex. 1029
`
`

`

`Page
`INTRODUCTION AND QUALIFICATIONS ............................................... 1
`I.
`II. MATERIALS CONSIDERED ........................................................................ 2
`III. OVERVIEW OF CONCLUSIONS ................................................................. 3
`IV. SUMMARY OF THE PROPOSED AMENDMENTS ................................... 4
`V. ANALYSIS OF PROPOSED AMENDMENTS ............................................ 6
`A.
`The Proposed Substitute Claims Lack Written Description ................. 7
`1.
`The “Or Neither” Element Is Not Supported in the
`Specification ................................................................................ 9
`The “Only If” Element Is Not Supported in the
`Specification ..............................................................................11
`The “Test” Element ...................................................................13
`3.
`The Proposed Substitute Claims Are Indefinite ..................................15
`The Proposed Substitute Claims Broaden the Scope of the ’933
`Patent ...................................................................................................18
`The Proposed Amended Claims Would Have Been Obvious
`Based on the Grounds Discussed in My Prior Declaration .................21
`1.
`Elements 20[b] and 21[a] Are Obvious in Light of
`McElwain ..................................................................................22
`Elements 20[c] and 21[c] Are Obvious in Light of
`McElwain ..................................................................................24
`Elements 20[a] and 21[b] Are Obvious in Light of
`McElwain ..................................................................................25
`VI. ADDITIONAL REMARKS ..........................................................................28
`APPENDIX A: TEXT OF PROPOSED SUBSTITUTE CLAIMS.........................29
`
`
`
`B.
`C.
`
`
`
`TABLE OF CONTENTS
`
`i
`
`D.
`
`2.
`
`2.
`
`3.
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`TABLE OF APPENDICES
`
`
`Exhibit
`1001
`1002
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`Description
`Document
`Appendix A Text of Proposed Substitute Claims
`
`
`TABLE OF EXHIBITS
`
`Description
`U.S. Patent No. 7,274,933 (“the ’933 patent”)
`Copy of Prosecution History of the ’933 patent
`U.S. Patent Appl. Publ. No. 2003/0022689 (“McElwain”)
`U.S. Patent Appl. Publ. No. 2004/0204136 (“Uchida”)
`U.S. Patent No. 7,027,813 (“Hicks”)
`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) (“TS-23.122”)
`3rd Generation Partnership Project; Technical Specification Group
`Services and System Aspects – Service aspects; Service principles
`(Release 5) (3GPP TS 22.101 V5.8.0) (“TS-22.101”)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals; Characteristics of the USIM Application (Release 5)
`(3GPP TS 31.102 V5.3.0) (“TS-31.102”)
`Declaration of Craig Bishop
`Complaint for Patent Infringement, No. 1:19-cv-01247-LPS (D. Del.
`July 1, 2019)
`Complaint for Patent Infringement, No. 3:19-cv-01694 (N.D. Tex.
`July 15, 2019)
`Complaint for Patent Infringement, No. 1:19-cv-01140-MN (D. Del.
`June 20, 2019)
`Complaint for Patent Infringement, No. 1:19-cv-01144-MN (D. Del.
`June 20, 2019)
`Amended Complaint for Patent Infringement, No. 1:20-cv-20813
`(S.D. Fl. Feb. 25, 2020)
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`ii
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`
`
`
`Exhibit
`1016
`1017
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1030
`
`Description
`EIA/TIA-553 Standard (AMPS)
`Excerpts from EIA/TIA/IS-54 Standard (Digital AMPS)
`Excerpts from TIA/EIA/136.1 Standard
`Excerpts from TIA/EIA/IS-136.2-A Standard
`Excerpts from TIA/EIA/IS-95 Standard
`Excerpts from T. Halonen et al., “GSM, GPRS and EDGE
`Performance: Evolution Towards 3G/UMTS” (2d ed. Wiley 2003)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals Specification of the Subscriber Identity Module – Mobile
`Equipment (SIM - ME) interface (Release 1999) (3GPP TS 11.11
`V8.6.0) (“TS-11.11”)
`Excerpts from A. Mehrotra, “GSM System Engineering”
`(Artech House 1997)
`U.S. Patent No. 5,950,130 (“the ’130 patent”)
`U.S. Patent No. 5,862,471 (“the ’471 patent”)
`U.S. Patent No. 6,195,532 (“Bamburak”)
`U.S. Patent Appl. Publ. No. 2001/0001875 (“Hirsch”)
`U.S. Patent Appl. Publ. No. 2002/0111180 (“Hogan”)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals; Test Specification for ‘C’-language binding to (U)SIM
`API (Release 6) (3GPP TS 34.131 V6.0.0) (“TS-34.131”)
`
`iii
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`I, Dr. Apostolos K. “Paul” Kakaes, hereby declare as follows:
`
`INTRODUCTION AND QUALIFICATIONS
`I.
`I understand that the Patent Trial and Appeal Board (“PTAB” or
`
`1.
`
`“Board”) has instituted an inter partes review (“IPR”) of U.S. Patent No. 7,274,933
`
`(“the ’933 patent”) (Ex. 1001) and that the Patent Owner, 3G Licensing S.A., has
`
`filed a motion to amend claims 2 and 3 of the ’933 patent. I have been asked to offer
`
`opinions regarding the patentability of the proposed substitute claims 20‒21.
`
`2.
`
`I am not, and never have been, an employee of any of the Petitioners in
`
`this IPR. I received no compensation for this Declaration beyond my normal hourly
`
`compensation based on my time actually spent on the assignment described above,
`
`and I will not receive any added compensation based on the outcome of any IPR or
`
`other proceeding involving the ’933 patent.
`
`3. My qualifications and experience to provide the opinions in this
`
`Declaration were previously provided in the first declaration I prepared in support
`
`of the Petition in this IPR, and are incorporated by reference here.
`
`4. My understandings of the legal principles as outlined in the first
`
`declaration that I prepared in support of the Petition in this IPR have not changed,
`
`and are incorporated by reference here.
`
`5. My identification of the relevant field of art and the definition of a
`
`POSITA in that field were set forth in my first declaration, and are incorporated by
`
`1
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`reference here. My analysis of the proposed substitute claims in this Declaration use
`
`that same definition of a POSITA. I have reviewed the proposed definition of a
`
`POSITA set forth by Patent Owner (in its Patent Owner Response) and by Mr. Stuart
`
`Lipoff (in the Declaration of Stuart Lipoff in Support of Patent Owner), and my
`
`opinions herein would not change applying the definition of a POSITA proposed by
`
`Patent Owner and Mr. Lipoff.
`
`6.
`
` My analysis in this Declaration is also based on my understanding of
`
`the state of the art that would have been known to a POSITA around September 2003,
`
`as set forth in my prior declaration, which are herein incorporated by reference.
`
`II. MATERIALS CONSIDERED
`I have considered information from various sources in forming my
`
`7.
`
`opinions. I have drawn on my decades of experience in this field. I have employed
`
`methods and analyses of a type reasonably relied upon by experts in my field in
`
`forming opinions or inferences on the subject. Additionally, in preparing this
`
`Declaration, I have relied upon the exhibits listed at the beginning of this Declaration
`
`and any documents and other information cited in this Declaration. I have also
`
`reviewed Patent Owner’s Preliminary Response (and all exhibits thereto) and Patent
`
`Owner’s Motion to Amend (and all exhibits thereto), including both declarations
`
`provided by Mr. Lipoff.
`
`2
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`III. OVERVIEW OF CONCLUSIONS
`It is my opinion that the proposed substitute claims are unpatentable for
`
`8.
`
`the following several reasons.
`
`9.
`
`First, the proposed substitute claims are not supported by written
`
`description in the patent. Both proposed claims introduce two new elements to the
`
`claims: (i) that the HPLMN list may be stored in “neither” the SIM or mobile station
`
`memory, and (ii) that the steps of claim 1 are performed “only if” the HPLMN list is
`
`found in the SIM or memory. See Mot. to Amend at 16. The patent specification
`
`does not convey or suggest these limitations at all.
`
`10. Second, the proposed claims are indefinite because they are inherently
`
`self-contradictory. Both proposed substitute claims depend from independent claim
`
`1, which recites a method where an HPLMN list is either in the SIM or memory—
`
`never neither—and where the steps of claim 1 are always performed—not dependent
`
`on any condition. The two new claim elements noted above (“neither” and “only
`
`if”) both contradict claim elements that are already present through dependence on
`
`claim 1. A POSITA would not know how to resolve these contradictions, and
`
`therefore would not be able to discern the scope of the amended claims.
`
`11. Third, the amendments broaden the scope of the ’933 patent. Even if
`
`the proposed amended claims are not indefinite, they claim embodiments that would
`
`not have infringed the original patent. The original patent did not claim any methods
`
`3
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`where the HPLMN list was in “neither” the SIM or memory; only methods where
`
`the list was necessarily in one or the other. Additionally, the original patent did not
`
`claim any methods where the steps of claim 1 were not performed, or were only
`
`performed under certain conditions; only methods where they were always
`
`performed. The amendments therefore broaden the claims of the ’933 patent in at
`
`least these two aspects.
`
`12. Finally, the proposed substitute claims are obvious over the same prior
`
`art grounds I discuss in my prior declaration. Specifically, the concept of testing for
`
`whether a data structure (like an HPLMN list) is present and only performing steps
`
`requiring that data structure if it is present would have been obvious to a POSITA.
`
`IV. SUMMARY OF THE PROPOSED AMENDMENTS
`13. The two proposed substitute claims depend from independent claim 1,
`
`the text of which is set forth below:
`
`Claim 1
`A network name displaying method in a mobile station, the method
`comprising:
`scanning to receive a plurality of Mobile Country Code (MCC) and
`Mobile Network Code (MNC) pairs corresponding to a plurality of
`wireless communication networks within a coverage area;
`selecting and registering with a wireless communication network
`associated with one of the received MCC and MNC pairs, giving a
`preference to home networks of a Home Public Land Mobile
`Network (HPLMN) list over non-home networks of a Preferred
`PLMN (PPLMN) list;
`
`4
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`comparing the MCC and MNC pair of the selected network with a
`plurality of home network MCC and MNC pairs corresponding to
`the home networks of the HPLMN list;
`for the step of comparing: using a plurality of home network MCC
`and MNC pairs from the HPLMN list stored on a Subscriber Identify
`Module (SIM) in the comparing step based on identifying that the
`plurality of home network MCC and MNC pairs are stored on the
`SIM, and otherwise using a plurality of home network MCC and
`MNC pairs stored in memory of the mobile station in the comparing
`step;
`causing a home network display name which is the same for all of
`the home network MCC and MNC pairs to be visually displayed in
`a visual display of the mobile station based on identifying a match
`between the MCC and MNC pair of the selected network and one of
`the home network MCC and MNC pairs; and
`otherwise causing an alternate display name to be visually displayed
`in the visual display based on identifying no match between the
`MCC and MNC pair of the selected network and the home network
`MCC and MNC pairs.
`14. The text of the two proposed substitute claims is set forth below:
`
`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, 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.
`
`5
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`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
`implementing the method of claim 1 only if the HPLMN list is
`contained on the mobile station’s SIM or in its memory.
`15. The Patent Owner in its Motion to Amend summarized the proposed
`
`substitute claims as adding three new limitations, as follows:
`
`(1) the requirement that the mobile station runs a test to determine
`whether the HPLMN list, containing a plurality of home network MCC
`and MNC pairs, is stored in the Subscriber Identity Module (“SIM”), in
`the mobile station’s memory, or neither, (2) the condition that method
`of claim 1 is implemented if the HPLMN list is contained on the mobile
`station’s SIM or in its memory; and the additional requirement that
`(3) the aforementioned test is performed at explicitly noted times.
`
`16. Throughout this Declaration I will refer to the first added limitation as
`
`the “or neither” limitation, the second added limitation as the “only if” limitation,
`
`and the third added limitation as the “test timing” limitation.
`
`V. ANALYSIS OF PROPOSED AMENDMENTS
`It is my opinion that the proposed substitute claims are invalid on
`
`17.
`
`several bases. Below is a detailed analysis of the proposed substitute claims and
`
`these bases of invalidity.
`
`6
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`A. The Proposed Substitute Claims Lack Written Description
`It is my opinion that the proposed amendments do not have written
`18.
`
`description support in the ’933 patent. Specifically, each of the proposed amended
`
`claims introduces three new claim elements that the patent fails to reasonably convey
`
`to a POSITA: (i) that the HPLMN list may be present in “neither” the SIM or
`
`memory; (ii) that the steps of claim 1 are performed “only if” the HPLMN list is in
`
`the SIM or memory; and (iii) that a test is run to determine whether the HPLMN list
`
`is stored in the memory of the mobile station, in the SIM, or neither. Mot. to Amend
`
`at 16.
`
`19.
`
`I understand that the written description requirement is satisfied if a
`
`POSITA reading the original patent application would have recognized that the
`
`inventor(s) actually possessed by the filing date of the original application the full
`
`scope of the claimed invention as it is claimed. I understand that in deciding whether
`
`a claim satisfies the written description requirement, the description is considered
`
`from the viewpoint of a POSITA when the original application was filed. I have
`
`been informed that a disclosure in an application that merely renders the later-
`
`claimed invention obvious is not sufficient to meet the written description
`
`requirement; the disclosure must describe the claimed invention with all its
`
`limitations. An application must describe the invention in sufficient detail that a
`
`POSITA can conclude that the inventor invented the claimed invention.
`
`7
`
`Dell Inc., Ex. 1029
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`

`

`
`
`20.
`
`In its Motion to Amend, Patent Owner points to a total of seven
`
`sentences in the U.S. and European applications that Patent Owner submits provide
`
`support for the new claim elements. As discussed below, neither these excerpts nor
`
`anything else in the specification of the ’933 patent provides support for the
`
`proposed substitute claims. As a convenience, I have reproduced here the totality of
`
`the written description that Patent Owner contends supports that proposed substitute
`
`claims:
`
`• “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.” U.S. Appl. (Ex. 1002) at 25; European
`Appl. (Ex. 1002) at 116.
`
`• “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.” U.S. Appl.
`(Ex. 1002) at 25; European Appl. (Ex. 1002) at 116.
`
`• “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.” U.S. Appl. (Ex. 1002) at 25; European Appl. (Ex. 1002) at 116.
`
`• “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.”
`U.S. Appl. (Ex. 1002) at 25; European Appl. (Ex. 1002) at 116.
`
`• “The method of claim 1, further comprising: identifying whether the plurality
`of home network MCC and MNC pairs are stored on a Subscriber Identity
`Module (SIM); using the plurality of home network MCC and MNC pairs
`stored on the SIM based on identifying that the plurality of home network
`MCC and MNC pairs are stored on the SIM; and otherwise, using the plurality
`
`8
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`of home network MCC and MNC pairs stored in memory of the mobile
`station.” U.S. Appl. (Ex. 1002) at 29 (claim 7).
`
`• “The mobile station of claim 8, wherein the process is further operative to:
`identify whether the plurality of home network MCC and MNC pairs are
`stored on a Subscriber Identity Module (SIM); use the plurality of home
`network MCC and MNC pairs stored on the SIM based on identifying that the
`plurality of home network MCC and MNC pairs are stored on the SIM; and
`otherwise, use the plurality of home network MCC and MNC pairs stored in
`memory of the mobile station.” U.S. Appl. (Ex. 1002) at 29 (claim 14).
`
`• “Visually displaying the (same) service provider name for these networks is
`suitably performed based on the present techniques.” U.S. Appl. (Ex. 1002)
`at 25; European Appl. (Ex. 1002) at 116.
`The “Or Neither” Element Is Not Supported in the Specification
`1.
`21. The ’933 patent specification clearly, repeatedly, and consistently
`
`teaches that, in the patented method, the HPLMN list is necessarily present in either
`
`the SIM or memory of the mobile station. The specification uses different phrasing
`
`in different sections, but always indicates that the HPLMN list must either be in the
`
`SIM or the mobile station’s memory—if it is not in one location, it is in the other; it
`
`is nowhere described or suggested that it is in neither. See, e.g., Ex. 1001 at 2:60‒
`
`62 (“The plurality of home network MCC and MNC pairs may be stored in memory
`
`of the mobile station or, alternatively, on a Subscriber Identify Module (SIM).”);
`
`3:46‒49 (same); 12:41‒13:20 (“[M]emory 502 may store a list 510 of home network
`
`MCC/MNC pairs . . . . In an alternative embodiment, the SIM 262 . . . may include
`
`the same or similar information.”); 13:60‒63 (“The[] multiple MCC/MNC pairs may
`
`be stored in a Home Public Land Mobile Network (HPLMN) list on a Subscriber
`
`9
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`Identity Module (SIM). Alternatively, the multiple MCC/MNC pairs may be stored
`
`in memory of the mobile station.”); 15:1‒3 (“The plurality of home network MCC
`
`and MNC pairs may be stored in memory of the mobile station or, alternatively on a
`
`Subscriber Identify Module (S[I]M).”). This language not only fails to convey that
`
`the HPLMN list may be in “neither” the SIM or memory—it excludes that
`
`possibility. The patent clearly conveys to a POSITA that the inventor contemplated
`
`that the list must be in the mobile station’s memory or the SIM, and may not be in
`
`neither location.
`
`22. Even the language that Patent Owners point to as support for their
`
`amendments unambiguously convey this same message: that the HPLMN list must
`
`necessarily be in either the SIM or memory, and the invention excludes any
`
`circumstance where it is absent from both. See, e.g., 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.”)
`
`(emphasis added); id. (“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.”). Claims 7 and 14 of the original application similarly require
`
`a using MCC/MNC pairs “stored on the SIM” and “otherwise, using the plurality of
`
`10
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`home network MCC and MNC pairs stored in the memory of the mobile station.”
`
`Id. at 29 (emphasis added).
`
`23.
`
`Indeed, the specification assumes that an HPLMN list is available to be
`
`used. That is, the allegedly inventive method requires an HPLMN list to be
`
`accessible, whatever its location. See, e.g., Ex. 1001 at 2:51‒55 (“After the network
`
`is selected, the received MCC and MNC pair is compared with a plurality of home
`
`network MCC and MNC pairs which are associated with a single home network
`
`display name.”); 3:38–41 (same); 14:60‒63 (same). This is completely at odds with
`
`the proposed amendment permitting the HPLMN list to be stored in “neither” the
`
`SIM or memory. Such a possibility is not disclosed or conveyed by the patent at all
`
`and, once again, is actually precluded by the specification.
`
`The “Only If” Element Is Not Supported in the Specification
`2.
`24. The added limitation that the steps of claim 1 are implemented “only
`
`if” the HPLMN list is determined to be located in the SIM or memory is not
`
`supported in the specification. The patent fails to convey this limitation because it
`
`unambiguously teaches to the contrary, that the method of claim 1 is performed
`
`mandatorily, without regard to any preceding test or condition.
`
`25. The specification as a whole describes a method comprising a series of
`
`mandatory steps. The mobile station scans for networks in its coverage area with
`
`associated MCC/MNC code pairs, selects and registers with one such network,
`
`11
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`compares the MCC/MNC code pair of the registered network with a list of multiple
`
`MCC/MNC pairs representing “home” networks (i.e., an “HPLMN list”), and
`
`displays a network name depending on whether the registered network is a matching
`
`“home” network or not. See, e.g., Ex. 1001 at 2:44‒67.
`
`26. There are only two conditional branch points in this method. First, in
`
`selecting a network to register with, the mobile station determines if the selected
`
`network is a “home” network and preferentially registers with it if so. See id. at
`
`13:57‒14:2. And, second, in determining what network name to display, the mobile
`
`network compares the MCC/MNC code pair of the registered network with the list
`
`of “home” network code pairs, and displays a different name depending on whether
`
`it matches a code pair on the list. See id. at 14:6‒21.
`
`27. None of the other steps are conditional or optional. In every
`
`embodiment, the method must scan for networks, select and register with a network,
`
`compare that network’s MCC/MNC code pairs to a “home” list, and display a
`
`network name. In particular, the patent clearly conveys that there is no option not to
`
`perform the comparing step using a home network list of MCC/MNC pairs. See Ex.
`
`1001 at 14:6‒9 (“Next, the mobile station compares the received MCC and MNC
`
`pair [of the registered network] with each one of the multiple home network
`
`MCC/MNC pairs (step 716).”).
`
`12
`
`Dell Inc., Ex. 1029
`
`

`

`
`
`28. Thus, there is no disclosure whatsoever to support a limitation where
`
`the steps of claim 1 are conditional, or not performed in some instances. Rather, the
`
`patent conveys to a POSITA that the steps of claim 1 as a whole must be performed
`
`in every embodiment of the alleged invention.
`
`29.
`
`In the proposed substitute claims, due to the “only if” element, the steps
`
`of claim 1 may not be implemented, including the final “displaying” step. Such an
`
`embodiment contradicts the entire purpose of the invention, which is directed to
`
`“name displaying methods.” See, e.g., Ex. 1001 at Title (“Name Displaying
`
`Methods”); Abstract (“Home network name displaying methods … are disclosed.”);
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`id. at 2:42 (“Home network name displaying methods … are described herein.”).
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`Plainly, a method where the step of displaying a network name is not implemented
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`is not conveyed by the ’933 patent.
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`The “Test” Element
`3.
`30. Finally, the proposed substitute claims introduce the claim element that
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`a “test” be run, at specifically indicated times, to determine whether the HPLMN list
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`is stored in the memory of the mobile station, the SIM, or neither. No such test is
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`disclosed in the ’933 patent.
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`31. The specification refers to a test “to identify the availability of [an
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`HPLMN] list on the SIM and a similar backup list on the mobile station.” Ex. 1002,
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`25. This language describes a test is to determine the location of the HPLMN list as
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`between the SIM and memory—not to determine its availability at all.
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`32. There are two additional “tests” described in the specification, and
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`neither is designed to check whether an HPLMN list exists. See Ex. 1001 at 14:28–
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`32 (“testing if a predetermined designated area of memory on the SIM includes this
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`list or associated data” and “testing if a version number of the SIM corresponds to
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`having such a multiple home network list [on the SIM]”). Rather, these tests are
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`designed to determine if the HPLMN list is located on the SIM, as opposed to its
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`own memory. They are described by the patent as tests to “identify or detect whether
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`there is a multiple home network list on the SIM,” Ex. 1001 at 14:26‒28, and
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`preceded by an explanation that, “the mobile station utilizes a multiple home
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`network list on the SIM if it is stored on the SIM but, if such a list is not stored on
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`the SIM the mobile station utilizes a multiple home network list stored in its own
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`memory,” id. at 14:22–26. The patent does not convey to a POSITA that these tests
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`(or any other) would be used to determine whether the HPLMN list is present.
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`*
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`*
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`*
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`33.
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`In sum, the proposed amendments introduce three new claim elements
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`that each have no support in the written description. On the contrary, the patent
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`clearly teaches that the inventors did not have possession of them, and even that the
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`invention should not include them. Therefore, it is my opinion that claims that
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`include any of these limitations would fail the written description requirement.
`
`B.
`
`The Proposed Substitute Claims Are Indefinite
`It is my opinion that the proposed amended claims are indefinite. The
`34.
`
`amendments make the claims inherently self-contradictory, such that a person of
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`ordinary skill would not be able to determine, with any reasonable clarity, the scope
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`of the amended claims. It is not clear to a POSITA how the claims would be
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`infringed (if at all).
`
`35.
`
`I understand that, in order to be valid, the claims of a patent must be
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`sufficiently definite that one skilled in the art can determine the precise limits of the
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`claimed invention. I understand that patent claims are invalid as indefinite 35 U.S.C.
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`§ 112, ¶ 2, if the claims, read in light of the patent’s specification delineating the
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`patent, and prosecution history, fail to inform, with reasonable certainty, those skilled
`
`in the art about the scope of the invention. I understand that a patent claim must be
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`precise enough to afford clear notice of what is claimed, thereby apprising the public
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`of what is still open to them.
`
`36.
`
`I understand that dependent claims are construed to incorporate by
`
`reference all limitations of the independent claim from which they depend. In the
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`’933 patent, proposed substitute claims 20 and 21 depend from claim 1. Thus, I
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`understand that proposed substitute claims 20 and 21 incorporate all limitations of
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`claim 1.
`
`37. There are two aspects of claim 1 that are outright contradicted by
`
`limitations introduced by the proposed substitute claims 20 and 21. Each of these
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`new limitations renders the proposed amended claims self-contradictory and, thus,
`
`indefinite.
`
`38. First, claim 1 recites a method that relies on the use of an HPLMN list
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`which is stored either in a SIM or in memory. Specifically, it recites, in pertinent
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`part, “using a plurality of home network MCC and MNC pairs from the HPLMN list
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`stored on a Subscriber Identify Module (SIM) . . . and otherwise using a plurality of
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`home network MCC and MNC pairs stored in memory of the mobile station.”
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`Ex. 1001 at 16:5‒11. The HPLMN list is mandatorily in either the SIM or memory
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`of the mobile station.
`
`39. However, the proposed substitute claims introduce the possibility that
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`the HPLMN list is stored in “neither” location. Mot. to Amend at 16 (proposed
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`substitute claims 20 and 21, each reciting “[t]he method of claim 1, wherein . . . the
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`HPLMN list, a plurality of home network MCC and MNC pairs, is stored in the
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`memory of the mobile station, in the SIM, or neither . . .”).
`
`40. This is plainly self-contradictory. The proposed amended claims both
`
`instruct that the HPLMN list may only be in one of two locations, and also that it
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`may be in neither of those locations. A POSITA would not be able to interpret the
`
`claims in a way that satisfied both limitations, and would not know which limitation
`
`correctly described the scope of the amended claims.
`
`41. Second, claim 1 requires practicing multiple specific steps. It recites a
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`method that requires (a) “scanning” for mobile networks in a coverage area, (b)
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`“selecting and registering” with one such network, (c) “comparing” the network’s
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`MCC and MNC codes to stored code pairs in an HPLMN list, and (d) “display[ing]”
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`a network name whose identity depends on the outcome of the comparing step.
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`Ex. 1001 at 15:56‒16:23. All of these steps are mandatory; they are not optional and
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`do not depend on the occurrence of any condition or the result of any test.
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`42. The proposed substitute claims purport to incorporate “the method of
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`claim 1” but then additionally add the conditional limitation of “implementing the
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`steps of claim 1 only if the HPLMN list is contained on the mobile station’s SIM or
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`in its memory.”
`
`43. This creates another contradiction: the method of claim 1 is
`
`unconditional, but the new claims instruct not to perform it unless a certain condition
`
`is met. Thus, it is unclear to a POSITA whether the proposed amended claims require
`
`the steps of claim 1 to ever be performed at all. And, conversely, it is unclear to a
`
`POSITA if performing the steps of claim 1 without regard to any condition would
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`read on the amended claims or not. Again, the new limitation introduced by the
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`amendments is logically inconsistent with the limitations of claim 1. A POSITA
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`would not be able to reconcile them, and would not know which of the contradictory
`
`limitations correctly describes the scope of the amended claims.
`
`44. Each of these two contradictions, either alone or in combination,
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`renders the proposed amended claims indefinite.
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`C. The Proposed Substitute Claims Broaden the Scope of the ’933 Patent
`In analyzing the scope of the proposed substitute claims, I must either
`4