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`Petitioners’ Opposition to Patent Owner’s
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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 No. IPR2021-01157
`
`U.S. Patent No. 7,274,933
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`
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`Petitioners’ Opposition to
`Patent Owner’s Motion to Amend Under 37 C.F.R. § 42.121
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`TABLE OF CONTENTS
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`B.
`
`C.
`
`Page
`EXHIBIT LIST ........................................................................................................ iv
`TABLE OF ABBREVIATIONS AND CONVENTIONS ...................................... vi
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`SUMMARY OF THE PROPOSED AMENDMENTS ................................... 3
`III. THE PROPOSED AMENDMENTS LACK WRITTEN
`DESCRIPTION SUPPORT ............................................................................. 5
`A.
`There Is No Support in the ’933 Patent for the “Or Neither”
`Element of Limitation (1) ...................................................................... 6
`There Is No Support in the ’933 Patent for Steps Being
`Performed “Only If” Conditions Are Met As Claimed in New
`Limitation (2) ........................................................................................ 9
`There Is No Support for the “Test” Element of New Limitations
`(1) and (3) ............................................................................................11
`IV. THE PROPOSED AMENDMENTS RENDER THE CLAIMS
`INDEFINITE .................................................................................................12
`THE PROPOSED AMENDMENTS IMPERMISSIBLY BROADEN
`THE CLAIMS ...............................................................................................16
`VI. THE PROPOSED SUBSTITUTE CLAIMS ARE STILL OBVIOUS
`BASED ON ALL GROUNDS RAISED IN THE PETITION .....................19
`A.
`Elements 20[b] and 21[a] (Limitation 1) Are Obvious in Light
`of McElwain ........................................................................................21
`Elements 20[c] and 21[c] (Limitation 2) Are Obvious in Light
`of McElwain ........................................................................................22
`Elements 20[a] and 21[b] (Limitation 3) Are Obvious in Light
`of McElwain ........................................................................................23
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`V.
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`B.
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`C.
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`VII. CONCLUSION ..............................................................................................24
`APPENDIX: CHALLENGED CLAIM LISTING ..................................................27
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`EXHIBIT LIST
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`Description
`U.S. Patent No. 7,274,933 (“the ’933 patent”)
`Copy of Prosecution History of the ’933 patent
`Declaration of Dr. Apostolos Kakaes
`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)
`Amended Complaint for Patent Infringement, No. 1:19-cv-
`01140-MN (D. Del. July 15, 2019)
`Third Amended Complaint for Patent Infringement, No. 1:19-
`cv-01144-MN (D. Del. Feb. 28, 2020)
`Amended Complaint for Patent Infringement, No. 1:20-cv-
`20813 (S.D. Fl. Mar. 25, 2020)
`EIA/TIA-553 Standard (AMPS)
`Excerpts from EIA/TIA/IS-54 Standard (Digital AMPS)
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
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`1010
`1011
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`1012
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`1013
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`1014
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`1015
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`1016
`1017
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`iv
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`Exhibit No.
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`
`Description
`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”)
`Second Declaration of Dr. Apostolos Kakaes
`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”)
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`TABLE OF ABBREVIATIONS AND CONVENTIONS
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`Abbreviation
`PO Mot.
`
`Meaning
`Patent Owner’s Motion to Amend
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`vi
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`I.
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`INTRODUCTION
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`Petitioners’ Opposition to Patent Owner’s
`Motion to Amend in IPR2020-01157
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`Patent Owner’s proposed amendments lack written description support, are
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`indefinite, impermissibly broaden the scope of the claims, and are invalid based on
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`the prior art raised in the Petition. Patent Owner’s Motion to Amend should
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`therefore be denied.
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`The ’933 patent relates to displaying network names on mobile phones.
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`Specifically, the patent teaches the use of an “HPLMN list,” which includes multiple
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`“home” networks such that the same home network name is displayed when the
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`phone is connected to any of those networks. According to the ’933 patent, using
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`an HPLMN list in this way reduces confusion for a subscriber, who may see a
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`network name displayed that is different from her home network and assume that
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`she is incurring roaming charges, when in fact she is not. Throughout the
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`specification, the HPLMN list is a critical and mandatory element of the invention,
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`and it is stored on either the SIM card or in the mobile device’s memory so it can be
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`accessed for use with the above name display procedures.
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`Patent Owner’s proposed amendments turn the ’933 patent on its head. In the
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`proposed amendments, the Patent Owner introduces a new concept totally alien and
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`contradictory to the original disclosure: that the HPLMN list could be absent from
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`the mobile device entirely—i.e., not on the SIM card or in memory. However, in
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`such circumstances, the patented method is not performed at all. As a result, the
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`proposed amendments are plainly impermissible. Specifically, the substitute claims
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`are unpatentable on the following bases:
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`• Lack of Written Description. The proposed amendments lack written
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`description support. The ’933 patent requires an HPLMN list to be stored in
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`either the SIM or in memory; there is no support anywhere in the specification
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`for a limitation that the HPLMN list is stored in neither. Nor is there support
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`for a condition that the allegedly inventive home network name display
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`methods not be performed at all if the HPLMN list is not found.
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`• Indefiniteness. The substitute claims are dependent on method claim 1,
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`which requires specific steps to be taken to display a home network name.
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`The proposed dependent claims, however, instruct that these steps only be
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`performed if a certain condition is met (i.e., the HPLMN list is in the SIM or
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`memory). The substitute claims are therefore internally contradictory and
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`indefinite because it is unclear to a POSITA whether the steps of claim 1 are
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`ever performed.
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`• Impermissible Broadening. By making certain limitations of claim 1
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`optional, the substitute claims impermissibly broaden the scope of the claims.
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`For example, while claim 1 is satisfied only if all steps are performed and a
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`network name is displayed, the substitute claims can be satisfied without
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`displaying a network name at all. For similar reasons, the proposed claims
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`violate Section 112 ¶ 4 because they do not “specify a further limitation” of
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`the independent claim. To the contrary, the substitute claims remove
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`limitations from the independent claim by making them conditional.
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`• Obviousness. The substitute claims are no less obvious than the original
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`claims. Indeed, the limitations added in the substitute claims are obvious
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`under the same grounds raised in the Petition. For example, the idea of
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`checking for a particular data structure (here, the HPLMN list) in a SIM card
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`and memory is disclosed in McElwain, which is part of all grounds.
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`Furthermore, it is facially obvious to implement steps requiring a data
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`structure only when that structure is present.
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`For these and the other reasons explained below, Patent Owner’s Motion to
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`Amend should be denied.
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`II.
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`SUMMARY OF THE PROPOSED AMENDMENTS
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`Proposed substitute claims 20 and 21 are dependent on independent method
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`claim 1. At a high level, method claim 1 recites the steps of:
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`• Scanning for MCC/MNC pairs;
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`• Selecting and registering with a network associated with one of the
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`MCC/MNC pairs;
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`• Comparing the MCC/MNC pair of the selected network with home networks
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`of an HPLMN list;
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`• If there is a match between the MCC/MNC pair of the selected network and
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`an MCC/MNC pair in the HPLMN list, displaying the home network name;
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`and
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`• Otherwise displaying an alternate network name.
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`As summarized by the Patent Owner, the proposed substitute claims each add
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`three new limitations to claim 1:
`
`(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.
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`PO Mot. at 4.1 Thus, with the substitute claims, a UE “only carr[ies] out the methods
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`of claim 1 when a specific test for an HPLMN list returns a confirmation of the
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`HPLMN list’s presence on the UE’s SIM card or in its memory.” Id. at 4‒5.
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` 1 The analysis below refers to these as “limitation (1),” “limitation (2),” and
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`“limitation (3),” respectively.
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`4
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`III. THE PROPOSED AMENDMENTS LACK WRITTEN DESCRIPTION
`SUPPORT
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`There is no written description in the specification of the ’933 patent for any
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`of the three new limitations. Amendments “may not enlarge the scope of the claims
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`of the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). To satisfy this
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`requirement, every proposed claim limitation must have written description support
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`in the original specification. See Verify Smart Corp. v. Askeladden, L.L.C., 824 F.
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`App’x 1015, 1023 (Fed. Cir. 2020) (affirming denial of motion to amend because
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`proposed amendments lacked written description support). The written description
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`requirement under 35 U.S.C. § 112 requires that the patent specification “reasonably
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`conveys” possession of the claimed invention to persons of skill. Ariad Pharm., Inc.
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`v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The Federal Circuit has
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`emphasized that “[a] description that merely renders the invention obvious does not
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`satisfy the [written description] requirement.” Id. at 1352.
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`In its Motion, Patent Owner identifies four sentences from the application for
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`the ’933 patent and two claims from the application as providing support for the
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`amendments.2 See PO Mot. at 5‒10. None of these excerpts—nor anything else in
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` 2 Patent Owner’s analysis of the alleged support for the substitute claims includes
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`citations to European Appl. No. 03255483, which is incorporated by reference
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`(Cont’d on next page)
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`the specification of the ’933 patent—provides written description support for the
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`proposed amendments.
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`A. There Is No Support in the ’933 Patent for the “Or Neither”
`Element of Limitation (1)
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`New limitation (1) introduces a new claim element: that the HPLMN list may
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`be present in “neither” the SIM nor the mobile station memory. This concept is
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`completely absent from the ’933 patent. Indeed, far from disclosing the idea that an
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`HPLMN list may be entirely absent from a mobile station, the ’933 patent requires
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`throughout the specification that the HPLMN list is stored in either the SIM or
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`memory. See, e.g., Ex. 1001 at 2:60‒62, 3:46‒49, 12:30‒33, 12:41‒46, 13:18‒25,
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`14:22‒26.
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`into the ’933 patent. See PO Mot. at 5‒6. The citations to this application should
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`be ignored. Pursuant to 37 C.F.R. § 1.57, “essential material”—which is defined
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`as material “necessary to . . . [p]rovide a written description of the claimed
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`invention”—may only be incorporated by reference “by way of an incorporation
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`by reference to a U.S. patent or U.S. patent application publication.” In any
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`event, the substance of the European application is the same as the U.S.
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`application. Thus, even considering the language in the European application,
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`the proposed substitute claims lack written description support.
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`The specification excerpts alleged by Patent Owner to support the “or neither”
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`limitation do not do so. See PO Mot. at 5‒6. The excerpts identified by Patent
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`Owner identify only these two possibilities for the HPLMN list: that it is stored in
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`the SIM or in the mobile station memory. See, e.g., Ex. 1002, 25 (“In a slight
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`variation of the method of Fig. 7, the mobile station utilizes a multiple home network
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`list on the SIM if it is stored on the SIM, but if such a list is not stored on the SIM,
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`the mobile station utilizes a multiple home network list stored in its own memory.”);
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`id. (“In one implementation, compatibility is provided between previous, current,
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`and future versions mobile stations and SIMS by providing a test to identify the
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`availability of such a list on the SIM and a similar backup list on the mobile
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`station.”). Claims 7 and 14 of the original application similarly recite a method of
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`using MCC/MNC pairs “stored on the SIM” and “otherwise, using the plurality of
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`home network MCC and MNC pairs stored in the memory of the mobile station.”
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`Id. at 29‒30. These excerpts unambiguously require the HPLMN list to be either in
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`the SIM or memory; they exclude the possibility that it may be absent from both.
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`The remainder of the specification is equally clear on this point: the HPLMN
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`list may be in the SIM, and if not then it is in memory: it is never taught (or even
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`suggested) as being stored in neither one. See Ex. 1001, 2:60‒62 (“The plurality of
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`home network MCC and MNC pairs may be stored in memory of the mobile station
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`or, alternatively, on a Subscriber Identify Module (SIM).”); 3:46–49 (same); 12:41‒
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`13:20 (“[M]emory 502 may store a list 510 of home network MCC/MNC pairs . . . .
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`In an alternative embodiment, the SIM 262 . . . may include the same or similar
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`information.”); 13:60‒63 (“The[] multiple MCC/MNC pairs may be stored in a
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`Home Public Land Mobile Network (HPLMN) list on a Subscriber Identity Module
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`(SIM). Alternatively, the multiple MCC/MNC pairs may be stored in memory of
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`the mobile station.”); 15:1–3 (“The plurality of home network MCC and MNC pairs
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`may be stored in memory of the mobile station or, alternatively on a Subscriber
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`Identify Module (S[I]M).”). The specification contemplates a method where an
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`HPLMN list is necessarily accessible, whatever the location, in order to determine
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`whether to display the home network name. See, e.g., Ex. 1001, 2:51‒55 (“After the
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`network is selected, the received MCC and MNC pair is compared with a plurality
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`of home network MCC and MNC pairs which are associated with a single home
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`network display name.”); 3:38‒41 (same); 14:60‒63 (same).
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`It defeats the very purpose of the patent—and the alleged inventiveness over
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`the prior art—to include the possibility that there is no HPLMN list anywhere. The
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`objective of the ’933 patent is to reduce consumer confusion over whether she is
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`incurring roaming charges. See Ex. 1001, 2:1‒8. Claiming a method in which there
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`may be no HPLMN list nullifies this objective.
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`At bottom, the specification of the ’933 patent wholly fails to convey to a
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`POSITA a method where the HPLMN list is not present in either the SIM or
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`memory. See Ex. 1029, ¶¶ 21–23.
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`B.
`
`There Is No Support in the ’933 Patent for Steps Being Performed
`“Only If” Conditions Are Met As Claimed in New Limitation (2)
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`Similarly, there is no support for limitation (2), in which the steps of claim 1
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`(e.g., checking whether an MCC/MNC pair correspond to a home network) are
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`performed “only if” a certain condition is met. To the contrary, the patent describes
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`a method that mandatorily performs the steps of claim 1.
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`The mandatory nature of the steps of claim 1 is readily illustrated by the
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`patent’s Figure 7. It shows a “flowchart” of the patented method, (Ex. 1001, 13:49),
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`including every step recited in claim 1: scanning MCC/MNC pairs in the coverage
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`area (704), selecting and registering with one (706-712), comparing that network
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`with a plurality of home MCC/MNC pairs (716), and displaying the network name
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`depending on whether it is a “home” network (718-722). These steps involve two
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`conditional branch points in the flowchart depending on two comparing steps:
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`whether the received MCC/MNC pair (706) and selected MCC/MNC pair (716)
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`match a home network MCC/MNC pair. But all the other steps are mandatory: the
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`flowchart shows no option not to perform them, and no condition under which they
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`would be avoided. In particular, there is no option not to perform the comparing
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`step using the home network list of MCC/MNC pairs. See Ex. 1001, 14:6‒9 (“Next,
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`the mobile station compares the received MCC and MNC pair [of the registered
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`network] with each one of the multiple home network MCC/MNC pairs (step
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`716).”); see also, e.g., id. at 14:17‒20 (“[A]lthough the method of FIG. 7 focuses on
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`the use of only an MCC and MNC pair, the method may include the use of a Location
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`Area Code (LAC) in addition to the MCC and MNC . . . .” (emphasis added)).
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`Accordingly, the patent conveys a method that mandatorily comprises the steps of
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`claim 1, including the step of using an HPLMN list in a comparing step. It is
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`incompatible with—and, at the very least, fails to convey—the conditional “only if”
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`limitation of the proposed substitute claims.
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`The conditional “only if” limitation runs counter to the fundamental purpose
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`of the patent. The entire ’933 patent is directed to “name displaying methods.” See,
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`e.g., Ex. 1001, Title (“Name Displaying Methods”); Abstract (“Home network name
`
`displaying methods … are disclosed.”); 2:42 (“Home network name displaying
`
`methods … are described herein.”). The inventive advantage alleged by the
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`’933 patent relates to displaying a single home network name for multiple home
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`networks. See id. at 3:49‒52. But under new limitation (2), where the steps of claim
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`1 may be skipped, the claims encompass methods where no name is displayed
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`whatsoever. That is, where the “display[ing]” steps of claim 1 are skipped, the
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`claims fail to instruct any method of displaying a name at all, regardless of whether
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`it is a home network. Plainly, this new conditional limitation was never
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`contemplated and therefore not disclosed in the original patent. See Ex. 1029, ¶¶ 24–
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`29.
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`C. There Is No Support for the “Test” Element of New Limitations (1)
`and (3)
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`New limitations (1) and (3) together require running a test, at specific times,
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`to determine whether the HPLMN list is stored in the memory of the mobile station,
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`in the SIM, or neither. There is no such test disclosed in the specification of the
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`’933 patent. In the specification, a test is run to determine the location of the
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`HPLMN list as between the SIM and memory, not to determine its availability at all.
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`For example, Patent Owner cites a passage that states that the described test is “to
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`identify the availability of such a list on the SIM and a similar backup list on the
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`mobile station.” Ex. 1002, 25. There are two alternative tests disclosed in the
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`’933 patent: one is “by testing if a predetermined designated area of memory on the
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`SIM includes this list or associated data” and the other is “testing if a version number
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`of the SIM corresponds to having such a multiple home network list.” Id. Neither
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`of these disclosed tests is designed to check whether an HPLMN list exists at all.
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`Rather, these tests check whether there is an HPLMN list in the SIM card, and if
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`there is not, it is assumed that the list resides in memory. See Ex. 1029, ¶¶ 30–32.
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`The ’933 patent thus lacks written description for all three proposed new
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`limitations. For this reason alone Patent Owner’s motion should be denied.
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`IV. THE PROPOSED AMENDMENTS RENDER THE CLAIMS
`INDEFINITE
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`The proposed substitute claims are indefinite under 35 U.S.C. § 112 because
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`they are internally contradictory and it is not clear to a POSITA what steps (if any)
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`would infringe the claims. Specifically, claim 1 is a method that requires using an
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`HPLMN list that is stored either in the SIM or in memory, yet the proposed substitute
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`dependent claims suggest that the HPLMN may be stored in neither. Furthermore,
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`claim 1 requires practicing specific steps, yet the proposed substitute dependent
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`claims make these previously mandatory steps optional.
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`Under Section 112, claims are invalid as indefinite if they fail to “inform those
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`skilled in the art about the scope of the invention with reasonable certainty.”
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`Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014). Claims fail this
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`requirement if the patent fails to define their scope in a logically consistent,
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`unambiguous way. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336
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`(Fed. Cir. 2002) (holding claim indefinite where claim limitation was contradicted
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`by specification); IQASR LLC v. Wendt Corp., 825 F. App’x 900, 906 (Fed. Cir.
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`2020) (“contradictory examples in the specification” can render a claim
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`“indefinite”); Infinity Comput. Prods., Inc. v. Oki Data Ams., Inc., 987 F.3d 1053,
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`1059–60 (Fed. Cir. 2021) (holding claim indefinite because claim term was defined
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`two contradictory ways in prosecution history); Teva Pharm. USA, Inc. v. Sandoz,
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`Inc., 789 F.3d 1335, 1341‒45 (Fed. Cir. 2015) (same).
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`Here, two of the new limitations render the substitute claims internally
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`contradictory. Pursuant to pre-AIA 35 U.S.C. § 112 ¶ 4, “[a] claim in dependent
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`form shall be construed to incorporate by reference all the limitations of the claim to
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`which it refers.” As explained above, original claim 1 (from which the substitute
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`claims depend) recites a method relying on the use of an HPLMN list which is stored
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`either in a SIM or in memory. Specifically, it recites, in pertinent part, “using a
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`plurality of home network MCC and MNC pairs from the HPLMN list stored on a
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`Subscriber Identify Module (SIM) . . . and otherwise using a plurality of home
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`network MCC and MNC pairs stored in memory of the mobile station.” Ex. 1001
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`(’933 Patent), 16:5‒11.
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`The proposed substitute claims, however, add a contradictory third option:
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`that the HPLMN is stored in neither. Specifically, each proposed substitute claim
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`depends on claim 1 and recites “[t]he method of claim 1, wherein . . . the HPLMN
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`list, a plurality of home network MCC and MNC pairs, is stored in the memory of
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`the mobile station, in the SIM, or neither.” PO Mot. at 16. Thus the substitute claims
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`simultaneously recite an “HPLMN list stored on a Subscriber Identify Module (SIM)
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`. . . and otherwise . . . stored in memory” and then later, an “HPLMN list . . . stored
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`in the memory of the mobile station, in the SIM, or neither.” See id. This is plainly
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`contradictory. See Ex. 1029, ¶¶ 38–40. Based on this contradiction alone, the claims
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`are indefinite. See id. ¶¶ 37, 44.
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`But the confusion does not stop there: it is compounded by the conditional
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`limitation (2). Each proposed substitute claim incorporates “the method of claim 1”
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`(see (pre-AIA) 35 U.S.C. § 112 ¶ 4) —that is, a mandatory, unconditional, multi-
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`step method including “scanning” for mobile networks in a coverage area, “selecting
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`and registering” with one such network, “comparing” the network’s MCC and MNC
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`codes to stored code pairs in an HPLMN list, and “display[ing]” a network name
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`whose identity depends on the outcome of the comparing step. Ex. 1001 (’933
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`Patent) at 15:56‒16:23. All of these steps are performed, regardless of how any test
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`or condition may turn out. However, the proposed amendments subsequently add
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`conditional limitation (2): “implementing the steps of claim 1 only if the HPLMN
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`list is contained on the mobile station’s SIM or in its memory.” This creates another
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`contradiction: the method of claim 1 is unconditional, but the new claims instruct
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`not to perform it unless a certain condition is met. Thus, it is unclear to a POSITA
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`whether the steps of claim 1 (which are incorporated into the substitute claims) must
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`ever be performed at all. See Ex. 1029, ¶¶ 41–43.
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`Courts consistently hold such claims invalid as indefinite under Section 112.
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`For example, in Virtual Solutions, LLC v. Microsoft Corp., the patent challenger
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`“unearthed an apparent logical contradiction within claim 1”—namely, that one
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`limitation identified a “physical characteristic signal” as “including position
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`information,” while a later limitation required “position information and said at least
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`one physical characteristic signal.” 925 F. Supp. 2d 550, 561‒62, 566 (S.D.N.Y.
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`2013), aff’d, 540 F. App’x 997 (Fed. Cir. 2013) (emphases added). The challenger
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`argued that the claims thus “require[d] that ‘physical characteristic signal’ both
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`include and exclude ‘position information,’ which . . . is logically impossible.” Id.
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`at 562. The court agreed, and held that the “logical contradiction” met the burden
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`of “proving invalidity by clear and convincing evidence.” Id. at 566.
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`A similar contradiction invalidated the claims in Synchronoss Technologies,
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`Inc. v. Dropbox Inc., 389 F. Supp. 3d 703 (N.D. Cal. 2019), aff’d, 987 F.3d 1358
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`(Fed. Cir. 2021). The patent challenger argued the patent was indefinite because a
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`logical “impossibility permeates all of the claims: the claims require ‘generating a
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`[single] digital media file’ that itself ‘compris[es] a directory of digital media files.’”
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`Id. at 714. The court agreed, even though expert testimony suggested that the
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`contradiction came down to errors in claim drafting. Id. at 715. Even if “the
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`impossibility of [the] claim, as written” was so evident that a skilled artisan “would
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`understand that [the claim] means something other than what is written,” that only
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`confirms the claim’s insoluble indefiniteness. Id.
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`Because the proposed substitute claims likewise contain contradictions, they
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`are indefinite under Section 112. See Ex. 1029, ¶¶ 34, 37, 44.
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`V. THE PROPOSED AMENDMENTS IMPERMISSIBLY BROADEN
`THE CLAIMS
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`To the extent the proposed substitute claims are interpreted to negate the steps
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`of independent claim 1 in circumstances where there is no HPLMN list, the
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`amendments cover embodiments that would not have infringed the original patent
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`and therefore impermissibly enlarge the scope of the claims of the patent.
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`A proposed amendment “may not enlarge the scope of the claims of the
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`patent” regardless of whether that scope would otherwise be patentable. 35 U.S.C.
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`§ 316(d)(3); see also 37 C.F.R. § 42.221(a)(2) (“A motion to amend may be denied
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`where . . . [t]he amendment seeks to enlarge the scope of the claims of the patent”).
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`An amendment enlarges the scope of the patent “if it contains within its scope any
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`conceivable [embodiment] which would not have infringed the original patent.” In
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`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1283 (Fed. Cir. 2015), aff’d, 136 S. Ct.
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`2131 (2016). Accordingly, an amended “claim cannot be broader in any respect,
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`even if it is narrowed in other respects.” Senju Pharm. Co. v. Apotex Inc., 746 F.3d
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`1344, 1352 (Fed. Cir. 2014).
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`As explained above, independent claim 1 recites a list of specific steps to be
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`taken, which include “using a plurality of home network MCC and MNC pairs from
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`the HPLMN list stored on a Subscriber Identify Module (SIM) . . . and otherwise
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`using a plurality of home network MCC and MNC pairs stored in memory of the
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`mobile station.” Ex. 1001 (’933 Patent), 16:5‒11. Claim 1 further requires
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`displaying a network name, either a “home network display name” or “an alternate
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`display name,” depending on whether the MCC/MNC pair of a selected network is
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`found in the HPLMN list. Id. at 16:13‒22. Thus, claim 1 would not be infringed
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`where there is no HPLMN list in either the SIM or memory such that no comparison
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`is made to determine what network name to display. Indeed, no independent claim
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`of the ’933 patent would be infringed in these circumstances. See Ex. 1029, ¶¶ 47–
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`53.
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`The proposed substitute claims, however, sweep into the scope of the
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`’933 patent embodiments in which there is no HPLMN list stored in the SIM or
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`memory, such that no comparison is made and no network name is displayed. The
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`proposed substitute claims do this by introducing a conditional limitation. Under
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`binding precedent of
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`the Board, such conditional
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`limitations encompass
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`embodiments where the condition is not met and the conditional steps are not
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`performed. Ex Parte Schulhauser, No. APPEAL 201