`
`
`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. IPR2020-01157
`
`U.S. Patent No. 7,274,933
`
`
`
`DECLARATION OF DR. APOSTOLOS K. KAKAES IN SUPPORT OF
`PETITIONER DELL INC.’S REPLY TO PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.23
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dell Inc., Ex. 1032
`
`
`
`Page
`INTRODUCTION AND QUALIFICATIONS ............................................... 1
`I.
`II. MATERIALS CONSIDERED ........................................................................ 2
`III. CLAIM CONSTRUCTION ............................................................................ 3
`IV. OVERVIEW OF CONCLUSIONS ................................................................. 3
`V. ANALYSIS OF PATENT OWNER’S ARGUMENTS .................................. 4
`A. All Asserted Invalidity Combinations Disclose Displaying A
`Home Network Display Name .............................................................. 5
`1. McElwain Discloses Displaying A Home Network
`Display Name .............................................................................. 5
`Uchida Discloses Displaying A Home Network Name .............. 8
`2.
`Hicks Discloses Displaying A Home Network Name ................ 9
`3.
`All Asserted Invalidity Combinations Disclose The Use of
`Multiple MCC/MNC Pairs Corresponding to The Home
`Networks of The HPLMN List............................................................11
`1. McElwain and Uchida Disclose the Use of Multiple
`MCC/MNC Pairs Corresponding to the Home Networks
`of the HPLMN List ...................................................................11
`Hicks Discloses the Use of Multiple MCC/MNC Pairs
`Corresponding to the Home Networks of the HPLMN
`List.............................................................................................14
`The 3GPP Standards Disclose the Use of Multiple
`MCC/MNC Pairs Corresponding to the Home Networks
`of the HPLMN List ...................................................................14
`The Secondary Considerations Do Not Support
`Nonobviousness ...................................................................................15
`VI. ADDITIONAL REMARKS ..........................................................................16
`
`B.
`
`2.
`
`3.
`
`C.
`
`
`
`TABLE OF CONTENTS
`
`i
`
`Dell Inc., Ex. 1032
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`
`
`
`
`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)
`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
`
`Exhibit
`1001
`1002
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`1018
`1019
`1020
`
`ii
`
`Dell Inc., Ex. 1032
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`
`
`
`
`
`
`
`Exhibit
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1030
`
`Description
`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. 1032
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`
`
`
`
`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). I have been asked to offer opinions in support of
`
`Petitioners’ reply to Patent Owner’s response.
`
`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
`
`reference here. My analysis of the proposed substitute claims in this Declaration use
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`1
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`Dell Inc., Ex. 1032
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`
`
`
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`that same definition of a POSITA. I have reviewed the proposed definition of a
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`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), the
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`Board’s Institution Decision, and Patent Owner’s Response (and all exhibits
`
`thereto), including both declarations provided by Mr. Lipoff.
`
`2
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`Dell Inc., Ex. 1032
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`
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`III. CLAIM CONSTRUCTION
`I understand that the Board has preliminarily construed “home
`
`8.
`
`network” to include “networks operated by a user’s cellular provider, including
`
`networks acquired by that provider, as well as networks with whom the provider has
`
`a contractual relationship that would obviate roaming charges.” I understand that
`
`neither the Petitioner nor Patent Owner disputes this construction. I apply the
`
`Board’s construction in my analysis.
`
`9.
`
`I understand that the Board has preliminarily construed “home network
`
`display name” to mean “a name string used for the mobile station’s display for all
`
`home-related networks,” that “may, but need not, include the name of the network
`
`provider.” I understand that Patent Owner disputes this construction and proposes
`
`that “home network display name” refers to “the actual names of such [service]
`
`providers.” It is my opinion that the prior art references disclose a “home network
`
`display name” under either construction as I explain in more detail in the following
`
`sections.
`
`IV. OVERVIEW OF CONCLUSIONS
`It is my opinion that the claims challenged in the Petition are
`
`10.
`
`unpatentable for all the reasons stated in my Declaration filed in support of the
`
`Petition (Ex. 1003), and the following several reasons.
`
`3
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`Dell Inc., Ex. 1032
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`
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`11. First, all of the invalidity grounds disclose displaying a home network
`
`name. I understand that the Board construed the term to mean “a name string used
`
`for the mobile station’s display for all home-related networks” that “may, but need
`
`not include the name of the network provider.” I also understand that Patent Owner
`
`has proposed a narrower construction than the Board requiring “the name of an
`
`actual wireless service provider.” It is my opinion that the prior art references teach
`
`the limitation under both constructions either expressly or it would have been
`
`obvious to a POSITA based on the invalidity combinations asserted in the Petition.
`
`12. Second, all of the invalidity grounds disclose the use of multiple
`
`MCC/MNC pairs corresponding to the home networks of the HPLMN list. It is my
`
`opinion that the prior art references teach this limitation either expressly or it would
`
`have been obvious to a POSITA based on the invalidity combinations asserted in the
`
`Petition.
`
`13. Finally, the secondary considerations of long-felt need and/or
`
`acceptance in industry cannot be credited to the ’933 patent, and therefore, it is my
`
`opinion that they do not support nonobviousness.
`
`V. ANALYSIS OF PATENT OWNER’S ARGUMENTS
`It is my opinion that all Challenged Claims are unpatentable. Below is
`
`14.
`
`my detailed analysis of the arguments Patent Owner presented in its Response to
`
`which I am responding.
`
`4
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`Dell Inc., Ex. 1032
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`
`
`
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`A. All Asserted Invalidity Combinations Disclose Displaying A Home
`Network Display Name
`It is my opinion that the prior art references disclose displaying a home
`15.
`
`network display name under either the Board’s construction or Patent Owner’s
`
`proposed narrower construction. This term appears in claim elements 1[e], 6[g],
`
`11[h] & 19[c]. I understand that the Patent Owner has made arguments that
`
`McElwain, Uchida, and Hicks do not disclose this limitation, but Patent Owner has
`
`not argued that the 3GPP Standards do not disclose this limitation. I therefore only
`
`provide opinions as to why McElwain, Uchida, and Hicks disclose this limitation
`
`either expressly or inherently or render this limitation obvious.
`
`1. McElwain Discloses Displaying A Home Network Display Name
`16. McElwain teaches that each MCC/MNC pair in the Cousin SID list is
`
`associated with a home network display name. For example, McElwain teaches that
`
`“[i]f the received SID matches any one of the stored SIDs in the Cousin SID list 200,
`
`the mobile station 10 . . . makes the determination that the category of the associated
`
`service provider is a Home service provider, and that the mobile station 10 is not
`
`roaming.” Ex. 1004 ¶ 46. In the pseudo-code following Paragraph 54, there is a
`
`single alpha tag for all “Cousin” SIDs, which would be a home network display
`
`name when operating in prepaid mode. Id. ¶ 54.
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`5
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`Dell Inc., Ex. 1032
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`
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`
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`17. The terms “Cousin,” “Partner,” “Favored,” and “Neutral” are used to
`
`identify certain categories of networks. Additionally, the use of the “/*” notation in
`
`the above chart in McElwain indicates that the contents contained within the “/* . . .
`
`*/” are comments and not actual code. A POSITA would have understood that the
`
`actual display name would not be, for example, “Cousin.” Instead, “Cousin” is
`
`simply a variable that is a placeholder for another string name, corresponding to the
`
`“CS specific” name “.UI_NOT_ROAMING_PREPAID.” A POSITA would have
`
`understood that this could be the actual network name or a service provider name.
`
`18. Furthermore, the pseudo-code states that the “UI uses own naming
`
`convention,” see Ex. 1004 ¶ 54, indicating these variables are intended to be
`
`customized by the service provider so that it displays whatever the provider wants
`
`to display when the user is on a network that is in one of the above respective
`
`categories. It would have been obvious to a POSITA to set the dummy variable
`
`“Cousin” equal to, for example, “AT&T Wireless,” which would be the actual name
`
`of a service provider as required under Patent Owner’s proposed construction, or
`
`6
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`Dell Inc., Ex. 1032
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`
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`
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`some other name string for home-related networks as required under the Board’s
`
`construction.
`
`19. McElwain also teaches that when a user is on a network that has a
`
`contractual relationship with a user’s service provider, McElwain teaches displaying
`
`the home network display name. McElwain discloses that a list of home networks
`
`that may include networks associated with the user’s network via a “business
`
`relationship,” which would include a contractual relationship. Ex. 1004 ¶ 47.
`
`McElwain teaches that the home networks on the Cousin SID list “may each be
`
`associated with a different service provider.” Id. (emphasis added). And a user’s
`
`service provider “will typically have business relationships with a number of
`
`different wireless service providers.” Id. (emphases added). Thus, McElwain
`
`expressly teaches displaying the user’s service provider name when on another
`
`network.
`
`20. To the extent this limitation is not expressly or inherently disclosed in
`
`McElwain, in my opinion, it would have been obvious to a POSITA in light of
`
`McElwain, and a POSITA would have had a reasonable expectation of success in
`
`implementing the system in McElwain as described above. It would have been
`
`obvious to a POSITA that if a network owned by another service provider had a
`
`contractual agreement with the user’s cellular provider not to charge for roaming,
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`said another network provider could adopt various CS names, such as
`
`7
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`Dell Inc., Ex. 1032
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`
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`
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`“UI_NOT_ROAMING” and “UI_NOT_ROAMING_PREPAID” to have the same
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`UI name.
`
`Uchida Discloses Displaying A Home Network Name
`2.
`21. Uchida teaches that a “Home System Tag” is the mobile station’s
`
`display name for all the networks on the home SID/NID list. Ex. 1005 ¶¶ 17, 37,
`
`Fig. 3A. In my opinion, a POSITA would have understood that adding service
`
`providers that have contractual agreements with the user’s cellular provider to the
`
`Home SID/NID List would allow it to be associated with the same “Home System
`
`Tag,” and thus, display the home network display name.
`
`22. To the extent that this limitation is not expressly or inherently disclosed
`
`in Uchida or rendered obvious by Uchida, in my opinion, it would have been obvious
`
`to a POSITA in light of Uchida in combination with McElwain. It would have been
`
`obvious to a POSITA to determine the network display name of the MCC/MNC pairs
`
`in McElwain’s Cousin SID list to be associated with the “Home System Tag” in
`
`Uchida, which would be displayed if the mobile device connects with any network
`
`on the Cousin SID list. See also Ex. 1003 ¶ 362. It also would have been obvious
`
`to a POSITA to include MCC/MNC pairs on the Cousin SID list for networks with
`
`contractual agreements with the user’s cellular provider, and to have the “Home
`
`System Tag” display the actual service provider name, such as “AT&T Wireless.”
`
`8
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`Dell Inc., Ex. 1032
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`
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`Thus, in my opinion, the combination of McElwain and Uchida render obvious
`
`displaying a home network name.
`
`3. Hicks Discloses Displaying A Home Network Name
`23. Hicks discloses that an OPL file containing multiple PLMNs that point
`
`to an alphanumeric tag in a PNN file. And for the PLMNs that point to the first
`
`record in the PNN file, that PLMN is determined to be a “home” network and the
`
`home network name stored in the PNN file is displayed. Ex. 1006 at 2:3–24, 2:56–
`
`3:22, 1:7–29, Figs. 2–3. Hicks further teaches that “the first record of the PNN file
`
`could be for the home networks, and the alpha tag could be ‘Carrier X.’” The alpha
`
`tag for “Carrier X” would have been understood by a POSITA to be a placeholder
`
`for the actual name of the service provider (i.e., carrier). Id. at 2:19–24. Hicks does
`
`not simply teach displaying “Home” or “Roam” and expressly teaches that the actual
`
`name of the user’s service provider would be displayed.
`
`24. Additionally, in my opinion, a POSITA would have understood that the
`
`words “Home” and “Roam” as used in Figure 3 of Hicks are again variables for a
`
`home network and roaming network respectively. Thus, a POSITA would have
`
`known how to configure the “Home” alphanumeric tag to be an actual service
`
`provider name like “AT&T Wireless” as required under Patent Owner’s proposed
`
`narrower construction or some other name string for home-related networks as
`
`required under the Board’s construction. Thus, in my opinion, Hicks teaches
`
`9
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`Dell Inc., Ex. 1032
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`
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`displaying a home network display name, whether that is defined to mean a home-
`
`related network or the name of the actual service provider.
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`25. Additionally, it is my opinion that the PNN file would have had the
`
`capability to store longer more descriptive service provider names other than
`
`“Home” or “Roam.” For example, Hicks expressly teaches that the alpha tag could
`
`be “Carrier X” or “Carrier X Roam.” See Ex. 1006 at 2:19–24. Thus, the PNN file
`
`is capable of storing longer more descriptive service provider names as expressly
`
`taught by Hicks and would have been more than able to store the actual service
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`provider name, such as “AT&T Wireless.”
`
`26. To the extent that this limitation is not expressly or inherently disclosed
`
`in Hicks, in my opinion, it would have been obvious to a POSITA in light of Hicks
`
`and McElwain, or Hicks with McElwain and Uchida, and a POSITA would have
`
`been motivated to combine these references and had a reasonable expectation of
`
`success in doing so. See also Ex. 1003 ¶¶ 370, 377. In my opinion, it would have
`
`been obvious to a POSITA to determine the home network display name using
`
`McElwain’s Cousin SID list or the Cousin SID list in the McElwain-Uchida
`
`combination, where each of the networks in the Cousin SID list would be in Hicks’s
`
`OPL file that point to the “home” tag in the PNN file. See also Ex. 1003 ¶ 374.
`
`10
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`Dell Inc., Ex. 1032
`
`
`
`
`
`B. All Asserted Invalidity Combinations Disclose The Use of Multiple
`MCC/MNC Pairs Corresponding to The Home Networks of The HPLMN
`List
`27.
`
`It is my opinion that the prior art references disclose the use of multiple
`
`MCC/MNC pairs corresponding to the home networks of the HPLMN list. This
`
`term appears in claim elements 1[c], 6[e], & 11[f]. I understand that the Patent
`
`Owner has made arguments that McElwain, Uchida, Hicks, and the 3GPP Standards
`
`do not disclose this limitation. It is my opinion that the above prior art references
`
`disclose this limitation either expressly or inherently or render this limitation
`
`obvious.
`
`1. McElwain and Uchida Disclose the Use of Multiple MCC/MNC
`Pairs Corresponding to the Home Networks of the HPLMN List
`the use of multiple MCC/MNC pairs
`28. McElwain discloses
`
`corresponding to the home networks of the HPLMN list. In Figure 4B of McElwain,
`
`after the mobile station receives a SID from a service provider, it “first determines
`
`if the received SID [i.e., MCC/MNC pair] is found in the Cousin SID list 200.” Ex.
`
`1004 ¶ 50, Fig. 4B. The SIDs in the Cousin SID can represent a plurality of
`
`networks, each of which is considered a “home” network. For example, as explained
`
`in McElwain, “[i]f the received SID matches any one of the stored SIDs in the
`
`Cousin SID list 200, the mobile station 10 . . . makes the determination that the
`
`category of the associated service provider is a Home service provider, and that the
`
`11
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`Dell Inc., Ex. 1032
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`
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`
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`mobile station 10 is not roaming.” Id. ¶ 46. Thus, the Cousin SID list a Home Public
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`Land Mobile Network (HPLMN) list.
`
`29. Uchida also discloses
`
`the use of multiple MCC/MNC pairs
`
`corresponding to the home networks of the HPLMN list. Uchida discloses a “Home
`
`SID/NID List” listing networks for which the home system tag will be displayed.
`
`Ex. 1005 ¶¶ 37, 81, Figs. 3A, 8. A POSITA would know that a SID/NID is the
`
`equivalent of a MCC/MNC pair in GSM networks. See also Ex. 1004 ¶ 40; Ex. 1003
`
`¶¶ 177, 215. Thus, in my opinion, it would have been obvious to a POSITA to adapt
`
`the teachings of McElwain and Uchida to a GSM system, and a POSITA would have
`
`had a reasonable expectation of success in doing so. As a result, it would have been
`
`obvious to a POSITA that the networks contained in the Home SID/NID List could
`
`comprise a list of MCC/MNC pairs and correspond to the home networks of an
`
`HPLMN list.
`
`30. To the extent that either McElwain or Uchida do not expressly or
`
`inherently disclose the use of multiple MCC/MNC pairs corresponding to the home
`
`networks of the HPLMN list, it would have been obvious over McElwain or
`
`McElwain in combination with Uchida. A POSITA would have understood that an
`
`MCC/MNC pair would be used in GSM systems instead of the SID/NID pairs
`
`discussed in McElwain and Uchida. See also Ex. 1003 ¶¶ 89, 100–108, 116. It
`
`would have been obvious to a POSITA to adapt the teachings of McElwain and
`
`12
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`Dell Inc., Ex. 1032
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`
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`Uchida to a GSM system, and a POSITA would have had a reasonable expectation
`
`of success in doing so. See also Ex. 1003 ¶¶ 89, 100–108, 116.
`
`31. Based on my review of the ’933 patent, it is my opinion that the
`
`’933 patent does not disclose that the multiple MCC/MNC pairs have to be in a “new
`
`file.” See Paper No. 25 at 20; Ex. 2005 ¶ 77. The ’933 patent teaches, instead, that
`
`the multiple MCC/MNC pairs are a list of MCC/MNC pairs that are “associated with
`
`a plurality of communication networks which are part of the ‘home network.’” E.g.,
`
`Ex. 1001 at 5:32–34. Therefore, it is my opinion that the ’933 patent requires that
`
`the list of MCC/MNC pairs are associated with a home network to consist of an
`
`HPLMN list and does not require that all the MCC/MNC pairs must be in a “new
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`file.”
`
`32.
`
`It is my opinion that a POSITA would know how to modify the HPLMN
`
`list taught by McElwain and Uchida in order to be operable and backwards
`
`compatible with legacy phones. Patent Owner argues that these references do not
`
`disclose how to resolve this compatibility issue. See Paper No. 25 at 20–21.
`
`However, I disagree. It is a straight-forward implementation decision as to which
`
`one of two simple and well known alternatives to use: (1) either modify an existing
`
`file to contain more information which would be properly interpreted by newer
`
`phones while being ignored by legacy phones or (2) include a new file to be used by
`
`new phones only. Both of these approaches yield predictable results and are
`
`13
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`Dell Inc., Ex. 1032
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`
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`routinely used as new features and capabilities are developed in a given set of
`
`products.
`
`the Use of Multiple MCC/MNC Pairs
`2. Hicks Discloses
`Corresponding to the Home Networks of the HPLMN List
`33. Hicks discloses the use of multiple MCC/MNC pairs corresponding to
`
`the home networks of the HPLMN list. Hicks teaches an OPL file having multiple
`
`PLMNs, each with a pointer to an alphanumeric tag in a PNN file. See Ex. 1006 at
`
`2:3–10, 2:46–63, Fig. 2. The PLMNs that point to the first record in the PNN file
`
`are determined to be a “home” network. See id. at 2:3–24, 2:56–3:22, 1:7–29, Figs.
`
`2–3. As I discussed above, there is no requirement in the ’933 patent that the
`
`HPLMN list has to be in a new file.
`
`34. Additionally, to the extent this limitation is not expressly or inherently
`
`disclosed by Hicks or rendered obvious by Hicks, it would have been obvious over
`
`McElwain, Uchida, and Hicks or McElwain and Hicks. A POSITA would have been
`
`motivated to combine Hicks with McElwain so that an OPL file for the McElwain-
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`Hicks system would contain the MCC/MNC pairs in the Cousin SID list, which
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`corresponds to the claimed HPLMN list. See also Ex. 1003 ¶ 374.
`
`3.
`
`The 3GPP Standards Disclose the Use of Multiple MCC/MNC
`Pairs Corresponding to the Home Networks of the HPLMN List
`35. The 3GPP Standards teach the that “[t]his version of the specification
`
`does not support multiple HPLMN codes.” Ex. 1007 at 13. However, by stating that
`
`14
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`Dell Inc., Ex. 1032
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`
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`“[t]his version of the specification does not support” this feature, TS-23.122 teaches
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`to a POSITA that the HPLMN Selector could be used, and was intended to be used,
`
`in future versions of the standard as an HPLMN list. See also Ex. 1003 ¶ 395.
`
`36.
`
` Additionally, a POSITA would have understood that “allow[ing]
`
`provision for multiple HPLMN codes,” while not supported in “this version” is a
`
`clear implication that it would be supported in a future version. See also Ex. 1003
`
`¶¶ 403, 443–445. Therefore, in my opinion, a POSITA would have understood that
`
`the 3GPP Standards disclose use of multiple MCC/MNC pairs corresponding to the
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`home networks of the HPLMN list.
`
`37. To the extent this limitation is not expressly or inherently disclosed by
`
`the 3GPP Standards or rendered obvious by the 3GPP Standards, in my opinion, this
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`limitation would have also been obvious over the 3GPP Standards and McElwain.
`
`A POSITA would have found it obvious to associate all home networks in the
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`HPLMN Selector with the same home network name, to result in an HPLMN list.
`
`See also Ex. 1003 ¶¶ 403, 443–445.
`
`C. The Secondary Considerations Do Not Support Nonobviousness
`I understand that the Patent Owner cites to an article dated May 19,
`38.
`
`2002 (Ex. 2011) as evidence of long-felt need. However, based on my review, at
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`least three of the four prior art references (Uchida, Hicks, and the 3GPP Standards)
`
`were published after this article. In my opinion, if a long-felt need existed, it would
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`15
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`Dell Inc., Ex. 1032
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`
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`have been solved by at least one of these three references and definitely before the
`
`’933 patent. For at least this reason, the satisfaction of the alleged long-felt need is
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`not due to the ’933 patent.
`
`39.
`
`I understand that Patent Owner alleges that the 3GPP Standards
`
`implemented a “new file” called an EHPLMN list that contained multiple
`
`MCC/MNC pairs. However, as I explained in more detail above, the older version
`
`of the 3GPP Standards already taught an HPLMN list even if it ultimately
`
`implemented a different list. Additionally, the ’933 patent does not disclose that the
`
`multiple MCC/MNC pairs must be in a “new file.” Even if the implementation of
`
`the EHPLMN list in the 3GPP Standards used a “new file,” I am not aware of any
`
`evidence that the 3GPP Standards adopted said “new file” by implementing any
`
`teachings of the ’933 patent. Thus, it is my opinion that there is no evidence of
`
`industry acceptance of the inventions in the ’933 patent.
`
`VI. ADDITIONAL REMARKS
`I currently hold the opinions expressed in this Declaration. My analysis
`
`40.
`
`may continue, and I may acquire additional information and/or attain supplemental
`
`insights that may result in added observations.
`
`41.
`
`I hereby declare that all statements made are of my own knowledge are
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`true and that all statements made on information and belief are believed to be true.
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`I further declare that these statements were made with the knowledge that willful
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`16
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`Dell Inc., Ex. 1032
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`
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`false statements and the like so made are punishable by fine or imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code and that such willful
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`false statements may jeopardize the validity of this proceeding.
`
`Executed this 13th day ofAugust, 2021, in Vienna, VA.
`
` . Apostolos K. Kakaes
`
`17
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`Dell Inc., Ex. 1032
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`Dell Inc., Ex. 1032
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`
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