`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`
`
`
`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
`
`
`
`Petitioner Dell Inc.’s Reply to Patent Owner’s Response
`
`
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`V.
`
`Page
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`A.
`“Home Network” ................................................................................... 2
`B.
`“Home Network Display Name”........................................................... 3
`III. GROUNDS 1–4: OBVIOUSNESS OVER MCELWAIN ALONE OR
`IN COMBINATION WITH UCHIDA, HICKS, OR BOTH .................................... 4
`A. Grounds 1–4 Disclose Displaying a Home Network Name ................. 5
`1. McElwain and Hicks Disclose Displaying a Home
`Network Name under the Board’s Construction and
`Patent Owner’s Unduly Narrow Construction ............................ 6
`2. McElwain and Uchida Disclose Displaying a Home
`Network Name When a User Is on a Network With a
`Contractual Relationship with the User’s Service
`Provider ....................................................................................... 9
`Grounds 1–4 Disclose the Use of Multiple MCC/MNC Pairs
`Corresponding to the Home Networks of the HPLMN List ...............12
`1. McElwain and Uchida Disclose an HPLMN List in a
`CDMA and GSM Environment ................................................13
`2. McElwain, Uchida, and Hicks Disclose to a Person of
`Ordinary Skill in the Art an HPLMN List That Is
`Backwards Compatible .............................................................14
`IV. GROUND 5: OBVIOUSNESS OVER THE 3GPP STANDARDS
`AND MCELWAIN ..................................................................................................15
`A.
`The 3GPP Standards Disclose the Use of Multiple MCC/MNC
`Pairs Corresponding to the Home Networks of the HPLMN List ......16
`SECONDARY CONSIDERATIONS ...........................................................18
`A.
`Long-Felt Need Not Met by ’933 Patent .............................................18
`B.
`Acceptance in Industry Not Attributable to ’933 Patent .....................19
`VI. CONCLUSION ..............................................................................................20
`
`
`B.
`
`
`
`i
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`TABLE OF AUTHORITIES
`
`Beckman Instruments, Inc. v. LKB Produkter AB,
`892 F.2d 1547 (Fed. Cir. 1989) ..................................................................... 17
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ....................................................................... 3
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) .............................................................. 17, 19
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`No. IPR2018-01129, 2020 WL 407146 (P.T.A.B. Jan. 24, 2020) ............... 20
`Superguide Corp. v. DirecTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ........................................................................ 3
`W. Union Co. v. MoneyGram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) .................................................................... 15
`
`
`
`
`
`ii
`
`
`
`

`

`
`
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`PETITIONER’S EXHIBIT LIST
`
`
`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)
`
`iii
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`Exhibit No.
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`
`1031
`1032
`
`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”)
`Deposition of Dr. Apostolos Kakaes (May 10, 2021)
`Third Declaration of Dr. Apostolos Kakaes
`
`iv
`
`
`
`

`

`
`
`
`I.
`
`INTRODUCTION
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`Dell Inc. (“Dell” or “Petitioner”) hereby submits this reply pursuant to
`
`37 C.F.R. § 42.23 and seeks cancellation of claims 1–4, 6–9, 11–14, and 19
`
`(the “Challenged Claims”) of the ’933 patent because they are unpatentable under
`
`35 U.S.C. § 103.
`
`The ’933 patent relates to displaying network names on mobile phones. The
`
`patent purports to solve customer confusion regarding roaming charges. As cellular
`
`technology evolved, many service providers expanded by acquiring new networks
`
`or entered into business relationships with other providers so that customers were
`
`not charged roaming fees when moving among partnering networks. The purported
`
`solution of the patent is simple: use an “HPLMN list” with any network considered
`
`a “home” network—including networks owned by the same provider and networks
`
`treated as “home” networks based on a business relationship—and display the same
`
`network name when connected to any of these “home” networks.
`
`However, the purported invention of the ’933 patent had already been
`
`disclosed in the prior art. Specifically, Petitioner presented five obviousness
`
`grounds demonstrating that all Challenged Claims are unpatentable. See generally
`
`Paper No. 1. Grounds 1–4 presented obviousness based on McElwain alone or in
`
`combination with Uchida, Hicks, or both. Ground 5 presented obviousness based
`
`
`
`1
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`on the 3GPP Standards and McElwain. See id. The Board instituted inter partes
`
`review of all claims challenged in the Petition. See generally Paper No. 12.
`
`In its Response, Patent Owner seeks to avoid these invalidity grounds by
`
`advancing little more than the same unduly narrow claim construction arguments
`
`and strained interpretations of the prior art that the Board already considered and
`
`rejected in the Institution Decision. As discussed below, none of these arguments
`
`are supported by the teachings of the patent, the disclosure of prior art, or the
`
`knowledge of one of ordinary skill in the art. Because Patent Owner has failed to
`
`rebut Petitioner’s showing that the Challenged Claims would have been obvious
`
`based on the Grounds presented in the Petition, Petitioner requests that all the
`
`Challenged Claims of the ’933 patent be cancelled.
`
`II. CLAIM CONSTRUCTION
`“Home Network”
`A.
`
`The Board construed “home 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.” Paper No. 12 at 10–11. Neither the Petitioner nor Patent Owner
`
`disputes the Board’s construction. See Paper No. 25 at 8.
`
`
`
`2
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`B.
`
`“Home Network Display Name”
`
`The Board 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.” Paper No. 12 at 12. Petitioner
`
`agrees with the Board’s construction of this term.
`
`Patent Owner disagrees and attempts to limit the construction to require “the
`
`actual names of such [service] providers.” Paper No. 25 at 9. However, as the Board
`
`found in its Institution Decision, there is nothing in the ’933 patent that limits the
`
`home network display name to only actual names of service providers. See Paper
`
`No. 12 at 12. As the Board noted, the ’933 patent states that the home network
`
`display name is the “name string used for mobile station’s display for all home-
`
`related networks.” See Ex. 1001 at 12:57–60, 13:37–39. Additionally, while the
`
`specification provides exemplary network display names such as “T-Mobile” and
`
`“AT&T Wireless,” the use of “e.g.” to introduce these indicates that they are merely
`
`examples “and is not limiting or required.” See Paper No. 12 at 12; see also
`
`Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Patent
`
`Owner could have, but did not, claim a “home service provider name.” Therefore,
`
`Patent Owner’s argument that the home network display name should exclude
`
`“anything other than a network provider name” and require “actual names of such
`
`
`
`3
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`service providers” improperly limits the claim to specific embodiments, which is
`
`contrary to the law.
`
`The Board should therefore reject Patent Owner’s proposed construction and
`
`adopt the construction set forth in the Institution Decision. However, as explained
`
`below, even if Patent Owner’s proposed construction were adopted, the Challenged
`
`Claims would nonetheless have been obvious based on the same Grounds.
`
`III. GROUNDS 1–4: OBVIOUSNESS OVER MCELWAIN ALONE OR IN
`COMBINATION WITH UCHIDA, HICKS, OR BOTH
`
`The Petition asserted that the Challenged Claims would have been obvious
`
`over McElwain alone (Ground 1), McElwain and Uchida (Ground 2), McElwain,
`
`Uchida, and Hicks (Ground 3), or McElwain and Hicks (Ground 4). See Paper No. 1
`
`at 10–48. In its Institution Decision, the Board thoroughly analyzed each ground for
`
`each of the Challenged Claims and agreed that Petitioner demonstrated a reasonable
`
`likelihood of prevailing on each ground. See Paper No. 12 at 19–48. Patent Owner’s
`
`Response offers no reason to deviate from this determination.
`
`For these Grounds, Patent Owner challenges only two limitations in its
`
`Response: (1) displaying a “home network display name” recited in claim elements
`
`1[e], 6[g], 11[h], & 19[c]; and (2) use of multiple MCC/MNC pairs in an “HPLMN
`
`list” recited in claim elements 1[c], 6[e], & 11[f]. Patent Owner’s arguments
`
`continue to ignore the express teachings in the prior art references raised by
`
`Petitioner, as well as the knowledge of a person of ordinary skill in the art, as
`
`
`
`4
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`described by Petitioner’s expert, Dr. Kakaes. Because these two limitations are
`
`taught and/or rendered obvious in the combinations presented in Grounds 1‒4, and
`
`because Patent Owner does not raise any arguments for any of the other the
`
`remaining claim limitations or any arguments that a person of ordinary skill in the
`
`art would not have been motivated to and successful in combining the references,
`
`the Board should find that all Challenged Claims would have been obvious over the
`
`combinations asserted Grounds 1‒4 in the Petition.
`
`A. Grounds 1–4 Disclose Displaying a Home Network Name
`
`Patent Owner offers two reasons why it believes the limitation is not taught in
`
`the prior art. Neither one has merit. First, Patent Owner argues that McElwain and
`
`Hicks individually fail to teach displaying a home network display name under the
`
`Patent Owner’s overly narrow construction, which requires displaying the actual
`
`name of the service provider. However, Patent Owner fails to argue that the
`
`references do not disclose displaying a home network display name under the
`
`Board’s construction, which simply requires “a name string.” Thus, if the Board’s
`
`construction is adopted, Patent Owner’s arguments necessarily fail. But even if the
`
`Board decides to adopt Patent Owner’s overly narrow construction, the references
`
`disclose this limitation as discussed in more detail below.
`
`Second, Patent Owner argues that McElwain and Uchida individually fail to
`
`teach displaying a home network display name because the references do not account
`
`
`
`5
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`for displaying a home network name when a user is on a network that has a
`
`contractual relationship with the user’s service provider. However, Patent Owner
`
`ignores that the Board’s construction of “home network” includes multiple networks
`
`operated by a user’s cellular provider, see Paper No. 12 at 10‒11, and Patent Owner
`
`does not dispute that McElwain and Uchida disclose multiple networks under this
`
`construction. Furthermore, even if the Challenged Claims required using the same
`
`home network name for network with whom the provider has a contractual
`
`relationship, Patent Owner ignores express teachings in the prior art of this exact
`
`arrangement.
`
`1. McElwain and Hicks Disclose Displaying a Home Network
`Name under the Board’s Construction and Patent Owner’s
`Unduly Narrow Construction
`
`McElwain and Hicks each teach displaying a home network display name
`
`under the Board’s construction and even under the Patent Owner’s narrower
`
`construction. Because Patent Owner does not argue that the prior art fails to teach
`
`this limitation under the Board’s construction, if the Board adopts its construction
`
`from the Institution Decision, then Patent Owner’s argument necessarily fails. But
`
`even if the Board decides to adopt Patent Owner’s narrower construction, both
`
`McElwain and Hicks teach displaying a home network name under the narrower
`
`construction.
`
`
`
`6
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`McElwain discloses displaying a home network name under Patent Owner’s
`
`narrower construction. As explained in Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response, McElwain discloses displaying the same home network name
`
`for multiple “home” networks, even under Patent Owner’s incorrect claim
`
`construction. See Paper No. 10 at 2‒3. Specifically, McElwain teaches that each
`
`MCC/MNC pair in the Cousin SID list is “identified as in the HOME category.”
`
`Ex. 1004 ¶ 52. As Dr. Kakaes explained, the terms “Cousin,” “Partner,” “Favored,”
`
`and “Neutral” used in the pseudo-code of McElwain would be recognized as
`
`variables. See Ex. 1031 at 100:9–101:15; Ex. 1032 ¶ 17. Additionally, the use of
`
`the “/*” notation indicates that the contents contained within the “/* . . . */” are
`
`commentary and is not what the actual code would read. Ex. 1032 ¶ 17. Thus, a
`
`person of ordinary skill in the art would understand that the actual display name
`
`would not be, for example, “Cousin,” but “Cousin” is simply a variable representing
`
`another name, such as the actual network name. Ex. 1032 ¶¶ 17–18.
`
`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 home network. See Ex. 1031 at 100:9–101:15;
`
`Ex. 1032 ¶ 18. For example, it would have been obvious to a person of ordinary
`
`skill in the art to set Cousin equal to, for example, “AT&T Wireless” (under Patent
`
`
`
`7
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`Owner’s proposed construction) or some other name string for home networks
`
`(under the Board’s construction). See Ex. 1032 ¶ 18.
`
`Hicks also teaches displaying a home network display name under Patent
`
`Owner’s construction. Hicks discloses that an OPL file containing multiple PLMNs
`
`that point to an alphanumeric tag in a PNN file; 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,’” where
`
`“Carrier X” would be the actual name of the service provider. Id. at 2:19–24;
`
`Ex. 1032 ¶ 23. This express disclosure directly contradicts Patent Owner’s
`
`argument that Hicks simply teaches displaying “Home” or “Roam” and does not
`
`display the actual name of the user’s service provider. Paper No. 25 at 15.
`
`Additionally, a person of ordinary skill in the art would have understood that
`
`the words “Home” and “Roam” as used in Figure 3 of Hicks are variables for a home
`
`network and roaming network. Ex. 1032 ¶ 24. Thus, it would have been within the
`
`knowledge of a person of ordinary skill in the art to configure the “Home”
`
`alphanumeric tag to be an actual service provider name like “AT&T Wireless”
`
`(under Patent Owner’s proposed narrower construction) or some other name string
`
`for home networks (under the Board’s construction). Ex. 1032 ¶ 24. Thus, Hicks
`
`
`
`8
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`teaches displaying a home network display name, where the display name is the
`
`name of the actual service provider.
`
`Patent Owner further argues that the short variable names used as examples
`
`in Figure 3 “suggest the PNN file does not have the capability for longer more
`
`descriptive service provider actual names.” Paper No. 25 at 15. This argument is
`
`wholly unsupported by any evidence and contrary to the express teachings of Hicks,
`
`which provides that the alpha tag could be “Carrier X” or “Carrier X Roam.” See
`
`Ex. 1006 at 2:19–24. Patent Owner fails to cite to anything to contradict this express
`
`teaching and support its assertion that the PNN file is not capable of storing longer
`
`names. Indeed, a device’s memory module or SIM card at the time of the patent
`
`would have been more than capable of handling longer names. Ex. 1032 ¶ 25.
`
`2. McElwain and Uchida Disclose Displaying a Home Network
`Name When a User Is on a Network With a Contractual
`Relationship with the User’s Service Provider
`
`Patent Owner argues that the prior art fails to disclose displaying a home
`
`network name when on a network apart from that of the user’s service provider. See
`
`Paper No. 25 at 11‒15. As an initial matter, displaying a home network name when
`
`on a network apart from that of the user’s service provider is not a requirement of
`
`the claims, and thus whether or not the prior art discloses this limitation is irrelevant.
`
`In any event, Patent Owner is wrong as a matter of fact because each of Grounds 1‒
`
`
`
`9
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`4 teaches displaying a home network name when a user is on a network with a
`
`contractual relationship with the user’s service provider.
`
`There is no requirement in the claims that an HPLMN list necessarily include
`
`networks apart from those operated by the user’s own service provider. The Board
`
`construed “home network” to include one or both of “networks operated by a user’s
`
`cellular provider, including networks acquired by that provider” and “networks with
`
`whom the provider has a contractual relationship that would obviate roaming
`
`charges.” See Paper 12 at 10‒11. Patent Owner does not dispute that the
`
`combinations in Grounds 1‒4 disclose displaying the same home network name for
`
`multiple networks operated by a user’s cellular provider (for example, where a
`
`provider has multiple of its own network but where there are no networks with whom
`
`the provider has a reciprocal roaming agreement). While the ’933 patent
`
`additionally provides for using the same home network name for networks with
`
`which a provider has a contractual relationship, there is nothing in the claims that
`
`requires an HPLMN list to include these networks with a contractual relationship.
`
`In other words, an HPLMN list with multiple home networks all owned by the same
`
`carrier, such as ones added by virtue of an acquisition, is covered by the Challenged
`
`Claims and is indisputably disclosed in Grounds 1‒4.
`
`In any event, even if Patent Owner is correct that the claims require displaying
`
`a home network name when a user is on a network that has a contractual relationship
`
`
`
`10
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`with the user’s service provider, McElwain and Uchida teach and render obvious
`
`that limitation. For example, McElwain expressly teaches that a list of home
`
`networks that may include networks associated with the user’s network via a
`
`“business relationship,” i.e., a contractual relationship. Ex. 1004 ¶ 47. Indeed,
`
`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. (emphasis added). Thus, contrary to Patent
`
`Owner’s argument, McElwain expressly teaches displaying the user’s service
`
`provider name when on another network.
`
`Finally, even if the Board finds that McElwain does not expressly teach this
`
`limitation under Patent Owner’s erroneous view, it would have been obvious based
`
`on McElwain and/or Uchida. For example, in McElwain, if a network owned by
`
`another service provider had a contractual agreement with the user’s cellular
`
`provider not to charge for roaming, the service provider would simply have to
`
`modify the Cousin SID list in order to account for this change by adding the
`
`MCC/MNC pair of the networks with contractual agreements. Ex. 1032 ¶ 22. A
`
`person of ordinary skill in the art would have understood that modifying the Cousin
`
`SID list in this manner would allow the home network display name to display when
`
`the user is on a network that has a contractual agreement with the user’s service
`
`
`
`11
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`provider. Ex. 1032 ¶ 22. Similarly, 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. Like with McElwain, a person of ordinary skill in the
`
`art 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.” Ex. 1032 ¶¶ 21–22.
`
`B. Grounds 1–4 Disclose the Use of Multiple MCC/MNC Pairs
`Corresponding to the Home Networks of the HPLMN List
`
`Patent Owner offers two reasons why it believes use of multiple MCC/MNC
`
`pairs in an HPLMN list is not taught in the prior art. Neither one has merit. Patent
`
`Owner first argues that McElwain and Uchida individually fail to teach the use of an
`
`HPLMN list because the references are CDMA-oriented, and that a person of
`
`ordinary skill in the art would not consider McElwain and Uchida practical for a
`
`GSM environment. Paper No. 25 at 19. However, this argument, which is repeated
`
`from Patent Owner’s Preliminary Response, has already been rejected by the Board.
`
`Moreover, Patent Owner once again ignores the express teachings in the prior art.
`
`Patent Owner next argues that McElwain, Uchida, and Hicks individually fail
`
`to teach an HPLMN list because a person of ordinary skill in the art would have been
`
`faced with compatibility problems, which was solved by the ’933 patent by creating
`
`a new HPLMN list. Patent Owner claims that because the 3GPP Standards had not
`
`yet implemented the ability to handle multiple HPLMN codes, that legacy phones
`
`
`
`12
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`would not have been able to process such files, and thus, an entirely new file was
`
`required. However, Patent Owner improperly creates a new limitation not required
`
`by the claims in the ’933 patent and again ignores the knowledge of a person of
`
`ordinary skill in the art, as explained in more detail below.
`
`1. McElwain and Uchida Disclose an HPLMN List in a CDMA
`and GSM Environment
`
`Both McElwain and Uchida disclose the use of multiple MCC/MNC pairs
`
`corresponding to the home networks of the HPLMN list. Even though McElwain’s
`
`and Uchida’s disclosures are CDMA-oriented, both McElwain and Uchida expressly
`
`disclose that their methods “may be employed alternatively in GSM systems,”
`
`something that the Board has already acknowledged in its Institution Decision.
`
`Ex. 1004 ¶ 40; Ex. 1005 ¶ 6; Paper No. 12 at 28–30. Moreover, a person of ordinary
`
`skill in the art 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.
`
`Ex. 1003 ¶ 89, 100–108, 116; Ex. 1032 ¶ 29. It would have been obvious to a person
`
`of ordinary skill in the art to adapt the teachings of McElwain and Uchida to a GSM
`
`system, and a person of ordinary skill in the art would have had a reasonable
`
`expectation of success in doing so. Ex. 1003 ¶ 89, 100–108, 116; Ex. 1032 ¶ 29.
`
`Thus, both McElwain and Uchida disclose the use of multiple MCC/MNC pairs
`
`corresponding to the home networks of the HPLMN list.
`
`
`
`13
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`2. McElwain, Uchida, and Hicks Disclose to a Person of
`Ordinary Skill in the Art an HPLMN List That Is Backwards
`Compatible
`
`Patent Owner next argues that McElwain, Uchida, and Hicks individually fail
`
`to teach an HPLMN list because a person of ordinary skill in the art would have been
`
`faced with compatibility problems, which was solved by the ’933 patent by creating
`
`a “new HPLMN list.” Paper No. 25 at 20. However, the ’933 patent says nothing
`
`about the multiple MCC/MNC pairs having to be in a “new file” and Patent Owner
`
`cites to nothing for this proposition—requiring an HPLMN list is not the same as
`
`requiring a new file. Ex. 1032 ¶ 31. Instead, the multiple MCC/MNC pairs are
`
`simply a list of MCC/MNC pairs “associated with a plurality of communication
`
`networks which are part of the ‘home network.’” E.g., Ex. 1001 at 5:32–34.
`
`Ultimately, the ’933 patent merely requires that the multiple MCC/MNC pairs are
`
`associated with a home network to consist of an HPLMN list rather than require that
`
`all the MCC/MNC pairs must be in a “new file.” Ex. 1032 ¶ 31.
`
`Moreover, Patent Owner again relies on the argument that the HPLMN
`
`Selector from the 3GPP Standards did not implement multiple HPLMN codes at the
`
`time. Paper No. 25 at 20. However, Patent Owner already made this argument,
`
`which the Board rejected. As the Board stated in its Institution Decision, the fact
`
`that the 3GPP Standards state that an HPLMN Selector with multiple MCC/MNC
`
`pairs is not yet implemented does not detract from what the standards disclose to a
`
`
`
`14
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`person of ordinary skill in the art, which is “an explicit teaching of an HPLMN
`
`Selector with multiple MCC/MNC pairs.” See Paper No. 12 at 59 (emphasis in
`
`original).
`
`Finally, even if the HPLMN list must be in a “new file,” “applying computer
`
`and internet technology to replace older electronics” is within the knowledge of a
`
`person of ordinary skill in the art and renders the claim limitation obvious. See W.
`
`Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010);
`
`Ex. 1032 ¶ 32. It would have been well within the knowledge of a person of ordinary
`
`skill in the art to modify the HPLMN list taught by McElwain and Uchida in order
`
`to be operable and backwards compatible with legacy phones by modifying an
`
`existing file that would be properly interpreted by newer phones while ignored by
`
`legacy phones or include a new file to be used by new phones only. Ex. 1032 ¶ 32.
`
`Both of these approaches yield predictable results and are routinely used as new
`
`features and capabilities are developed. Ex. 1032 ¶ 32.
`
`IV. GROUND 5: OBVIOUSNESS OVER THE 3GPP STANDARDS AND
`MCELWAIN
`
`The Petition asserted that the Challenged Claims would have been obvious
`
`over the 3GPP Standard and McElwain (Ground 5). See Paper No. 1 at 48–67. In
`
`its Institution Decision, the Board thoroughly analyzed Ground 5 for each of the
`
`Challenged Claims and agreed that Petitioner demonstrated a reasonable likelihood
`
`
`
`15
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`of prevailing on Ground 5. See Paper No. 12 at 48–69. Patent Owner’s Response
`
`offers no reason to deviate from this determination.
`
`Patent Owner’s challenges to McElwain have already been discussed with
`
`respect to Grounds 1–4 in the previous section. See supra Section III. With respect
`
`to the 3GPP Standards, Patent Owner argues only that the 3GPP Standards fail to
`
`disclose use of multiple MCC/MNC pairs in an HPLMN list recited in claim
`
`elements 1[c], 6[e], & 11[f] based on the fact that the 3GPP Standards had not yet
`
`implemented multiple HPLMN codes at the time. However, the Board has already
`
`rejected this argument. See Paper No. 12 at 55–60. Patent Owner again does not
`
`separately raise any arguments that the combination of the references does not teach
`
`the above limitation, nor does Patent Owner raise any arguments for any of the other
`
`the remaining claim limitations. Thus, the Board should find that all Challenged
`
`Claims would have been obvious over Ground 5 for the same reasons as detailed in
`
`the Petition and as set forth below.
`
`A. The 3GPP Standards Disclose the Use of Multiple MCC/MNC
`Pairs Corresponding to the Home Networks of the HPLMN List
`
`The 3GPP Standards disclose the use of multiple MCC/MNC pairs
`
`corresponding to the home networks of the HPLMN list. As it did in the Preliminary
`
`Response, Patent Owner once again errs by focusing only on what the 3GPP
`
`Standards had implemented at the time, and not what it explicitly taught to a person
`
`of ordinary skill in the art would be done in future standards. As the Board already
`
`
`
`16
`
`
`
`

`

`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s
`Response in IPR2020-01157
`
`found, while “[t]his ve