UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DELL, INC.,
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`Petitioner
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`v.
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`3G LICENSING S.A.,
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`Patent Owner
`
`Case IPR2020-1157
`Patent No. 7,274,933
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`PATENT OWNER’S SUR-REPLY
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
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`1
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL, INC.,
`
`Petitioner
`
`v.
`
`3G LICENSING S.A.,
`
`Patent Owner
`
`Case IPR2020-1157
`Patent No. 7,274,933
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`1
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`TABLE OF CONTENTS
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`
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`CLAIM CONSTRUCTION ............................................................................ 2
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`A.
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`“Home Network Display Name”........................................................... 2
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`III. GROUNDS 1-5 FAIL FOR LACK OF DISCLOSURE OF DISPLAYING A
`
`HOME NETWORK DISPLAY NAME .......................................................... 4
`
`A.
`
`
`B.
`
`
`Recasting McElwain’s Disclosures as Comments in Code Confuses
`What the Reference Discloses ............................................................... 4
`
`Petitioner’s New Argument Pertaining to at Least the Uchida
`Reference Fails ...................................................................................... 6
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`C. Hicks’ Disclosure of a “Carrier X” is Insufficient to Disclose the ’933
`
`Patent’s Innovations .............................................................................. 7
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`IV. GROUNDS 1-5 FAIL FOR NOT DISCLOSING THE USE MULTIPLE
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`MCC/MNC PAIRS AS HOME NETWORK IDENTIFIERS ON A HOME
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`NETWORK DISPLAY LIST .......................................................................... 8
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`V.
`
`
`SECONDARY CONSIDERATIONS CONTINUE TO SUPPORT A
`FINDING OF NON-OBVIOUSNESS ..........................................................13
`
`A.
`
`B.
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`Long-Felt but Unsolved Need .............................................................13
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`Industry Acceptance ............................................................................14
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`VI. CONCLUSION ..............................................................................................15
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`1
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`TABLE OF AUTHORITIES
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`Cases Page(s)
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`Ericsson Inc. v. Intellectual Ventures I LLC,
` 901 F.3d 1374 (Fed. Cir. 2018) .............................................................................. 6
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`2
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`TABLE OF EXHIBITS
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`
`
`Description
`Exhibit
`2001 Declaration of Stu Lipoff in Support of Patent Owner
`
`2002 Affidavit of Stephanie Berger
`
`2003 Affidavit of Neil Benchell
`
`2004 Affidavit of Andrew DeMarco
`
`2005 Second Declaration of Stu Lipoff in Support of Patent Owner
`
`2006
`
`3rd Generation Partnership Project; Technical Specification Group
`Core Network; NAS Functions related to Mobile Station (MS) in idle
`mode (Release 7) (3GPP TS 23.122 V7.0.0) (“TS 23.122 V7.0.0”)
`3rd Generation Partnership Project; Universal Mobile
`Telecommunications (UMTS); Characteristics of the USIM
`application (Release 6) (3GPP TS 31.102 V6.8.0) (“TS-31.102
`V6.8.0”)
`“The North American Official Cellular User’s Guide” Available to
`Help Cellular Telephone Users, Business Wire, December 18, 1990
`2009 Amy Zuckerman, Those Black Holes in Your Mobile Phone Service,
`New York Times, December 24, 2000
`Nancy Gohring, Falling Short of Replacement: Wireless Carrier Plans
`Compete with Landline but Don’t Cut it Out of the Equation,
`Telephony, April 27, 2998
`Judy Strausbaugh, Oh, Give me a Cell Phone Where the Signals Won’t
`Roam, Sunday News (Lancaster, PA), May 19, 2002
`
`2007
`
`2008
`
`2010
`
`2011
`
`2012 Settlement Agreement dated August 4, 2021
`
`2013 Third Declaration of Stu Lipoff in Support of Patent Owner
`
`3
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`
`
`I.
`
`INTRODUCTION
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`Petitioner’s Reply generally reiterates their previous arguments and leaves
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`many of Patent Owner’s arguments and evidence from its Response unrebutted.
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`The few counter-assertions made by Petitioner to Patent Owner’s Response are
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`either new arguments just now raised, or fail to support Petitioner’s arguments.
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`Indeed, rather than attempt to refute Patent Owner’s position concerning the
`
`construction of the term “Home Network Display Name,” Petitioner merely
`
`restates the Board’s position from the Institution Decision. (Paper No. 31 at 3.)
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`
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`Petitioner’s only responsive arguments—pertaining to whether the asserted
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`references disclose displaying a home network display name when a user
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`equipment (“UE”) is not on a user’s service provider’s network—are each
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`unavailing. Specifically, Petitioner’s attempts to remedy the shortcomings in the
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`McElwain reference cause more confusion than they resolve; the assertions
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`regarding Uchida contain new arguments that nonetheless fail because they seek to
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`read-out the very purpose of the ’933 patent; and Petitioner’s arguments regarding
`
`Hicks fail to demonstrate why a POSITA would understand the reference to
`
`disclose displaying a home network display name. Taken together, these
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`arguments are insufficient to remedy the deficient Petition.
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`
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`On the subject of whether the asserted references disclose the use of multiple
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`MCC/MNC pairs on an HPLMN list for use in network identification, Petitioner
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`once more leaves most of Patent Owner’s arguments and expert testimony from its
`
`1
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`
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`Response unaddressed. With respect to those arguments Petitioner does engage
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`with, Petitioner persists in asserting that the HPLMN Selector with Access
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`Technologies disclosed in the 3GPP Standards discloses the use of multiple
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`MCC/MNC pairs on an HPLMN list, yet ignore the fact that the plain language of
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`the 3GPP Standards makes it explicit that the MCC/MNC pairs are only to be used
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`to access the capabilities of a network, not to use them for network identification.
`
`Finally, Petitioner’s assertions regarding the evidence of secondary
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`considerations of nonobviousness similarly fail. The diversity of methods and
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`technologies of Petitioner’s references indicate that there was no consensus in the
`
`art to take the allegedly “obvious” step of implementing the innovations of the
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`’933 patent. As a whole, Petitioner’s Reply fails to remedy any of the defects in its
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`Petition, and thus the Petition should be denied and no claims of the ’933 patent
`
`canceled.
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`II.
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`CLAIM CONSTRUCTION
`
`A.
`
`“Home Network Display Name”
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`In its Institution Decision, the Board identified an alleged disconnect
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`between how Patent Owner and Petitioner used the term “Home Network Display
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`Name,” and provided a preliminary construction for which neither party had
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`previously argued. In coming to its construction, the Board overlooks the
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`particular emphasis the Patentee placed on the names of service providers. As the
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`Patent Owner pointed out in its Response, the Board relied on a particular
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`2
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`
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`parenthetical example to suggest that the name may include, but not be limited to,
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`the name of a service provider. But this example only uses the names of service
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`providers. (Paper No. 25 at 9) (citing Ex. 2005 at ¶ 53.) Further, the parenthetical
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`example of “(e.g., ‘T-Mobile’ or ‘AT&T Wireless’)” appears in other locations of
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`the ’933 patent where the Patentee concentrates the focus on service provider
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`names exclusively:
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`After Selecting and registering with a particular network (e.g. the
`home networks), the mobile station retrieves and displays a service
`provider name (e.g., “T-Mobile” or AT&T Wireless”)1 from the
`SSIM which corresponds to the unique MCC and MNC combination
`of the selected network.
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`(Ex. 1001 at 1:46-50.) Patent Owner additionally provided expert testimony
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`stating that the “natural understanding of a POSITA was that the ‘e.g.’ is intended”
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`to include the names of service providers. (Paper No. 25 at 9) (citing Ex. 2005 at
`
`¶ 53.)
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`For their part, Petitioner merely reiterates the Board’s holding and does not
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`attempt to refute any of the arguments raised in Patent Owner’s Response. (Paper
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`No. 31 at 3-4.) In particular, Petitioner’s Reply never addresses the above
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`arguments and leave Patent Owner’s evidence unrebutted. As a result, Patent
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`Owner respectfully requests that the Board reconsider its preliminary construction.
`
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`1 Unless otherwise noted, all emphasis in this brief is added.
`3
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`
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`III. GROUNDS 1-5 FAIL FOR LACK OF DISCLOSURE OF
`DISPLAYING A HOME NETWORK DISPLAY NAME
`
`A.
`
`Recasting McElwain’s Disclosures as Comments in Code
`Confuses What the Reference Discloses
`
`Petitioner’s arguments regarding McElwain’s disclosure of displaying a
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`home network name only serve to cast greater doubt on whether a POSITA would
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`understand that McElwain discloses such functionality. Specifically, Petitioner
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`relies throughout its Petition on paragraph 54 of McElwain, arguing that it
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`demonstrates that certain alphatags can be granted to a network based on its status.
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`(See, e.g., Paper No. 1 at 31-32.) But as Patent Owner has identified, this
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`paragraph at most discloses the display of vague terms such as “Home,” “Cousin,”
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`“Partner,” “Favored,” or “Neutral” when on another network, not a user’s service
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`provider’s name based on contractual obligations as claimed by the ’933 patent.
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`(Paper No. 25 at 11-13.)
`
`In their Reply Petitioner asserts a new argument that the terms appearing in
`
`paragraph 54 are mere comments in code, and not what would actually be
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`displayed on a UE. (Paper No. 31 at 7.) If paragraph 54 only illustrates comments
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`in code, as Petitioner now argues, then the “names here” mentioned in paragraph
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`54 discloses even less than what Petitioners have asserted, merely indicating that
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`different comments may be inserted into the code with different names. This
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`undermines Petitioner’s subsequent argument that paragraph 54 teaches the “UI
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`4
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`
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`uses [its] own naming convention,” because this “naming convention” pertains to
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`comments in code as opposed to home network display names.
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`Effectively, Petitioner wants to have it both ways: the code shown in
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`paragraph 54 is material to demonstrate that the UI utilizes its own naming
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`convention, but that same code is immaterial and should be disregarded to the
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`extent that naming convention is outside the scope of the claims of the ’933 patent.
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`Further, Petitioner claims “it would have been obvious to a person of ordinary skill
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`in the art to set Cousin equal to, for example, AT&T Wireless’ (under Patent
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`Owner’s proposed construction) or some other name string for home networks
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`(under the Board’s construction).” (Paper No. 31 at 7-8.) The only basis for this
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`claim is Petitioner’s expert, who provides the same naked conclusion without any
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`basis. (Id. at 8 (citing Ex. 1032 at ¶ 18).) What is clear is that McElwain does not
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`disclose displaying the name of a user’s service provider—or any other alternative
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`of a “home network display name”—while on another network. It explicitly
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`teaches, if anything, the display of different names (e.g., “Cousin,” “Favored,”
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`“Neutral”) when the mobile station is operating on a non-home network. (See
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`Paper No. 25 at 11-13.) Petitioner’s argument that such labels are merely used in
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`“commentary” do not transform those labels into something that tracks the claims
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`of the ’933 patent.
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`5
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`Thus, Petitioner’s Reply questions the sufficiency of the McElwain
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`reference and does not demonstrate that McElwain discloses the display the name
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`of a user’s service provider while on another network.
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`B.
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`Petitioner’s New Argument Pertaining to at Least the Uchida
`Reference Fails
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`In its Reply, Petitioner argues—also for the first time—that displaying a
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`home network name when on a network apart from that of the user’s service
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`provider is not a requirement of the claims, and thus whether the prior art discloses
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`the limitation is irrelevant. (See Paper No. 31 at 9.) This argument, while not a
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`new ground for invalidity, does not “merely expand[] on a previously argued
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`rationale” because it has no express link to any prior Petitioner argument, and thus
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`should be stricken from Petitioner’s Reply. See, Ericsson Inc. v. Intellectual
`
`Ventures I LLC, 901 F.3d 1374, 1376 (Fed. Cir. 2018).
`
`Nevertheless, Petitioner’s new argument is unavailing. Patent Owner argued
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`that Uchida fails to disclose displaying a home network name when on a network
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`apart from that of the user’s service provider. (Paper No. 25 at 14.) Previously,
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`Petitioner merely made conclusory statements that Uchida discloses displaying a
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`mobile station’s name for all networks on the SID/NID list, an argument Patent
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`Owner has rebutted in its Response. (Id. at 14). Now, Petitioner seeks to read-out
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`the very purpose of the ’933 patent in an attempt to salvage its invalidity argument.
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`6
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`
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`The ’933 patent explicitly mentions the scenario of user confusion regarding
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`roaming charges when the names of networks apart from that of the user’s service
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`provider are displayed:
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`In a more cooperative network relationship, the subscriber might incur
`only standard charges (i.e. no roaming charges) using the alternative
`network. Per the ONS naming procedure, however, a service provider
`name different from that of the home network is displayed on the
`mobile station. This may be confusing to a subscriber who may
`believe that, for example, roaming charges are being incurred due to
`the use of the alternative network when in fact they are not.
`
`(Ex. 1001 at 2:1-8.) Indeed, the ’933 patent makes clear that in order to
`
`accomplish this goal MCC/MNC pairs for networks other than those of the user’s
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`service provider would need to be included on the HPLMN list. (See Ex. 1001 at
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`12:41-60, Figs. 4 & 5) (describing storing the list of MCC/MNC pairs, which
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`include networks featured in fig. 4 or “another home network not shown.”)
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`Petitioner cannot simply ignore one of the central problems sought to be solved by
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`the ’933 patent in an attempt to salvage Uchida (or any other reference), when
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`those references fail to disclose the display of a home network name when on a
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`non-service provider network.
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`C. Hicks’ Disclosure of a “Carrier X” is Insufficient to Disclose the
`’933 Patent’s Innovations
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`Petitioner asserts that Hicks discloses the display of a home network display
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`name simply because it suggests that “Carrier X” could be an alphatag used by the
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`system. (Paper No. 31 at 8-9.) Yet Hicks does not disclose that such a tag would
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`be preferable or explain why that may be the case to a POSTIA. Indeed, in its
`7
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`examples, the Hicks reference itself relies instead on the terms “Home” and
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`“Roam” alone. (See, e.g., Ex. 1006 at Fig. 3)
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`Further, Hicks does not disclose relying on the existence of consumer
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`charges, or the absence thereof, to display the user’s home network name when
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`connected to another network, as claimed by the ’933 patent. (Ex. 2005 at ¶ 62.)
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`Hicks merely stating that an alphatag could be styled “Carrier X” provides no
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`disclosure of displaying a user’s service provider’s name when on the network of
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`another service provider, and thus does not remedy Hicks’ shortcomings.
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`Moreover, the Board has adopted a construction of “home network” that
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`includes networks with whom the provider has a contractual relationship that
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`would obviate roaming charges, yet Hicks nowhere discloses any consideration of
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`such a network. (See Paper No. 10 at 3.) Petitioner’s arguments regarding Hicks
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`ignore this construction, and thus Petitioner impermissibly seeks to relitigate a
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`decided claim construction matter already decided by the Board—that home
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`networks include networks with whom the user’s service provider has a
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`contractual relationship that would obviate roaming charges. Petitioner’s
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`arguments here must, as a result, fail.
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`IV. GROUNDS 1-5 FAIL FOR NOT DISCLOSING THE USE MULTIPLE
`MCC/MNC PAIRS AS HOME NETWORK IDENTIFIERS ON A
`HOME NETWORK DISPLAY LIST
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`Petitioner’s conclusory assertions that “[i]t would have been obvious to a
`
`person of ordinary skill in the art to adapt the teachings of McElwain and Uchida
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`8
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`
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`to a GSM system,” and of a POSITA having a reasonable expectation of success,
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`are unavailing and only supported by equally conclusory expert testimony. As
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`Patent Owner stated in its Response, McElwain and Uchida disclose methods
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`pertaining to SID/NID lists in a CDMA environment, as opposed to the ’933
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`patent’s MCC/MNC lists in a GSM network environment. (Paper No. 25 at 19.)
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`Petitioner cites portions of McElwain and Uchida which simply state only that
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`their methods “may be employed alternatively in GSM systems,” but provide no
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`further guidance to a POSITA. (Paper No. 31 at 13) (citing Ex. 1004 at ¶ 40; Ex.
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`1005 at ¶ 6.)
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`Petitioner’s expert, Dr. Kakaes, provides similar cursory and unsupported
`
`testimony:
`
`A POSITA would know that a SID/NID is the equivalent of a
`MCC/MNC pair in GSM networks. 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.
`
`(Ex. 1032 at ¶ 29.) Petitioner’s assertions provide no explanation about how or
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`why a POSITA would have found it obvious to apply McElwain’s and Uchida’s
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`foreign-environment teachings in GSM, and neither does Dr. Kakaes. Indeed,
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`Petitioner fails to provide any rebuttal to most of Patent Owner’s arguments raised
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`in its Response.
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`In its response, Patent Owner raised multiple bases why a POSITA would
`
`not understand McElwain’s or Uchida’s CDMA methods to be applicable in
`
`9
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`
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`CDMA. (Paper No. 25 at 19-21.) Regarding the fact that McElwain and Uchida
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`provide no teaching as to how to implement their multiple SID/NID list system in
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`an environment where the allegedly “corresponding” list was not capable of
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`supporting more than one network identifier (Paper No. 25 at 19), Petitioner
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`merely reiterates its position from its original Petition. Petitioner likewise fails to
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`rebut Patent Owner’s argument that while the ’933 patent solved for this
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`compatibility issue by using a SIM card, neither McElwain nor Uchida make more
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`than passing reference to SIM cards.2 (Id. at 20-21).
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`The rebuttals Petitioner does offer are unavailing. In its response, Patent
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`Owner argued that a POSITA would not consider implementing McElwain’s and
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`Uchida’s CDMA methods in GSM because the resulting compatibility issues
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`arising from such implementation would render the process impracticable. (Paper
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`No. 31 at 14-15.) In response, Petitioner asserts that McElwain, Uchida, and Hicks
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`disclose backwards-compatible HPLMN lists. (Id. at 14.) However, Petitioner’s
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`argument is confused. Petitioner argues that that “the ’933 patent says nothing
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`about multiple MCC/MNC pairs having to be in a ‘new file’,” but goes on to state
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`that even if the HPLMN list must be in a “new file,” that McElwain, Uchida and
`
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`2 As Patent Owner noted in its Response, paucity of information pertaining to SIM
`cards in McElwain and Uchida is not surprising, as CDMA phones were not
`capable of using SIM cards at the relevant time. (Paper No. 25 at 21) (citing Ex.
`2005 at ¶ 74.)
`
`10
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`
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`Hicks nevertheless disclose such a file. (Id. at 14-15.) Patent Owner agrees with
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`Petitioner that the claims of the ’933 patent do not require the spontaneous creation
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`of a “new” file to store data within the UE. That is not what Patent Owner asserts.3
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`Instead, Patent Owner’s argument centers on the fact that implementing the
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`CDMA methods of McElwain and Uchida in a GSM environment would create
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`significant compatibility issues such that no POSITA would consider those
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`references for use in a GSM environment, let alone be motivated to combine them
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`with GSM references. (Paper No. 25 at 20.) Nowhere does Patent Owner assert
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`that some “new file” must be created by the UE. Petitioner’s discussion of putting
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`multiple MCC/MNC pairs into a “new file” has no bearing on Patent Owner’s
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`argument.
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`Petitioner also asserts that Patent Owner relies on an argument already
`
`rejected by the Board, namely, that the 3GPP Standards did not implement
`
`multiple MCC/MNC pairs for use in network identification during the relevant
`
`time period. (Paper No. 31 at 14-15.) Here, Petitioner is only partially correct.
`
`Patent Owner does dispute that the 3GPP Standards implemented multiple
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`MCC/MNC pairs for use in network identification, and Patent Owner has raised
`
`
`3 As discussed in section V(B) below, in its Response, Patent Owner does discuss
`the creation of a “new” file insofar as the ’933 patent innovated in creating a file
`with functionality not seen before. (Paper No. 25 at 23-24.)
`11
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`
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`arguments and provided evidence in its Reply that were not considered by the
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`Board and that go unrebutted by Petitioner here. (See, Paper No. 25 at 16-17.)
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`Specifically, Patent Owner raises in its Response that the 3GPP Standards
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`only disclose the use of multiple MCC/MNC pairs for the purpose of making use
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`of a network’s different access technologies (e.g., 2G or 3G networks), not for the
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`purpose of identifying networks. (Id. at 16-17.) In other words, the HPLMN
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`Selector with Access Technology list disclosed by the 3GPP Standards is, by the
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`explicit language of the Standards, only to be used to gain access to network
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`capabilities—not to determine whether a user is connected to their service
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`provider’s network:
`
`The “HPLMN Selector with Access Technology” [. . .] data fields in
`the SIM include associated access technologies for each PLMN
`entry, see 3GPP TS 31.102. The PLMN/access technology
`combinations are listed in priority order. If an entry includes more
`than one access technology, then no priority is defined for the
`preferred access technology and the priority is an implementation
`issue.
`
`[…]
`
`The [UE] shall not use the PLMN codes contained in the “HPLMN
`Selector with Access Technology” data field.
`
`(Ex. 1007 at 13.) Petitioner provides no response to this argument that the
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`Standards use the HPLMN selector to gain access to the network, not, as Petitioner
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`claims, for network identification. (Paper No. 25 at 16-17.)
`
`Rather than provide an explanation why a POSITA would still find it
`
`obvious to adapt McElwain’s and Uchida’s methods into a GSM environment,
`
`12
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`
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`Petitioner merely reiterates its conclusory assertions or otherwise evade engaging
`
`with Patent Owner’s arguments raised in its Response. (Paper No. 31 at 14-15.)
`
`Having left Patent Owner’s arguments and evidence unrebutted, Petitioner’s
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`arguments must fail.
`
`V.
`
`SECONDARY CONSIDERATIONS CONTINUE TO SUPPORT A
`FINDING OF NON-OBVIOUSNESS
`
`A.
`
`Long-Felt but Unsolved Need
`
`Petitioner argues that Uchida, Hicks, and the 3GPP Standards post-date
`
`Patent Owner’s most recent evidence of long-felt but unsolved need. This alone
`
`demonstrates the existence of a long-felt but unsolved need. (Paper No. 31 at 19.)
`
`Putting aside the fact that Petitioner’s primary reference, McElwain, pre-dates this
`
`evidence, Petitioner’s references each propose separate methods for displaying on
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`a user’s display.
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`Moreover, each of the proposed solutions is different from the others, and
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`different than that of the ’933 patent. Hicks proposes the use of an algorithm
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`incorporating location data. (See Ex. 1006 at 3:6-13.) McElwain proposes using
`
`contiguous zones of overlapping coverage. (Ex. 1004 at ¶ 47.) Uchida merely
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`evaluates whether a user is on a subdivision of a branch owned by their cellular
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`provider though use of SID/NID lists. (Ex. 1005 at ¶ 5; Ex. 2001 at ¶ 51.) Finally,
`
`the 3GPP Standards simply disclose having multiple MCC/MNC pairs for a single
`
`network pertaining to that networks’ radio access technologies. (Ex. 1007 at 13;
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`Ex. 1008 at 17-18, 53-54; Ex. 2005 at ¶ 68.) This diversity of approaches—each
`13
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`
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`distinct from the ’933 patent’s method and each attempting to solve a separate,
`
`often unrelated problem—illustrates that the specific solutions and innovations
`
`undertaken by the ’933 patent were hardly obvious.
`
`B.
`
`Industry Acceptance
`
`Petitioner’s repeated assertions that Patent Owner’s evidence of industry
`
`acceptance must be dismissed because the 3GPP Standards disclose “the use of
`
`multiple MCC/MNC pairs in an HPLMN Selector,” misses the mark. (See, Paper
`
`No. 31 at 19.) As discussed above, the multiple MCC/MNC pairs featured in the
`
`HPLMN Selector with Access Technology disclosed by the 3GPP Standard, and
`
`relied upon by Petitioner, are only used by a UE to access different capabilities of a
`
`network (e.g., to attach to a GSM system instead of an edge system). (Ex. 2005 at
`
`¶ 69; see, Ex. 1007 at 13.) The HPLMN Selector file disclosed by the 3GPP
`
`Standard is designed solely to be used as a bank of potential codes for when a UE
`
`attempts to access a user’s service provider’s networks via separate access
`
`technologies, such as 2G and 3G networks. (Ex. 2005 at ¶ 69; see, Ex. 1007 at 13.)
`
`These arguments, and the supporting evidence and testimony provided by Patent
`
`Owner’s expert, go unrebutted by Petitioner. Petitioner’s continued reliance on
`
`this irrelevant technology is of no moment.
`
`Petitioner’s argument that there is no nexus between the ’933 patent and
`
`industry acceptance confuses the issues. As discussed above, Patent Owner agrees
`
`that the claims of the ’933 patent do not require the spontaneous creation of a new
`
`14
`
`
`
`file to store data within the UE as a matter of process. (See, Paper No. 31 at 20.)
`
`Patent Owner’s argument is that the HPLMN list file containing multiple
`
`MCC/MNC pairs identifying home networks was an innovation of the ’933 patent,
`
`and that this innovation was accepted by the industry. (Paper No. 25 at 23-24.) A
`
`later version the 3GPP Standards cited by Petitioner did not reconfigure or add
`
`more home networks MCC/MNC pairs to the HPLMN With Access Technologies
`
`file—indeed, this would have created significant compatibility issues which would
`
`dissuade a POSITA. (Id. at 20.) Instead, the 3GPP Standards created an entirely
`
`new file, the Equivalent HPLMN list (“EHPLMN list”). (Ex. 2006 at 13-14.) This
`
`EHPLMN list explicitly allows for multiple MCC/MNC pairs to be listed as home
`
`networks in an HPLMN in the manner contemplated by the ’933 patent. (Ex.
`
`2006 at 13-14.)
`
`Petitioner’s assertions that TS23.122 teaches or renders obvious, even in a
`
`later version of the same Standards, “using the HPLMN Selector as an HPLMN
`
`list, replacing the comparison with the single HPLMN code[,]” (Paper No. 1 at 52)
`
`are unsupported. Indeed, as Patent Owner stated in its Response, this is not what
`
`the future version of the Standard actually implemented. (Ex. 2005 at ¶ 82; Ex.
`
`2006 at 13-14.) Once more, Patent Owner’s arguments and supporting evidence
`
`are left unrebutted by Petitioner.
`
`VI. CONCLUSION
`
`For the foregoing reasons, none of the challenged claims should be canceled.
`
`15
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`
`
`Dated: September 17, 2021
`
`
`
`
`
`
`
`
`
`/ Timothy Devlin /
`Timothy Devlin
`Registration No. 41,706
`DEVLIN LAW FIRM LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Facsimile: (302) 353-4251
`TD-PTAB@devlinlawfirm.com
`
`Attorney for Patent Owner
`
`
`
`
`16
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing document was served
`
`electronically via electronic mail on September 17, 2021 on the following counsel
`
`of record for Petitioner:
`
`
`
`
`
`
`
`
`LEAD COUNSEL
`
`Brian M. Buroker (Reg. 39,125)
`bburoker@gibsondunn.com
`
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`
`
`Counsel for Dell, Inc.
`
`FIRST BACKUP COUNSEL
`
`Paul Torchia (Reg. 55,683)
`ptorchia@gibsondunn.com
`
`Gibson, Dunn, & Crutcher LLP
`200 Park Avenue
`New York, NY 10166
`Phone: (212) 351-3953
`
`ADDITIONAL BACKUP COUNSEL
`
`Nathan R. Curtis (Reg. 70,471)
`ncurtis@gibsondunn.com
`
`Gibson, Dunn & Crutcher LLP
`2001 Ross Ave., Ste. 2100
`Dallas, TX 75201
`Phone: (214) 698-3100
`Additional email for service: Dell-IPRService@gibsondunn.com
`
`
`/s/ Timothy Devlin
` Timothy Devlin
`
`
`
`
`
`17
`
`
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