`
`
`Declaration of Dr. Kakaes
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DELL INC.,
`Petitioner,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`Case No. IPR2021-01157
`
`U.S. Patent No. 7,274,933
`
`
`
`DECLARATION OF DR. APOSTOLOS K. KAKAES
`IN SUPPORT OF PETITIONER’S OPPOSITION TO
`PATENT OWNER’S REVISED MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dell Inc., Ex. 1033
`
`
`
`B.
`
`Page
`INTRODUCTION AND QUALIFICATIONS ............................................. 1
`I.
`II. MATERIALS CONSIDERED ...................................................................... 2
`III. OVERVIEW OF CONCLUSIONS ............................................................... 3
`IV. SUMMARY OF THE PROPOSED AMENDMENTS ................................. 4
`V. ANALYSIS OF PROPOSED AMENDMENTS ......................................... 10
`A.
`The Proposed Substitute Claims Lack Written Description .............. 10
`1.
`The Testing Limitation Is Not Supported in the
`Specification ............................................................................ 11
`The Timing Limitations Are Not Supported in the
`Specification ............................................................................ 12
`The Proposed Substitute Claims Are Indefinite ................................ 14
`1.
`Limitation (2a) Renders Claims 20‒24 Indefinite ................... 15
`2.
`Limitation (2b) Renders Claims 25‒29 Indefinite ................... 17
`The Proposed Amended Claims Would Have Been Obvious
`Based on the Grounds Discussed in My Prior Declaration................ 18
`1.
`Elements 20[b] and 25[c] (Limitation 1) Are Obvious in
`Light of McElwain .................................................................. 19
`Elements 20[c] and 25[d] (Limitations 2a, 2b) Are
`Obvious in Light of McElwain ................................................ 22
`Elements 20[d] and 25[e] Are Obvious in Light of
`McElwain ................................................................................ 24
`VI. ADDITIONAL REMARKS ........................................................................ 25
`APPENDIX A: TEXT OF PROPOSED SUBSTITUTE CLAIMS ....................... 27
`
`
`
`
`
`TABLE OF CONTENTS
`
`i
`
`C.
`
`2.
`
`2.
`
`3.
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`Dell Inc., Ex. 1033
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`
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`
`
`TABLE OF APPENDICES
`
`
`Exhibit
`1001
`1002
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`Description
`Document
`Appendix A Text of Proposed Substitute Claims
`
`
`TABLE OF EXHIBITS
`
`Description
`U.S. Patent No. 7,274,933 (“the ’933 patent”)
`Copy of Prosecution History of the ’933 patent
`U.S. Patent Appl. Publ. No. 2003/0022689 (“McElwain”)
`U.S. Patent Appl. Publ. No. 2004/0204136 (“Uchida”)
`U.S. Patent No. 7,027,813 (“Hicks”)
`3rd Generation Partnership Project; Technical Specification Group
`Core Network; NAS Functions related to Mobile Station (MS) in idle
`mode (Release 5) (3GPP TS 23.122 V5.2.0) (“TS-23.122”)
`3rd Generation Partnership Project; Technical Specification Group
`Services and System Aspects – Service aspects; Service principles
`(Release 5) (3GPP TS 22.101 V5.8.0) (“TS-22.101”)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals; Characteristics of the USIM Application (Release 5)
`(3GPP TS 31.102 V5.3.0) (“TS-31.102”)
`Declaration of Craig Bishop
`Complaint for Patent Infringement, No. 1:19-cv-01247-LPS (D. Del.
`July 1, 2019)
`Complaint for Patent Infringement, No. 3:19-cv-01694 (N.D. Tex.
`July 15, 2019)
`Complaint for Patent Infringement, No. 1:19-cv-01140-MN (D. Del.
`June 20, 2019)
`Complaint for Patent Infringement, No. 1:19-cv-01144-MN (D. Del.
`June 20, 2019)
`Amended Complaint for Patent Infringement, No. 1:20-cv-20813
`(S.D. Fl. Feb. 25, 2020)
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`ii
`
`Dell Inc., Ex. 1033
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`
`
`
`
`
`
`
`Exhibit
`1016
`1017
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1030
`
`1031
`1032
`
`Description
`EIA/TIA-553 Standard (AMPS)
`Excerpts from EIA/TIA/IS-54 Standard (Digital AMPS)
`Excerpts from TIA/EIA/136.1 Standard
`Excerpts from TIA/EIA/IS-136.2-A Standard
`Excerpts from TIA/EIA/IS-95 Standard
`Excerpts from T. Halonen et al., “GSM, GPRS and EDGE
`Performance: Evolution Towards 3G/UMTS” (2d ed. Wiley 2003)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals Specification of the Subscriber Identity Module – Mobile
`Equipment (SIM - ME) interface (Release 1999) (3GPP TS 11.11
`V8.6.0) (“TS-11.11”)
`Excerpts from A. Mehrotra, “GSM System Engineering”
`(Artech House 1997)
`U.S. Patent No. 5,950,130 (“the ’130 patent”)
`U.S. Patent No. 5,862,471 (“the ’471 patent”)
`U.S. Patent No. 6,195,532 (“Bamburak”)
`U.S. Patent Appl. Publ. No. 2001/0001875 (“Hirsch”)
`U.S. Patent Appl. Publ. No. 2002/0111180 (“Hogan”)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals; Test Specification for ‘C’-language binding to (U)SIM
`API (Release 6) (3GPP TS 34.131 V6.0.0) (“TS-34.131”)
`Deposition of Dr. Apostolos Kakaes
`Third Declaration of Dr. Apostolos Kakaes
`
`iii
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`I, Dr. Apostolos K. “Paul” Kakaes, hereby declare as follows:
`
`INTRODUCTION AND QUALIFICATIONS
`I.
`I understand that the Patent Trial and Appeal Board (“PTAB” or
`
`1.
`
`“Board”) has instituted an inter partes review (“IPR”) of U.S. Patent No. 7,274,933
`
`(“the ’933 patent”) (Ex. 1001) and that the Patent Owner, 3G Licensing S.A., has
`
`filed a revised motion to amend claims 1‒10 of the ’933 patent. I have been asked
`
`to offer opinions regarding the patentability of the proposed substitute claims 20
`
`through 29.
`
`2.
`
`I am not, and never have been, an employee of Petitioner 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.
`
`1
`
`Dell Inc., Ex. 1033
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`
`
`
`
`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
`
`that same definition of a POSITA. I have reviewed the proposed definition of a
`
`POSITA set forth by Patent Owner (in its Patent Owner Response) and by Mr. Stuart
`
`Lipoff (in the Declaration of Stuart Lipoff in Support of Patent Owner), and my
`
`opinions herein would not change applying the definition of a POSITA proposed by
`
`Patent Owner and Mr. Lipoff.
`
`6.
`
` My analysis in this Declaration is also based on my understanding of
`
`the state of the art that would have been known to a POSITA around September 2003,
`
`as set forth in my prior declaration, which are herein incorporated by reference.
`
`II. MATERIALS CONSIDERED
`I have considered information from various sources in forming my
`
`7.
`
`opinions. I have drawn on my decades of experience in this field. I have employed
`
`methods and analyses of a type reasonably relied upon by experts in my field in
`
`forming opinions or inferences on the subject. Additionally, in preparing this
`
`Declaration, I have relied upon the exhibits listed at the beginning of this Declaration
`
`and any documents and other information cited in this Declaration. I have also
`
`reviewed Patent Owner’s Preliminary Response (and all exhibits thereto), Patent
`
`2
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`Owner’s Response (and all exhibits thereto), and Patent Owner’s Motion to Amend
`
`(and all exhibits thereto), including both declarations provided by Mr. Lipoff.
`
`III. OVERVIEW OF CONCLUSIONS
`It is my opinion that the proposed substitute claims are unpatentable for
`
`8.
`
`the following several reasons.
`
`9.
`
`First, the proposed amendments are not supported by written
`
`description in the patent, and introduce new matter to the patent. For example, one
`
`new limitation recites a test for the presence of an HPLMN list, while the patent
`
`specification only conveys a test to determine the location of the HPLMN list as
`
`between two options. Another proposed amendment instructs that the test should be
`
`run “during or after” SIM initialization, but the specification only describes running
`
`the test “during or shortly after” SIM initialization. Every proposed new limitation
`
`similarly lacks written description.
`
`10. Second, the proposed amendments render the claims indefinite. The
`
`substitute claims each introduce a time to perform the test for an HPLMN list: either
`
`“each time the mobile station is to display a roaming indicator” or “during or after a
`
`SIM initialization procedure is performed by the mobile station.” The first timing is
`
`both vague and circular. A POSITA would not know when a “display” occurs
`
`without more detail. Even if they did, the determination of whether to display a
`
`roaming indicator is a result of the name display procedure; the test step of the
`
`3
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`Dell Inc., Ex. 1033
`
`
`
`
`
`procedure cannot rely on the outcome of the procedure to determine when it is
`
`performed. As to the second timing, “during or after a SIM initialization procedure”
`
`encompasses essentially any time that a mobile unit is on and functional, and thus
`
`provide no guidance to a POSITA on when the test is to be performed.
`
`11. Finally, the proposed substitute claims are obvious over the same prior
`
`art grounds I discuss in my prior declaration. Specifically, the concept of testing for
`
`whether a data structure (like an HPLMN list) is present and only performing steps
`
`requiring that data structure if it is present would have been obvious to a POSITA.
`
`IV. SUMMARY OF THE PROPOSED AMENDMENTS
`12. The proposed amendments would amend claims 1‒10. Claims 1 and 6
`
`are independent, claims 2‒5 depend from claim 1, and claims 7‒10 depend from
`
`claim 6. Claim 1 recites a method, and claim 6 recites a machine being operative to
`
`perform the same method. The text of claim 1 and claim 6 is set forth below:
`
`Claim 1
`A network name displaying method in a mobile station, the method
`comprising:
`scanning to receive a plurality of Mobile Country Code (MCC) and
`Mobile Network Code (MNC) pairs corresponding to a plurality of
`wireless communication networks within a coverage area;
`selecting and registering with a wireless communication network
`associated with one of the received MCC and MNC pairs, giving a
`preference to home networks of a Home Public Land Mobile
`Network (HPLMN) list over non-home networks of a Preferred
`PLMN (PPLMN) list;
`
`4
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`comparing the MCC and MNC pair of the selected network with a
`plurality of home network MCC and MNC pairs corresponding to
`the home networks of the HPLMN list;
`for the step of comparing: using a plurality of home network MCC
`and MNC pairs from the HPLMN list stored on a Subscriber Identify
`Module (SIM) in the comparing step based on identifying that the
`plurality of home network MCC and MNC pairs are stored on the
`SIM, and otherwise using a plurality of home network MCC and
`MNC pairs stored in memory of the mobile station in the comparing
`step;
`causing a home network display name which is the same for all of
`the home network MCC and MNC pairs to be visually displayed in
`a visual display of the mobile station based on identifying a match
`between the MCC and MNC pair of the selected network and one of
`the home network MCC and MNC pairs; and
`otherwise causing an alternate display name to be visually displayed
`in the visual display based on identifying no match between the
`MCC and MNC pair of the selected network and the home network
`MCC and MNC pairs.
`Claim 6
`A mobile station, comprising a transceiver being operative to
`scan to receive a plurality of Mobile Country Code (MCC) and
`Mobile Network Code (MNC) pairs corresponding to a plurality of
`wireless communication networks within a coverage area;
`a Subscriber Identity Module (SIM) interface for receiving a SIM;
`a processor being operative to:
`select and register with a wireless communication network
`associated with one of the received MCC and MNC pairs, giving a
`preference to home networks of a Home Public Land Mobile
`Network (HPLMN) list over non-home networks of Preferred
`PLMN (PPLMN) list;
`compare the MCC and MNC pair of the selected network with a
`plurality of home network MCC and MNC pairs corresponding to
`
`5
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`the home networks of the HPLMN list and associated with a home
`network display name;
`for the comparison: using a plurality of home network MCC and
`MNC pairs from the HPLMN list stored on the SIM for the
`comparison based on identifying that the plurality of home network
`MCC and MNC pairs are stored on the SIM, and otherwise using a
`plurality of home network MCC and MNC pairs stored in memory
`of the mobile station for the comparison;
`cause the home network display name which is the same for all of
`the home network MCC and MNC pairs to be visually displayed in
`a visual of the mobile station based on identifying a match between
`the MCC and MNC pair of the selected network and one of the home
`network MCC and MNC pairs; and
`otherwise cause an alternate display name to be visually displayed
`in the visual display based on identifying no match between the
`MCC and MNC pair of the selected network and the home network
`MCC and MNC pairs.
`13. Proposed substitute claims 20 and 25 add three new elements to each
`
`of claims 1 and 6. Proposed substitute claims 21‒24 and 26‒29 are only amended
`
`to depend on claims 20 and 25 instead of 1 and 6, respectively. The text of proposed
`
`claims 20 and 25 is set forth below, with newly added elements underlined:
`
`Claim 20
`A network name displaying method in a mobile station, the method
`comprising:
`scanning to receive a plurality of Mobile Country Code (MCC) and
`Mobile Network Code (MNC) pairs corresponding to a plurality of
`wireless communication networks within a coverage area;
`conducting a test that determines whether a Home Public Land
`Mobile Network (HPLMN) list, containing a plurality of home
`network MCC and MNC pairs, is stored on the mobile station’s SIM
`or memory,
`
`6
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`Dell Inc., Ex. 1033
`
`
`
`
`
`said test being run each time the mobile station is to display a
`roaming indicator;
`determining that a HPLMN list, containing a plurality of home
`network MCC and MNC pairs, is stored in the mobile station’s SIM
`or memory;
`selecting and registering with a wireless communication network
`associated with one of the received MCC and MNC pairs, giving a
`preference to home networks of a Home Public Land Mobile
`Network (HPLMN) list over non-home networks of a Preferred
`PLMN (PPLMN) list;
`comparing the MCC and MNC pair of the selected network with a
`plurality of home network MCC and MNC pairs corresponding to
`the home networks of the HPLMN list;
`for the step of comparing: using a plurality of home network MCC
`and MNC pairs from the HPLMN list stored on a Subscriber Identify
`Module (SIM) in the comparing step based on identifying that the
`plurality of home network MCC and MNC pairs are stored on the
`SIM, and otherwise using a plurality of home network MCC and
`MNC pairs stored in memory of the mobile station in the comparing
`step;
`causing a home network display name which is the same for all of
`the home network MCC and MNC pairs to be visually displayed in
`a visual display of the mobile station based on identifying a match
`between the MCC and MNC pair of the selected network and one of
`the home network MCC and MNC pairs; and
`otherwise causing an alternate display name to be visually displayed
`in the visual display based on identifying no match between the
`MCC and MNC pair of the selected network and the home network
`MCC and MNC pairs.
`
`7
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`Claim 25
`A mobile station, comprising a transceiver being operative to
`scan to receive a plurality of Mobile Country Code (MCC) and
`Mobile Network Code (MNC) pairs corresponding to a plurality of
`wireless communication networks within a coverage area;
`a Subscriber Identity Module (SIM) interface for receiving a SIM;
`a processor being operative to:
`select and register with a wireless communication network
`associated with one of the received MCC and MNC pairs, giving a
`preference to home networks of a Home Public Land Mobile
`Network (HPLMN) list over non-home networks of Preferred
`PLMN (PPLMN) list;
`conduct a test that determines whether a Home Public Land Mobile
`Network (HPLMN) list, containing a plurality of home network
`MCC and MNC pairs, is stored on the mobile station’s SIM or
`memory,
`said test being run during or after a SIM initialization procedure is
`performed by the mobile station;
`determine that a HPLMN list, containing a plurality of home
`network MCC and MNC pairs, is stored on the mobile station’s SIM
`or memory;
`compare the MCC and MNC pair of the selected network with a
`plurality of home network MCC and MNC pairs corresponding to
`the home networks of the HPLMN list and associated with a home
`network display name;
`for the comparison: using a plurality of home network MCC and
`MNC pairs from the HPLMN list stored on the SIM for the
`comparison based on identifying that the plurality of home network
`MCC and MNC pairs are stored on the SIM, and otherwise using a
`plurality of home network MCC and MNC pairs stored in memory
`of the mobile station for the comparison;
`cause the home network display name which is the same for all of
`the home network MCC and MNC pairs to be visually displayed in
`
`8
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`a visual of the mobile station based on identifying a match between
`the MCC and MNC pair of the selected network and one of the home
`network MCC and MNC pairs; and
`otherwise cause an alternate display name to be visually displayed
`in the visual display based on identifying no match between the
`MCC and MNC pair of the selected network and the home network
`MCC and MNC pairs.
`14. The Patent Owner in its Revised Motion to Amend summarized the
`
`proposed substitute claims as adding two new limitations to each claim, as follows:
`
`(1) the requirement that the mobile station runs a test to determine
`whether the Home Public Land Mobile Network (“HPLMN”) list,
`containing a plurality of home network MCC and MNC pairs, is stored
`in the Subscriber Identity Module (“SIM”), or in the mobile station’s
`memory, and (2) that the aforementioned test is performed at explicitly
`noted times.
`
`15. As shown above, there are two versions of the timing limitation: (2a)
`
`“each time the mobile station is to display a roaming indicator” (for claims 20‒24)
`
`and (2b) “during or after a SIM initialization procedure is performed by the mobile
`
`station” (for claims 25‒29). Throughout this Declaration I will refer to the first
`
`added limitation as the “testing” limitation or limitation (1), and the second added
`
`limitations as the “timing” limitations, or limitations (2a) and (2b) as identified
`
`herein respectively. I understand Patent Owner has indicated that the third
`
`“determining” (or “determine”) element does not add a new limitation. See P.O.
`
`Mot. at 4, 5.
`
`9
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`Dell Inc., Ex. 1033
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`
`
`
`
`V. ANALYSIS OF PROPOSED AMENDMENTS
`It is my opinion that the proposed substitute claims are invalid on
`
`16.
`
`several bases. Below is a detailed analysis of the proposed substitute claims and
`
`these bases of invalidity.
`
`A. The Proposed Substitute Claims Lack Written Description
`It is my opinion that the proposed amendments do not have written
`17.
`
`description support in the ’933 patent. Specifically, the proposed amendments
`
`introduce three new claim limitations in total, all of which the patent fails to
`
`reasonably convey to a POSITA: (1) testing to determine whether the HPLMN list
`
`is present in the SIM or memory; (2a) performing the test each time a mobile station
`
`is to display a roaming indicator; and (2b) performing the test during or after a SIM
`
`initialization procedure.
`
`18.
`
`I understand that the written description requirement is satisfied if a
`
`POSITA reading the original patent application would have recognized that the
`
`inventor(s) actually possessed by the filing date of the original application the full
`
`scope of the claimed invention as it is claimed. I understand that in deciding whether
`
`a claim satisfies the written description requirement, the description is considered
`
`from the viewpoint of a POSITA when the original application was filed. I have
`
`been informed that a disclosure in an application that merely renders the later-
`
`claimed invention obvious is not sufficient to meet the written description
`
`10
`
`Dell Inc., Ex. 1033
`
`
`
`
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`requirement; the disclosure must describe the claimed invention with all its
`
`limitations. An application must describe the invention in sufficient detail that a
`
`POSITA can conclude that the inventor invented the claimed invention.
`
`The Testing Limitation Is Not Supported in the Specification
`1.
`19. The testing limitation recites a test that “determines whether” the
`
`HPLMN list is stored on the SIM or memory, and that results in “determining that”
`
`the HPLMN list is indeed “stored on the mobile station’s SIM or memory.” PO Mot.
`
`at 24, 26. For this limitation, Patent Owner points to two passages of the application
`
`for the ’933 patent as providing support. See id. at 7 (citing Ex. 1002 at 19, 25‒26).
`
`Nothing in these passages nor anything else in the specification of the ’933 patent
`
`provides support for the recited test.
`
`20.
`
`In each of these passages, the specification refers exclusively to tests
`
`that assume the availability of an HPLMN list and specify its location as between
`
`the SIM or memory. For example, the specification describes two alternative tests
`
`to “identify or detect whether there is a [HPLMN] list on the SIM by testing … a
`
`predetermined designated area of memory on the SIM,” or “testing if a version
`
`number of the SIM corresponds to having such a multiple home network list.”
`
`Ex. 1002, 25:11‒14, 26‒27. It later proposes “to identify the availability of such a
`
`list on the SIM and a similar backup list on the mobile station.” Id. A POSITA
`
`would understand these descriptions to convey tests to determine whether there is an
`
`11
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`HPLMN list in the SIM card, and if there is not, assume that the list resides in
`
`memory. These descriptions do not convey to a POSITA the idea of determining
`
`whether an HPLMN list is available at all. In other words, it does not convey a test
`
`whose result could be that the HPLMN list is “stored on the mobile station’s SIM or
`
`memory”—only one whose result is that the HPLMN list is stored in a specific,
`
`determined location.
`
`21.
`
`Indeed, the specification assumes that an HPLMN list is available to be
`
`used. That is, the patented method requires an HPLMN list to be present, whatever
`
`its location. See, e.g., Ex. 1001 at 2:51‒55 (“After the network is selected, the
`
`received MCC and MNC pair is compared with a plurality of home network MCC
`
`and MNC pairs which are associated with a single home network display name.”);
`
`3:38–41 (same); 14:60‒63 (same). This again would lead a POSITA to understand
`
`that the tests described in the specification are not to determine whether an HPLMN
`
`list is present, as the proposed claims require, but merely to determine its specific
`
`location.
`
`2.
`22.
`
`The Timing Limitations Are Not Supported in the Specification
`Independently of whether the testing limitation is described, both
`
`versions of the timing limitation also lack written description support.
`
`23. There is one sentence in the patent specification that describes specific
`
`timings for testing the location of the HPLMN list, at Ex. 1001, 14:35‒38:
`
`12
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`This test may be performed every time the mobile station goes through the
`network name displaying technique or, alternatively, only once during or
`shortly after a SIM initialization procedure performed by the mobile station.
`
`24. Limitations (2a) and (2b) are inconsistent with and not supported by
`
`this passage.
`
`25. With respect to limitation (2a), the specification describes a test
`
`performed each time the mobile station “goes through the network name displaying
`
`technique.” Id. By definition, this must be different from the limitation, “every time
`
`a roaming indicator is to be displayed.” According to the specification, the network
`
`name displaying technique sometimes results in a roaming indicator being displayed,
`
`but other times results in a home network name being displayed. See id., 11:64‒
`
`12:26. As the specification makes clear, the point of displaying a home network
`
`name (and indeed the point of the patented method) is to inform users that the mobile
`
`station is not roaming. Ex. 1001, 1:54‒2:23. Thus, “every time the mobile station
`
`[performs the] name displaying technique” cannot possibly mean the same thing as
`
`“every time the mobile station [displays] a roaming indicator[.]” The former must
`
`include times when the latter does not apply. Therefore, the description in the patent
`
`provides no support for the timing “every time a roaming indicator is to be
`
`displayed.” The description gives no information about how to time a test
`
`specifically when a roaming indicator would be displayed. Therefore, limitation (2a)
`
`is not supported by the written description.
`
`13
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`26. With respect to limitation (2b), the patent specification describes a
`
`necessarily narrower scope than the proposed claims recite. The new limitation
`
`recites running the test “during or after” SIM initialization, but the specification
`
`describes running the test “during or shortly after” a SIM initialization procedure.
`
`Ex. 1001, 14:35‒38 (emphasis added). The specification thus describes a narrower
`
`range of times than the proposed claim recites—“shortly” after instead of any time
`
`“after.” Thus, limitation (2b) introduces new matter to the patent, and therefore is
`
`not supported by the written description.
`
`27.
`
`In sum, the proposed amendments introduce three new claim elements,
`
`none of which have support in the written description. Therefore, it is my opinion
`
`that claims that include any of these limitations fail the written description
`
`requirement.
`
`B.
`
`The Proposed Substitute Claims Are Indefinite
`It is my opinion that proposed limitations (2a) and (2b) render the
`28.
`
`substitute claims indefinite. The amendments make the claims either vague and
`
`indeterminate, or self-contradictory, or both; in all cases, a POSITA would not be
`
`able to determine, with any reasonable clarity, the scope of the amended claims. It
`
`is not clear to a POSITA when the claims would be infringed.
`
`29.
`
`I understand that, in order to be valid, the claims of a patent must be
`
`sufficiently definite that one skilled in the art can determine the precise limits of the
`
`14
`
`Dell Inc., Ex. 1033
`
`
`
`
`
`claimed invention. I understand that patent claims are invalid as indefinite 35 U.S.C.
`
`§ 112, ¶ 2, if the claims, read in light of the patent’s specification delineating the
`
`patent, and prosecution history, fail to inform, with reasonable certainty, those skilled
`
`in the art about the scope of the invention. I understand that a patent claim must be
`
`precise enough to afford clear notice of what is claimed, thereby apprising the public
`
`of what is still open to them.
`
`Limitation (2a) Renders Claims 20‒24 Indefinite
`1.
`30. Limitation (2a) recites that the test for the HPLMN list is performed
`
`“each time the mobile station is to display a roaming indicator.” This limitation fails
`
`to define the scope of the invention with reasonable certainty in at least two ways.
`
`31. First, a POSITA would not be able to determine what counts as one
`
`“time” a mobile station is to “display” an indicator. For example, if the mobile
`
`station is displaying a roaming indicator, the screen goes to “sleep” to conserve
`
`battery, and then the user starts up the screen again and the display reappears—is
`
`that a new “time” or the same continuous “time”? Similarly, if the mobile station is
`
`to display a roaming indicator on a home screen, then the user opens an app that
`
`obscures the roaming indicator, and then the user closes the app such that the
`
`roaming indicator becomes visible again, would that count as two “times” or one
`
`continuous “time”? What if a user takes the mobile phone to a basement where there
`
`is no coverage and the phone displays “no service” and then the user brings the phone
`
`15
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`Dell Inc., Ex. 1033
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`
`
`
`
`back upstairs where there is service—is that a new “time” or a continuation of the
`
`“time” before going to the basement? Or, if the entire display of a mobile device is
`
`set to refresh itself at regular time intervals, even when the network connection does
`
`not change, would a refresh of a roaming indicator count as a separate “time”? Or,
`
`if a mobile device is registered with one non-home network, and then switches to
`
`being registered with another non-home network, but continuously displays the same
`
`roaming indicator during the switch, does that count as one “time” or two?
`
`Alternatives like these abound. There is no clarity in the intrinsic record on this
`
`issue, and the knowledge of a POSITA would not resolve it either. There is simply
`
`no way for a POSITA to determine the instances in which a mobile station “is to
`
`display a roaming indicator,” necessitating practice of the testing step. There is no
`
`clarity in the specification on whether the exemplary circumstances described above
`
`trigger the requirement to test for the HPLMN list.
`
`32. Limitation (2a) also renders proposed claims 20‒24 circular and
`
`contradictory. Limitation (2a) describes the timing for the test in limitation (1), one
`
`step in the network name display procedure. The result of the entire procedure is to
`
`decide whether to display a roaming indicator or, if not, a home network indicator.
`
`See proposed claim 20[h]‒[i] (“causing a home network display . . . to be visually
`
`displayed . . . and otherwise causing an alternate display name to be visually
`
`displayed”). Thus, limitation (2a) hinges the timing of a step in the procedure on the
`
`16
`
`Dell Inc., Ex. 1033
`
`
`
`
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`result of that same procedure. This creates a logical contradiction: it requires that
`
`the outcome of the name display procedure to be known, in order to decide when to
`
`perform an earlier step of that same procedure. This is logically impossible. Thus,
`
`a POSITA reading this claim would have no clear understanding of when the test
`
`step must be performed. Limitation (2a) renders the claims internally contradictory.
`
`33. The vagueness and the contradiction, either alone or in combination,
`
`render the proposed claims 20‒24 indefinite.
`
`Limitation (2b) Renders Claims 25‒29 Indefinite
`2.
`34. Limitation (2b) recites that the test for the HPLMN list is performed
`
`“during or after a SIM initialization procedure is performed by the mobile station[.]”
`
`This limitation is far from reasonably clear: it is so vague as to have no discernable
`
`meaning. The SIM initialization procedure is essentially the first operation a mobile
`
`unit performs when it is powered on. It occurs during the startup of a mobile station.
`
`Thus, “during or after a SIM initialization procedure” encompasses essentially all
`
`the time that a mobile unit is on and functional—it could mean at a specific point in
`
`the startup sequence, at the end of a start-up cycle, within a specific time after a start-
`
`up cycle, or at any other time during the mobile unit’s operation. To the extent this
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`element is limiting at all, it does not describe that limitation to a POSITA with any
`
`reasonable certainty. A POSITA would have no guidance to understand what timing
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`“during or after” indicates, or where the boundary lies between claimed timings and
`
`17
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`Dell Inc., Ex. 1033
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`
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`unclaimed timings; they would simply have to guess as the limitation does not
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`convey a specific meaning. Thus, the
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