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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`DELL INC.,
`Petitioner,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`Case No. IPR2021-01157
`
`U.S. Patent No. 7,274,933
`
`
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`Petitioner’s Opposition to
`Patent Owner’s Revised Motion to Amend
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`TABLE OF CONTENTS
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`B.
`
`V.
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`Page
`EXHIBIT LIST ....................................................................................................... iii
`TABLE OF ABBREVIATIONS AND CONVENTIONS....................................... v
`I.
`INTRODUCTION ......................................................................................... 1
`II.
`SUMMARY OF THE PROPOSED AMENDMENTS ................................. 4
`III. THE AMENDMENTS LACK WRITTEN DESCRIPTION
`SUPPORT AND IMPERMISSIBLY INTRODUCE NEW SUBJECT
`MATTER ....................................................................................................... 5
`A.
`There Is No Written Description Support for the Test Recited in
`the Proposed Amendments .................................................................. 6
`There Is No Written Description Support for the Timing
`Limitations (2a) and (2b) ..................................................................... 8
`IV. THE PROPOSED AMENDMENTS RENDER THE CLAIMS
`INDEFINITE ................................................................................................. 9
`A.
`Limitation (2a) of Proposed Claims 20‒24 Is Indefinite ................... 10
`B.
`Limitation (2b) of Proposed Claims 25‒29 Is Indefinite ................... 13
`THE PROPOSED SUBSTITUTE CLAIMS ARE STILL OBVIOUS
`ON ALL GROUNDS RAISED IN THE PETITION .................................. 14
`A.
`Elements 20[b] and 25[c] (Limitation 1) Are Obvious in Light
`of McElwain ...................................................................................... 15
`Elements 20[c] and 25[d] (Limitations 2a, 2b) Are Obvious in
`Light of McElwain ............................................................................ 17
`Elements 20[d] and 25[e] Are Irrelevant to the Obviousness
`Analysis and Obvious in Light of McElwain .................................... 19
`Patent Owner’s Responses to the Preliminary Guidance Hold
`No Water ........................................................................................... 20
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`B.
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`C.
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`D.
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`There Is No Hindsight or Teaching Away by 3GPP ............... 20
`1.
`There Is No Improper Application of “Common Sense” ........ 23
`2.
`There Is No Lack of Motivation to Combine .......................... 24
`3.
`There Is No Failure to Address the Invention as a Whole ....... 25
`4.
`VI. CONCLUSION ........................................................................................... 25
`APPENDIX: CHALLENGED CLAIM LISTING................................................. 28
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`ii
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
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`1008
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`1009
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`1010
`1011
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`1012
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`1013
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`1014
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`1015
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`1016
`1017
`1018
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`EXHIBIT LIST
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`Description
`U.S. Patent No. 7,274,933 (“the ’933 patent”)
`Copy of Prosecution History of the ’933 patent
`Declaration of Dr. Apostolos Kakaes
`U.S. Patent Appl. Publ. No. 2003/0022689 (“McElwain”)
`U.S. Patent Appl. Publ. No. 2004/0204136 (“Uchida”)
`U.S. Patent No. 7,027,813 (“Hicks”)
`3rd Generation Partnership Project; Technical Specification Group
`Core Network; NAS Functions related to Mobile Station (MS) in
`idle mode (Release 5) (3GPP TS 23.122 V5.2.0) (“TS-23.122”)
`3rd Generation Partnership Project; Technical Specification Group
`Services and System Aspects – Service aspects; Service principles
`(Release 5) (3GPP TS 22.101 V5.8.0) (“TS-22.101”)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals; Characteristics of the USIM Application (Release 5)
`(3GPP TS 31.102 V5.3.0) (“TS-31.102”)
`Declaration of Craig Bishop
`Complaint for Patent Infringement, No. 1:19-cv-01247-LPS
`(D. Del. July 1, 2019)
`Complaint for Patent Infringement, No. 3:19-cv-01694 (N.D. Tex.
`July 15, 2019)
`Amended Complaint for Patent Infringement, No. 1:19-cv-01140-
`MN (D. Del. July 15, 2019)
`Third Amended Complaint for Patent Infringement, No. 1:19-cv-
`01144-MN (D. Del. Feb. 28, 2020)
`Amended Complaint for Patent Infringement, No. 1:20-cv-20813
`(S.D. Fl. Mar. 25, 2020)
`EIA/TIA-553 Standard (AMPS)
`Excerpts from EIA/TIA/IS-54 Standard (Digital AMPS)
`Excerpts from TIA/EIA/136.1 Standard
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`iii
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`Description
`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
`Third Declaration of Dr. Apostolos Kakaes
`Fourth Declaration of Dr. Apostolos Kakaes
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`Exhibit No.
`1019
`1020
`1021
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`1022
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`1023
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`1024
`1025
`1026
`1027
`1028
`1029
`1030
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`1031
`1032
`1033
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`TABLE OF ABBREVIATIONS AND CONVENTIONS
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`Abbreviation
`PO Mot.
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`Meaning
`Patent Owner’s Revised Motion to Amend
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`v
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`I.
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`INTRODUCTION
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`Patent Owner’s Revised Motion to Amend fares no better than its first Motion
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`to Amend. The proposed amended claims still lack written description support, are
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`indefinite, and, ultimately, are invalid based on the prior art raised in the Petition.
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`Patent Owner’s Revised Motion to Amend should therefore be denied.
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`The ’933 patent relates to displaying network names on mobile phones.
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`Specifically, the patent teaches the use of an “HPLMN list,” which includes multiple
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`“home” networks such that the same home network name is displayed when the
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`phone is connected to any of those networks. Confronted with spot-on prior art,
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`Patent Owner filed a Motion to Amend to add new claims that required testing at
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`specific times to determine whether the HPLMN list is stored in a mobile station’s
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`SIM, memory, or nowhere, and implementing the claimed method only if the
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`HPLMN list is in the mobile station’s SIM or memory. See Paper 24. Consistent
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`with Petitioner’s Opposition (Paper 30), the Board’s found that Patent Owner had
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`not shown a reasonable likelihood of satisfying the statutory and regulatory
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`requirements for the proposed amended claims. See Paper 34. In particular, the
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`Board found that the proposed amendments improperly sought to enlarge the scope
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`of the claims, sought to add new subject matter, were indefinite, lacked written
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`description support, and were invalid as obvious. See generally id.
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`1
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`Patent Owner’s Revised Motion to Amend now proposes amended claims that
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`require testing at specific times to determine that the HPLMN list is stored in a
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`mobile station’s SIM or memory. In short, Patent Owner’s new proposed amended
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`claims simply remove the limitation that the method is practiced only if the HPLMN
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`list is in the mobile station’s SIM or memory. Although these amendments no longer
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`improperly enlarge the scope of the claims, Patent Owner has not fixed the remaining
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`issues with the claims. Indeed, other than the one limitation now removed, the
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`amended claims are otherwise substantively similar to the claims the Board already
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`found were not patentable.
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`Specifically, as explained in further detail below, the amended claims are
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`unpatentable on the following bases:
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`• Lack of Written Description and Impermissible New Subject Matter. The
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`proposed amendments lack written description support and, relatedly, once
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`again, impermissibly introduce new subject matter into the claims. For
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`example, some of the proposed amended claims require running a test “during
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`or after” SIM initialization, but the specification describes running a test
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`“once during or shortly after a SIM initialization procedure.” There is no
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`support in the specification for the breadth of the claims Patent Owner seeks
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`to add. The other proposed amendments similarly lack written description.
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`2
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`• Indefiniteness. The substitute claims each cover one of two times to perform
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`the claimed testing for an HPLMN list: “each time the mobile station is to
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`display a roaming indicator” and “during or after a SIM initialization
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`procedure is performed by the mobile station.” Both of these limitations are
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`indefinite. As to the first, the determination of whether to display a roaming
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`indicator is a result of the entire name display procedure. The timing of one
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`step in the procedure cannot logically depend on the outcome of the entire
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`procedure. As to the latter, “during or after a SIM initialization procedure”
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`encompasses essentially any time that a mobile unit is on and functional, and
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`thus the claims provides no guidance on when the test is to be performed.
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`• Obviousness. The substitute claims are no less obvious than the original
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`claims. Indeed, the limitations added in the substitute claims are obvious
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`under the same grounds raised in the Petition. For example, the idea of
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`checking for a particular data structure (here, the HPLMN list) in a SIM card
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`and memory is disclosed in McElwain, which is part of all grounds.
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`Furthermore, the times recited for performing the test would be obvious
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`choices based on standard knowledge and practices in the art.
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`For these and the other reasons explained below, Patent Owner’s Revised
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`Motion to Amend should be denied.
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`3
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`II.
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`SUMMARY OF THE PROPOSED AMENDMENTS
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`Substitute claims 20‒29 are proposed to substitute for original claims 1‒10,
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`of which claims 1 and 6 are independent. Claim 1 is a method claim and claim 6
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`recites a machine being operative to perform the method of claim 1. At a high level,
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`claim 1 recites the steps of:
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`• Scanning for MCC/MNC pairs;
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`• Selecting and registering with a network associated with one of the
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`MCC/MNC pairs;
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`• Comparing the MCC/MNC pair of the selected network with home networks
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`of an HPLMN list;
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`• If there is a match between the MCC/MNC pair of the selected network and
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`an MCC/MNC pair in the HPLMN list, displaying the home network name;
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`and
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`• Otherwise displaying an alternate network name.
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`As summarized by the Patent Owner, each proposed substitute claim “follows
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`the steps of independent claims 1 and 6” and adds two new limitations:
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`(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) the aforementioned test is performed at explicitly
`noted times.
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`4
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`PO Mot. at 4. Specifically, the two new limitations recite: (1) “conducting a test that
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`determines … that a[n] HPLMN list … is stored on the mobile station’s SIM or
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`memory,” and (2) “said test being run” either “each time the mobile station is to
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`display a roaming indicator” (claims 20‒24) or “during or after a SIM initialization
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`procedure is performed by the mobile station” (claims 25‒29). Id. at 6–11.1
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`III. THE AMENDMENTS LACK WRITTEN DESCRIPTION SUPPORT
`AND IMPERMISSIBLY INTRODUCE NEW SUBJECT MATTER
`There is no written description in the specification of the ’933 patent for the
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`new limitations, and thus the claims impermissibly introduce new matter.
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`Amendments “may not enlarge the scope of the claims of the patent or introduce
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`new matter.” 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.221(a)(2) (“A motion to amend
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`may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims
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`of the patent”). To satisfy this requirement, every proposed claim limitation must
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`have written description support in the original specification. See Verify Smart Corp.
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`v. Askeladden, L.L.C., 824 F. App’x 1015, 1023 (Fed. Cir. 2020) (affirming denial
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`of motion to amend because proposed amendments lacked written description
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`support). The written description requirement under 35 U.S.C. § 112 requires that
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`the patent specification “reasonably conveys” possession of the claimed invention
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`to persons of skill. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
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`Cir. 2010).
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` 1 The analysis below refers to these as limitation (1), (2a), and (2b), respectively.
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`5
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`A. There Is No Written Description Support for the Test Recited in
`the Proposed Amendments
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`New limitation (1) requires “conducting a test that determines whether [the
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`HPLMN list] is stored on the mobile station’s SIM or memory,” and results in
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`“determining that a HPLMN list, containing a plurality of home network MCC and
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`MNC pairs, is stored on the mobile station’s SIM or memory.” There is no such test
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`disclosed in the specification of the ’933 patent. In the specification, a test is run to
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`determine the location of the HPLMN list as between the SIM and memory, not to
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`determine its availability at all. Specifically, unlike the proposed amended claims,
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`the testing disclosed in the ’933 specification checks whether there is an HPLMN
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`list in the SIM card, and if there is not, it is assumed that the list resides in memory.
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`See, e.g., Ex. 1001, 14:26‒35.
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`In its Motion, Patent Owner identifies two passages of the application for the
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`’933 patent as providing support for limitation (1).2 See PO Mot. at 7 (citing
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` 2 Patent Owner’s analysis of the alleged support for the substitute claims includes
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`citations to European Appl. No. 03255483, which is incorporated by reference
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`into the ’933 patent. See PO Mot. at 5‒6. The citations to this application should
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`be ignored. Pursuant to 37 C.F.R. § 1.57, “essential material”—which is defined
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`as material “necessary to . . . [p]rovide a written description of the claimed
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`(Cont’d on next page)
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`Ex. 1002 at 19, 25‒26). In each of these passages, the specification refers
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`exclusively to tests that assume the availability of an HPLMN list and merely specify
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`its location, in either the SIM or memory. For example, the specification describes
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`two alternative tests to “identify or detect whether there is a [HPLMN] list on the
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`SIM by testing … a predetermined designated area of memory on the SIM,” or
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`“testing if a version number of the SIM corresponds to having such a multiple home
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`network list.” Ex. 1002, 25:11‒14, 26‒27. It later proposes “to identify the
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`availability of such a list on the SIM and a similar backup list on the mobile station.”
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`Id. None of these disclosed tests is designed to determine whether an HPLMN list
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`is available at all. Rather, these tests check whether there is an HPLMN list in the
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`SIM card, and if there is not, it is assumed that the list resides in memory. See Ex.
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`1033 ¶¶ 20‒21.
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`invention”—may only be incorporated by reference “by way of an incorporation
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`by reference to a U.S. patent or U.S. patent application publication.” In any
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`event, the substance of the European application is the same as the U.S.
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`application. Thus, even considering the language in the European application,
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`the proposed substitute claims lack written description support.
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`7
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`B.
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`There Is No Written Description Support for the Timing
`Limitations (2a) and (2b)
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`Even if the test recited in limitation (1) were supported by the specification,
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`the timing limitations (2a) and (2b) are not. There is only one sentence in the entire
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`specification that describes specific timings for testing the location of the HPLMN
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`list:
`
`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.
`Ex. 1001, 14:35‒38. Limitations (2a) and (2b) are inconsistent with and not
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`supported by this passage.
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`With respect to limitation (2a), the specification describes a test performed
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`each time the mobile station “goes through the network name displaying technique.”
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`Id. This is not “every time a roaming indicator is to be displayed,” as proposed
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`amendments recite. According to the specification, the network name displaying
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`technique sometimes results in a roaming indicator being displayed, but other times
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`results in a home network name being displayed. See id., 11:64‒12:26. As the
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`specification makes clear, the point of displaying a home network name (and indeed
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`the point of the patented method) is to inform users that the mobile station is not
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`roaming. Ex. 1001, 1:54‒2:23. Thus, a description of the timing, “every time the
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`mobile station goes through the network name displaying technique” provides no
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`support for the timing “every time a roaming indicator is to be displayed.” The
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`former contradicts the latter and gives no information about how to time a test only
`
`when a roaming indicator would be displayed. Therefore, limitation (2a) is not
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`supported in the written description. See Ex. 1033 ¶ 25.
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`With respect to limitation (2b), the problem is even more straightforward. The
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`new limitation recites running the test “during or after” SIM initialization, but the
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`specification describes running the test “once during or shortly after a SIM
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`initialization procedure.” Ex. 1001, 14:35‒38 (emphasis added). The specification
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`thus describes a narrower range of times than the claim recites—“shortly” after
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`instead of any time “after.” Thus, limitation (2b) is unsupported in and
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`impermissibly introduces new matter to the specification. See Verify Smart Corp.,
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`824 F. App’x at 1023 (proposed amendments added new matter where specification
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`described tracking of “cell phones,” and proposed claims recited tracking the broader
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`category of “communications device[s]”). See Ex. 1033 ¶ 26.
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`The ’933 patent thus lacks written description for all three proposed new
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`limitations. For this reason alone Patent Owner’s motion should be denied.
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`IV. THE PROPOSED AMENDMENTS RENDER THE CLAIMS
`INDEFINITE
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`None of the proposed substitute claims could be understood by a POSITA
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`with reasonable certainty, and thus the proposed substitute claims are indefinite
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`under 35 U.S.C. § 112.
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`Under Section 112, claims must be described in “full, clear, concise, and exact
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`terms.” 35 U.S.C. § 112(a). Claims are invalid as indefinite if they fail to “inform
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`those skilled in the art about the scope of the invention with reasonable certainty,”
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`Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014), or fail to use
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`“reasonable precision . . . in the context of the circumstances,” In re Packard, 751
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`F.3d 1307, 1313 (Fed. Cir. 2014). Thus, Section 112 forbids claim language that is
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`“ambiguous, vague, incoherent, opaque, or otherwise unclear.” Id. at 1311. In
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`particular, Section 112 forbids claims that are logically nonsensical or contradictory.
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`See Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir.
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`1999) (“[W]here . . . claims are susceptible to only one reasonable interpretation and
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`that interpretation results in a nonsensical construction of the claim as a whole, the
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`claim must be invalidated....”); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d
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`1359, 1366–67 (Fed. Cir. 2016) (claims indefinite where internally contradictory);
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`Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002) (claims
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`indefinite where claim limitation was contradicted by specification).
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`A. Limitation (2a) of Proposed Claims 20‒24 Is Indefinite
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`Limitation (2a) recites that the test for the HPLMN list should be performed
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`“each time the mobile station is to display a roaming indicator.” This limitation fails
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`to define the scope of the invention with reasonable certainty in at least two ways.
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`10
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`Petitioner’s Opposition to Patent Owner’s
`Revised Motion to Amend in IPR2020-01157
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`There is no clarity in the intrinsic record on how a POSITA is to determine
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`what “each time” means and the instances in which a mobile station “is to display a
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`roaming indicator,” necessitating practice of the testing step. For example, the
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`mobile station may displaying a roaming indicator on a home screen when the user
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`opens an app that hides the roaming indicator, and then the user closes the app such
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`that the mobile station displays the roaming indicator again. Or a screen may go to
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`“sleep” after a period of inactivity, and then awaken to again display a roaming
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`indicator. There is no clarity in the specification on whether circumstances such as
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`these trigger the requirement to test for the HPLMN list. See Ex. 1033 ¶ 31.
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`Even worse, limitation (2a) renders proposed claims 20‒24 circular and
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`contradictory. Limitation (2a)—i.e., running a test for the HPLMN list each time
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`the mobile station is to display a roaming indicator—is a step in the network name
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`display procedure, and the result of that overall procedure is to decide whether to
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`display a home network name or, if not, a roaming indicator. See proposed claim
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`20[h]‒[i] (“causing a home network display name . . . to be visually displayed . . .
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`and otherwise causing an alternate display name to be visually displayed”). The
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`limitation creates a logical contradiction: it requires that the outcome of the name
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`display procedure is known, in order to decide whether to perform an earlier step of
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`that same procedure. This is logically impossible. Thus, the new limitation renders
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`the claim inherently contradictory and nonsensical. A POSITA reading this claim
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`11
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`Revised Motion to Amend in IPR2020-01157
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`would have no clear understanding of when the test step must be performed. See
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`Ex. 1033 ¶ 32.
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`Courts consistently hold such claims invalid as indefinite under Section 112.
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`For example, in Synchronoss Technologies, Inc. v. Dropbox Inc., 389 F. Supp. 3d
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`703 (N.D. Cal. 2019), aff’d, 987 F.3d 1358 (Fed. Cir. 2021). The patent challenger
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`argued the patent was indefinite because a logical “impossibility permeates all of the
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`claims: the claims require ‘generating a [single] digital media file’ that itself
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`‘compris[es] a directory of digital media files.’” Id. at 714. The court agreed, even
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`though expert testimony suggested that the contradiction came down to errors in
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`claim drafting. Id. at 715. Even if “the impossibility of [the] claim, as written” was
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`so evident that a skilled artisan “would understand that [the claim] means something
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`other than what is written,” that only confirms the claim’s indefiniteness. Id.
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`A similar contradiction invalidated the claims in Virtual Solutions, LLC v.
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`Microsoft Corp, 925 F. Supp. 2d 550, 561‒62, 566 (S.D.N.Y. 2013), aff’d, 540
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`F. App’x 997 (Fed. Cir. 2013). The patent challenger “unearthed an apparent logical
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`contradiction within claim 1”—namely, that one limitation identified a “physical
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`characteristic signal” as “including position information,” while a later limitation
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`required “position information and said at least one physical characteristic signal.”
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`Id. The challenger argued that the claims thus “require[d] that ‘physical
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`characteristic signal’ both include and exclude ‘position information,’ which . . . is
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`logically impossible.” Id. at 562. The court agreed, and held that the “logical
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`contradiction” proved the indefiniteness of the claim. Id. at 566.
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`Because proposed substitute claims 20‒24 likewise contain vague and
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`undefined terms, they are indefinite. See Ex. 1033 ¶ 33.
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`Limitation (2b) of Proposed Claims 25‒29 Is Indefinite
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`B.
`Limitation (2b) recites that the test for the HPLMN list should be performed
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`“during or after a SIM initialization procedure is performed by the mobile station[.]”
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`This limitation is in no way “full, clear, concise, [or] exact”; rather, it is so vague as
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`to have no discernable meaning. The SIM initialization procedure is essentially the
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`first operation a mobile unit performs when it is powered on. Ex. 1033 ¶¶ 34, 47.
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`Thus, “during or after a SIM initialization procedure” encompasses essentially all
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`the time that a mobile unit is on and functional—it could mean within a set time after
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`SIM initialization, or at the end of an entire start-up cycle, or at any other time during
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`the mobile unit’s operation. To the extent this element is limiting at all, it does not
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`describe that limitation to a POSITA with any reasonable certainty. A POSITA
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`would simply have to guess what timing “after” indicates. Ex. 1033 ¶ 34.
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`Claims with such vague terms invalid as indefinite. See, e.g., Int’l Test Sols.,
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`Inc. v. Mipox Int’l Corp., No. 16-CV-00791-RS, 2017 WL 1367975 (N.D. Cal. Apr.
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`10, 2017) (holding claim terms indefinite where they provided “no limit,” “no
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`timeline,” or “lack[ed] an objective boundary”); Fairfield Indus., Inc. v. Wireless
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`Seismic, Inc., No. 4:14-CV-2972, 2015 WL 1034275 (S.D. Tex. Mar. 10, 2015)
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`(holding claim terms indefinite where neither they nor the specification “offer any
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`objective boundaries” such that “future inventors [would be] forced to speculate
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`about where the threshold is, and whether their inventions infringe”).
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`V. THE PROPOSED SUBSTITUTE CLAIMS ARE STILL OBVIOUS ON
`ALL GROUNDS RAISED IN THE PETITION
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`The proposed substitute claims would have been obvious to a POSITA at the
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`time of the ’933 patent based on all five Grounds raised in the Petition. Specifically,
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`McElwain (which is included in all five Grounds) renders obvious each of the
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`additional limitations added in the proposed substitute claims. Indeed, the amended
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`claims suffer from all of the same defects that the Board previously found rendered
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`the claims obvious. See Paper 34 at 11‒13.
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`At bottom, Patent Owner’s amendments do not introduce any inventive
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`concepts. They simply recite the idea of running a test at certain times to confirm
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`that a particular data structure (an HPLMN list) is present. This is classic
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`obviousness. Such a test is an elementary best practice for any software method.
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`That the test is run at specific times (either during SIM initialization or each time the
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`mobile station is to display a roaming indicator) does not render the proposed
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`substitute claims any less obvious. There are only a finite number of times at which
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`a test for an HPLMN list could be run, and the two covered by the substitute claims
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`would be the most logical candidates for a POSITA to select. One of the two options
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`is barely even limiting.
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`The following analysis, which is supported by the expert testimony of
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`Dr. Kakaes, demonstrates that previous Grounds 1‒5 render obvious the proposed
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`substitute claims.
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`A. Elements 20[b] and 25[c] (Limitation 1) Are Obvious in Light of
`McElwain
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`20[b]: “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”
`25[c]: “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”
`McElwain teaches that an HPLMN list (the Cousin SID list) can be stored in
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`the SIM or in memory of a mobile device. Ex. 1004 (McElwain) ¶¶ 38‒39 (“[A]
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`retailer that sells the prepaid service provider’s mobile stations 10 may program the
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`Cousin SID list 200 . . . directly into the memory of the mobile station 10, or it may
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`be programmed into a removable card or module that is given to the customer along
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`with the mobile station 10.”). McElwain further teaches using the HPLMN list,
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`whether stored in the SIM or memory, to perform the comparisons and name display
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`procedures required by claim 1. See id. ¶¶ 48‒54, Figs. 4A, 4B, 5; see also Pet.
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`at 11‒13, 26‒36.
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`It would have been obvious to a POSITA, in light of McElwain, to run a test
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`to determine whether the HPLMN list is stored in the SIM or memory. See Ex. 1033
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`¶¶ 39‒43. Indeed, as Dr. Kakaes explains, it is a precursor to using the HPLMN list
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`to confirm its presence and location. See id. To do so, a POSITA would have been
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`motivated to implement a test to determine if the HPLMN list is present in the SIM
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`or memory. This limitation is obvious and does nothing to render the original claim
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`less obvious.
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`Additionally, TS-22.101 (which is part of Ground 5) teaches storing network
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`names in either the SIM or memory of the mobile, with information stored on the
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`SIM taking priority. Ex. 1008 at 28. This confirms that it would have been known
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`to a POSITA to check (i.e., test) multiple locations to determine whether specific
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`data is available.
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`The Board’s preliminary guidance opined on an almost identical limitation,
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`and concluded that it would have been obvious. See Paper 34 at 11‒12 (discussing
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`obviousness of “test to determine whether the HPLMN list is stored in the SIM, the
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`mobile station’s memory, or neither”). The Board concluded, “we are persuaded by
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`Petitioner’s arguments that one of ordinary skill in the art would have understood
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`that performing a test to determine whether the HPLMN list is stored in the SIM, the
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`mobile station’s memory, or neither, would have been necessary, or at least
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`desirable[.]” Id. at 12. The Board credited the testimony of Dr. Kakaes, including
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`that “attempting to read non-existing data would typically lead to unexpected and
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`indeterminate software-related malfunctions,” which was consistent with the
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`disclosures in the prior art of record. Id.
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`B.
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`Elements 20[c] and 25[d] (Limitations 2a, 2b) Are Obvi