`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`CRADLEPOINT, INC., DELL, INC., SIERRA WIRELESS, INC., THALES DIS
`AIS DEUTSCHLAND GMBH, ZTE CORPORATION, and ZTE (USA) Inc.,
`Petitioners
`
`v.
`
`SISVEL INTERNATIONAL S.A.,
`Patent Owner
`
`
`
`
`Case IPR2020-1157
`Patent No. 7,274,933
`
`
`
`
`DECLARATION OF STUART LIPOFF
`IN SUPPORT OF PATENT OWNER
`
`
`
`
`
`
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`

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`Case IPR2020-1157
`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. PROFESSIONAL QUALIFICATIONS, BACKGROUND AND
`EXPERIENCE ......................................................................................................... 1
`
`III. MATERIALS REVIEWED ........................................................................... 6
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN THE
`ART ........................................................................................................................... 7
`
`V. UNDERSTANDING OF THE LAW............................................................. 8
`
`VI. BACKGROUND ........................................................................................... 11
`
`A. Relevant Technology ...................................................................................... 11
`
`B. Overview of the ’933 Patent ........................................................................... 13
`
`VII. OVERVIEW OF THE PRIOR ART ....................................................... 16
`
`A. Cited Reference – McElwain (Ex. 1004) ........................................................ 16
`
`B. Cited Reference – Uchida (Ex. 1005) ............................................................. 17
`
`C. Cited Reference – Hicks (Ex. 1006) ............................................................... 20
`
`D. Cited Reference – “3GPP Standards” (Ex. 1007-9) ....................................... 21
`
`VIII. ANALYSIS OF PETITIONERS’ GROUNDS FOR INSTITUTION... 22
`
`a. None of Petitioners’ References Disclose Displaying a Home Network
`Display Name When Outside the User’s Primary Home Network’s Service
`Area ................................................................................................................. 22
`
`b. Petitioners’ References Do Not Disclose the Use of Multiple MCC/MNC
`Pairs in an HPLMN List ................................................................................. 26
`
`IX. CONCLUSION ............................................................................................. 28
`
`
`
`i
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`Case IPR2020-1157
`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`
`I.
`
`INTRODUCTION
`
`1.
`
`2.
`
`I reside in Las Vegas, Nevada.
`
`I have been retained as an expert in this proceeding by counsel for
`
`Patent Owner, Sisvel International S.A., to offer opinions regarding U.S. Patent
`
`No. 7,274,933 (“the ’933 patent”), in response to the Petition alleging the
`
`unpatentability of all claims view of certain prior art. This declaration sets forth
`
`the opinions I have reached to date.
`
`3.
`
`I am being compensated by Patent Owner at my standard hourly
`
`consulting rate of $375 per hour for my time spent on this matter. My
`
`compensation is not contingent on the outcome of the proceeding or on the
`
`substance of my opinions.
`
`4.
`
`I have no financial interest in any of Petitioners or Patent Owner.
`
`II.
`
`PROFESSIONAL QUALIFICATIONS, BACKGROUND AND
`EXPERIENCE
`
`5.
`
`I am currently president of IP Action Partners Inc., a consulting
`
`practice that serves the telecommunications, information technology, media,
`
`electronics, and e-business industries.
`
`6.
`
`I earned a Bachelor of Science degree in Electrical Engineering in
`
`1968 and a second Bachelor of Science degree in Engineering Physics in 1969,
`
`both from Lehigh University. I earned a Master of Science degree in Electrical
`
`
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`Case IPR2020-1157
`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`Engineering from Northeastern University in 1974, and then a Master of Business
`
`Administration degree from Suffolk University in 1983.
`
`7.
`
`I hold a Federal Communications Commission (“FCC”) General
`
`Radiotelephone License. I also hold a Certificate in Data Processing from the
`
`Institute for the Certification of Computing Professionals (“ICCP”), which is
`
`supported by the Association for Computing Machinery (“ACM”). I am also a
`
`registered professional engineer (PE) in the Commonwealth of Massachusetts and
`
`in the State of Nevada.
`
`8.
`
`I am a fellow of the Institute of Electrical and Electronics Engineers
`
`(“IEEE”) Consumer Electronics, Communications, Computer, Circuits, and
`
`Vehicular Technology Groups. I have been a member of the IEEE Consumer
`
`Electronics Society National Board of Governors (formerly known as the
`
`Administrative Committee) since 1981, and I was Boston Chapter Chairman of the
`
`IEEE Vehicular Technology Society from 1974 to 1976. I served as the 1996-
`
`1997 President of the IEEE Consumer Electronics Society, and from 1999 to 2018
`
`I served as Chairman of the Society’s Technical Activities and Standards
`
`Committee and as Vice President of Publications for the Society. Since 2018 I
`
`have served as Vice President of Standards and Industry Activities for the Society.
`
`I have also served as an Ibuka Award committee member for the IEEE’s Award in
`
`the field of consumer electronics.
`
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`I have prepared and presented numerous papers at the IEEE and at
`
`9.
`
`other professional meetings. For example, in fall 2000, I served as general
`
`program chair for IEEE’s Vehicular Technology Conference on advanced wireless
`
`communication technology. I have organized sessions at The International
`
`Conference on Consumer Electronics, and I was the 1984 program chairman. I
`
`conducted an eight-week IEEE-sponsored short course on Fiber Optics System
`
`Design. I received IEEE’s Centennial Medal in 1984, and I received IEEE’s
`
`Millennium Medal in 2000. In 2011, I was elected to membership in The Cable
`
`Television Pioneers.
`
`10. As Vice President and Standards Group Chairman for the Association
`
`of Computer Users (“ACU”) from 1980 to 1983, I served as the ACU
`
`representative to the ANSI X3 Standards Group. From 1976 to 1978, I served as
`
`Chairman of the task group on user rule compliance for the FCC’s Citizens
`
`Advisory Committee on Citizen’s Band Radio.
`
`11. Over the last 35 years, I have been a member of the Society of Cable
`
`Television Engineers, the Association for Computing Machinery, and The Society
`
`of Motion Picture and Television Engineers. From 2001 to 2004, I served as a
`
`member of the USA advisory board to the National Science Museum of Israel. In
`
`1998, I presented a short course on international product development strategies as
`
`a faculty member for Technion Institute of Management in Israel.
`
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`12. From 2001 to 2003, I served as a member of the board or directors of
`
`The Massachusetts Future Problem Solving Program. I am currently a member of
`
`the board of directors and a Paul Harris Fellow of The Las Vegas Rotary Club. I
`
`serve on The Advocacy Board of The University of Las Vegas College of Fine
`
`Arts. When I have spare time, I substitute teach science in The Clark County
`
`Nevada Public Schools and donate my earnings back to school district.
`
`13.
`
`I am a named inventor on seven United States patents and have
`
`several publications on data communications in publications, including Electronics
`
`Design, Microwaves, EDN, the Proceedings of the Frequency Control Symposium,
`
`Optical Spectra, and IEEE publications.
`
`14. During my professional career dating from 1969 to the present, I have
`
`been heavily engaged in the study, analysis, evaluation, design, and
`
`implementation of products and technology associated with private and public
`
`network wired and wireless telecommunications systems, services, and
`
`technologies. A particular focus of my professional activities has been associated
`
`with public wireless networks such as paging and cellular systems. I have worked
`
`with all stakeholders in public wireless networks including service providers (i.e.
`
`carriers), cellphone manufacturers, cellular infrastructure providers, billing system
`
`service providers, software developers, investors, and complementary solution
`
`providers who interact with the cellular industry.
`
`
`
`4
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`In my work related to the public network cellular industry I have
`
`15.
`
`assisted clients plan for the introduction and launch of their services, evaluated
`
`alternative technologies, prepare license applications, forecast technology
`
`developments and costs, and support R&D engineering development of subscriber
`
`and infrastructure products.
`
`16. For approximately three years, from 1969 to 1972, I served as Project
`
`Engineer for Motorola’s Communications Division, where I had project design
`
`responsibilities for paging and wireless communication products. Projects I
`
`worked on while employed at Motorola included work on projects that interfaced
`
`wireless data communications terminals to public safety computer systems for
`
`mobile data retrieval and data entry.
`
`17. For approximately four years, from 1972 to 1976, I served as Section
`
`Manager for Bell & Howell Communications Company, where I also had project
`
`design responsibilities for paging and wireless communication products. The
`
`projects I supported included public network paging terminals and value added
`
`server based enhancements to basic voice services.
`
`18. For 25 years from 1976 to 2001, I worked for Arthur D. Little, Inc.
`
`(ADL), where I became the Vice President and Director of Communications,
`
`Information Technology, and Electronics (CIE) and served in that role for 10
`
`years, from 1991 to 2001. At ADL, I was responsible for the firm’s global CIE
`
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`practice in laboratory-based contract engineering, product development, and
`
`technology-based consulting. I was also involved in multiple pioneering efforts to
`
`identify and explore customer-to-business and business-to-business electronic
`
`commerce and transactions information processing opportunities (e-commerce).
`
`These projects involved technology assessment and analysis as well as developing
`
`architectures and systems to support multiple applications, and typically involved
`
`an information retrieval component.
`
`19. My curriculum vitae is provided as Exhibit A.
`
`III. MATERIALS REVIEWED
`
`20.
`
`In forming my opinions, I have reviewed the ’933 patent and the
`
`materials submitted by Petitioners. In reaching my opinions, I have relied upon my
`
`experience in the field and also considered the viewpoint of a person of ordinary
`
`skill in the art (“POSITA”) at the time of the earliest relevant date of the ʼ933
`
`patent, i.e., September 3, 2003. As explained below, I am familiar with the level of
`
`skill of a POSITA regarding the relevant technology at issue as of that time. As
`
`such, my opinions presented below are through the viewpoint of a POSITA. I have
`
`cited to the following documents in my analysis below.
`
`Exhibit No. Description of Document
`
`Ex. 1001
`
`U.S. Patent No. 7,274,933
`
`
`
`6
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`Case IPR2020-1157
`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`
`Ex. 1003
`
`Declaration of Dr. Apostolos Kakaes
`
`Ex. 1004
`
`U.S. Patent Appl. Publ. No. 2003/0022689
`
`Ex. 1005
`
`U.S. Patent Appl. Publ. No. 2004/0204136
`
`Ex. 1006
`
`U.S. Patent No. 7,027,813
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. B
`
`
`
`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)
`
`3rd Generation Partnership Project; Technical
`Specification
`Group Services and System Aspects – Service aspects;
`Service
`principles (Release 5) (3GPP TS 22.101 V5.8.0)
`3rd Generation Partnership Project; Technical
`Specification
`Group Terminals; Characteristics of the USIM Application
`(Release 5) (3GPP TS 31.102 V5.3.0)
`Andrew Hunter, PRL Enhancements for International
`Roaming, CDH Workshop (2004).
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART
`
`21.
`
`I have been informed that an assessment of claims of the ’933 patent
`
`should be undertaken from the perspective of a POSITA as of the earliest claimed
`
`priority date, which I have assumed is September 3, 2003. For the purposes of my
`
`analysis, I have used the September 3, 2003 date as the relevant date.
`
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`I considered several factors to determine the skill level of a POSITA
`
`22.
`
`in the field of the ’933 patent in September of 2003, including the types of
`
`problems encountered in the art, the solutions to those problems, the pace of
`
`innovation in the field, the sophistication of the technology, and the education level
`
`of active workers in the field.
`
`23. Based on my knowledge, expertise, and the disclosure of the ’933
`
`patent, it is my opinion that a POSITA in the field of the ’933 patent would be one
`
`with a bachelor’s degree in electrical engineering or computer sciences and
`
`wireless telecommunications networks, along with at least three or more years or
`
`practical experience in the field or equivalent experience.
`
`24. Unless noted otherwise, when I state that something would be known
`
`or understood by one skilled in the art, or a skilled artisan, or a POSITA, I am
`
`referring to a person with this level of education and experience in or around June
`
`2009.
`
`V. UNDERSTANDING OF THE LAW
`
`25.
`
`I am not an attorney. For the purposes of this declaration, Patent
`
`Owner’s counsel has informed me about certain aspects of the law that are relevant
`
`to my opinions. I have applied those legal principles in arriving at my conclusions
`
`expressed in this declaration.
`
`26.
`
`I have been instructed as to the definition of “obviousness” in the
`
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`
`context of the patent laws.
`
`27.
`
`It is my understanding that a patent claim may be found invalid as
`
`obvious if, at the time when the invention was made (which in these proceedings I
`
`am assuming to be September 3, 2003), the subject matter of the claim, considered
`
`as a whole, would have been obvious to a person having ordinary skill in the field
`
`of the technology (the “art”) to which the claimed subject matter belongs.
`
`28.
`
`I understand that the following factors should be considered in
`
`analyzing obviousness: (1) the scope and content of the prior art; (2) the
`
`differences between the prior art and the claims; and (3) the level of ordinary skill
`
`in the pertinent art. I also understand that certain other factors known as
`
`“secondary considerations” such as commercial success, unexpected results, long
`
`felt but unsolved need, industry acclaim, simultaneous invention, copying by
`
`others, skepticism by experts in the field, and failure of others may be utilized as
`
`indicia of nonobviousness.
`
`29.
`
`I understand that a person of ordinary skill in the art is assumed to
`
`have knowledge of all prior art. I understand that one skilled in the art can combine
`
`various prior art references based on the teachings of those prior art references, the
`
`general knowledge present in the art, or common sense. I understand that for a
`
`reference or combination of references to render a claim obvious, the reference or
`
`combination of references, along with the knowledge of a skilled artisan, must
`
`
`
`9
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`Case IPR2020-1157
`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`teach or suggest each and every limitation recited in the claim, as arranged in the
`
`claim as a complete whole. I have been advised by counsel that a claimed
`
`invention may be obvious if some teaching, suggestion, or motivation exists that
`
`would have led a person of ordinary skill in the art to combine the references.
`
`30.
`
`In considering whether a claimed invention is obvious, I understand
`
`that one may find obviousness if, at the time of the patent’s effective filing date,
`
`there was a reason or motivation that would have prompted a POSITA to combine
`
`the known elements in a way the claimed invention does, taking into account such
`
`factors as (1) whether the claimed invention was merely the predictable result of
`
`using prior art elements according to their known function(s); (2) whether the
`
`claimed invention provides an obvious solution to a known problem in the relevant
`
`field; (3) whether the prior art teaches or suggests the desirability of combining
`
`elements claimed in the invention; (4) whether the prior art teaches away from
`
`combining elements in the claimed invention; (5) whether it would have been
`
`obvious to try the combinations of elements, such as when there is a design need or
`
`market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions; and (6) whether the change resulted more from design
`
`incentives or other market forces.
`
`31.
`
` To find that the prior art renders the invention obvious, I understand
`
`that one must find that the prior art provided a reasonable expectation of success
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`and that “obvious to try” is not sufficient in unpredictable technologies. I also
`
`understand that it is impermissible to find obviousness based on hindsight
`
`reasoning, and it must be found only by considering what was known at the time of
`
`the patent’s effective filing date.
`
`32.
`
`I also understand that a showing of obviousness must include
`
`demonstrating that the cited references disclose each element of a challenged
`
`claim.
`
`VI. BACKGROUND
`
`A.
`
`Relevant Technology
`
`33. The inventions of the ’933 patent generally pertain to the systems and
`
`methods regarding tracking which cellular network a user is connected to and
`
`displaying information about that network to a user’s phone. The goal of the ’933
`
`patent is to reduce a user’s confusion regarding whether they will be incurring
`
`additional service (e.g., roaming) charges.
`
`34. At the time of the ’933 patent, It was common practice to alert a user
`
`that he or she was as roaming (i.e., not using the network of their cellular provider)
`
`and thus incurring additional charges on their cell phone bill, by using a flashing
`
`light appearing somewhere on the UE or by using a text indicator appearing on the
`
`UE’s display. This common practice was lamented for failing to provide the
`
`typical lay-person user with sufficient indication of a user’s roaming status. See,
`
`
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`Declaration of Stuart Lipoff
`e.g., Judy Strausbaugh, Oh, Give Me a Cell Phone Where the Signals Won’t Roam,
`
`Sunday News (Lancaster, PA) 1, 1-2 (2002) (describing the difficulties of the
`
`average user in determining roaming charges in 2002).
`
`35. Over time, as cellular network infrastructure became more widespread
`
`and developed, the relationships among cell phone networks became more
`
`complicated. For the average user, it became increasingly more difficult to figure
`
`out whether their connection to a given network would incur roaming charges, as
`
`the relationships among providers could be obscured and complicated before even
`
`coming to the matter of deciphering blinking lights and text indicators on a phone.
`
`A typical user at the time of the ’933 patent, and even today, would likely be
`
`unaware of the complex and shifting arrangements between providers, and thus
`
`would tend to presume they would incur charges when seeing any indication that
`
`the phone was connected to anything other than the home cellular network.
`
`36. The ’933 patent sought to remedy this issue by maintaining a list of
`
`certain cellular providers and selectively displaying the name of a user’s primary
`
`home network (e.g., the name of the user’s cellular provider) even when a user is
`
`not on that network. (Ex. 1001 at 2:62-65.)
`
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`Case IPR2020-1157
`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`
`B. Overview of the ’933 Patent
`
`37. The application leading to the ’933 patent was filed on September 2,
`
`2004, claiming priority to European Patent Application No. 03255483 filed
`
`September 3, 2003. (Ex. 1001 at 1.)
`
`38.
`
`In terms of its technology, the ʼ933 patent describes and claims a
`
`method and apparatus for displaying a home network display name for multiple
`
`home networks. (Ex. 1001 at 1.) The patent invention addresses issues related to
`
`displaying a single home network display name for multiple home networks. (Ex.
`
`1001 at Abstract.)
`
`39. The ’933 patent teaches and claims systems and methods of storing
`
`certain information regarding cellular networks, and then displaying selected
`
`network information on the phone. (Ex. 1001 at 1:17-19, 1:42-53, 1:62-67, 2:15-
`
`19.) The ’933 patent employs 3GPP Standards-based constructs (i.e., GSM
`
`family) of MCC/MNC pairs, HPLMN lists and PLMN lists to improve the end user
`
`experience and comfort level when roaming on networks (i.e. the "roaming
`
`network") other than the network of the operator (i.e. the "home network") with
`
`which the end user has a service providing contract (i.e. the "home operator"). In
`
`particular, the ’933 patent has the innovative aspect of allowing the end user's
`
`device to display the name of a particular service provider despite actually being
`
`located in, and operating upon, the network of other than the home operator. The
`
`
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`Patent No. 7,274,933
`Declaration of Stuart Lipoff
`preferred embodiment to improve the comfort level of the end user for the end
`
`user's phone is to continue to display the name of the home operator while roaming
`
`in a foreign system if the home and roaming operator have an agreement to charge
`
`the end user according to the same terms as if the end user was actually operating
`
`in the home operator’s network. (Ex. 1001 at 2:1-22; 14:6-14.)
`
`40. That this display of an operator name under control of the HPLMN
`
`list is the innovative aspect of the Zinn patents is confirmed by the petitioner's own
`
`expert. (Ex. 1003 at 96-97.)
`
`41. The ʼ933 patent achieves its goal by thinking about “home networks”
`
`differently than the prior art. The ʼ933 patent takes into account that, due to
`
`relationships among carriers, users may not pay roaming charges even when
`
`connected to a carrier other than the user’s own carrier. (Ex. 1001 at 2:1-3.) It was
`
`for the purpose of addressing these situations that the ʼ933 patent was the first to
`
`reconceptualize the “home network” to include other networks having a
`
`“cooperative network relationship” with the user’s cellular provider.
`
`42. To accomplish the aforementioned goals, the ʼ933 patent teaches—in
`
`one embodiment—storing multiple MCC and MNC pairs in a HPLMN list. (Id. at
`
`5:32-36.) This list can be stored on the UE’s Subscriber Identify Module (SIM)
`
`card, or in the user equipment’s (“UE”) memory. (See, e.g., Id. at claim 1.) As
`
`was commonly understood at the time, each MCC/MNC pair identifies a discrete
`
`
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`Declaration of Stuart Lipoff
`network. (Id. at 1:36-41.) In one embodiment, the UE’s memory also contains the
`
`name of the network to be displayed on the UE, which is indexed to the
`
`MCC/MNC pairs in the HPLMN list. (Id. at 12:41-49.) Where another “home
`
`network” exists—i.e., another cellular provider for which the user will not pay
`
`additional service fees—the HPLMN list will include that other network’s
`
`MCC/MNC pair. This, in turn, will direct the device to display the user’s own
`
`cellular provider’s name, so that the “primary home network” name is displayed
`
`even when the user is on another “home network.” (See, Ex. 1001 1:64-12:8, 2:23-
`
`27).
`
`43.
`
`In the ’933 patent embodiments, when a UE connects to a network, it
`
`receives MCC and MNC codes from that network and runs a comparison of those
`
`pairs against those contained on the UE’s HPLMN list. If there is a match between
`
`the codes, the UE displays the name of the user’s primary home network. (Ex.
`
`1001 at 13:36-48.) Because the HPLMN list a plurality of MCC and MNC pairs,
`
`each associated with one of the “home networks,” the UE might display the
`
`“primary home network” name when on any of those home networks.
`
`44. One of the central methods disclosed by the ’933 patent is listing
`
`multiple home networks’ MCC/MNC pairs on the HPLMN file, rather than what
`
`was the predominant method at the time—including only the pair for user’s
`
`primary home network. (Ex. 1001 at 2:62-65) By including these additional pairs
`
`
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`on an HPLMN list, a UE may display the primary home network name regardless
`
`of whether a UE is actually connected to the user’s primary home network or
`
`instead connected to another network with whom that carrier has a contractual
`
`relationship. (Ex. 1001 at 2:23-33, 13:60-66, 14:6-12.) In effect, the ’933 engages
`
`in a form of user deception; the user is led to believe that the UE is on the home
`
`network even when that may not be the case, so long as the effect to the user is the
`
`same.
`
`45. The ’933 patent alleviates consumer confusion regarding incurring
`
`roaming charges for a particular connection by choosing to display the primary
`
`home network name rather than using a roaming indicator when on a network with
`
`whom the primary home network has a contractual relationship. I note that this is
`
`the precise opposite tact taken by Petitioners’ references, which variously teach
`
`using tags such as “Cousin,” “Partner,” “Favored,” or “Neutral,” which generally
`
`provide only more confusion for users about whether roaming charges would
`
`apply. (See, e.g., Ex. 1004 at ¶ 54.)
`
`VII. OVERVIEW OF THE PRIOR ART
`
`A.
`
`Cited Reference – McElwain (Ex. 1004)
`
`46. Petitioners refer to United States patent Application Publ. No.
`
`2003/0022689 entitled “Method and Apparatus for Relating Communications
`
`System Identifications (SIDS)” (“McElwain,” Ex. 1004). McElwain discusses a
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`method and apparatus for a UE selecting a network to connect to depending on
`
`whether the user would be on a home network or roaming. (Ex. 1004 at ¶¶ 3, 9,
`
`20-21.) McElwain accomplishes this by storing system identification (SID) code
`
`values and network identification (NID) values and matches those identifiers
`
`against identifiers provided by the network to which the UE is connected. In this
`
`manner, a UE may display a “tag” that serves to tell a user that he or she is on a
`
`home network or is roaming. (Ex. 1004 at ¶ 54.)
`
`B.
`
`Cited Reference – Uchida (Ex. 1005)
`
`47. Petitioners also reference “Download and Display of System Tags in
`
`Wireless Communication Systems” (“Uchida,” Ex. 1005 at 1).
`
`48. As with the prior reference, McElwain, Uchida discloses a system that
`
`uses SID/NID pairs and “tags.” As Uchida defines the term, a “tag” is a pre-
`
`defined string of text and/or other graphics that serve to indicate a user’s
`
`connection status—namely, whether they are roaming. (Ex. 1005 at Abstract, Figs.
`
`3A-3C.) Uchida discloses the use of SID/NID pairs matched between user
`
`equipment and network that lead to the display of a tag due to a device’s internal
`
`indexing. (Id. at ¶ 40.) Under Uchida, a group of consecutively-numbered
`
`SID/NID pairs (or a subgroup thereof) may share one or more tags. (Id. at ¶ 40.)
`
`49.
`
`I note that Uchida lacks any disclosure of indicating that a user is on
`
`his/her cellular provider’s network when, in fact, the user is instead on another
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`network with whom the user’s cellular provider has a contractual relationship—
`
`that contractual relationship precluding billing the user for roaming charges.
`
`Rather, it is my opinion that Uchida teaches that when a UE is connected to a
`
`network that is not the user’s primary home network, the UE will merely display a
`
`tag shared among networks that are not the user’s primary home network. (Ex.
`
`1005 at Figs. 3A-3C.)
`
`50. Of particular relevance is that in Uchida, each tag must be either
`
`mapped to a single SID or a consecutive range of SIDS (Id. At ¶ 40), and there is
`
`no disclosure of a random list of many SIDs out of order that cause the display of a
`
`single tag. It is this in addressing this latter situation that renders the ’933 patent
`
`particularly innovative, and where Uchida falls short.
`
`51.
`
`It is also crucial to note that when Uchida refers to using a single tag
`
`for a number of “home networks,” these are not networks separate from the
`
`user’s cellular provider. Rather, Uchida contains a paragraph early in its
`
`disclosure that sets the context for the reference:
`
`A network operator/service provider may deploy one or more
`wireless communication systems
`to provide services for
`its
`subscribers. Each deployed system convers a particularly geographic
`region (e.g., a city) and may in turn include one or more smaller
`networks. For CDMA, each system can be uniquely identified by a
`specific system identification (SID) code value, and each network
`may also be uniquely identified by a specific network identification
`(NID) code value. Each base station operated by the network operator
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`would then transmit the SID and NID values of the specific system
`and network to which it belongs.
`
`(Ex. 1005 at ¶ 5) (emphasis added). It is my opinion that what Uchida calls “home
`
`networks” are simply smaller networks that belong to and are operated by a user’s
`
`cellular carrier; Uchida does not take the step of calling networks owned and
`
`operated by separate carriers “home networks” by virtue of their contractual
`
`relationships with a user’s cellular carrier. (Id. at ¶ 5.)
`
`52. Finally, I note that, like McElwain, Uchida does not describe the use
`
`of MCC/MNC pairs stored on an HPLMN list. Rather, both primarily address
`
`methods in a CDMA network environment, which at the time made no use of
`
`MCC/MNC pairs whatsoever, as evidenced in the CDG Workshop: PRL
`
`Enhancements for International Roaming published in 2004—attached hereto as
`
`Exhibit B to my declaration. (See Ex. B.)
`
`53. There were publications such as the CDG Workshop: PRL
`
`Enhancements for International Roaming in the 2003 time-frame of the ’933
`
`patent’s priority date that revealed plans to have the CDMA networks described in
`
`McElwain and Uchida broadcast MCC/MNC in addition to their long standing
`
`broadcasting of SID/NID network identification signals. There is no disclosure in
`
`these two references to make use of MCC/MNC stored data structures in a
`
`HPLMN phone memory or an equivalent MCC/MNC data structure.
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`C.
`
`Cited Reference – Hicks (Ex. 1006)
`
`54. Petitioners also point to a reference entitled “System and Method for
`
`Home Network Determination in a Mobile Phone” (“Hicks,” Ex. 1006 at 1). Hicks
`
`pertains to ways for a UE to determine if it is on a user’s primary home network.
`
`(Id. at 1, Abstract). Hicks focuses on known 3GPP systems and methods, such as
`
`the use of Location Area Information (“LAI”) to determine whether a user is on
`
`their primary home network—but these methods are not employed by the ’933
`
`patent.
`
`55. By the teachings of Hicks, if a UE determines that it is not on a user’s
`
`cellular provider’s network, it will display “an indicator such as a special tone, a
`
`screen display icon, or a lit indicator bulb” that will signal “to the user that
`
`roaming charges” are now applicable. (Id. at 3:18-22).
`
`56.
`
`I note that Hicks does not disclose what a UE should display when on
`
`a user’s primary home network.
`
`57. As with the two references mentioned above, Hicks fails to teach any
`
`ind