UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`DELL, INC.,
`ZTE (USA) INC.,
`and
`ZTE CORPORATION,
`Petitioners
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner
`
`
`
`
`Case IPR2020-1157
`Patent No. 7,274,933
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Under 35 U.S.C. § 42.107
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`DELL, INC.,
`ZTE (USA) INC.,
`and
`ZTE CORPORATION,
`Petitioners
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner
`
`
`
`
`Case IPR2020-1157
`Patent No. 7,274,933
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Under 35 U.S.C. § 42.107
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via PTAB E2E
`
`
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`II. APPLICABLE LEGAL PRINCIPLES ........................................................ 3
`A.
`Legal Standards......................................................................... 3
`B.
`Person of Ordinary Skill in the Art ......................................... 7
`III. TECHNOLOGY BACKGROUND ............................................................... 7
`IV. THE ’933 PATENT ........................................................................................ 9
`A. Overview of the ’933 Patent ..................................................... 9
`B. Challenged Claims .................................................................. 12
`V. CLAIM CONSTRUCTION ......................................................................... 14
`VI. OVERVIEW OF CITED PRIOR ART ...................................................... 16
`A. McElwain ................................................................................. 16
`B. Uchida ...................................................................................... 17
`C. Hicks ......................................................................................... 19
`D.
`“3GPP Standards” .................................................................. 20
`VII. PETITIONERS’ GROUNDS SHOULD BE REJECTED ........................ 21
`A. No Cited Reference Discloses Displaying a Home Network
`Display Name When Outside the User’s Cellular Provider’s
`Service Area – Grounds 1-5 ................................................... 21
`Petitioners’ References Fail to Disclose the Use of Multiple
`MCC/MNC Pairs in an HPLMN List – Grounds 1-5 .......... 25
`VIII. CONCLUSION ............................................................................................ 30
`
`B.
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`
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`
`
`ii
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`
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`TABLE OF AUTHORITIES
`Cases Page(s)
`
`Apple Inc v. Samsung Elecs. Co., Ltd.,
`839 F.3d 1034 (Fed. Cir. 2016) .............................................................................. 5
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00442, Paper 9 (PTAB July 13, 2015) ................................................4, 6
`
`CCS Fitness, Inc. v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) ....................................................................... 7, 14
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................... 3
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ....................................................................... 6, 28
`
`In re Omeprazole Patent Litig. v. Apotex Corp.,
`536 F.3d 1361 (Fed. Cir. 2008) .............................................................................. 5
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) ................................................................. 4, 26, 30
`
`InTouch Techs., Inc. v. VGo Communs., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .............................................................................. 5
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ......................................................................................... 6, 29
`
`Ortho-McNeil Pharm. v. Mylan Labs,
`520 F.3d 1358 (Fed. Cir. 2008) ....................................................................... 6, 29
`
`P&G v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ................................................................................ 6
`
`
`
`iii
`
`
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`Realtime Data, LLC v. Iancu,
`912 F.3d 1368 (Fed. Cir. 2016) ........................................................... 4, 25, 26, 30
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ............................................................................................ 3
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ....................................................................... 6, 14
`
`Unified Patents Inc. v. C-Cation Techs., LLC,
`IPR2015-01045, Paper 15 (PTAB Oct. 7, 2015) .................................................... 3
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .............................................................................. 4
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ................................................................................ 6
`
`
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 3
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`
`
`iv
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`
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`TABLE OF EXHIBITS
`
`Exhibit Description
`2001
`Declaration of Stu Lipoff in Support of Patent Owner
`
`
`
`
`
`
`v
`
`
`
`Petitioners, Dell, Inc., ZTE (USA) Inc., and ZTE Corporation, (collectively,
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`“Petitioners”) filed a Petition for Inter Partes Review of U.S. Patent No. 7,274,933
`
`(“the ’933 patent”) on June 26, 2020. (IPR2020-01057, Paper No. 1 (“Petition”).)
`
`Through the undersigned Counsel, Patent Owner, 3G Licensing S.A. (“Sisvel”),
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`submits the following Patent Owner Preliminary Response pursuant to 37 C.F.R.
`
`§ 42.107(a). See also 37 C.F.R. § 42.107(b).
`
`I.
`
`INTRODUCTION
`
`Patent Owner Sisvel respectfully requests that the Board deny the Petition
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`because Petitioners have failed to show that there is a reasonable likelihood that at
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`least one of the challenged claims is unpatentable.
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`First, none of Petitioners’ cited references teach displaying home network
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`name on the user’s equipment when that equipment is connected to a separate
`
`network. The ʼ933 patent teaches displaying the network name of the “primary
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`home network,” which is described as the network of the user’s cellular provider.
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`This network name is displayed on the user equipment even when the user is on a
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`different network, as long as that other network has a contractual relationship with
`
`the user’s cellular provider such that the user pays no roaming fees while
`
`connected to that other network.
`
`None of Petitioners’ references disclose this feature or operate in that
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`manner. Both McElwain (Ex. 1004) and Uchida (Ex. 1005) make use of tags and
`
`
`
`1
`
`
`
`roaming indicators that show that opposite of what is claimed in the ʼ933 patent,
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`namely that the user is on a network other than the user’s cellular provider.
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`Petitioners’ two other references, Hicks (Ex. 1006) and the 3GPP Standards (Exs.
`
`1007-1009) likewise show the displaying of a user’s primary home network only
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`when on that network.
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`Additionally, none of the references relied upon by Petitioners teach the use
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`of multiple Mobile Country Code (MCC) and Mobile Network Code (MNC) pairs
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`in a Home Public Land Mobile Network (HPLMN) list. One of the claimed
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`inventions in the ʼ933 patent is the use of multiple MCC/MNC pairs in an HPLMN
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`list, with all the pairs being associated with the same “home” network name. As
`
`set forth below, Petitioners’ references all fail to disclose this feature.
`
`For each of these reasons, none of Petitioners’ purported grounds for
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`invalidity survive even the most basic test of obviousness—namely, demonstrating
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`the presence of each recited element within the prior art as a whole.
`
`There is also no motivation to combine many of the references in the
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`combinations advanced by Petitioners. Petitioners’ main references—McElwain
`
`and Uchida—are specifically directed to CDMA networks, which at the time of the
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`invention did not use MCC/MNC pairs at all. (Ex. 2001 at ¶ 52.) Petitioners assert
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`that these references could be combined with Hicks (which does generally show
`
`the use of MCC/MNC pairs within a GSM environment) to achieve the invention.
`
`
`
`2
`
`
`
`But whereas the ʼ933 patent relies on multiple MCC/MNC pairs to identify a
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`number of HPLMN identifiers, Hicks teaches the exact opposite: “A problem
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`arises in that a mobile phone can only have one HPLMN identifier.” (Ex. 1006 at
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`1:20-21.) Thus Hicks explicitly contradicts Petitioners’ imaginary alterations of
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`McElwain and Uchida. Hicks teaches away from storing multiple MCC/MNC
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`pairs in an HPLMN list and thus the very combination proposed by Petitioners.
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`Accordingly, the Board should decline to institute the Petition on any
`
`ground.
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`II. APPLICABLE LEGAL PRINCIPLES
`
`A. Legal Standards
`
`“[T]he decision whether to institute an inter partes review is discretionary.”
`
`Unified Patents Inc. v. C-Cation Techs., LLC, IPR2015-01045, Paper 15 at 3
`
`(PTAB Oct. 7, 2015) (citing 37 C.F.R. § 42.108(a)). Petitioners have the burden to
`
`show that they are likely to prevail as to at least one claim of the ’933 patent.
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`35 U.S.C. § 314; SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
`
`To make a prima facie showing of obviousness under 35 U.S.C. § 103, the
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`Petition must, among others, fulfill the requirements set forth in Graham v. John
`
`Deere Co., 383 U.S. 1 (1966), including demonstrating that the cited references
`
`disclose each element of a challenged claim. In re Magnum Oil Tools Int’l.,
`
`
`
`3
`
`
`
`829 F.3d 1364, 1376 (Fed. Cir. 2016); Realtime Data, LLC v. Iancu, 912 F.3d
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`1368, 1372 (Fed. Cir. 2016).
`
`Petitioners also have the burden to show there would have been some
`
`motivation to combine the asserted prior art, and that the proposed combination
`
`would render the patented claims obvious. “Obviousness requires more than a
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`mere showing that the prior art includes separate references covering each separate
`
`limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc.,
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`655 F.3d 1352, 1360 (Fed. Cir. 2011) (internal citation omitted); see also In re
`
`Magnum Oil Tools Int’l., 829 F.3d at 1376. Even if individual modifications or
`
`choices were obvious, a petition must explain why making all of the changes at
`
`once would be obvious. Apple Inc. v. Contentguard Holdings, Inc., IPR2015-
`
`00442, Paper 9 at 16-17 (PTAB July 13, 2015) (“[T]he mere fact that individual
`
`changes might have been obvious does not make doing all of the changes at once
`
`obvious.”).
`
`The Federal Circuit has found that, even for an obviousness challenge based
`
`on a single reference in view of the knowledge and skill of a person of ordinary
`
`skill in the art, there must be a motivation to make the combination and a
`
`reasonable expectation that such a combination would be successful, otherwise a
`
`skilled artisan would not arrive at the claimed combination. In re Stepan Co.,
`
`868 F.3d 1342, 1345-46 (Fed. Cir. 2017). In other words, when a gap in a single
`
`
`
`4
`
`
`
`prior art reference requires filling with, for example, the knowledge of one of
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`ordinary skill, there must be a further showing that the skilled artisan would have
`
`arrived at the claimed invention.
`
`The lack of a technological obstacle to combining references, in and of
`
`itself, does not justify a finding of obviousness. See In re Omeprazole Patent Litig.
`
`v. Apotex Corp., 536 F.3d 1361, 1380-81 (Fed. Cir. 2008). A reason for combining
`
`disparate prior art references is critical and should be made explicit. InTouch
`
`Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (internal
`
`citation omitted).
`
`A determination of whether a patent is invalid as obvious requires
`
`consideration of all four Graham factors; it is an “error to reach a conclusion of
`
`obviousness until all those factors are considered.” Apple Inc v. Samsung Elecs.
`
`Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016). “Objective indicia of
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`nonobviousness must be considered in every case where present.” Id. at 1048.
`
`These objective indicia of nonobviousness, commonly known as secondary
`
`considerations, include, among others: (1) commercial success enjoyed by devices
`
`that practice the patented invention, (2) industry praise for the patented invention,
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`(3) failure of others, (4) copying by others, and (5) existence of a long-felt but
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`unsatisfied need for the invention. Id. at 1048, 1052.
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`
`
`5
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`
`
`It is inappropriate to endeavor in hindsight when considering whether a
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`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`patent claim is obvious. Obviousness must be measured “at the time the invention
`
`was made.”1 Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d 1358, 1364 (Fed. Cir.
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`2008) (emphasis in original). A petition must demonstrate a rationale to combine
`
`prior art references without relying on the patent disclosure itself. Apple Inc. v.
`
`Contentguard, Paper 9 at 15, 17; see also P&G v. Teva Pharms. USA, Inc.,
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`566 F.3d 989, 995 (Fed. Cir. 2009). In other words, the Petitioner must not use the
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`patent as a roadmap. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
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`(internal citation omitted); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`421 (2007).
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`The words of a claim are generally given their ordinary meaning as
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`understood by a person having ordinary skill in the art when read in the context of
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`the specification and prosecution history. Thorner v. Sony Computer Entm’t Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). However, a patentee may set out his
`
`or her own definition and act as his or her own lexicographer. Id. at 1365 (citing
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996). “To
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`act as its own lexicographer, a patentee must clearly set forth a definition of the
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`disputed claim term other than its plain and ordinary meaning.” Id. at 1365
`
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`1 Unless otherwise indicated, emphasis in this Brief has been added.
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`
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`6
`
`
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`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
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`(quoting CCS Fitness, Inc. v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
`
`(Fed. Cir. 2008)) (internal quotations omitted).
`
`B.
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`Person of Ordinary Skill in the Art
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`A person having ordinary skill at the time of invention in the relevant art
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`would be one with a bachelor’s degree in electrical engineering or computer
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`sciences and wireless telecommunications networks, along with at least three or
`
`more years or practical experience in the field or equivalent experience. (Ex. 2001
`
`at ¶ 23.)
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`III. TECHNOLOGY BACKGROUND
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`The inventions of the ’933 patent generally pertain to systems and methods
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`for tracking which cellular network a user is connected to, and displaying
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`information related to the network on the user’s phone. The inventions help reduce
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`consumer confusion regarding billing of their cellular network use. (Ex. 1001 at
`
`1:54-2:22.)
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`At the time of the ’933 patent, a user would typically be alerted when the
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`user was roaming (i.e., not using the network of their cellular provider) and thus
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`incurring additional charges on their cell phone bill, often by a flashing light or a
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`text indicator appearing on the user’s display. (Ex. 2001 at ¶ 34.) This tended to
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`provide an insufficient indication of a user’s roaming status for the typical cell
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`phone user. See, e.g., Judy Strausbaugh, Oh, Give Me a Cell Phone Where the
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`
`
`7
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`
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`Signals Won’t Roam, Sunday News (Lancaster, PA) 1, 1-2 (2002) (describing the
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`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`difficulties of the average user in determining roaming charges in 2002).
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`As cell phone networks and the relationships between the owners of those
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`networks became more complicated, it became increasingly more difficult for users
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`to determine whether their connection to a given network would incur roaming
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`charges. (Ex. 2001 at ¶ 35.) For example, a user who paid Sprint for cellular
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`service might see that his or her cell phone was connected to AT&T’s network and
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`presume that that connection would incur roaming charges. Unbeknownst to that
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`user, however, Sprint and AT&T might have a contractual relationship such that a
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`Sprint user may make use of AT&T’s network and not incur additional charges. A
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`typical user at the time of the ’933 patent (and today) would likely be unaware of
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`the complex and shifting arrangements between providers, and thus would tend to
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`presume they would incur charges when seeing any indication that the phone was
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`connected to anything other than the home cellular network. (Id. at ¶ 35.)
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`The methods taught by the ’933 patent alleviate this problem by maintaining
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`a list of certain cellular providers, and selectively displaying the name of a user’s
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`primary home network (e.g., the name of the user’s cellular provider) even when a
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`user is not on that primary home network. (Ex. 1001 at 2:62-65.) By taking into
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`account the complex contractual relationships among network operators, and
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`
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`8
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`
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`displaying information that accounts for those relationships, the ’933 patent
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`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`eliminates consumer confusion regarding billing.
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`IV. THE ’933 PATENT
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`A. Overview of the ’933 Patent
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`The application leading to the ’933 patent was filed on September 2, 2004,
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`claiming priority to European Patent Application No. 03255483 filed September 3,
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`2003.
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`The ’933 patent teaches and claims systems and methods of storing certain
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`information regarding cellular networks, and then displaying selected network
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`information on the phone. (Ex. 1001 at 1:17-19, 1:42-53, 1:62-67, 2:15-19.)
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`Specifically, the stored networks can include any cellular network that, due to
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`relationships between carriers or other information opaque to the user, that user
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`would not pay any roaming charges. (Id. at 2:1-3, 2:15-19.) Accordingly, the
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`user’s phone indicates the user is on the “home” network even when the user is not
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`currently connected to the user’s cellular provider, so long as the connected
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`network was one for which the user would pay no extra charges. (Id. at 2:1-3,
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`2:15-23.) Displaying the name of the user’s primary home network rather than the
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`actual network to which the phone is connected alleviates concerns regarding
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`roaming fees where no such fees would be incurred. (Id. at 1:63-2:22.)
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`
`
`9
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`
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` Indeed, one of the central innovations of the ʼ933 patent is that it
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`conceptualizes “home networks” differently than in the prior art. The ʼ933 patent
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`notes that in certain situations, due to relationships among carriers, users might not
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`pay roaming charges even when connected to a carrier other than the user’s own
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`carrier: “In a more cooperative network relationship, the subscriber might incur
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`only standard charges (i.e. no roaming charges) using [an] alternative network.”
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`(Ex. 1001 at 2:1-3.) To account for this, the ʼ933 patent reconceptualizes the
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`“home network” to include other networks having a “cooperative network
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`relationship” with the user’s cellular provider.
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`Accordingly, in this Preliminary Response, Patent Owner employs the
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`language of the ’933 patent, and utilizes the term “primary home network” to refer
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`to the user’s cellular service provider. (See Ex. 1001 at 1:35-36, 2:23-33.)
`
`Likewise, Patent Owner utilizes the term “home networks” to refer to the
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`collection of networks with whom the user’s own carrier has a “cooperative
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`network relationship” such that user is not billed roaming charges for making use
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`of those networks. (See id. at 2:1-3, 15-19.)
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`To accomplish the objectives of the invention, in one embodiment, the ’933
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`patent teaches storing multiple MCC and MNC pairs in a HPLMN list. (Id. at
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`5:32-36.) This list can be stored on the UE’s Subscriber Identify Module (SIM)
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`card, or in the user equipment’s (“UE”) memory. (See, e.g., Id. at claim 1.) Each
`
`
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`10
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`
`
`MCC/MNC pair identifies a discrete network. (Id. at 1:36-41.) In one
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`embodiment, the UE’s memory also contains the name of the network to be
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`displayed on the UE. (Id. at 12:41-49.) Where another “home network” exists—
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`i.e., another cellular provider for which the user will not pay roaming fees—the
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`HPLMN list will include that other network’s MCC/MNC pair. This in turn will
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`point to the user’s own cellular provider’s name, so that the “primary home
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`network” name is displayed even when the user is connected to the other “home
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`network.” (See, Ex. 1001 1:64-2:8, 2:23-27; Ex. 2001 at ¶ 42.)
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`In the ’933 patent embodiments, when a user connects to a network, the UE
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`compares the MCC and MNC codes it receives from the network against those on
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`the UE’s HPLMN list. If the codes match, the UE displays the name of the user’s
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`primary home network. (Ex. 1001 at 13:36-48.) Because the HPLMN list contains
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`multiple pairs of MCC and MNC codes, each associated with one of the “home
`
`networks,” the UE might display the “primary home network” name when on any
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`of those home networks.
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`One of the central methods disclosed by the ’933 patent is listing multiple
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`home networks’ MCC/MNC pairs on the HPLMN file, rather than only the pair for
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`user’s primary home network (i.e., the user’s own cellular provider network). (Ex.
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`1001 at 2:62-65; Ex. 2001 at ¶ 44.) By including these pairs on an HPLMN list, a
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`UE may display the primary home network name regardless of whether a UE is
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`
`
`11
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`
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`actually connected to the user’s primary home network or instead connected to
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`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
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`another network with whom that carrier has a contractual relationship. (Ex. 1001
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`at 2:23-33, 13:60-66, 14:6-12; Ex. 2001 at ¶ 44.) In effect, the user is tricked into
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`believing the UE is on the home network even when that may not be the case, so
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`long as the effect to the user is the same, namely that the user will not incur any
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`roaming charges at that time. (Ex. 2001 at ¶ 44.)
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`By choosing to display the primary home network name rather than using a
`
`roaming indicator, the ’933 patent relieves the user of concern that the user will
`
`incur roaming charges for a particular connection. Notably, this is the precise
`
`opposite of Petitioners’ references, which variously teach using tags such as
`
`“Cousin,” “Partner,” “Favored,” or “Neutral,” which only serve to confuse and
`
`worry users about whether roaming charges would apply. (Ex. 2001 at ¶ 44; see
`
`Ex. 1004 at ¶ 54.)
`
`B. Challenged Claims
`
`Petitioners have challenged claims 1-4, 6-9, 11-14, and 19 of the ’933
`
`patent. Claims 1, 6, 11, and 19 are independent claims. Claims 2-6, and 17
`
`depend from claim 1, claims 7-10 and 18 depend from claim 6, and claims 12-16
`
`depend from claim 11.
`
`Independent claims 1, 6, 11, and 19 recite largely the same feature set, and
`
`both claims recite the improvements set forth above. Claim 1 is representative:
`
`
`
`12
`
`
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
` 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;
`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 the memory of the mobile station in the
`comparing step;
`causing a home network display name which is the same for
`all of the home networks 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.
`(Ex. 1001 at claim 1.)
`
`
`
`13
`
`
`
`V. CLAIM CONSTRUCTION
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`Patent Owner disagrees with Petitioners that no terms need construction. In
`
`fact, one of Petitioners’ many failures in the Petition is to apply the term “home
`
`network” in a manner consistent with the ’933 patent. This permits the type of
`
`handwaving semantic arguments on which the Petition is founded.
`
`Contrary to Petitioners’ arguments, the term “home network” should be
`
`construed as “a network for which a user will not incur roaming charges when
`
`connected.”
`
`This definition is based on express lexicography by the inventor. Where the
`
`patentee has set forth a clear definition of this term distinct from its plain and
`
`ordinary meaning, the meaning set forth by the patentee should apply. See,
`
`Thorner v. Sony Computer Entm’t Am. LLC, 669, F.3d 1362, 1365 (Fed. Cir. 2012)
`
`(quoting CCS Fitness, Inc. v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
`
`(Fed. Cir. 2008)) (internal quotations omitted).
`
`The relevant portion of claim language here confirms that “home network”
`
`is not just the user’s own carrier network. Instead the claims contemplate multiple
`
`“home networks,” as reflected in the use of the plural “home networks” within the
`
`claims themselves: “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.” (Ex. 1001 at claims 1, 6, 11, and 19). By referring
`
`
`
`14
`
`
`
`to multiple home networks rather than a single home network, the patentee breaks
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`from the plain and ordinary meaning of the term at that time, namely the network
`
`of user’s own carrier.
`
`The specification defines exactly what the patentee meant by the term “home
`
`networks.” Specifically, the patentee explained that the “home network” in the
`
`context of the invention would include any network for which the user did not pay
`
`additional charges, even if it were not the primary home network. All such
`
`networks would be “home networks” in the parlance of the ’933 patent:
`
`In particular, instead of displaying a name that is different from
`that of the home network in the above-scenario, the same or
`substantially similar “home network” name may be displayed even
`though a different network is actually being used.
`
`
`(Ex. 1001 at 2:15-19).
`
`
`This definition of “home networks” is confirmed by other teachings of the
`
`specification. Specifically, the ʼ933 patent describes the confusion a user often
`
`faces when trying to determine if the user is connected to their cellular provider’s
`
`network or another network—even when those networks may have a contractual
`
`relationship. (Ex. 1001 at 1:54-67, 2:1-14, 2:20-37.) Indeed, the “above scenario”
`
`contrasted with the invention in the text quoted above is one where a user
`
`equipment displays the name of a network other than the user’s cellular provider,
`
`
`
`15
`
`
`
`even where no roaming charges would apply—creating confusion for the user
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`regarding whether they are incurring roaming or other charges. (Id. at 2:1-19).
`
`To correct this confusion, the ʼ933 patent teaches—for the first time—to
`
`expand the definition of “home network” to include not only the network owned
`
`and operated by the user’s own cellular provider, but also those other networks
`
`with whom the user’s cellular provider has a contractual relationship that would
`
`obviate roaming charges. (Ex. 1001 at 2:1-19; Ex. 2001 at ¶ 41.) Notably, as set
`
`forth below, this contrasts with the way that “home network” is used in the art at
`
`the time, including the way that term is used within each of the references cited by
`
`Petitioners.
`
`Patent Owner has no position on any other terms at this time. Patent Owner
`
`reserves the right to provide constructions if the terms become material to the
`
`Board’s institution decision.
`
`VI. OVERVIEW OF CITED PRIOR ART
`
`A. McElwain
`
`As a primary reference, Petitioners cite to United States Patent Application,
`
`Publ. No. 2003/0022689, entitled “Method and Apparatus for Relating
`
`Communications System Identifications (SIDS)” (“McElwain,” Ex. 1004 at 1).
`
`McElwain describes a method and apparatus for selecting a network for a device to
`
`connect to depending on whether the user would be on a home network or instead
`
`
`
`16
`
`
`
`be roaming. (Ex. 1004 at ¶¶ 3, 9, 20-21.) Specifically, McElwain discloses
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`techniques whereby a UE stores certain identification parameters and matches
`
`those parameters against those provided by the network to which the UE is
`
`connected. This allows the UE to display a tag informing the user whether the user
`
`is on a home network or is roaming. (Ex. 1004 at ¶ 54; Ex. 2001 at ¶ 46.)
`
`Unlike the inventions of the ʼ933 patent, McElwain fails to teach any
`
`indication that the user is on the primary home network when it is in fact on
`
`another network, even a network with which the user’s carrier has a contractual
`
`relationship that would negate roaming charges. In contrast to the ʼ933 patent,
`
`McElwain merely provides an indication that a user is connected to a home versus
`
`a roaming network. It does nothing to teach displaying the user’s primary home
`
`network name even when the user is on another network.
`
`B. Uchida
`
`Petitioners also rely on a reference entitled “Download and Display of
`
`System Tags in Wireless Communication Systems” (“Uchida”). (Ex. 1005 at 1.)
`
`Like McElwain, Uchida describes a system using SID/NID pairs and tag groupings
`
`to display tags based on the network to which a user is connected. (Ex. 1005 at ¶
`
`2; Ex. 2001 at ¶ 48.)
`
`In Uchida, a “tag” is a pre-defined set of text and/or graphics that indicates a
`
`user’s roaming status, and may include the name of the network to which the user
`
`
`
`17
`
`
`
`is connected. (Ex. 1005 at Abstract, Figs. 3A-3C; Ex. 2001 at ¶ 48.) Uchida
`
`IPR2020-1157
`U.S. Patent No. 7,274,933
`Claims 1-4, 6-9, 11-14, and 19
`
`
`discloses the use of SID/NID pairs stored on a list internal to the UE, with subsets
`
`of those pairs indexed to one or more tags. (Ex. 1005 at ¶ 40; Ex. 2001 at ¶ 48.)
`
`As with McElwain, Uchida fails to teach any indication that the user is on
`
`the primary home network when it is in fact on a network with which the user’s
`
`primary home network has a contractual relationship. I
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