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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.,
`ZTE (USA) INC.,
`and
`ZTE CORPORATION,
`Petitioners,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`Case No. IPR2020-01157
`
`U.S. Patent No. 7,274,933
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`
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`Petitioners’ Reply to Patent Owner’s Preliminary Response to the
`Petition for Inter Partes Review of U.S. Patent No. 7,274,933
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`I.
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`II.
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`TABLE OF CONTENTS
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`Page
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`PATENT OWNER’S CLAIM CONSTRUCTION CONTRADICTS
`THE SPECIFICATION AND FILE HISTORY, BUT THE CLAIMS
`ARE NONETHELESS INVALID UNDER THAT CONSTRUCTION ........ 1
`A.
`The Specification and File History Reject Patent Owner’s
`Proposed Construction of “Home Networks” ....................................... 1
`Even Under Patent Owner’s Proposed Construction, the Prior Art
`Raised By Petitioners Discloses Multiple “Home Networks” .............. 2
`THE 3GPP STANDARDS DISCLOSE MULTIPLE HOME
`NETWORK MCC/MNC PAIRS IN AN HPLMN LIST ................................ 3
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`B.
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`PETITIONERS’ 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)
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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
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`Description
`Excerpts from TIA/EIA/136.1 Standard
`Excerpts from TIA/EIA/IS-136.2-A Standard
`Excerpts from TIA/EIA/IS-95 Standard
`Excerpts from T. Halonen et al., “GSM, GPRS and EDGE
`Performance: Evolution Towards 3G/UMTS” (2d ed. Wiley
`2003)
`3rd Generation Partnership Project; Technical Specification
`Group Terminals Specification of the Subscriber Identity Module
`– Mobile Equipment (SIM - ME) interface (Release 1999)
`(3GPP TS 11.11 V8.6.0) (“TS-11.11”)
`Excerpts from A. Mehrotra, “GSM System Engineering”
`(Artech House 1997)
`U.S. Patent No. 5,950,130 (“the ’130 patent”)
`U.S. Patent No. 5,862,471 (“the ’471 patent”)
`U.S. Patent No. 6,195,532 (“Bamburak”)
`U.S. Patent Appl. Publ. No. 2001/0001875 (“Hirsch”)
`U.S. Patent Appl. Publ. No. 2002/0111180 (“Hogan”)
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`Exhibit No.
`1018
`1019
`1020
`1021
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`1022
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`1023
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`1024
`1025
`1026
`1027
`1028
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`TABLE OF ABBREVIATIONS AND CONVENTIONS
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`
`Abbreviation
`3GPP
`HPLMN
`MCC
`MNC
`Pet.
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`POSITA
`SID
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`Meaning
`3rd Generation Partnership Project
`Home Public Land Mobile Network
`Mobile Country Code
`Mobile Network Code
`Petition for Inter Partes Review of U.S. Patent No.
`7,274,933 (IPR2020-01157, Paper 4)
`person of ordinary skill in the art
`system identification code
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`I.
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
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`PTAB Case No. IPR2020-001157
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`PATENT OWNER’S CLAIM CONSTRUCTION CONTRADICTS
`THE SPECIFICATION AND FILE HISTORY, BUT THE CLAIMS
`ARE NONETHELESS INVALID UNDER THAT CONSTRUCTION
`A. The Specification and File History Reject Patent Owner’s Proposed
`Construction of “Home Networks”
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`According to the ’933 patent, in the prior art, users connecting to cellular
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`networks could mistakenly conclude they were incurring roaming charges when
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`seeing unfamiliar network names displayed on their phones. Ex. 1001, 1:54‒2:8.
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`The patent purports to solve this problem by including multiple networks for which
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`no roaming charges would be incurred on one “home network” list and displaying
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`one common name for all of these “home networks.” Id., 2:51‒59. Petitioner
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`showed that this concept was disclosed in the prior art. Patent Owner responds by
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`attempting to narrow the construction of “home networks” in a manner inconsistent
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`with the patent and the file history.
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`Specifically, Patent Owner contends that the patentee limited “home
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`networks” in the claims to “networks operated by separate carriers that have
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`contractual relationships with the user’s carrier.” Id. at 14‒16, 18‒19, 23‒24. Stated
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`differently, according to Patent Owner, the challenged claims would not cover a
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`plurality of home networks all operated by the same cellular carrier, e.g., by virtue
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`of an acquisition. See, e.g., id. at 18‒19 (allegedly distinguishing Uchida’s
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`disclosure of displaying the same name for multiple home networks because the
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`networks are “all operated by the user’s own carrier”).
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
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`PTAB Case No. IPR2020-001157
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`Patent Owner’s proposed construction is inconsistent with the express
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`disclosure of the ’933 patent. Indeed, the patent repeatedly discloses that its
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`invention includes systems where “the service provider becomes the new owner of
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`one or more networks,” which the patent expressly refers to as “home networks.”
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`Ex. 1001, 2:23–30, 14:39–45. Thus, the ’933 patent specifically uses the term
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`“home networks” to describe networks acquired and operated by a cellular service
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`provider. Furthermore, during prosecution, to explain the “inventive technique” of
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`the patent, the applicant quoted this specific embodiment. Ex. 1002, 185‒86. Patent
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`Owner would improperly exclude this embodiment described throughout the patent
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`and emphasized during prosecution. SanDisk Corp. v. Memorex Prods., Inc.,
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`415 F.3d 1278, 1285 (Fed. Cir. 2005) (“A claim construction that excludes a
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`preferred embodiment . . . is rarely, if ever, correct.”).
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`Patent Owner does not—and cannot—contest that the prior art combinations
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`in the Petition include displaying the same name for multiple “home networks” as
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`that term is used in the ’933 patent. See Pet. (Paper 4) at 30‒34, 46‒47, 59‒61.
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`B.
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`Even Under Patent Owner’s Proposed Construction, the Prior Art
`Raised By Petitioners Discloses Multiple “Home Networks”
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`Even if the Board were to adopt Patent Owner’s proposed construction, the
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`proposed combinations in the Petition would still render the claims obvious. All
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`grounds of invalidity in the Petition include McElwain, which expressly and
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`unambiguously discloses a list of home networks that may include networks
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`PTAB Case No. IPR2020-001157
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`associated with user’s network only by an arms-length “business relationship,”
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`i.e., not via direct ownership. Indeed, the networks in McElwain’s Cousin SID list—
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`i.e., the “home networks” of McElwain—“may each be associated with a different
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`service provider.” Ex. 1004, ¶ 47 (emphasis added). McElwain explicitly teaches
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`that a cellular user’s network provider “will typically have business relationships
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`with a number of different wireless service providers.” Id. ¶ 47 (emphases added).
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`And, when registered on any one of these SIDs “belonging to different service
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`providers,” the mobile station “is assumed to not be roaming.” Id. ¶ 48 (emphasis
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`added). Patent Owner never addresses this teaching from McElwain, nor does Patent
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`Owner show that anything in Uchida, Hicks, or the 3GPP Standards is incompatible
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`with McElwain’s teachings on multiple “home networks.” To the contrary, the
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`combinations involving McElwain expressly contemplate that all of McElwain’s
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`Cousin SIDs would display the same “home” network name. See, e.g., Pet. (Paper 4)
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`at 15‒16, 42‒44, 55‒57.
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`Accordingly, even if the claims were construed (incorrectly) to require that
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`the list of “home networks” contain networks that are not owned by the user’s service
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`provider, the grounds in the Petition would satisfy that requirement.
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`II. THE 3GPP STANDARDS DISCLOSE MULTIPLE HOME NETWORK
`MCC/MNC PAIRS IN AN HPLMN LIST
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`The claims require the use of multiple home network codes in a home network
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`list (i.e., multiple MCC/MNC pairs in an HPLMN list). As explained in the Petition,
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`PTAB Case No. IPR2020-001157
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`the 3GPP Standards disclose such a list: the “HPLMN Selector with Access
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`Technology” (“HPLMN Selector”). Pet. (Paper 4) at 49‒52 (quoting Ex. 1007, 13).
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`Although the standards documents at issue explain that the use of multiple home
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`network codes in this list will not be supported in the then present version of the
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`standard, they nevertheless disclose that the use of multiple codes in this list will be
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`supported in a future version of the standard. Thus, the prior art standards documents
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`fully disclose the alleged invention, and merely clarify that this technology will not
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`be an actual requirement of the standard until a future version.
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`Patent Owner twists this disclosure into a teaching that “having multiple
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`MCC/MNC pairs on an HPLMN list is impossible,” arguing that statements
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`regarding a feature in future versions of a specification “teaches away from the
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`methods described in the ’933 patent.” Paper 8 at 28‒29. That position is flatly
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`contrary to both the 3GPP Standards themselves and controlling law.
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`As an initial matter, the 3GPP Standards do not teach away from the invention.
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`They do the opposite. They expressly disclose it, and describe it in positive terms
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`as a technology that should be supported in a future version of the standard.
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`TS-23.122 explains with respect to the HPLMNs of the HPLMN Selector:
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`To allow provision for multiple HPLMN codes, the HPLMN access
`technologies are stored on the SIM together with PLMN codes. This version
`of the specification does not support multiple HPLMN codes . . . .
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`Ex. 1007, 13 (emphases added). To a POSITA, the reference to “allow[ing]
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`PTAB Case No. IPR2020-001157
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`provision for multiple HPLMN codes,” while not supporting them in “this version,”
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`is a clear implication that this technology would be supported in a future version.
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`Expert testimony confirms that this is an affirmative teaching to a POSITA that the
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`HPLMN Selector would be used, in a future version, as an HPLMN list for selection
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`and registration. Ex. 1003, ¶ 395.
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`Patent Owner’s suggestion that this express disclosure in a 3GPP standards
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`document can be ignored merely because it was not a requirement at the time of its
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`publication is contrary to settled law. An obviousness reference “is prior art for all
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`that it teaches.” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547,
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`1551 (Fed. Cir. 1989). Actual creation or reduction to practice of the disclosures in
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`a prior art reference is not required. See Kennametal, Inc. v. Ingersoll Cutting Tool
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`Co., 780 F.3d 1376, 1383 (Fed. Cir. 2015). The cases Patent Owner cites do not
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`suggest otherwise. See Paper 8 at 28. In re NTP, Inc., 654 F.3d 1279, 1299
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`(Fed. Cir. 2011), stands for the unremarkable proposition that “[c]are must be taken
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`to avoid hindsight reconstruction by using the patent in suit as a guide through the
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`maze of prior art references.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
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`520 F.3d 1358, 1364 (Fed. Cir. 2008), similarly cautions against relying on
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`hindsight. Neither supports Patent Owner’s arguments.
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`Therefore, Patent Owner’s arguments on the teachings of the 3GPP Standards
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`are wrong as a matter of law.
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`DATED: December 16, 2020
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`Respectfully Submitted,
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`/Brian M. Buroker/
`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`Fax: (202) 467-0539
`Email: bburoker@gibsondunn.com
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`Attorney for Petitioner Dell Inc.
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of this Reply to Patent
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`Owner’s Preliminary Response to the Petition for Inter Partes Review of U.S. Patent
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`No. 7,274,933 has been served on this 16th day of December, 2020, via email to the
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`following attorneys of record pursuant to Patent Owner’s consent:
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`Counsel for Patent Owner
`Lead Counsel
`Back-up Counsel
`Timothy Devlin, Reg. No. 41706
`Neil Benchell
`Devlin Law Firm LLC
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`Fax: (302) 353-4251
`TD-PTAB@devlinlawfirm.com
`nbenchell@devlinlawfirm.com
`
`Stephanie Berger
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`sberger@devlinlawfirm.com
`
`Andrew DeMarco
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Phone: (302) 449-9010
`Fax: (302) 353-4251
`ademarco@devlinlawfirm.com
`Additional email for service: dlflitparas@devlinlawfirm.com
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`DATED: December 16, 2020
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`Petitioners’ Reply to Patent Owner’s Preliminary Response
`PTAB Case No. IPR2020-001157
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`Respectfully Submitted,
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`/Brian M. Buroker/
`Brian M. Buroker (Reg. No. 39,125)
`GIBSON, DUNN & CRUTCHER LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`Fax: (202) 467-0539
`Email: bburoker@gibsondunn.com
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`Attorney for Petitioner Dell Inc.
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