`
`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
`__________________________________________________________
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`PATENT OWNER’S SUR-REPLY
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`I.
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`II.
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
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`Table of Contents
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`PATENT OWNER’S CLAIM CONSTRUCTION ALIGNS
`WITH THE SPECIFICATION AND FILE HISTORY ....................... 1
`A.
`Petitioners Mistake Patent Owner’s Proposed Construction of
`“Home Networks” ................................................................................ 1
`B. McElwain Does Not Disclose Multiple “Home Networks” In
`the Manner Contemplated by the ’933 Patent ...................................... 2
`THE 3GPP STANDARDS FAIL TO DISCLOSE THE USE OF
`MULTIPLE MCC/MNC PAIRS IN AN HPLMN LIST ...................... 3
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`ii
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
`TABLE OF AUTHORITIES
`
`Cases
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................................. 4
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................... 4
`Ortho-McNeil Pharm. v. Mylan Labs,
`520 F.3d 1358 (Fed. Cir. 2008) .............................................................................. 4
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`iii
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
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`TABLE OF EXHIBITS
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`Exhibit Description
`2001
`Declaration of Stu Lipoff in Support of Patent Owner
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`iv
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
`Patent Owner submits this sur-reply in response to issues raised in
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`Petitioners’ Reply, (Paper 10), as permitted by the Board’s December 9, 2020
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`email.
`
`I. PATENT OWNER’S CLAIM CONSTRUCTION ALIGNS WITH THE
`SPECIFICATION AND FILE HISTORY
`Petitioners Mistake Patent Owner’s Proposed Construction
`A.
`of “Home Networks”
`Petitioners misunderstand Patent Owner’s proposed construction of the term
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`“home networks.” In its Preliminary Response, Patent Owner proposed that the
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`term “home network” be construed as “a network for which a user will not incur
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`roaming charges when connected.” (Paper 8 at 14.) This construction does not
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`exclude any embodiment of the ’933 patent. Patent Owner’s construction of
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`“home network” includes networks currently operated by a user’s cellular provider,
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`which would include networks recently acquired by that provider.
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`Patent Owner’s arguments regarding the ’933 patent’s expansion of the
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`definition of “home network” as it was known and used in the prior art, are
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`unaffected by Petitioner’s arguments. Unlike Petitioners’ cited prior art, the ’933
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`patent requires within the definition of “home networks” any networks with which
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`a user’s cellular provider has a contractual relationship, because the contractual
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`relationship precludes the user from being charged a roaming fee for using those
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`other networks. (Ex. 1001 at 2:1-19; Ex. 2001 at ¶ 41.) Petitioners’ references
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`1
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
`disclose the concept of a “home network” encompassing networks acquired by a
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`user’s cellular provider. But the issue presented whether certain networks are
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`included within the definition of “home networks”; it is whether the specific type
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`of networks identified by the ‘933 patent are also included, and what results from
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`that inclusion per the ‘933 patent claims. Petitioners’ references fail to consider
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`networks with which a user’s cellular provider has a contractual relationship as a
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`“home network,” and to show the name of the user’s cellular provider whenever
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`the user’s device is connected to any such network. Accordingly, those references
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`fail to disclose each and every element of the challenged claims. (See, Ex. 1001 at
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`2:1-19.)
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`B. McElwain Does Not Disclose Multiple “Home Networks” In
`the Manner Contemplated by the ’933 Patent
`Petitioners’ late attempt to claim that McElwain discloses networks with
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`which a user’s cellular provider has a contractual relationship as “home networks”
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`fails.
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`While there is language in McElwain to suggest that “business relationships”
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`among networks may lead to an assumption of non-roaming status (Ex. 1004 at ¶
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`47), McElwain never teaches or suggests that those “business relationships” lead to
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`the user equipment displaying the name of the user’s cellular provider. McElwain
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`does not disclose the display of a network name whatsoever. (Ex. 2001 at ¶¶ 65-
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`67.) On the contrary, McElwain teaches away from the ‘933 patent invention by
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`2
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`U.S. Patent No. 7,274,933
`displaying information such as “Home,” “Cousin,” “Favored,” “Partner,” or
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`“Neutral.” It never indicates which of these is to be displayed when connected to a
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`network that has a contractual relationship with the user’s cellular provider, but
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`through those monikers alone suggests that a term like “Favored” or “Partner”
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`would be shown instead of “Home.” (Id. at ¶ 54, 66.)
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`
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`Thus, even if McElwain were interpreted to disclose the concept that a user
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`is not roaming when on a network having a contractual relationship with a user’s
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`cellular provider, McElwain teaches away from the ‘933 patent invention, in which
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`such a network is considered the same as the home network for purposes of
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`displaying connection and roaming status to a user. Insofar as it teaches anything
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`on the subject, McElwain teaches away from the ʼ933 patent and fails to provide a
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`user with clarity into their connection status, which is the purpose of the ʼ933
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`patent. (See, Ex. 1001 at 1:54-2:8; 2:15-40.)
`
`II. THE 3GPP STANDARDS FAIL TO DISCLOSE THE USE OF
`MULTIPLE MCC/MNC PAIRS IN AN HPLMN LIST
`Petitioners merely repeat their argument that the cited section of the 3GPP
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`standards discloses the use of multiple MCC/MNC pairs stored on an HPLMN list,
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`despite the fact that the very quote that Petitioners rely on unequivocally rejects
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`that possibility: “[t]his version of the specification does not support multiple
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`HPLMN codes . . . .” (Ex. 1007 at 13.) Petitioners argue that there is “a clear
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`implication that this technology would be supported in a future version.” (Paper 10
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`3
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
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`at 5 (emphasis original).)
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`This argument has been fully addressed in Patent Owner’s Preliminary
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`Response. As explained there, Petitioners rely on a reference that fails to disclose
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`a required step of the ’933 patent, arguing that some hypothetical future standard
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`could disclose what the ’933 patent teaches. (Paper 8 at 28-29 (citing Paper 1 at
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`52).) Petitioners are improperly engaging in the very hindsight bias that they
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`dismiss as irrelevant in their reply, and that is contrary to well-settled law. (See,
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`Paper 10 at 5); In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (internal
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`citation omitted); Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d 1358, 1364 (Fed.
`
`Cir. 2008); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`In their reply, Petitioners state that the 3GPP Standards describes storing
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`multiple MCC/MNC pairs in “positive terms as a technology that should be
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`supported in a future version of the standard.” Greater context surrounding that
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`quote belies that fact, and expressly forbids what Petitioners say is suggested:
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`The MS shall not use the PLMN codes contained in the “HPLMN Selector
`with Access Technology Data Field”
`Note 1: To allow for provision of multiple HPLMN codes, the
`HPLMN access technologies are stored on the SIM together with the
`PLMN codes. This version of the specification does not support
`multiple HPLMN codes and the “HPLMN Selector with Access
`Technology” data field is only used by the MS to get the HPLMN
`access technologies. The HPLMN code is the PLMN code included in
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`4
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
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`the IMSI.
`(Id. at 4, citing Ex. 1007 at 13.)
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`Contrary to Petitioners’ claim, the note cited by Petitioners does not describe
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`storing multiple MCC/MNC pairs on an HPLMN list, but rather storing HPLMN
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`access technologies (e.g., GSM, UMTS, CDMA) associated with a single pair of
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`MCC/MNC pair and the priority in which they are accessed. (See, Ex. 1007 at 13.)
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`Moreover, as emphasized in the quote above, the 3GPP Standards explicitly state
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`that the single MCC/MNC pair “shall not be used” by the user equipment
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`
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`Even if one were to engage with Petitioners’ hindsight analysis, the 3GPP
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`Standards that Petitioners cite do not disclose storing multiple MCC/MNC pairs on
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`an HPLMN list. Much like Petitioners’ Hicks reference, the 3GPP Standards teach
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`away from the storing multiple MCC/MNC pairs on an HPLMN list—stating that
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`the single MCC/MNC pair is matched to a prioritized list of access technologies
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`and it is solely that list of access technologies that the user equipment will utilize.
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`Thus, Petitioners’ legal citations are inapplicable. Even if hindsight analysis were
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`permitted, and the 3GPP Standards were considered “prior art for all that it
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`teaches,” those standards explicitly does not teach the storing of multiple
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`MCC/MNC pairs on an HPLMN list.
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`5
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`Dated: December 30, 2020
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
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` Respectfully submitted,
`
`
`
`
`
` DEVLIN LAW FIRM LLC
`
`/s/ Timothy Devlin
`Timothy Devlin
` Registration No. 41,706
`1526 Gilpin Avenue
`Wilmington, DE 19806
`(302) 449-9010
`tdevlin@devlinlawfirm.com
`TD-PTAB@devlinlawfirm.com
`Attorney for Patent Owner
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
`CERTIFICATE OF SERVICE
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`I hereby certify that on December 30, 2020, I caused a true and correct copy
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`of the foregoing materials to be served via the Patent Office electronic filing
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`system, and electronic service via email to the following attorneys of record
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`pursuant to Petitioner’s consent.
`
`LEAD COUNSEL
`
`John R. Hutchins (Reg. 43,686)
`jhutchins@bannerwitcoff.com
`
`Banner & Witcoff, Ltd.
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
`Tel: 202-824-3000
`Fax: 202-824-3001
`
`Counsel for ZTE
`BACKUP COUNSEL
`
`C. Andy Mu (Reg. 58,216)
`amu@bannerwitcoff.com
`
`Craig W. Kronenthal (Reg. 58,541)
`ckronenthal@bannerwitcoff.com
`
`Wesley W. Jones (Reg. 56,552)
`wjones@bannerwitcoff.com
`
`Shambhavi Patel (Reg. 73,478)
`spatel@bannerwitcoff.com
`
`Banner & Witcoff, Ltd.
`1100 13th Street, NW, Suite 1200
`Washington, DC 20005
`Tel: 202-824-3000
`Fax: 202-824-3001
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`Additional email for service: ZTEIPRService@bannerwitcoff.com
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`Reply, IPR2020-01157
`U.S. Patent No. 7,274,933
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`LEAD COUNSEL
`
`Brian M. Buroker (Reg. 39,125)
`bburoker@gibsondunn.com
`
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Ave. NW
`Washington, DC 20036
`Phone: (202) 955-8500
`Fax: (202) 467-0539
`
`Counsel for Dell, Inc.
`BACKUP COUNSEL
`
`Paul Torchia (Reg. 55,683)
`ptorchia@gibsondunn.com
`
`Gibson, Dunn, & Crutcher LLP
`200 Park Avenue
`New York, NY 10166
`Phone: (212) 351-3953
`Fax: (212) 351-6352
`
`ADDITIONAL BACKUP COUNSEL
`
`Nathan R. Curtis (Reg. 70,471)
`ncurtis@gibsondunn.com
`
`Gibson, Dunn & Crutcher LLP
`2001 Ross Ave., Ste. 2100
`Dallas, TX 75201
`Phone: (214) 698-3100
`Fax: (214) 571-2900
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`Additional email for service: Dell-IPRService@gibsondunn.com
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`
`
`/s/ Timothy Devlin
` Timothy Devlin
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