IN THE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Patent of:
`Johannes Maria van Loon et al.
`U.S. Patent No.:
`9,014,667
`Issue Date:
`April 21, 2015
`Appl. Serial No.:
`12/919,965
`Filing Date:
`February 19, 2009
`Title:
`TELECOMMUNICATIONS NETWORK AND METHOD
`FOR TIME-BASED NETWORK ACCESS
`
`Attorney Docket No.: 19688-0152IP1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`HTC AMERICA, INC.
`
`Petitioner
`
`v.
`
`KONINKLIJKE KPN N.V.,
`
`Patent Owner
`
`____________________
`
`Patent No. 9,014,667
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF UNITED STATESU.S. PATENT NO. 9,014,667 PURSUANT TO 35 U.S.C. §§
`311-319, 37 C.F.R. § 42
`
`HTC EXHIBIT 1018
`
`Page 1 of 81
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Patent of:
`Johannes Maria van Loon et al.
`U.S. Patent No.:
`9,014,667
`Issue Date:
`April 21, 2015
`Appl. Serial No.:
`12/919,965
`Filing Date:
`February 19, 2009
`Title:
`TELECOMMUNICATIONS NETWORK AND METHOD
`FOR TIME-BASED NETWORK ACCESS
`
`Attorney Docket No.: 19688-0152IP1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`HTC AMERICA, INC.
`
`Petitioner
`
`v.
`
`KONINKLIJKE KPN N.V.,
`
`Patent Owner
`
`____________________
`
`Patent No. 9,014,667
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`OF UNITED STATESU.S. PATENT NO. 9,014,667 PURSUANT TO 35 U.S.C. §§
`311-319, 37 C.F.R. § 42
`
`HTC EXHIBIT 1018
`
`Page 1 of 81
`
`
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`Petition for Inter Partes Review
`Patent No. 8,539,024
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`Page 2 of 81
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`Petition for Inter Partes Review – Patent No. 9,014,667
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST
`
`22
`22
`478
`
`513
`523
`65Conclusion 67
`67
`
`- i-
`
`ii
`1Introduction 1
`INTRODUCTION
`1
`REQUIREMENTS FOR IPR
`1
`Grounds fFor Standing
`A.
`1
`Challenge and Relief Requested
`B.
`2
`BACKGROUND
`2
`The ’667 Patent
`A.
`7
`Prosecution History of the ’667 Patent
`B.
`89
`Person of Ordinary Skill in the Art
`C.
`9
`Obhan (Grounds 1 and 2)
`D.
`12
`Shatzkamer (Ground 1 -– Unique Identifiers)
`E.
`145
`Budka (Grounds 1 and 2 -– Access Requests)
`F.
`16
`Taniguchi (Ground 2 -– Notifications)
`G.
`18Claim Construction 18
`CLAIM CONSTRUCTION
`Deny access time interval (claims 31, 33, and 35)
`189
`A.
`Machine-to-machine applications (claims 31, 33, and 35)
`1920
`B.
`Register (claim 31)
`201
`C.
`APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS
`22
`Ground 1: Obhan in view of Shatzkamer and Budka renders
`A.
`obvious claims 31 and 33
`Claim 31
`i.
`Claim 33
`ii.
`Ground 2: Obhan in view of Taniguchi and Budka renders
`obvious claim 35
`Claim 35
`i.
`CONCLUSION
`Payment Of Fees
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`VII.
`
`B.
`
`Page 3 of 81
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`Petition for Inter Partes Review – Patent No. 9,014,667
`
`VIII.
`
`I. MANDATORY NOTICES UNDERMandatory Notices Under 37
`C.F.R. § 42.8(a)(1)
`Real Party-Inin-Interest Under 37 C.F.R. § 42.8(b)(1)
`A.
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`B.
`Lead Aand Back-Up Counsel And Service Information
`C.
`
`667
`66 67
`66 67
`66 67
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`-ii-
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`Page 4 of 81
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`Petition for Inter Partes Review – Patent No. 9,014,667
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`EXHIBIT
`
`-iii-
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`Page 5 of 81
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`Petition for Inter Partes Review – Patent No. 9,014,667
`
`LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 9,014,667 to van Loon, et al. (“the ’667
`Patent”)
`Excerpts from the Prosecution History of the ’667 Patent
`(“the Prosecution History”)
`Declaration of Mr. Bishop
`
`Curriculum Vitae of Mr. Bishop
`
`U.S. Patent No. 6,275,695 to Obhan et al. (“Obhan”)
`
`U.S. Patent Publication No. 2008/0220740 to Shatzkamer
`et al. (“Shatzkamer”)
`
`E.P. Patent Publication No. EP1009176 A2 to Budka
`et al. (“Budka”)
`U.S. Patent No. 7,505,755 to Taniguchi et al. (“Taniguchi”)
`
`U.S. Patent Publication No. 2007/0183427 to Nylander
`et al. (“Nylander”)
`U.S. Patent Publication No. 2006/0268838 A1 to Larsson
`et al. (“Larsson”)
`
`GSM technical specification No. 04.08 version 5.0.0, titled
`“Digital cellular telecommunications system (Phase 2+);
`Mobile radio interface layer 3 specification (GSM 04.4,08),”
`and dated December 1995
`GSM technical specification No. 03.60 version 7.2.0, titled
`“Digital cellular telecommunications system (Phase 2+);
`General Packet Radio Service (GPRS); Service description;
`Stage 2,” and dated 1999
`
`iv
`
`Page 6 of 81
`
`
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`Petition for Inter Partes Review – Patent No. 9,014,667
`
`Claim Construction Memorandum and Order, from Case No.
`2:14-cv-1165-JRG E.D. Tex., May 6, 2016 (“Markman
`Order”)
`3GPP TS 23.060 version 7.0.0, titled “3rd Generation
`Partnership Project; Technical Specification Group Services
`and System Aspects; General Packet Radio Service (GPRS);
`Service description; Stage 2 (Release 7)” and dated March
`2006
`3GPP TS 23.015 version 7.0.0, titled “3rd Generation
`Partnership Project; Technical Specification Group Core
`Network; Technical realization of Operator Determined
`Barring (ODB) (Release 7)” and dated March 2007
`
`Excerpts from G. Camarillo and M. Garcia-Martin, “The 3G
`IP Multimedia Subsystem (IMS), (Wiley, 2d ed. 2006)”
`(“Camarillo”)
`Excerpts from Regis J. “Bud” Bates, “GPRS General Packet
`Radio Service, (McGraw-Hill, 2002)” (“Bates”)
`
`Comparison between the Current Petition and Petition in
`IPR2018-00558
`
` v
`
`Page 7 of 81
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`Petition for Inter Partes Review – Patent No. 9,014,667
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`vi
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`Page 8 of 81
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`
`I.
`
`INTRODUCTION
`LG ElectronicsHTC America, Inc. (“Petitioner”) petitions for Inter Partes Review
`
`(“IPR”)requests inter partes review of claims 31, 33, and 35 (“the Challenged
`
`Claims”) of U.S. Patent No. 9,014,667 (“the ’667 Patent”) (Ex. 1001), which,
`
`according to PTO records, is assigned to Koninklijke KPN N.V. (“Patent Owner”).
`
`For the reasons set forth below, the challenged claims should be found
`
`unpatentable and canceled.
`
`II.
`
`REQUIREMENTS FOR IPR
`A.
`Grounds fFor Standing
`Petitioner certifies that the ’667 Patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint against Petitioner on February 1,
`
`2017.inter partes review, and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the Challenged Claims’667 Patent.
`
`B.
`Challenge and Relief Requested
`Petitioner requests IPR of the Challenged Claims on the grounds set forth in
`
`the table below. An explanation of how these claims are unpatentable is provided
`
`below and in Ex. 1003, Declaration of Craig Bishop.
`
`Ground
`
`Claims
`
`Basis
`
`1
`
`2
`
`31, 33
`
`35
`
`§103: Obhan, Shatzkamer, Budka
`
`§103: Obhan, Taniguchi, Budka
`
` 1
`
`Page 9 of 81
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`
`The ’667 Patent issued from the national phase of a PCT application filed
`
`on 02/19/2009 (“Filing Date”), which claimed priority to EP No. 08/003,753,
`
`filed on 02/29/2008 (“European Priority Date”). Each reference pre-dates both of
`
`these two dates and qualifies as prior art under the statutory grounds set forth in
`
`the table below:
`
`Reference
`
`Date
`
`Obhan
`
`08/14/2001 (issued)
`
`Shatzkamer
`
`03/09/2007 (filed)
`
`Budka
`
`06/14/2000 (published)
`
`Taniguchi
`
`08/03/2006 (published)
`
`Section
`
`102(b)
`
`102(e)
`
`102(b)
`
`102(b)
`
`III.
`
`BACKGROUND
`The ’667 Patent
`A.
`The ’667 Patent relates to “permitting access” to a plurality of terminals of
`
`a telecommunications network. Ex. 1001, 1:16-40. Due to “an ever increasing
`
`demandde- mand for data capacity,” the ’667 Patent describes a need for a
`
` 2
`
`Page 10 of 81
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`“telecommunications network and method for regulating the use of network
`
`resources.”1 Id.
`
`A schematic of the wireless network proposed by the ’667 Patent is shown in
`
`FIG. 1 (reproduced below with annotations), in which terminals A-D access the
`
`external network 8 through the base station 3, the serving controller entity 5, and
`
`the gateway 7. Ex. 1001, 3:55-65, FIG. 1. To gain access, the terminals A-D send
`
`access requests to the serving controller entity 5 through the base station 3. Ex.
`
`1001, 3:66-4:6, 5:50-52; Ex. 1003, [0028].
`
`1 Prior to the European Priority Date of the ’667 Patent, the “steps of access-
`ingaccessing a telecommunications network [were] standardized,” for example in
`3GPP TS 23.060 (Ex. 1014, pp. 18, 47-52). Ex. 1001, 2:24-25. Furthermore,
`“operator de- termineddetermined barring (ODB) ...… to deny access to particular
`destinations for certain subscribers” was also standardized in 3GPP TS 23.015
`(Ex. 1015, p. 5). Ex. 1001, 2:38-43; Ex. 1003, [0027].
`
` 3
`
`Page 11 of 81
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`Patent No. 9,014,667
`
`Ex. 1001, FIG. 1 (annotated)
`
`To regulate the use of network resources, the ’667 Patent describes
`
`“[d]enying or blocking access during time intervals.” Ex. 1001, 2:44-50.
`
`Specifically, the ’667 Patent describes a “register” that stores grant or deny access
`
`time intervals used by the serving controller entity 5 to permit or deny access
`
`requests. Ex. 1001, 4:7-8, 4:49-5:6; Ex. 1003, [0029].
`
`FIG. 2 (reproduced below with annotations) shows an example of the con-
`
`tentcontent of the register 6. Ex. 1001, 4:54-5:6, FIG. 2; Ex. 1003, [0030].
`
` 4
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`Patent No. 9,014,667
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`Ex. 1001, FIG. 2 (annotated)
`
`For each terminal A-D, the ’667 Patent’s register 6 “contains a unique
`
`identifier” and an assigned “time
`
`interval” during which access
`
`to
`
`the
`
`telecommunications network will be granted (grant access time interval) or denied
`
`(deny access time interval). Ex. 1001, 4:54-5:6; Ex. 1003, [0031]-[0032].
`
`The time intervals can be dynamic and implicit. Ex. 1001, 2:65-3:1. For
`
`exampleex- ample, as shown in FIG. 2, the deny access time interval for terminal D
`
`has a variable beginning time (x) and a variable ending time (y) depending on
`
` 5
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`experienced or expected network load. Ex. 1001, 4:65-5:2; Ex. 1003, [0033]. The
`
`serving controller entity 5 monitors the “network load” of the telecommunications
`
`network (in real time or from historical data) and may adjust time intervals based
`
`on the network load. Ex. 1001, 5:39-46; Ex. 1003, [0033]. Additionally, in the
`
`’667 Patent, terminals involved in “machine-to-machine (M2M) applications”
`
`may be denied access to the network during peak load hours. Ex. 1001, 2:48-60;
`
`Ex. 1003, [0033].
`
`FIG. 3A (reproduced below with annotations) shows an example operation
`
`of a terminal attempting to access the network. Ex. 1001, 5:47-6:42, FIG. 3A
`
`(annotatedan- notated); Ex. 1003, [0034].
`
`Ex. 1001, FIG. 3A (annotated)
`
` 6
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`As shown in FIG. 3A, in step 30, a terminal A transmits an attach request to
`
`the serving controller entity to access the network. Ex. 1001, 5:50-52; Ex. 1003,
`
`[0035]-[0036]. The attach request includes an identifier of the terminal, such as an
`
`IMSI. Ex. 1001, 5:53-55; Ex. 1003, [0036]. In step 31, which is an “authentication
`
`check,” the serving controller entity uses the identifier to retrieve an access time
`
`interval from the register. Ex. 1001, 5:63-6:4; Ex. 1003, [0036]. The serving
`
`controller entity then uses the access time interval to determine that the access
`
`requestre- quest was not received at a time where the terminal was granted access,
`
`and denies access to the terminal in step 36. Ex. 1001, 6:19-23; Ex. 1003, [0036].
`
`Although the ’667 Patent uses grant access time intervals in describing these
`
`examples of access control operations, the ’667 Patent makes it clear that “[i]t
`
`should be appreciated that an equivalent of the grant access time interval includes a
`
`deny access time interval identifying a time interval during which an access
`
`requestre- quest for access to the telecommunications network is to be denied.” Ex.
`
`1001, 2: 17-21. In other words, denying access because the access request is
`
`received outsideout- side of a grant access time interval is equivalent to denying
`
`access because the access request is received within a deny access time interval.
`
`Ex. 1003, [0037].
`
`B.
`
`Prosecution History of the ’667 Patent
`
` 7
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`Page 15 of 81
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`The prosecution history of the ’667 Patent reveals that a majority of the
`
`claim
`
`limitations are simply well-known
`
`features
`
`that are
`
`typical of
`
`telecommunications systems. In an Office Action dated July 9, 2014, the Office
`
`rejected all claims over Hill in view of Breuer, finding a majority of the features of
`
`the pending claims within the prior art. Ex. 1002, pp. 323-325. In response,
`
`Applicant amended the claims to specify that the “time period” is “adapted by the
`
`telecommunications network depending on a monitored network load,” and argued
`
`that this feature is not disclosed in the cited references. Ex. 1002, pp. 297-299.
`
`Following the Applicant’s response, and resulting from an Examiner interview
`
`conducted on February 6, 2015, the claims were allowed based on further
`
`amendments to recite “wherein machine-to-machine applications are executed, and
`
`wherein the plurality of terminals for the machine-to-machine applications are
`
`denied access to the telecommunications network during peak load time intervals,
`
`the time period being within peak load time intervals.” Ex. 1002, p. 198-200.
`
`As discussed in more detail below, Obhan, which was not before the
`
`Examiner during prosecution, quite clearly discloses these features that led to
`
`allowance of the ’667 Patent. Section III-D, infra; Ground 1, infra; Ground 2,
`
`infra; Ex. 1003, [0038]-[0044]. Indeed, Obhan adjusts access time intervals based
`
`on network load and denies access to machine-to-machine applications during peak
`
`load intervals. Id. With these features disclosed, Obhan combines with additional
`
` 8
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`references (Shatzkamer, Budka, Taniguchi) to render obvious all limitations of the
`
`Challenged Claims.
`
`C.
`Person of Ordinary Skill in the Art
`A person of ordinary skill in the art as of the European Priority Date of the
`
`’667 Patent (POSITA)2 would have had a Bachelor’s degree in Electrical
`
`EngineeringEngineer-ing, Computer Engineering, or Computer Science, and at least
`
`3 years of experience working in the field of wireless communication, or
`
`equivalent post graduate academic experience. Ex. 1003, [0017].
`
`D.
`Obhan (Grounds 1 and 2)
`Similar to the ’667 Patent, Obhan relates to access control in a wireless
`
`communication network, such as a GSM network. Ex. 1005, 9:16-21, 9:45-56;
`
`Section V-A-i, infra. Obhan recognized problems caused by the variable load
`
`experienced by a wireless communication network, and proposed a solution “for
`
`effectively managing spectrum in a wireless communication system to maximize
`
`usage of the wireless spectrum.” Ex. 1005, 1:15-19; Ex. 1003, [0038]. Specifically,
`
`Obhan’s system monitors the “current demand” of the network and “provides
`
`feedback” to network entities that manage access control. Ex. 1005, 15:47-51,
`
`16:15-22; Ground 1, claim [31.1], infra.
`
`2 The European Priority Date of the ’667 Patent is used in the present Petition for
`the relevant date of the POSITA without acquiescence as to whether or not the
`’667 Patent is actually entitled to the priority of the European Priority Date.
`
` 9
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`For example, Obhan discloses grouping terminals in different access classes
`
`and associating the access classes with deny access time intervals. Ex. 1005,
`
`14:52-15:9; Section V-A-i, infra; Ex. 1003, [0039]. Obhan denies terminal access
`
`to the network based on the deny access time intervals associated with the access
`
`classes. Ex. 1005, 16:14-22; Section V-A-i, infra; Ex. 1003, [0039]. FIG. 9B
`
`(reproduced below with annotations) illustrates Obhan’s Admission Control Block
`
`(register) that lists a “good till” time period (deny access time interval) with the
`
`access classes (identifiers) of terminals.
`
`Ex. 1005, FIG. 9B (annotated)
`
`Obhan’s Admission Control Block (ACB) is updated based on monitored
`
`load of the wireless network: “Using current demand ...… the SYM system
`
`10
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`Patent No. 9,014,667
`providespro- vides feedback to the wireless network entities in the form of an
`
`updated ACB.” Ex. 1005, 15:47-51, 7:66-8:7, 17:31-40, 18:12-23, 14:57-15:3;
`
`Ex. 1003, [0040]. Through these updates to the ACB, Obhan updates its time
`
`intervals based on monitored network load. Ground 1, Claim [31.6], infra; Ex.
`
`1003, [0040].
`
`Additionally, FIG. 15 (reproduced below with annotations) illustrates how
`
`Obhan’s system monitors the load of a Base Station Transceiving Subsystem
`
`(BTS) over the course of a day and compares the load to historical usage
`
`watermarkswater- marks to identify a peak load time interval. Ex. 1005, 16:30-32,
`
`20:64-21:7, 21:22-29, 5:23-32; Ground 1, claim [31.8], infra; Ex. 1003, [0041].
`
`Ex. 1005, FIG. 15 (annotated)
`
`During the peak load time interval, Obhan’s system denies access to “low
`
`priority data users,”
`
`including
`
`terminals performing machine-to-machine
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`Patent No. 9,014,667
`applications, such as vending machines or billboards. Ex. 1005, 18:47-61, 6:17-24;
`
`Ground 1, claim [31.8], infra; Ex. 1003, [0042]-[0043]. Indeed, a POSITA would
`
`have found it obvious to set deny access time interval for these low priority
`
`machinema- chine terminals to preserve access resources for higher priority users
`
`during peak load by “preclud[ing] access to the base station” for these low priority
`
`machine terminals. Ex. 1005, 17:31-40; Ground 1, claim [31.8], infra; Ex. 1003,
`
`[0043]. By precluding machine terminals from accessing the network during peak
`
`load, Obhan’s system denies access to machine-to-machine applications during
`
`peak load time intervals. Id.
`
`For these reasons, as explained in more detail in Grounds 1 and 2, Obhan
`
`discloses the very features of claims 31, 33, and 35 that the examiner relied on in
`
`justifying allowance of the ’667 Patent. Thus, Obhan serves as the basis for the
`
`challenges set forth in Grounds 1 and 2, combining with Shatzkamer (unique
`
`identifiers), Budka (access requests), and Taniguchi (notifications) to address
`
`trivial features that were well-known, but not explicitly described by Obhan. Ex.
`
`1005, 14:52-15:9; Ground 1, infra; Ex. 1003, [0038]-[0044].
`
`Shatzkamer (Ground 1 -– Unique Identifiers)
`E.
`As noted above, Obhan uses class identifiers to control terminal access,
`
`ratherra-
`
`ther
`
`than unique
`
`identifiers. Ex. 1005, 14:52-15:9. Shatzkamer
`
`demonstrates that using unique identifiers to control terminal access was
`
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`Patent No. 9,014,667
`well-known prior to the ’667 Patent. Ex. 1006, [0012], [0025]; Ex. 1003, [0045].
`
`To provide finer access control on the terminal, rather than class, level, a POSITA
`
`would have found it obvious to substitute Obhan’s class identifiers with
`
`Shatzkamer’s unique identifiers or at least include Shatzkamer’s unique identifiers
`
`in addition to Obhan’s class identifiers. Ex. 1003, [0045].
`
`Like Obhan, Shatzkamer relates
`
`to access control
`
`in a wireless
`
`communication network, such as a GSM network. Ex. 1006, [0041]; Ground 1,
`
`infra; Ex. 1003, [0046]. Specifically, Shatzkamer discloses associating terminals
`
`with unique identifiers, and denying terminal access to the network based on the
`
`unique identifiers. Ground 1, infra; Ex. 1006, [0025]. In this regard, both Obhan
`
`and Shatzkamer relate to performing access control in a wireless communication
`
`network by denying terminal access to the network during certain time periods:
`
`“Mobile node 104 may be blacklisted for a certain period of time.” (Ex. 1006,
`
`[0035]). Ex. 1005, 14:52-15:9, 16:15-22; Ex. 1006, [0025], [0035], [0012];
`
`Ground 1, infra; Ex. 1003, [0046].
`
`To provide more flexibility and increase the resolution of Obhan’s access
`
`control operations by enabling terminal specific control, a POSITA would have
`
`found it obvious to replace Obhan’s access class identifiers with Shatzkamer’s
`
`unique identifiers. Ex. 1003, [0047]. As Mr. Bishop explains, a POSITA would
`
`have recognized that:
`
`13
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`such substitution would increase the granularity of
`Obhan’s access control procedure by enabling the
`Obhan’s system to deny terminal access to the network
`based on the unique identifier associated with the
`terminal. Such a recognition would have directly
`followed from a POSITA’s common-sense knowledge
`because it was a well-known that substituting an access
`class based access control method with a unique
`identifier based access control method could provide
`finer and more specific access control. Such substitution
`would have produced predictable results without undue
`experimentation. (Ex. 1003, [0047].)
`
`Notably, Mr. Bishop is corroborated on this point. Specifically, Nylander
`
`confirms Mr. Bishop’s opinion on a POSITA’s motivation to replacere- place
`
`Obhan’s class-based access control with Shatzkamer’s terminal-based access
`
`control. Ex. 1009, [0033], [0063]. For example, Nylander explained that access
`
`control based on access class “cannot be used for fine-grained Access Control,” as
`
`there are “only [a limited number of] different Access Control Classes.”" Ex. 1009,
`
`[0033]. “With such a limited number of Access Control Classes, it is impossible
`
`to build any logic for access control.” Id. Nylander then proposes providing finer
`
`and more specific access control by disclosing a list of “allowed user equipment
`
`units which are to be permittedper- mitted access” to the network, identifying the
`
`user equipment units using the “International Mobile Subscriber Identity (IMSI) of
`
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`the user equipment units.” Ex. 1009, [0063]. With recognition of the benefits of
`
`finer access control achieved by replacing class-based access control with
`
`terminal-based access control, Nylander confirms that a POSITA would have been
`
`motivated to substitute an access class based access control method with a unique
`
`identifier based access control method to provide finer and more specific access
`
`control. Ex. 1003, [0048].
`
`F.
`Budka (Grounds 1 and 2 -– Access Requests)
`As discussed above, Obhan manages “call originations” in a GSM network. Ex.
`
`1005, 18:47-61. Obhan does not explicitly disclose that “call originations” in the
`
`GSM network include receiving an access request and a unique identifier
`
`associated with the terminal. Id. However, Budka (and the GSM/GPRS standard at
`
`the time) confirms that it was well-known that call originations in a GSM network
`
`involve receipt of an access request with a unique identifier. Ex. 1007, [0042],
`
`[0062]; Ex. 1010, [0049]; Ex. 1011, pp. 89, 108; Ex. 1014, p. 50; Ex. 1003, [0049].
`
`In particular, Budka describes that, to originate a data call in the GSM network
`
`using the GPRS standard, a terminal initiates an access procedure by sending an
`
`access request that includes a unique identifier, such as an international mobile
`
`subscriber identifier (IMSI). Ex. 1007, [0062]; Ground 1, claim [31.3], infra; Ex.
`
`1003, [0049]. Through Budka’s disclosure, a POSITA would have found it obvious
`
`that Obhan’s call originations involve an access request with a unique identifier.
`
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`Ex. 1003, [0049]. Indeed, as Mr. Bishop explains, access requests were part of the
`
`GSM standard used by Obhan and:
`
`it was a well-known, routine practice in the art for a
`terminal to send an access request including its identifier
`to initiate access to a GSM network. Incorporating
`Budka’s access procedure in Obhan’s access control
`system would have involved implementation of a known
`technique for its ordinary purposes in the same way as
`had already been disclosed for similar networks (e.g.,
`GSM networks) to achieve a predictable result (e.g., to
`access the network). (Ex. 1003, [0050].)
`
`Taniguchi (Ground 2 -– Notifications)
`G.
`Obhan’s terminals receive messages, such as “service option signals and
`
`other messages,” that “alter[] accessibility” and “subscriber loading” in the net-
`
`work by “precludingpreclud[ing] call initiation when the subscriber unit does not
`
`have access.” Ex. 1005, 8:53-62, 18:12-23, 18:47-61; Section V-B-i, infra; Ex.
`
`1003, [0051] . Although Obhan discloses notification messages, Obhan is
`
`complemented by additional disclosures of details reading those messages, such as
`
`their inclusion of information relating to a deny access time interval, as set forth by
`
`Taniguchi. For instance, Taniguchi confirms that it was well-known to include
`
`deny access time interval information in notifications to inform terminals when
`
`they are denied access. Ex. 1008, 3:40-47; Ex. 1003, [0051]. By including
`
`16
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`Taniguchi’s deny access time interval information in notifications, terminals and
`
`the wireless communication network achieve improved performance because they
`
`avoid unnecessary access requests in intervals where those access requests will be
`
`denied. Ex. 1008, 3:47-51. Thus, a POSITA would have found it obvious to
`
`modify Obhan to send its terminals deny access time interval information, as
`
`disclosed by Taniguchi. Ground 2, claim [35.1], infra; Ex. 1003, [0051].
`
`Like Obhan, Taniguchi relates to access control for “data communication” of
`
`terminals in a wireless communication network. Ex. 1008, Abstract. Specifically,
`
`Taniguchi discloses restricting terminal access in “a communication restriction
`
`period” adapted based on monitored network load. Ex. 1008, Abstract, 4:31-36;
`
`Ground 2, infra; Ex. 1003, [0052]. To inform a terminal when it is restricted,
`
`Taniguchi sends the terminal “a communication restriction signal” that includes
`
`“communication restriction period information.” Ex. 1008, 3:40-66; Ex. 1003,
`
`[0052] . In light of this disclosure in Taniguchi, a POSITA would have found it
`
`obvious to modify Obhan to provide its terminals with deny access time interval
`
`in- formation to inform them when access will be denied. Ex. 1003, [0052]. By
`
`informingin- forming Obhan’s terminals of the deny access time interval
`
`information, Obhan’s terminals can avoid expending unnecessary resources in
`
`making access requests that will be denied and Obhan’s wireless communication
`
`network can avoid expendingex- pending unnecessary resources in denying the
`
`17
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`access requests. Ex. 1003, [0052]. Indeed, as Mr. Bishop explains, this
`
`modification improves the efficiency of Obhan’s system and:
`
`A POSITA seeking to implement the access control
`operation in Obhan would have found it obvious ...… to
`provide information related to Obhan’s deny access time
`period in messages to terminals. Doing so would serve
`the stated goal of Obhan in providing knowledge to
`terminals to preclude the mobile terminal from accessing
`the network when the network loading is high. (Ex.
`1003, [0052].)
`
`The foregoing discussions in Section III are incorporated by reference into
`
`our later presentation of the grounds against individual claims and individual
`
`claim features.
`
`IV.
`
`CLAIM CONSTRUCTION
`A claim subject to IPR is given its “broadest reasonable construction in
`
`light of the specification.” 37 C.F.R. § 42.100(b). For the purpose of this
`
`proceeding only, Petitioner addresses the terms “deny access time interval,”
`
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`“machine-to-ma- chine applications,” and “register.”3 All remaining terms
`
`should be given their broadest reasonable ordinary meaning.
`
`A.
`Deny access time interval (claims 31, 33, and 35)
`Under BRI, the term “deny access time interval” should be construed
`
`broadly enough to encompass a “time slot during which access to the
`
`telecommunications network is denied.” Ex. 1003, [0055].
`
`Such a construction is consistent with the specification of the ’667 Patent.
`
`Ex. 1003, [0056]. For example, the specification of the ’667 Patent broadly
`
`definesde- fines deny access time intervals as “time slots during which access to the
`
`telecommunications network 1 is denied, i.e., access deny time intervals.” Ex.
`
`1001, 5:3¬-5. Also, the specification confirms that time intervals may be “implicit”
`
`and “dynamic.” Ex. 1001, 2:65-3:1. Further, the specification states that grant
`
`access and deny access time intervals are equivalent—”“It should be appreciated
`
`that an equivalent of the grant access time interval includes a deny access time
`
`interval identifyingidentify- ing a time interval during which an access request for
`
`3 The standard for district court (“ordinary and customary meaning”) is different
`than the broadest reasonable construction/interpretation (“BRI”) standard applied
`in IPR. Due to these differences, disclosure identified by Petitioner as teaching
`terms of the ’667 Patent is not an admission that the terms are met by any
`disclosure for infringement purposes. Interpretations of the Challenged Claims
`by Petitioner are for the sole purpose of determining whether the prior art
`anticipates or renders the Challenged Claims obvious under BRI. Petitioner does
`not concede that any Challenged Claim meets statutory standards for patent
`claiming under 35 U.S.C. § 101 or 35 U.S.C. § 112.
`
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`Patent No. 9,014,667
`access to the telecommunications network is to be denied.” Ex. 1001, 2:17-21.
`
`Thus, under BRI, the term “deny access time interval” should be construed broadly
`
`enough to encompass a “time slot during which access to the telecommunications
`
`network is denied.” Ex. 1003, [0055]-[0056].
`
`B.
`Machine-to-machine applications (claims 31, 33, and 35)
`Under BRI,
`the
`term “machine-to-machine applications” should be
`
`construed broadly enough to encompass “applications that allow for data
`
`communication between devices and that normally operate without human
`
`intervention.” Ex. 1003, [0057].
`
`Such a construction is consistent with the specification of the ’667 Patent.
`
`Ex. 1003, [0058]. The specification of the ’667 Patent recites: “M2M applications
`
`typically involve hundreds or thousands of devices that only rarely require access
`
`to a telecommunications network.” Ex. 1001, 2:56-58. The specification explains
`
`that “some machine-to-machine (M2M) applications do not require the transfer of
`
`data to be immediate,” and, “if these applications are prevented from claiming one
`
`or more network resources during e.g. peak load hours, network resources can be
`
`saved.” Ex. 1001, 2:50-54. The specification also cites “electricity meters at the
`
`home” as an example of a “machine-to-machine application.” Ex. 1001, 2:57-60.
`
`From this description, a POSITA would have viewed the term “machine-to-
`
`machine” broadly as data communication between devices that normally operate
`
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`Petition for Inter Partes Review
`Patent No. 9,014,667
`without human intervention. Ex. 1003, [0059]. Notably, Petitioner’s proposed
`
`construction was adopted by the District Court in a litigation related to the ’667
`
`Patent. Ex. 1013, p. 66. Thus, under BRI, the term “machine-to-machine
`
`applications” should be construed broadly enough to encompass “applications that
`
`allow for data communication between devices and that normally operate without
`
`human intervention.” Ex. 1003, [0057]-[0059].
`
`C.
`Register (claim 31)
`Under BRI, the term “register” should be construed broadly enough to
`
`encompass “a device with storage.” Ex. 1003, [0060].
`
`Such a construction is supported by intrinsic evidence because Claim 31 of
`
`the ’667 Patent requires that “a register” is “configured to store the unique
`
`identifier of at least one terminal in combination with identification of at least one
`
`associated deny access time interval.” Ex. 1001, claim 31; Ex. 1003, [0061]. From
`
`this language, the claims themselves indicate that the claimed register must have
`
`storage. Id.
`
`Also, such a construction is consistent with the specification of the ’667
`
`Patent. Ex. 1003, [0062]. The specification of the ’667 Patent offers “a home
`
`location register (HLR)” and “a home subscriber server” as examples of a register.
`
`Ex. 1001, 4:7-8. The ’667 Patent explains that the HLR stores “information
`
`associated with subscription.” Ex. 1001, 4:49-52. Further, a POSITA would have
`
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`Patent No. 9,014,667
`recognized that a home subscriber server is a device with storage that stores
`
`user-related information. Ex. 1016, pp. 11-13, Ex. 1003, [0062]. From these
`
`various examples, the ’667 Patent contemplates the register as being a non-specific
`
`device with storage capability. Ex. 1003, [0063]. Thus, under BRI, the term
`
`“register” should be construed broadly enough to encompass “a device with
`
`storage.” Ex. 1017, p. 130; Ex. 1003, [0060]-[0063].
`
`V.
`
`APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS
`This request shows a reasonable likelihood that Petitioner will prevail on the
`
`Challenged Claims.
`
`A.
`
`Ground 1: Obhan in view of Shatzkamer and Budka renders
`obvious claims 31 and 33
`i.
`Claim 31
`[31.0]: “A telecommunications network co
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