`571-272-7822
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`
`Paper 32
`Date: September 1, 2021
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC., ZTE (USA) INC. and ZTE CORPORATION,
`Petitioner,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`____________
`
`IPR2020-01159
`Patent 7,596,375 B2
`____________
`
`
`Before AMANDA F. WIEKER, MONICA S. ULLAGADDI, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
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`PATENT OWNER’S CONTINGENT MOTION TO AMEND
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`IPR2020-01159
`Patent 7,596,375 B2
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`I. INTRODUCTION
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`
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`On February 17, 2021, we instituted trial as to claims 1–15 of U.S. Patent
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`No. 7,596,375 B2 (Ex. 1001, “the ’375 patent”). Paper 11. After institution,
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`Patent Owner filed a Contingent Motion to Amend. Paper 22 (“Motion” or
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`“Mot.”). Should we, in a final written decision, find that the challenged claims are
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`unpatentable, Patent Owner proposes substitute claims 23 and 24, which
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`correspond to respective challenged claims 6 and 7. Mot. 1. Petitioner filed an
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`Opposition to the Motion. Paper 28 (“Opposition” or “Opp.”).
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`In the Motion, Patent Owner requests that we provide preliminary guidance
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`concerning the Motion in accordance with the Board’s pilot program concerning
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`motion to amend practice and procedures. Mot. 1; see also Notice Regarding a
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`New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial
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`Proceedings under the America Invents Act before the Patent Trial and Appeal
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`Board, 84 Fed. Reg. 9,497 (Mar. 15, 2019) (providing a patent owner with the
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`option to receive preliminary guidance from the Board on its motion to amend)
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`(“Notice”). We have considered Patent Owner’s Motion and Petitioner’s
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`Opposition.
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`In this Preliminary Guidance, we provide our initial, preliminary, non-
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`binding views on whether Patent Owner has shown a reasonable likelihood that it
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`satisfies the statutory and regulatory requirements associated with filing a motion
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`to amend in an inter partes review and whether Petitioner (or the record)
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`establishes a reasonable likelihood that the substitute claims are unpatentable. See
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`35 U.S.C. § 316(d); 37 C.F.R. § 42.121; Lectrosonics, Inc. v Zaxcom, Inc.,
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`IPR2018-01129, 01130, Paper 15 (PTAB February 25, 2019) (precedential); see
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`also Notice, 84 Fed. Reg. at 9,497 (“The preliminary guidance . . . provides
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`preliminary, non binding guidance from the Board to the parties about the [motion
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`to amend].”).
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`For purposes of this Preliminary Guidance, we focus on the proposed
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`substitute claims, and specifically on the amendments proposed in the Motion. See
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`Notice, 84 Fed. Reg. at 9,497. We do not address the patentability of the
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`originally challenged claims. Id. Moreover, in formulating our preliminary views
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`on the Motion and Opposition, we have not considered the parties’ other
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`substantive papers on the underlying merits of Petitioner’s challenges. We have
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`considered, however, our Institution Decision in determining whether the
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`amendments “respond to a ground of unpatentability involved in the trial.”
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`Lectrosonics, Paper 15 at 5. We emphasize that the views expressed in this
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`Preliminary Guidance are subject to change upon consideration of the complete
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`record, including any revision to the Motion that might be filed by Patent Owner.
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`Thus, this Preliminary Guidance is not binding on the Board when rendering a
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`final written decision. See Notice, 84 Fed. Reg. at 9,500.
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`II. PRELIMINARY GUIDANCE
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`A. Statutory and Regulatory Requirements
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`For the reasons discussed below, at this stage of the proceeding, and based
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`on the current record, it appears that Patent Owner has not shown a reasonable
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`likelihood that it has satisfied the statutory and regulatory requirements associated
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`with filing a motion to amend.
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`1. Reasonable Number of Substitute Claims
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`Does Patent Owner propose a reasonable number of substitute claims?
`(35 U.S.C. § 316(d)(1)(B))
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`Yes.
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`Patent Owner proposes no more than one substitute claim for each of
`challenged claims 23 and 24 of the ’375 patent. See Mot. 1; id. at 16, App.
`A. Petitioner does not argue otherwise. See generally Opp.
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`
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`2. Respond to Ground of Unpatentability
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`Does the Motion respond to a ground of unpatentability involved in the
`trial? (37 C.F.R. § 42.121(a)(2)(i))
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`Yes.
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`Patent Owner responds to the grounds of unpatentability at pages 10–14 of
`the Motion. Petitioner does not argue otherwise. See generally Opp.
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`
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`3. Scope of Amended Claims
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`Does the amendment seek to enlarge the scope of the claims? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
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`Yes.
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`Patent Owner asserts that “[p]roposed substitute claims 23 and 24 narrow
`the scope of claims 6 and 7, respectively,” because “[e]ach substitute
`claim imposes additional limitations . . . .” Mot. 4.
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`Petitioner argues that proposed substitute claims 23 and 24 “negate the
`steps of independent claim 1 in circumstances where there is no HPLMN
`[(home public land mobile network)] list” and thus “impermissibly enlarge
`the scope of the claims of the patent.” Opp. 15.
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`At this stage of the proceeding, Petitioner appears to have the better
`position.
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`Each of original claims 6 and 7, and proposed substitute claims 23 and 24,
`depend from independent claim 1. Proposed substitute claims 23 and 24
`contain the newly added limitation “implementing the steps of claim 1”
`“only if the HPLMN list is stored in [contained on (claim 24)] the mobile
`wireless terminal’s SIM or in its memory” (emphasis added). Mot. 16,
`App. A. Thus, proposed substitute claims 23 and 24, as written, call for
`“implementing the steps of claim 1” only if the necessary condition is met.
`If the necessary condition is not met, then proposed substitute claims 23
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`and 24 call for not implementing the steps of claim 1. In other words,
`each of proposed substitute claims 23 and 24, as written, covers at least
`two methods: one that requires implementing the steps of claim 1
`(necessary condition is met) and one that requires not implementing the
`steps of claim 1 (necessary condition is not met). Cf. Ex Parte
`Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB 2016)
`(precedential) (discussing conditional limitations in the context of ex parte
`appeals).
`
`Therefore, each of proposed substitute claims 23 and 24—which depend
`from claim 1—indicates that the steps of claim 1 are not performed under
`certain conditions, i.e., if the HPLMN list is not contained on the mobile
`station’s SIM or in its memory. Thus, proposed substitute claims 23 and
`24, unlike original claims 6 and 7, cover situations where none of the steps
`of independent claim 1 are performed.
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`
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`4. New Matter
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`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
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`For the limitation “determine whether the HPLMN list, containing a
`plurality of home network MCC and MNC pairs, is stored on a Subscriber
`Identity Module (SIM), in its memory, or neither” in proposed substitute
`claims 23 and 24.
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`Yes.
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`Patent Owner asserts that this limitation of proposed substitute claims 21
`and 22 is supported by the original disclosures in U.S. Application No.
`12/235,132 (“the ’132 Application”)—the application that issued as the
`’375 patent—and European Application No. 03255483, to which the ’375
`patent claims priority. Mot. 5–10; Ex. 1001, codes (21), (30). Patent
`Owner provides a chart including citations to the ’132 and European
`Applications to support the limitations of proposed substitute claims 23
`and 24. Id.
`
`Petitioner argues that the phrase “or neither” in proposed substitute
`claims 23 and 24 implies that “the HPLMN list may be present in ‘neither’
`the SIM nor the mobile station memory.” Opp. 6. According to
`Petitioner, the written description of the ’375 patent does not support the
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`absence of the HPLMN list from both locations. Id. Petitioner argues that
`the presence of the HPLMN list in at least one of the SIM or the memory
`is required “throughout the Specification” (id.) and that the HPLMN list
`being present in neither location is not described and, in fact, “defeats the
`very purpose of the patent” (id. at 8).
`
`We agree with Petitioner that the embodiments relied on by Patent Owner
`“require the HPLMN list to be either in the SIM or memory” and “exclude
`the possibility that it may be absent from both.” Opp. 7.
`
`For example, Patent Owner relies on an embodiment of the ’132
`Application that is described as “a slight variation of the method of”
`Figure 7, but the description of that embodiment indicates that if the
`HPLMN list is not stored on the SIM, then the mobile station utilizes an
`HPLMN list “stored in its own memory.” Mot. 6; Ex. 1002, 22–23.
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`In other words, there appears to be written description support for the
`HPLMN list being absent from either the SIM or the mobile station
`memory. However, at this stage of the proceeding and on the record
`before us, Patent Owner has not identified written description support for
`the HPLMN list being absent from both locations as recited in proposed
`substitute claims 23 and 24.
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`For the limitation “implementing the steps of claim 1 [. . . ] only if the
`HPLMN list is stored in [contained on] the mobile wireless terminal’s SIM
`or in its memory” in proposed substitute claims 23 and 24:
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`Yes.
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`Patent Owner asserts that support for this limitation is provided in the ’132
`and European Applications. See Mot. 5–10.
`
`Petitioner argues there is no support in the written description of the ’375
`patent for this limitation. Opp. 8–10.
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`As discussed above in section II.A.3, proposed substitute claims 23 and 24
`encompass a circumstance where the steps of claim 1 are not performed,
`i.e., when the HPLMN list is not contained on the mobile station’s SIM or
`in its memory. In that circumstance, proposed substitute claims 23 and 24
`contain a negative limitation of not “implementing the steps of claim 1.”
`“Negative claim limitations are adequately supported when the
`specification describes a reason to exclude the relevant limitation.”
`Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
`Thus, we look to the cited portions of the written description, including the
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`’132 and European Applications, to determine whether it describes a
`reason to exclude the steps of claim 1 in the circumstance recited in the
`proposed substitute claims.
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`Patent Owner’s citations for both proposed substitute claims are to the
`same portions in each of the ’132 and European Applications. Mot. 6–10.
`Both Applications describe that “the mobile station utilizes a multiple
`home network list on the SIM if it is stored on the SIM but, if such a list is
`not stored on the SIM, the mobile station utilizes a multiple home network
`list stored in its own memory.” Ex. 1002, 22–23; see id. at 176. Patent
`Owner does not identify any discussion of a scenario where the HPLMN
`list is not stored in either location. Also, Patent Owner does not identify
`anywhere in the European or ’132 Applications that discusses reasons why
`one would not perform the steps of claim 1 in any scenario.
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`Accordingly, based on the current record, it appears that Patent Owner’s
`proposed amendment adds new subject matter to the claims.
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`B. Patentability
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`For the reasons discussed below, at this stage of the proceeding, and based
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`on the current record,1 it appears that Petitioner (or the record) has shown a
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`reasonable likelihood that proposed substitute claims 23 and 24 are unpatentable.
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`
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`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
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`Yes.
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`1. Indefiniteness under 35 U.S.C. § 112 ¶ 22
`
`
`1 We express no view on the patentability of original claims 6 and 7 in this
`Preliminary Guidance. Instead, we focus on limitations added to those claims in
`Patent Owner’s Motion to Amend.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”), included revisions to 35 U.S.C. §§ 103 and 112 that became effective
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`On this record, it appears that the entirety of the record shows a reasonable
`likelihood of establishing that proposed substitute claims 23 and 24 are
`indefinite under 35 U.S.C. § 112 ¶ 2.
`
`Proposed substitute claims 23 and 24 recite, in relevant part, implementing
`the steps of claim 1 “only if the HPLMN list is stored in [contained on] the
`mobile wireless terminal’s SIM or in its memory” (emphasis added).
`Claims 23 and 24 also recite that the mobile wireless terminal runs a “test
`to determine whether the HPLMN list . . . is stored on a Subscriber
`Identity Module (SIM), in its memory, or neither” (emphasis added). It is
`not clear whether the modifier “its” refers to the mobile wireless terminal
`or the SIM.
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`Although Petitioner does not assert proposed substitute claims 23 and 24
`are indefinite for this particular reason, we address it here to provide
`further guidance to the parties. We determine the evidence is “readily
`identifiable and persuasive such that the Board should take it up in the
`interest of supporting the integrity of the patent system, notwithstanding
`the adversarial nature of the proceedings.” Hunting Titan, Inc. v.
`DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67, 13 (PTAB July
`6, 2020) (designated precedential). The evidence relevant to this issue is
`nothing more than the language of the proposed substitute claims, and the
`’375 patent Specification. We determine that the issue is sufficiently
`persuasive to address at this preliminary stage. By addressing this issue in
`now, Patent Owner will be able to, should it desire, present proposed
`substitute claims in a revised motion to amend that do not suffer from the
`same potential infirmity. See Notice, 84 Fed. Reg. 9,499–500.
`
`Accordingly, there is a reasonable likelihood that proposed substitute
`claims 23 and 24 are indefinite because they “fail[ ] to inform, with
`reasonable certainty, those skilled in the art about the scope of the
`invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
`(2014); see USPTO Memorandum on the Approach to Indefiniteness
`Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021);
`MPEP § 2173.05(e) (9th ed., Rev. 08.2017, June 2020).
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`
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`after the effective filing date of the challenged claims. Therefore, we apply the
`pre-AIA version of 35 U.S.C. §§ 103 and 112.
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`2. Improper Dependent Form under 35 U.S.C. § 112 ¶ 4 and
`Indefiniteness under 35 U.S.C. § 112 ¶ 2
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`On this record, it appears that Petitioner (and/or the entirety of the record)
`has shown a reasonable likelihood of establishing that proposed substitute
`claims 23 and 24 are unpatentable under 35 U.S.C. § 112 ¶ 4 as being of
`improper dependent form (Opp. 18) and indefinite under 35 U.S.C. § 112
`¶ 2 (Opp. 12–15).
`
`35 U.S.C. § 112 ¶ 4 provides:
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`Subject to the following paragraph [concerning multiple
`dependent claims], a claim in dependent form shall contain a
`reference to a claim previously set forth and then specify a
`further limitation of the subject matter claimed. A claim in
`dependent form shall be construed to incorporate by reference
`all the limitations of the claim to which it refers.
`
`Proposed substitute claims 23 and 24 each recite “implementing the steps
`of claim 1” “only if the HPLMN list is stored in [contained on] the mobile
`wireless terminal’s SIM or in its memory.” As discussed above in section
`II.A.3, proposed substitute claims 23 and 24 encompass methods that do
`not perform the limitations of claim 1 and, therefore, fall outside the scope
`of claim 1. See Opp. 16–19. Thus, proposed substitute claims 23 and 24
`do not necessarily “incorporate by reference all the limitations of” claim 1
`as required by 35 U.S.C. § 112 ¶ 4. See Pfizer Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284, 1292 (Fed. Cir. 2006) (when a claim relying on another
`claim “fails to ‘specify a further limitation of the subject matter’ of the
`[other] claim to which it refers because it is completely outside the scope
`of [the other claim,]” such claim is invalid under 35 U.S.C. § 112 ¶ 4).
`
`Furthermore, proposed substitute claims 23 and 24 create uncertainty as to
`whether they require “implementing the steps of claim 1.” See Opp. 14
`(“[I]t is unclear to a POSITA whether the steps of claim 1 (which are
`incorporated into the substitute claims) must ever be performed at all.”).
`Each of proposed substitute claims 23 and 24 begins, on its face, with
`“[t]he method of claim 1.” Yet, as discussed above, proposed substitute
`claims 23 and 24 make “implementing the steps of claim 1” conditional.
`Thus, proposed substitute claims 23 and 24 each contain an inherent
`contradiction: proposed substitute claims 23 and 24 require “the method of
`claim 1” while, under certain circumstances, not “implementing the steps
`of claim 1.” See Opp. 13–15 (citing Synchronoss Techs., Inc. v. Dropbox,
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`Inc., 987 F.3d 1358 (Fed. Cir. 2021)). We do not see how it is possible to
`perform the method of claim 1 without implementing the steps of claim 1.
`Cf. Synchronoss Techs., 987 F.3d at 1366–67 (claims held indefinite
`because they were “nonsensical and require an impossibility”).
`Accordingly, there is a reasonable likelihood that proposed substitute
`claims 23 and 24 are indefinite for this additional reason.
`
`Finally, proposed substitute claim 23 recites that the test is performed
`“each time the mobile wireless terminal is to display a network name,”
`presumably referring to the claim 1 step of “causing the home network
`display name to be visually displayed.” Ex. 1001, 15:26–27. This
`language of proposed substitute claim 23 is indefinite because it is unclear
`how the recited test of claim 23 can be performed at the “display” time
`recited in claim 1, where the result of claim 23’s test may result in the
`steps of claim 1 never being performed at all, i.e., if the HPLMN list is not
`stored in the SIM or memory. This contradiction is similar to, albeit more
`specific than, the contradiction argued by Petitioner on pages 12–15 of the
`Opposition. See, e.g., Opp. 14 (“[T]he method of claim 1 is unconditional,
`but the new claims instruct not to perform it unless a certain condition is
`met.”). Again, because the evidence relevant to this issue is readily
`identifiable and sufficiently persuasive, we address it at this preliminary
`stage. Hunting Titan, IPR2018-00600, Paper 67 at 13; Notice, 84 Fed.
`Reg. 9, 499–500.
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`
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`3. Written Description under 35 U.S.C. § 112 ¶ 1
`
`On this record, it appears that Petitioner has shown a reasonable likelihood
`of establishing that proposed substitute claims 23 and 24 lack written
`description support.
`
`Petitioner argues that the proposed substitute claims lack written
`description support. See supra § II.A.4.
`
`As discussed above in section II.A.4, the portions of the ’132 and
`European Applications cited by Patent Owner in the Motion do not
`provide support for the full scope of proposed substitute claims 23 and 24.
`These claims recite the possibility that the HPLMN list is stored in neither
`the SIM nor the mobile station memory, such that the steps of claim 1 are
`not performed, which is a possibility that is not described in the cited
`portions of the written description.
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`Proposed substitute claims 23 and 24 also recite a negative limitation of
`not implementing the steps of claim 1 under certain circumstances. We
`tend to agree with Petitioner that the portions of the written description
`cited by Patent Owner do not adequately describe “a reason to exclude”
`performing the steps of claim 1. Santarus, 694 F.3d at 1351.
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`4. Obviousness under 35 U.S.C. § 103
`
`On this record, it appears that Petitioner has shown a reasonable likelihood
`of establishing that proposed substitute claims 23 and 24 are unpatentable
`as obvious.
`
`Patent Owner contends that proposed substitute claims 23 and 24 have not
`been shown to be unpatentable because “no prior art reference discloses
`conducting a test—either once during or after SIM initialization (substitute
`claim 24), or every time the UE is to display a network name (substitute
`claim 23).” Mot. 11–12.
`
`Petitioner asserts that “[t]he proposed substitute claims would have been
`obvious to a POSITA [(person of ordinary skill in the art)] at the time of
`the ’375 patent based on the same Grounds raised in the Petition.” Opp.
`19. Petitioner identifies three new limitations contained in each of
`proposed substitute claims 23 and 24: (1) the test to determine whether the
`HPLMN list is stored in the SIM, the mobile station’s memory, or neither;
`(2) the condition that the method of claim 1 is implemented only if the
`HPLMN list is contained on the mobile station’s SIM or in its memory;
`and (3) the timing of performing the test of limitation (1). Id. at 4.
`According to Petitioner, “McElwain (which is included in Grounds 2 and
`5) renders obvious each of the three additional limitations added in the
`proposed substitute claims.” Id. at 20.
`
`With respect to limitation (1), Petitioner asserts that “McElwain teaches
`that an HPLMN list (the Cousin SID list) can be stored in the SIM or in
`memory of a mobile device.” Opp. 21 (citing Ex. 1004 ¶¶ 38–39).
`According to Petitioner, “[i]t would have been obvious to a POSITA, in
`light of McElwain, to run a test to determine whether the HPLMN list is
`stored in the SIM, memory, or neither” because “it is a precursor to using
`the HPLMN list to locate it, if it exists.” Id. at 21–22 (citing Ex. 1029 ¶¶
`57–61). Petitioner also asserts that “TS-22.101 (which is part of Ground
`5) teaches storing network names in either the SIM or memory of the
`mobile, with information stored on the SIM taking priority” and argues
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`that “[t]his confirms that it would have been known to a POSITA to check
`(i.e., test) multiple locations to determine whether specific data is
`available.” Id. at 22 (citing Ex. 1008, 28).
`
`At this stage of the proceeding and based on the current record, we are
`persuaded by Petitioner’s arguments that one of ordinary skill in the art
`would have understood that performing a test to determine whether the
`HPLMN list is stored in the SIM, the mobile station’s memory, or neither
`would have been necessary, or at least desirable, for the reasons set forth
`by Dr. Kakaes. See Ex. 1029 ¶¶ 57–61. For example, Dr. Kakaes explains
`that “attempting to read non-existing data would typically lead to
`unexpected and indeterminate software-related malfunctions.” Id. ¶ 61.
`At this stage, we credit this testimony, which is consistent with the
`disclosures of the prior art of record.
`
`With respect to limitation (2), Petitioner asserts that “[t]he comparisons
`and name display procedures required by claim 1 would not—and could
`not—be implemented if the HPLMN list (Cousin SID list) is not present”
`and, “[t]hus, McElwain teaches implementing the method of claim 1 only
`if the HPLMN list is contained on the mobile station’s SIM or in its
`memory.” Opp. 23 (citing Ex. 1029 ¶¶ 63–64).
`
`At this stage of the proceeding and based on the current record, we are
`persuaded by Petitioner’s arguments that one of ordinary skill in the art
`would have understood that the steps of claim 1 could not be implemented
`if the HPLMN list (Cousin SID list) is absent, as Dr. Kakaes explains. See
`Ex. 1029 ¶ 64. At this stage, we credit this testimony, which is consistent
`with the disclosures of the prior art of record.
`
`With respect to limitation (3), Petitioner asserts that the two alternative
`times for performing the test of proposed substitute claims 23 and 24 “are
`ones of a finite set of options for when to perform this kind of test.”
`Opp. 23 (citing Ex. 1029 ¶ 67). For example, Dr. Kakaes explains that
`performing the test once during or after a SIM initialization procedure
`would have been an obvious choice because “a mobile device already uses
`the initialization procedure to check that the SIM is the right format and
`contains necessary data” and “no test could be run before that procedure.”
`Ex. 1029 ¶ 68. As for the alternative of proposed substitute claim 23, i.e.,
`performing the test “each time the mobile wireless terminal is to display a
`network name,” Dr. Kakaes explains that “[i]t is a common and well-
`known practice in computer science to test for the existence of data before
`trying to read it, every time the data would be read,” and is “simply a
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`prudent way to write software to ensure that the data is available before
`trying to read it.” Ex. 1029 ¶ 69. At this stage, we credit this testimony,
`which is consistent with the disclosures of the prior art of record.
`
`For the reasons discussed above and based on the current record, it appears
`that Petitioner has shown a reasonable likelihood that proposed substitute
`claims 23 and 24 would have been obvious.
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`FOR PETITIONER:
`
`Brian Buroker
`Paul Torchia
`Nathan Curtis
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
`
`John Hutchins
`Chunhsi Mu
`Wesley Jones
`BANNER & WITCOFF, LTD.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`wjones@bannerwitcoff.com
`
`
`
`FOR PATENT OWNER:
`
`Timothy Devlin
`Neil Benchell
`Stephanie Berger
`DEVLIN LAW FIRM LLC
`td-ptab@devlinlawfirm.com
`nbenchell@devlinlawfirm.com
`sberger@devlinlawfirm.com
`
`
`
`
`
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