`
`Petitioner’s Presentation
`Ericsson Inc. v. Koninklijke KPN N.V.
`March 22, 2023
`IPR2022-00068 –U.S. Patent No. 9,549,426
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`
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`Outline of Arguments: IPR2022-00068 (’426 Patent)
`
`I. Overview of the ’426 Patent
`
`II. Procedural History
`
`III. Overview of the Disputes
`
`IV. Unpatentability of Substitute Claim Elements [20b], [21b], [22d],
`[23c], [25b]
`
`V. Unpatentability of Substitute Claim Element [20e] and Substitute
`Claim 24
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`2
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`Outline of Arguments: IPR2022-00068 (’426 Patent)
`
`I. Overview of the ’426 Patent
`
`II. Procedural History
`
`III. Overview of the Disputes
`
`IV. Unpatentability of Substitute Claim Elements [20b], [21b], [22d],
`[23c], [25b]
`
`V. Unpatentability of Substitute Claim Element [20e] and Substitute
`Claim 24
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`3
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`Overview of ’426 Patent
`
`- The ’426 Patent relates to a “method
`and a telecommunications node for
`transferring subscription data in a
`telecommunications system;”
`- During an attach procedure, a
`“subscriber database” transfers
`subscription data to an “attach control
`node” in two sets, rather than in one set
`as done in the prior art
`- After the first set of subscription data
`has been transferred, the user is said to
`be in a “partial attach state”
`
`EX1001 (‘426 Patent), Abstract; Petition
`(Paper 2), 8-12.
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`4
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`
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`Overview of ’426 Patent
`
`• During reexamination,
`Patent Owner identified
`the claims’ recitation of a
`“first set of subscription
`data” that “lacks
`completeness” as the
`novel component that is
`distinctive over the prior
`art, which “always
`return[s] a complete set
`of subscription data”
`
`Petition, 12-13; EX1017 (Response to
`Office Action), 28.
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`Petition
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`5
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`
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`Overview of ’426 Patent
`
`’426 Patent
`
`EX1001, Figs. 2A, 4; Petition, 8-11.
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`’426 Patent
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`6
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`
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`Outline of Arguments: IPR2022-00068 (’426 Patent)
`
`I. Overview of the ’426 Patent
`
`II. Procedural History
`
`III. Overview of the Disputes
`
`IV. Unpatentability of Substitute Claim Elements [20b], [21b], [22d],
`[23c], [25b]
`
`V. Unpatentability of Substitute Claim Element [20e] and Substitute
`Claim 24
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`7
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`Procedural History: ’426 Patent
`
`• On February 22, 2022, Patent Owner filed a Disclaimer Under 37 C.F.R § 1.321(a),
`disclaiming Claim 1 (Exhibit 2008)
`
`• On August 16, 2022, Patent Owner filed a Non-Contingent Motion to Amend
`(Paper 17)
`
`• On December 2, 2022, the Board issued Preliminary Guidance on Patent Owner’s
`Motion to Amend (Paper 21), which found that:
`– Patent Owner had not shown a reasonable likelihood that it had satisfied the statutory
`and regulatory requirements associated with filing a motion to amend
`• Patent Owner did not propose a reasonable number of claims
`• The amendments sought to add new subject matter
`
`– Petitioner had shown a reasonable likelihood that the proposed substitute claims are
`unpatentable
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`Procedural History: ’426 Patent
`
`• On August 16, 2022, Patent Owner filed a Non-Contingent Motion to Amend
`(Paper 17)
`
`Original MTA
`• On December 2, 2022, the Board issued Preliminary Guidance on Patent Owner’s
`Motion to Amend (Paper 21), which found that:
`– Patent Owner had not shown a reasonable likelihood that it had satisfied the statutory and
`regulatory requirements associated with filing a motion to amend
`• Patent Owner did not propose a reasonable number of claims
`• The amendments sought to add new subject matter
`
`– Petitioner had shown a reasonable likelihood that the proposed substitute claims are
`unpatentable
`Original MTA (Paper 17), 29
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`Procedural History: ’426 Patent
`
`• On December 21, 2022, Patent Owner filed a Revised Non-Contingent Motion
`to Amend (Paper 22) proposing to add Substitute Claims 20-25
`
`– Patent Owner abandoned the amendments in the original motion to amend
`
`– Only the RMTA is at issue in this proceeding
`
`• Patent Owner’s RMTA should be denied, because the substitute claims are
`unpatentable
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`10
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`
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`’426 Patent: Overview of the Substitute Claims in RMTA –
`Substitute Claim Elements [20b], [21b], [22d], [23c], [25b]
`
`RMTA
`
`RMTA
`
`RMTA
`
`Revised MTA (“RMTA”, Paper 22), 25, 28,
`30, 32, 35
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`RMTA
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`RMTA
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`11
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`
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`’426 Patent: Overview of the Substitute Claims in RMTA –
`Substitute Claim Element [20e] and Substitute Claim 24
`
`RMTA
`
`RMTA, 27, 34-35
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`RMTA
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`12
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`
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`Outline of Arguments: IPR2022-00068 (’426 Patent)
`
`I. Overview of the ’426 Patent
`
`II. Procedural History
`
`III. Overview of the Disputes
`
`IV. Unpatentability of Substitute Claim Elements [20b], [21b], [22d],
`[23c], [25b]
`
`V. Unpatentability of Substitute Claim Element [20e] and Substitute
`Claim 24
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`13
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`
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`Overview of Disputed Issues
`
`Patent Owner Does Not Dispute:
`
`1. The construction of the claim term “enabling establishing a
`communication session between the user equipment and
`the telecommunications system”
`2. References qualify as prior art
`3. References disclose all elements of the original claims
`4. That the prior art’s “Update Location” message results in the
`transmission of the first set of subscription data
`
`See generally RMTA (Paper 22); Reply to
`Opposition to Revised MTA (“Reply”,
`Paper 31)
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`14
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`Overview of Disputed Issues
`
`Patent Owner Disputes:
`
`1. Whether the prior art renders obvious the “request containing a partial
`transfer indication for transferring only the first set of subscription
`data”
`
`•
`
`Substitute Claims 20-23, 25
`
`2. Whether the prior art renders obvious “deleting from the combination
`of the first set of subscription data and the second set of subscription
`data the second set of subscription data…the first set of subscription
`data remaining in the attach control node”
`
`•
`
`Substitute Claims 20, 24
`
`See generally RMTA; Reply
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`15
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`
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`’426 Patent: The Substitute Claims are Unpatentable
`
`• Grounds 1-4 are found in the
`Petition
`
`• Grounds 5-12 are found in the
`Opposition to the Motion to Amend
`
`Opposition to RMTA
`
`• Grounds 13-18 are found in the
`Opposition to the RMTA
`
`– Grounds 13-15 rely on the original grounds
`from the Petition and additionally address
`the amended limitations
`
`– Grounds 16-18 rely on the original grounds
`from the Petition and add Palat
`
`Petition, 5-6; Opposition to MTA (Paper 18), 7;
`Opposition to RMTA (Paper 24), 2
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`16
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`
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`Outline of Arguments: IPR2022-00068 (’426 Patent)
`
`I. Overview of the ’426 Patent
`
`II. Procedural History
`
`III. Overview of the Disputes
`
`IV. Unpatentability of Substitute Claim Elements [20b], [21b], [22d],
`[23c], [25b]
`
`V. Unpatentability of Substitute Claim Element [20e] and Substitute
`Claim 24
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`17
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`
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`Overview of Disputed Issues
`
`Patent Owner Disputes:
`
`1. Whether the prior art renders obvious the “request containing a
`partial transfer indication for transferring only the first set of
`subscription data”
`
`•
`
`Substitute Claims 20-23, 25
`
`2. Whether the prior art renders obvious “deleting from the combination
`of the first set of subscription data and the second set of subscription
`data the second set of subscription data…the first set of subscription
`data remaining in the attach control node”
`
`•
`
`Substitute Claims 20, 24
`
`See generally RMTA; Reply
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`18
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`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Aerts discloses a two-stage location update procedure wherein subscription
`data is transmitted from an HLR (i.e., “subscriber database”) to an MSC/VLR (i.e.,
`“attach control node”) in two sets
`
`Petition, 14-17; EX1007, code 57, [0025]-
`[0028], Figs. 1-2
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`Aerts
`
`19
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`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Aerts describes that the first set of information is sent in response to a location
`update “LU” message from the UE
`
`Aerts
`
`Petition, 15-16; EX1007, [0026]-[0027],
`Fig. 1 (annotated)
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`Petition
`
`20
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Eberspächer provides a detailed
`signal flow diagram of the location
`updating procedure, and shows that
`subscriber data is sent from an HLR
`to a VLR in response to the VLR
`sending an “Update Location”
`message to the HLR
`
`Petition, 17-19; Opposition to RMTA, 5-6;
`EX1008, 184-186, Figure 6.2 (annotated)
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`Opposition to RMTA
`
`21
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Palat also provides a detailed signal
`flow diagram of the location updating
`procedure, and shows that subscriber
`data is sent from an HLR to a VLR in
`response to the VLR sending a
`“MAP_UPDATE_LOCATION”
`message to the HLR
`
`Opposition to RMTA, 19-20; EX1043,
`Figure 5.2 (annotated)
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`22
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`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`•
`
`In light of Palat and Eberspächer, a POSITA would have understood that an
`“Update Location” message triggers the HLR in Aerts to transmit the first
`set of subscription data to the MSC/VLR
`
`• Patent Owner does not dispute this
`
`Opposition to RMTA, 7, 21-22; EX1047
`(Third Olivier Decl.), ¶¶ 51, 87; Reply, 3
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`23
`
`Reply
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`•
`
`In light of Palat and Eberspächer, a POSITA would have understood that an
`“Update Location” message triggers the HLR in Aerts to transmit the first
`set of subscription data to the MSC/VLR
`
`• Dr. Pachamanov acknowledges this as well
`
`Opposition to RMTA, 7, 21-22; EX1047,
`¶¶ 51, 87; EX1050 (Pachamanov Depo.),
`48:1-5; Sur-reply (Paper 31), 2-3.
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`24
`
`EX1050
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Aerts describes that the second set of information is sent in response to a
`“REQ” message from the MSC/VLR
`
`Petition, 15-16; EX1007, [0026]-[0027],
`Fig. 2 (annotated)
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`Aerts
`
`Petition
`25
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• A POSITA would have understood that the Update Location message includes
`information identifying it as an Update Location message (as opposed to
`an REQ message)
`
`Opposition to RMTA, 8, 22; EX1047, ¶¶ 44,
`46-50, 80, 82-86
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`26
`
`Third Olivier Decl.
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`• Dr. Pachamanov agrees that the Update Location message could include
`“message type” information that differentiates the Update Location
`message from the “REQ” message
`
`Sur-reply, 8; EX1050, 42:5-11.
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`Pachamanov Depo.
`
`27
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• A POSITA would have
`understood because the
`Update Location message,
`which includes the identity
`information, triggers the HLR
`to transmit only the first set
`of subscription data, this
`message discloses or at least
`renders obvious Substitute
`Claim Element [20b]
`
`Opposition to RMTA, 9-10, 23-24;
`EX1047, ¶¶ 48, 50, 84, 86
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`Third Olivier Decl.
`
`28
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`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20b] (and its Variations)
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• This “triggering” functionality is consistent with the ’426 Patent’s description of
`the “partial transfer indication”
`
`’426 Patent
`
`Opposition to RMTA, 9-10, 23-24;
`EX1001, 11:60-63
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`29
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`
`
`Patent Owner’s Argument Inserts Unrecited, Unsupported
`Claim Language
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Patent Owner argues that the claimed “request” must have additional
`functionality in addition to “containing a partial transfer indication”
`
`Reply, 2-3
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`Reply
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`30
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`
`
`Patent Owner’s Argument Inserts Unrecited, Unsupported
`Claim Language
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`• Dr. Pachamanov, Patent Owner’s expert, also interprets the claims in an overly-narrow
`fashion
`
`Pachamanov Depo.
`
`Sur-reply, 4-5; EX1050, 38:12-39:15
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`Pachamanov Depo.
`31
`
`
`
`Patent Owner’s Argument Inserts Unrecited, Unsupported
`Claim Language
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`(cont.)
`
`Pachamanov Depo.
`
`Sur-reply, 4-5; EX1050, 38:12-39:15
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`Pachamanov Depo.
`32
`
`
`
`Patent Owner’s Argument Inserts Unrecited, Unsupported
`Claim Language
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Patent Owner’s argument conflicts
`with the actual claim language,
`which does not recite any
`requesting of a full set of
`subscription data
`
`• Dr. Pachamanov agrees that this
`feature is not explicitly recited in
`the claims
`
`Pachamanov Depo.
`
`Sur-reply, 6; EX1050, 36:20-25
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`33
`
`
`
`Patent Owner’s Argument Inserts Unrecited, Unsupported
`Claim Language
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• Patent Owner argues that
`the “partial transfer
`indication” must be
`formatted as a “dedicated
`field”
`
`Reply, 6
`
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`Reply
`
`34
`
`
`
`Patent Owner’s Argument Inserts Unrecited, Unsupported
`Claim Language
`
`[20b]: transmitting a request from the attach control node to the subscriber
`database, the request containing a partial transfer indication for transferring only
`the first set of subscription data;
`
`• The 426 Patent describes the “partial transfer indication” only in relation to its
`function
`• The Substitute Claims do not describe the format of the “partial transfer
`indication” or that it is a “dedicated field”
`
`EX1001, 11:60-63
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`35
`
`’426 Patent
`
`
`
`Outline of Arguments: IPR2022-00068 (’426 Patent)
`
`I. Overview of the ’426 Patent
`
`II. Procedural History
`
`III. Overview of the Disputes
`
`IV. Unpatentability of Substitute Claim Elements [20b], [21b], [22d],
`[23c], [25b]
`
`V. Unpatentability of Substitute Claim Element [20e] and Substitute
`Claim 24
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`36
`
`
`
`Overview of Disputed Issues
`
`Patent Owner Disputes:
`1. Whether the prior art renders obvious the “request containing a partial
`transfer indication for transferring only the first set of subscription
`data”
`
`•
`
`Substitute Claims 20-23, 25
`
`2. Whether the prior art renders obvious “deleting from the
`combination of the first set of subscription data and the second set
`of subscription data the second set of subscription data…the first
`set of subscription data remaining in the attach control node”
`
`•
`
`Substitute Claims 20, 24
`
`See generally RMTA (Paper 22); Reply
`(Paper 31)
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`37
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Feng discloses a communications system wherein a local database
`“regularly deletes useless user data”
`
`Petition, 70-71, EX1021 (Feng), 4-5;
`Opposition to RMTA, 11
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Feng
`
`Feng
`
`38
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Aerts explains that its second set of subscription data is used only to handle an
`incoming or outgoing call
`
`Aerts
`
`Aerts
`
`Opposition to RMTA, 11-12; EX1007,
`[0008], [0010], [0012]
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`Aerts
`
`39
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`
`• Thus, Aerts describes the second
`set of subscription data as being
`“uselessly” transferred to and
`stored in a VLR if no call is made
`
`Opposition to RMTA, 11-12; EX1007,
`[0002]
`
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`Aerts
`
`40
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• On the other hand, Aerts explains that subscription data belonging to the first
`set has uses outside of handling a call
`
`Opposition to RMTA, 12-13; EX1007,
`[0016]
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`41
`
`Aerts
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• The subscriber identity information (SII), roaming restriction information
`(RRI), and regional subscription information (RSI) belong to the first set of
`subscription data
`
`Petition 28-29; EX1007, Fig. 1 (annotated),
`[0025]-[0026]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Aerts
`
`42
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Dr. Pachamanov agrees that roaming restriction information is useful after a
`call
`
`EX1050, 17:24-18:4; Sur-reply, 11-12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`Pachamanov Deposition
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Dr. Pachamanov agrees that regional subscription information and subscriber
`identification information are useful after a call
`
`Pachamanov Depo.
`
`EX1050, 19:10-18, 20:10-16; Sur-reply, 11-
`12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pachamanov Depo.
`
`44
`
`
`
`The Aerts-Eberspächer-Feng and Aerts-Palat-Feng Combinations Render
`Obvious Substitute Claim Element [20e] and Substitute Claim 24
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`In light of Feng’s teachings, a POSITA would have found it obvious to delete
`Aerts’ second set of subscription data after a call is completed, while retaining
`the first set of subscription data
`
`•
`
`Opposition to RMTA, 13; EX1047, ¶ 59;
`Petition, 71
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Third Olivier Decl.
`
`45
`
`
`
`Patent Owner Does Not Apply Feng’s Teachings to the Conditions Taught
`by Aerts
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Patent Owner argues that Feng teaches deleting all of a user’s data, so that
`applying Feng to Aerts’ system would result in deleting all subscription data
`
`Reply, 7-8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply
`
`46
`
`
`
`Patent Owner Does Not Apply Feng’s Teachings to the Conditions Taught
`by Aerts
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Patent Owner’s analysis does not consider how Feng would be applied in
`Aerts’ system, wherein users are not fully detached and instead infrequently
`make calls
`
`Sur-reply, 9-10; EX1007, [0005].
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`Aerts
`
`
`
`Patent Owner Does Not Apply Feng’s Teachings to the Conditions Taught
`by Aerts
`
`•
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`In settings where users do not
`frequently make calls, as in Aerts, a
`POSITA would have found it
`obvious to delete only the second
`set of subscription data after a call
`is made to save memory resources
`in the network nodes
`
`Opposition to RMTA, 13; EX1007, [0002],
`[0005]; EX1047, ¶ 59.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Third Olivier Decl.
`48
`
`
`
`Patent Owner Does Not Consider Obvious Rationales for Deleting Only the
`Second Set of Subscription Data After a Call is Made
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Patent Owner ignores one obvious rationale that Aerts itself provides: to save
`storage resources in the network
`
`Sur-reply,__; EX1007, [0005]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`Aerts
`
`
`
`Aerts Contemplates and Accepts the “Drawbacks” Identified by Patent
`Owner
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• Patent Owner argues that the delays that would arise from having to re-transmit
`the second set of subscription data after it has been deleted would teach away
`deleting only the second set of subscription data after a call has been made
`
`Reply, 9-10
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply
`
`50
`
`
`
`Aerts Contemplates and Accepts the “Drawbacks” Identified by Patent
`Owner
`
`[20e]: deleting from the combination of the first set of subscription data and the
`second set of subscription data the second set of subscription data at the attach
`control node after a precondition has been fulfilled, the first set of subscription
`data remaining in the attach control node
`• But Aerts already contemplates such delay and considers it a “small price paid
`for a significant gain in memory space”
`
`EX1007, [0005]; EX1047, ¶ 62.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`Aerts
`
`
`
`Overview of Disputed Issues
`
`Patent Owner Does Not Dispute:
`
`1. The construction of the claim term “enabling establishing a
`communication session between the user equipment and
`the telecommunications system”
`2. References qualify as prior art
`3. References disclose all elements of the original claims
`4. That the prior art’s “Update Location” message results in the
`transmission of the first set of subscription data
`
`See generally RMTA (Paper 22); Reply
`(Paper 31)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`Claim Construction: “enabling establishing a communication session
`between the user equipment and the telecommunications system”
`
`• The Board agreed with the district court’s construction of this claim term
`
`• The district court construed this claim term as follows:
`
`Institution Decision
`
`Institution Decision (Paper 13), 14;
`EX1041 (Claim Construction Order), 82
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Claim Construction Order
`
`53
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Claim Element [20a] incorporates the subject matter of original Claim Element
`[1p]
`
`Claim Listing
`
`Opposition to RMTA, 3; EX1008 (Claim
`Listing); RMTA, 25
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RMTA
`
`54
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Aerts discloses a
`“telecommunications system”
`
`Aerts
`
`Opposition to RMTA, 3; Petition, 23-25;
`EX1007, [0022], [0029].
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Petition
`
`55
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Aerts’ mobile station (MS) discloses a “user equipment”
`
`Aerts
`
`Opposition to RMTA, 3; Petition, 25;
`EX1007, [0027]-[0028]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Petition
`
`56
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Aerts’ MSC discloses an “attach control node”
`
`Aerts
`
`Opposition to RMTA, 3; Petition, 25;
`EX1007, [0023]; EX1001, 9:16-20
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`‘426 Patent
`
`57
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Aerts’ HLR discloses an “a subscriber database containing subscription data of
`the user equipment”
`
`Aerts
`
`Opposition to RMTA, 3; Petition, 26-27;
`EX1007, [0025]; EX1001, 9:21-26
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`‘426 Patent
`
`58
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Aerts discloses a “method for controlling an attach state of a user equipment”
`
`• Aerts describes a multi-step procedure that controls whether a mobile station is
`registered in a particular area and able to make or receive calls
`
`Opposition to RMTA, 3; Petition, 27-28;
`EX1007, code (57)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Aerts
`
`59
`
`
`
`Aerts discloses [20a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a telecommunications system further comprising a subscriber
`database containing subscription data of the user equipment, the method
`comprising:
`• Aerts’ disclosure is consistent with the 426 Patent’s “method for controlling an
`attach state,” which is described as sending subscription data in two sets so as
`to place the user equipment in a “partial attach state” after only the first set has
`been received
`
`Opposition to RMTA, 3; Petition, 27-28;
`EX1001, 3:46-50
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`‘426 Patent
`
`
`
`Aerts discloses [21a], [22a], [23a], and [25a]
`
`[20a]: A method for controlling an attach state of a user equipment in an attach
`control node of a