IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`ERICSSON INC.,
`
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`
`Patent Owner.
`
`––––––––––
`
`Case No. IPR2022-00068
`Patent 9,549,426 C1
`
`––––––––––
`
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426 C1
`
`
`
`ERICSSON EXHIBIT 1003, Page 1
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`LIST OF EXHIBITS AND APPENDICES .......................................................................iv
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................ 1
`
`SUMMARY OF OPINIONS........................................................................ 2
`
`III. QUALIFICATIONS AND EXPERIENCE ................................................ 4
`
`A.
`
`B.
`
`C.
`
`Education and Work Experience .......................................................... 4
`
`Compensation ....................................................................................... 8
`
`Documents and Other Materials Relied Upon ..................................... 8
`
`IV. STATEMENT OF LEGAL PRINCIPLES ................................................ 8
`
`A.
`
`B.
`
`C.
`
`Claim Construction............................................................................... 8
`
`Anticipation .......................................................................................... 9
`
`Obviousness ........................................................................................ 10
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ..................................... 12
`
`VI. TECHNOLOGY BACKGROUND OF THE ’426 Patent ...................... 15
`
`A. A Brief History of the Evolution of Global System for Mobile
`Communications (“GSM”) ................................................................. 16
`
`B.
`
`The 3rd Generation Partnership Project ............................................. 22
`
`C. Mobility Management ........................................................................ 27
`
`D. Authentication Procedures ................................................................. 28
`
`E.
`
`Hardware of Network Elements ......................................................... 29
`
`VII. OVERVIEW OF THE ’426 PATENT ...................................................... 30
`
`A.
`
`Background and Description of the Technology in the ’426
`Patent .................................................................................................. 30
`
`1.
`
`The ’426 Patent Claims ............................................................ 37
`
`B.
`
`Prosecution History ............................................................................ 42
`
`1.
`
`2.
`
`Original Prosecution ................................................................ 42
`
`Reexamination ......................................................................... 43
`
`
`
`
`
`-i-
`
`
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`ERICSSON EXHIBIT 1003, Page 2
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`

`

`
`
`C.
`
`D.
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`3.
`
`Certificate of Correction .......................................................... 58
`
`Priority Date ....................................................................................... 58
`
`Claim Construction............................................................................. 59
`
`1.
`
`2.
`
`Claims 1, 8, 9, and 10:“enabling establishing a
`communication session between the user equipment and
`the telecommunications system” ............................................. 60
`
`Claim 14: “if the telecommunications system is a Long
`Term Evolution (LTE) telecommunications system,
`removing a default bearer for the user equipment” ................. 61
`
`VIII. IDENTIFICATION OF THE PRIOR ART AND SUMMARY OF
`OPINIONS ................................................................................................... 62
`
`A.
`
`B.
`
`C.
`
`D.
`
`Summary of European Patent Application Publication EP
`1065904 A1 (“Aerts”) ........................................................................ 62
`
`Summary of GSM – Architecture, Protocols and Services Third
`Edition by Eberspächer, Vogel, Bettstetter (“Eberspächer”) ........... 63
`
`Summary of Chinese Publication No. CN 1328925C to Feng et
`al. (“Feng”) ......................................................................................... 64
`
`Summary of U.S. Patent Pub. No. 2012/0269167 A1 to Velev et
`al. (“Velev”) ........................................................................................ 64
`
`IX. A POSITA’s Reasons to Combine the identified prior art ..................... 65
`
`A.
`
`B.
`
`C.
`
`Aerts and Eberspächer ....................................................................... 65
`
`Aerts, Eberspächer and Feng ............................................................. 71
`
`Aerts, Eberspächer, Feng, and Velev ................................................. 74
`
`X. UNPATENTABILITY OF THE ’426 PATENT CLAIMS .................... 77
`
`A. Ground 1: Claim 1 is Unpatentable as Anticipated by Aerts. ............ 77
`
`1.
`
`Independent Claim 1 ................................................................ 77
`
`B.
`
`Ground 2: Aerts in view of Eberspächer renders obvious
`Claims 1, 8-10, and 18. .................................................................... 109
`
`1.
`
`Claim 1 ................................................................................... 109
`
`
`
`
`
`-ii-
`
`
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`ERICSSON EXHIBIT 1003, Page 3
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`

`

`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 8 ................................................................................... 115
`
`Claim 9 ................................................................................... 129
`
`Claim 10 ................................................................................. 133
`
`Claim 18 ................................................................................. 136
`
`C.
`
`Ground 3: Aerts in view of Eberspächer and Feng render
`obvious Claim 6 ................................................................................ 137
`
`1.
`
`Claim 6: “The method according to claim 1, further
`comprising 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.” ........... 137
`
`D. Ground 4: Aerts in view of Eberspächer, Feng, and Velev
`render obvious Claim 14 .................................................................. 139
`
`2.
`
`Claim 14: “The telecommunications node according to
`claim 10, wherein the operations further include 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 telecommunications node after a
`precondition has been fulfilled and, if the
`telecommunications system is a Long Term Evolution
`(LTE) telecommunications system, removing a default
`bearer for the user equipment.” .............................................. 139
`
`XI. CONCLUSION ......................................................................................... 140
`
`XII. DECLARATION ...................................................................................... 141
`
`
`
`
`
`
`
`-iii-
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`ERICSSON EXHIBIT 1003, Page 4
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`

`

`
`
`Exhibit No.1
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`1010
`1011
`1012
`
`1013
`1014
`1015
`1016
`1017
`
`1018
`1019
`1020
`1021
`
`1022
`
`LIST OF EXHIBITS AND APPENDICES
`
`Description
`U.S. Patent No. 9,549,426 B2 (“the ’426 Patent”)
`’426 Patent Reexamination
`Declaration of Dr. James Olivier
`Original Redacted Complaint, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`Mar. 31, 2021), ECF No. 7
`Proof of Service of Complaint, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`Mar. 31, 2021), ECF No. 10
`Prosecution History for the ’426 Patent
`European Patent Application Publication EP 1065904 A1 to
`Aerts (“Aerts”)
`Jörg Eberspächer, Hans-Jörg Vögel, Christian Bettstetter,
`Christian Hartmann, GSM Architecture, Protocols and Services
`(3rd Edition) (“Eberspächer”)
`U.S. Patent No. 8,359,638 (“Shaw”)
`Claim Listing
`Declaration of Sylvia Hall-Ellis
`International Patent Application Publication Number WO
`98/31163
`European Patent 1 103 117 B1
`Patent Owner’s Ex Parte Reexamination Request
`USPTO’s Order Granting Ex Parte Reexamination Request
`USPTO’s Office Action in Ex Parte Reexamination
`Patent Owner’s Response to Office Action in Ex Parte
`Reexamination
`Intentionally Omitted
`Intentionally Omitted
`3GPP TS 23.008 V7.8.0
`English Translation of Chinese Publication No. CN 1328925C to
`Feng et al. (“Feng”)
`Chinese Publication No. CN 1328925C to Feng et al.
`
`
`1 Citations to patents are made by column and line cite; citations to patent publications are made by paragraph
`number; citations to Exhibits 1001, 1002, 1014-1016, 1020, and 1022 are made with reference to the Bates-stamped
`pagination; citations to other exhibits are made to the page number of the document itself.
`
`
`
`
`
`
`-iv-
`
`
`
`ERICSSON EXHIBIT 1003, Page 5
`
`

`

`
`
`
`
`Exhibit No.1
`1023
`1024
`1025
`
`1026
`
`1027
`
`1028
`1029
`1030
`1031
`1032
`1033
`
`Description
`
`Translator Affidavit
`Intentionally Omitted
`Global System for Mobile Communications, Digital cellular
`telecommunications system (Phase 2+); Mobile radio interface
`layer 3 specification (GSM 04.08) (July 1996)
`Convergence Technologies for 3G Networks – IP, UMTS,
`EGPRS, and ATM
`LTE – The UMTS Long Term Evolution – From Theory to
`Practice
`Curriculum Vitae of Dr. James Olivier
`U.S. Patent Pub. No. 2012/0269167 A1 to Velev et al. (“Velev”)
`Curriculum Vitae of Sylvia Hall-Ellis
`WYU MARC Record – Eberspächer
`OCLC MARC Record – Eberspächer
`Library of Congress Authorities
`
`TABLE OF ABBREVIATIONS AND CONVENTIONS
`
`Abbreviations and Conventions
`
`3GPP
`
`3rd Generation Partnership Project
`
`BSC
`
`BSS
`
`BTS
`
`CN
`
`Base Station Controller
`
`Base Station Subsystem
`
`Base Station Transceiver
`
`Core Network
`
`EDGE
`
`Enhanced Data rates for GSM Evolution
`
`EMM
`
`Evolved Packet System (“EPS”) Mobility Management
`
`eNodeB
`
`E-UTRAN Node B
`
`EPC
`
`EPO
`
`Evolved Packet Core
`
`European Patent Office
`
`
`
`
`
`-v-
`
`
`
`ERICSSON EXHIBIT 1003, Page 6
`
`

`

`
`
`Abbreviations and Conventions
`
`EPS
`
`Evolved Packet System
`
`E-UTRAN
`
`Evolved UMTS Terrestrial RAN (sometimes used
`interchangeably with “LTE”)
`
`GERAN
`
`GSM EDGE Radio Access Network
`
`GGSN
`
`Gateway GPRS Service Node
`
`GSM
`
`HSS
`
`HLR
`
`IMSI
`
`IP
`
`LTE
`
`MM
`
`Global System for Mobile Communications
`
`Home Subscriber Server
`
`Home Location Register
`
`International Mobile Subscriber Identity
`
`Internet Protocol
`
`Long Term Evolution
`
`Mobility Management
`
`MME
`
`Mobility Management Entity
`
`MS
`
`Mobile Station
`
`NAM
`
`Network Access Mode
`
`Node B
`
`Base Station for UMTS
`
`PGW
`
`RAN
`
`RAT
`
`SGW
`
`TCH
`
`UE
`
`
`
`
`
`Packet Data Network Gateway
`
`Radio Access Network
`
`Radio Access Technology
`
`Serving Gateway
`
`Traffic Channel
`
`User Equipment
`
`-vi-
`
`
`
`ERICSSON EXHIBIT 1003, Page 7
`
`

`

`
`
`Abbreviations and Conventions
`
`UMTS
`
`Universal Mobile Telecommunications System
`
`UTRAN
`
`UMTS Terrestrial RAN
`
`
`
`
`
`
`
`-vii-
`
`
`
`ERICSSON EXHIBIT 1003, Page 8
`
`

`

`
`I, James L. Olivier, Ph.D., hereby declare as follows:
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`I.
`
`1.
`
`INTRODUCTION
`
`I am currently Program Lead for Transformational Technology at the
`
`Hunt Institute for Engineering and Humanity, which is part of the Lyle School of
`
`Engineering at Southern Methodist University (“SMU”) in Dallas, Texas. The
`
`mission of SMU’s Hunt Institute is to partner with leaders in business, academia,
`
`and government to develop and scale sustainable and affordable technologies and
`
`solutions to the challenges facing people locally and globally.
`
`2.
`
`I am also currently an Adjunct Professor in the Telecommunications
`
`and Network Engineering Program at SMU’s Graduate School of Electrical
`
`Engineering. In addition, I am also the owner of Olivier Consulting, where I
`
`provide consulting services for advanced network/product design along with
`
`Intellectual Property consulting.
`
`3.
`
`I have been engaged by Petitioner to investigate and opine on certain
`
`issues relating to U.S. Patent No. 9,549,426 to Mancevska et al. (EX1001,
`
`“the ’426 Patent”).
`
`4.
`
`I understand that the ’426 Patent is assigned to Koninklijke KPN N.V.
`
`(“KPN”). KPN is also referred to as the “Patent Owner” in this document.
`
`5.
`
`In this declaration, I will discuss the technology related to the ’426
`
`Patent, including an overview of that technology as it was known at the time of the
`
`
`
`ERICSSON EXHIBIT 1003, Page 9
`
`

`

`
`earliest priority date claimed by the ’426 Patent, which I have been informed is
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`July 15th, 2013. This overview of the technology provides some of the bases for
`
`my opinions with respect to the ’426 Patent.
`
`6.
`
`This declaration is based on the information currently available to me.
`
`To the extent that additional information becomes available, I reserve the right to
`
`continue my investigation and study.
`
`7.
`
`In forming my opinions, I have relied on information and evidence
`
`identified in this declaration, including, without limitation, the ’426 Patent, the
`
`prosecution history of the ’426 Patent, and prior art including the references and
`
`other materials mentioned throughout my declaration below. I have also relied on
`
`my own experience and expertise in the technologies and systems that were
`
`already in use prior to July 15th, 2013.
`
`II.
`
`SUMMARY OF OPINIONS
`
`8.
`
`The ’426 patent generally describes “a method and a
`
`telecommunications node for transferring subscription data in a telecommunication
`
`system.” See EX1001, 1:18-20. As I will discuss below in more detail, challenged
`
`claims 1, 6, 8-10, 14, and 18 of the ’426 Patent were not patentable as of the
`
`claimed priority date.
`
`2
`
`ERICSSON EXHIBIT 1003, Page 10
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`
`9.
`
`It is my opinion that challenged claim 1 is both anticipated and
`
`obvious, and challenged claims 1, 6, 8-10, 14 and 18 are obvious in light of the
`
`prior art discussed below.
`
`10.
`
`My declaration is organized as follows: First, in Section III, I discuss
`
`my qualifications and background experience. In Section IV, I provide statements
`
`regarding the relevant legal principles, as I understand them, that I then apply in
`
`later sections. In Section V, I provide an overview of the level of ordinary skill in
`
`the art at the time of the alleged invention and then subsequently turn to the
`
`relevant technological background at the time of the alleged invention in Section
`
`VI. In Section VII, I introduce the ’426 Patent, its prosecution history, and its
`
`priority date. In Section VIII, I introduce the prior art references on which I use
`
`for my opinions in this Declaration—European Patent Application Publication EP
`
`1065904 A1 to Aerts (“Aerts”), and GSM – Architecture, Protocols and Services
`
`Third Edition by Eberspächer, Vogel, Bettstetter, and Hartmann (“Eberspächer”),
`
`Chinese Publication No. CN 1328925C to Feng et al. (“Feng”), and U.S. Patent
`
`Pub. No. 2012/0269167 A1 to Velev et al. (“Velev”). In Section IX, I will explain
`
`why a POSITA would have been motivated to combine these references and would
`
`have had a reasonable expectation of success in doing so. Finally, in Section X, I
`
`walk through Grounds 1, 2, 3, and 4 showing how all the challenged claims of
`
`the ’426 Patent are invalid as either anticipated or obvious in view of: (i) Aerts; or
`
`3
`
`ERICSSON EXHIBIT 1003, Page 11
`
`

`

`
`(ii) a combination of Aerts and Eberspächer or (iii) Aerts in combination with
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`Eberspächer and Feng, or (iv) Aerts in combination with Eberspächer, Feng, and
`
`Velev.
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A. Education and Work Experience
`
`11.
`
`I have a Ph.D. from The Ohio State University in Electrical
`
`Engineering with minors in Discrete Mathematics, Computer Science, and
`
`Microelectronics. I have published papers in the areas of coding theory and
`
`multiprocessor computer systems. I received my Bachelor of Science degree from
`
`Ohio State University in 1983. My CV is attached hereto as Appendix A, which
`
`shows my education and experience in more detail.
`
`12.
`
`I have extensive experience in the design and development of
`
`telecommunication systems and have specialized experience in cellular product
`
`development.
`
`13.
`
`I have developed and designed equipment for cellular networks since I
`
`first joined AT&T Bell Laboratories in 1990. From 1990 to 2005 I also designed
`
`and implemented a variety of telecommunication systems, including Asynchronous
`
`Transfer Mode (“ATM”) based systems for use in cellular networks. ATM is a
`
`broadband, packet-switched telecommunications standard defined by the American
`
`National Standards Institute (“ANSI”) and the International Telecommunication
`
`4
`
`ERICSSON EXHIBIT 1003, Page 12
`
`

`

`
`Union (“ITU”). I also participated in the design and development of AT&T
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`Autoplex Series base stations. I also participated in the design and development of
`
`AT&T’s Network Control Points, ‘NCPs” which were massive network databases
`
`containing subscription information for customers. During this time, I first began
`
`my work with telecommunication standards bodies as a contributing member of the
`
`ATM Forum.
`
`14.
`
`In 1995, I transitioned to the Digital Switch Corporation (“DSC”)
`
`Switch Products Division and was the Senior Manager of the ATM systems
`
`engineering group developing ATM packet switches for a new generation base
`
`station for use by Motorola in their Centralized Base Station Controller, a core part
`
`of the second generation cellular network. I also served as DSC’s representative to
`
`the ATM Forum. I was one of the first contributors to the wireless standards for
`
`the ATM Forum.
`
`15.
`
`I next worked at Samsung Telecommunications America from 1996 to
`
`1999 as a Principal Engineer for Samsung’s next generation wireless broadband
`
`switching system over the Universal Mobile Telecommunications System
`
`(“UMTS”). UMTS is a third-generation (“3G”) broadband standard developed by
`
`the 3rd Generation Partnership Project (“3GPP”). My work at Samsung included
`
`designing their next generation UMTS cellular switch, which provided both packet
`
`and voice services, such as telephony services, wireless services, broadband
`
`5
`
`ERICSSON EXHIBIT 1003, Page 13
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`
`services, and Internet services. While at Samsung, I also served as Samsung’s
`
`North American corporate representative to the ITU, which is the agency of the
`
`United Nations responsible for facilitating interconnectivity of information and
`
`communication technologies worldwide. The ITU participated in the 3GPP under
`
`the ITU’s International Mobile Telecommunications 2000 effort. It was there that
`
`I participated in the development of standards for advanced wireless networks.
`
`16.
`
`After that, I worked for Marconi Communications from 1999 to 2002,
`
`where I was responsible for design and development of a number of systems for
`
`the access market, including Digital Subscriber Line (“DSL”) modems, along with
`
`the design of point-to-point wireless systems. I was also responsible for the
`
`servers for the Network Management System for the North American Access
`
`product division, which provide service provisioning for DSL customers.
`
`17.
`
`I joined Navini Networks in 2002 as a Senior Manager. The Navini
`
`system was an entirely packet-based cellular system. I was responsible for layer 2
`
`and layer 3 network protocols for Navini’s Wideband Code Division Multiple
`
`Access (“WCDMA”) wireless base stations and broadband modems. These layers
`
`were responsible for packet transmissions for various services over the WCDMA
`
`air interface. I also developed servers and databases for network authentication,
`
`network services, service provisioning and subscriber management for the Navini’s
`
`Worldwide Interoperability for Microwave Access ‘WiMAX’ Network.
`
`6
`
`ERICSSON EXHIBIT 1003, Page 14
`
`

`

`
`18.
`
`I have also been the owner of Olivier Consulting since 2003 and have
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`provided consulting services to various companies to develop networking systems
`
`and on intellectual property matters, including many such matters relating to
`
`cellular technologies specifically.
`
`19.
`
`I am currently Adjunct Executive in Residence in the Hunt Institute
`
`for Engineering and Humanity, which is part of the Lyle School of Engineering at
`
`SMU in Dallas, Texas. Here, I serve as the Program Lead for Transformational
`
`Technology. Among the transformational technologies I investigate at the Hunt
`
`Institute are Artificial Intelligence, the Internet of Things (“IoT”), and
`
`Blockchains.
`
`20.
`
`I am also currently an Adjunct Professor in the Telecommunications
`
`and Network Engineering Program at SMU’s Graduate School of Electrical
`
`Engineering, where I teach Multiprotocol Label Switching (“MPLS”) networked
`
`enabled applications. MPLS is a telecommunications routing technique, and one
`
`of the MPLS applications I teach is the use of MPLS in advanced cellular
`
`networks.
`
`21.
`
`Because of my background, training, and experience, I am qualified as
`
`an expert to explain the background of the technology encompassed by the ’426
`
`Patent as well as to opine on the validity of the claims of the ’426 Patent in view of
`
`the prior art references discussed herein.
`
`7
`
`ERICSSON EXHIBIT 1003, Page 15
`
`

`

`
`22.
`
`More details on my education, work experience and technical
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`consulting experience, as well as a list of publications that I have authored or co-
`
`authored, are contained in my CV, attached to this Declaration as Appendix A.
`
`B. Compensation
`
`23.
`
`I am being compensated for the services I am providing in connection
`
`with this petition for inter partes review of the ’426 Patent at the rate of $550 per
`
`hour. The compensation is not contingent upon my performance, the outcome of
`
`these inter partes review proceeding, or any other proceeding, or any issues
`
`involved in or related to the inter partes review.
`
`C. Documents and Other Materials Relied Upon
`
`24.
`
`The documents on which I rely for the opinions expressed in this
`
`declaration are referenced in LIST OF EXHIBITS AND APPENDICES above. I
`
`also rely on any other references specifically identified in this declaration, in their
`
`entirety, even if only portions of these documents are discussed here in an
`
`exemplary fashion.
`
`IV. STATEMENT OF LEGAL PRINCIPLES
`
`A. Claim Construction
`
`25.
`
`I have been informed that in an IPR proceeding, the challenged claims
`
`are generally given their ordinary and customary meaning in view of the
`
`8
`
`ERICSSON EXHIBIT 1003, Page 16
`
`

`

`
`specification and the prosecution history as it would have been understood by one
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`of ordinary skill in the art at the time of the alleged invention.
`
`26.
`
`I also understand that the claims should be construed consistent with
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`the patent’s intrinsic record, which includes the patent itself as well as the patent’s
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`prosecution history.
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`27.
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`Moreover, I understand that extrinsic evidence (including, for
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`example, technical dictionaries and treatises) may shed light on the meaning claim
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`terms would have to one of ordinary skill in the art. I also understand that, where
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`extrinsic evidence conflicts with the intrinsic record, the intrinsic record governs
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`the meaning of claim terms.
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`28.
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`Further, I understand that conditional language in an apparatus claim
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`does not render the claim indefinite because the structural elements that carry out
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`conditional steps remain present regardless of whether or not the conditions for
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`carrying out the step(s) is (are) met.
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`B. Anticipation
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`29.
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` I have been informed that a patent claim is invalid if it is anticipated
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`by prior art. I have been informed that anticipation requires a finding that a single
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`prior art reference discloses each limitation of a claim as the limitations are
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`arranged in the claim. I have been informed that a prior art reference’s disclosures
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`may be express or inherent. I have been informed that a limitation is inherently
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`ERICSSON EXHIBIT 1003, Page 17
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`

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`disclosed by a prior art reference if the reference necessarily includes the limitation
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`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`in question.
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`C. Obviousness
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`30.
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`I have also been informed that obviousness is a basis for invalidity of
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`a patent. Specifically, I understand that where a prior art reference discloses less
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`than all of the limitations of a given patent claim, that patent claim is invalid if the
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`differences between the claimed subject matter and the prior art reference are such
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`that the claimed subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the relevant art.
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`Obviousness can be based on a single prior art reference or a combination of
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`references that teach all limitations of the claimed invention.
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`31.
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`I have been informed that a claim is not obvious merely because each
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`limitation was independently known in the prior art. I also have been informed
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`that hindsight reasoning is not an appropriate basis for combining references to
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`form an obviousness combination.
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`32.
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`I understand that obviousness is not driven by a rigid formula, but is
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`instead a flexible inquiry that reflects the fact that a person of ordinary skill in the
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`art exercising ordinary creativity may find a variety of reasons to combine the
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`teachings of different references. I understand that a non-exclusive list of possible
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`ERICSSON EXHIBIT 1003, Page 18
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`

`

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`factors that may give a person of ordinary skill in the art a reason to combine
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`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`references includes any one or more of the following:
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`• Whether combining elements according to known methods yields
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`predictable results;
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`• Whether simple substitution of known elements obtains predictable
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`results;
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`• How use of known techniques improves similar methods in the same
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`way;
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`• Whether applying known techniques to known methods ready for
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`improvement yields predictable results;
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`• Whether one can choose from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`• How known work in one field of endeavor prompts variations for use
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`in the same field; and
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`• Some teaching, suggestion, or motivation in the prior art that would
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`have led one of ordinary skill to combine prior art reference teachings
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`to arrive at the claimed invention.
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`33.
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`I have been informed that obviousness also requires that the
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`combination could have been made with a reasonable expectation of success. I
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`ERICSSON EXHIBIT 1003, Page 19
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`have been informed that absolute predictability is not required; however, at least
`
`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`some degree of predictability is required. I have been informed that predictability
`
`is determined at the time the invention was made.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`34.
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`I understand that the claims and specification of a patent must be read
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`and construed through the eyes of a person of ordinary skill in the art (“POSITA”)
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`at the time of the priority date of the claims.
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`35.
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`I have also been advised that to determine the appropriate level of a
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`person having ordinary skill in the art, the following factors may be considered:
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`(a) the types of problems encountered by those working in the field and prior art
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`solutions thereto; (b) the sophistication of the technology in question, and the
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`rapidity with which innovations occur in the field; (c) the educational level of
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`active workers in the field; and (d) the educational level of the inventors.
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`36.
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`Based on my education and experience, I am familiar with the level of
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`knowledge that a person of ordinary skill would have possessed during the relevant
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`time period.
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`37.
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`First, turning to the types of problems and prior art solutions in the
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`art, the “Field of the Disclosure” to the specification of the ’426 Patent states that
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`the patent “relates to a method and a telecommunications node for transferring
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`subscription data in a telecommunications system.” EX1001, 1:18-20. The
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`ERICSSON EXHIBIT 1003, Page 20
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`“Background” section further explains that the patent pertains to wireless
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`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`networks. Id., 1:27-29 “telecommunications networks that provide wireless access
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`(e.g. GSM, UMTS, WiMax, LTE) have developed tremendously over the past
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`years. . . .”
`
`38.
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`Second, turning to the sophistication of the technology and the
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`rapidity with which innovations occur in the field, the technical specifications that
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`governed the functionality of GSM, UMTS, WiMax, and LTE networks at the time
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`of the alleged invention required education and experience in cellular
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`communications technology to understand. A person skilled in the art would have
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`been monitoring these developments.
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`39.
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`Third, with respect to the educational level of active workers in the
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`field, I personally observed that the individuals that participated in development
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`and implementation of GSM, UMTS, WiMax, and LTE systems typically had at
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`least a bachelor’s degree in electrical engineering or a related discipline and at least
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`several years of experience working in the cellular communications industry or in
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`academic research in the field of cellular communications.
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`40.
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`Fourth, turning to the educational level of the named inventors,
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`the ’426 Patent names three inventors: Elena Mancevska, Maurice Hiep,
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`Annemieke Kips. I am not personally acquainted with any of these individuals, but
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`13
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`ERICSSON EXHIBIT 1003, Page 21
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`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`
`here is a summary of the information I located from LinkedIn profiles that I
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`reasonably believe to be associated with these individuals:
`
`• Maurice Hiep’s profile indicates that he has a Bachelor’s degree in
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`Telecommunications technologies from The Hague University. Mr.
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`Hiep’s profile further indicates that he has over 22 years’ design
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`experience at KPN. https://www.linkedin.com/in/maurice-hiep-
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`960521124/?originalSubdomain=nl
`
`• Annemieke Kips’s profile indicates that she has a Master’s Degree in
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`Experimental Physics and a PhD in Physics from VU Amsterdam.
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`This profile also indicates that she has over 12 years’ experience in
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`wireless telecommunication system architecture and design.
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`https://www.linkedin.com/in/annemieke-kips-
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`95bb2a7/?originalSubdomain=nl
`
`• I was unable to find a LinkedIn page for Elena Mancevska.
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`41.
`
`In my opinion, a person of ordinary skill in the art at the time of the
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`alleged invention of the ’426 Patent (July 15th, 2013) would have had a degree in
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`electrical engineering or a similar discipline, with at least three years of relevant
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`industry or research experience, including designing or implementing cellular
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`systems. A POSITA would also have familiarity with the wireless standards and
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`14
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`ERICSSON EXHIBIT 1003, Pag