UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC.,
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`Petitioner
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`v.
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`KONINKLIJKE KPN N.V.,
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`Patent Owner
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`PATENT OWNER PRELIMINARY RESPONSE
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`3551949.v1
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`Table of Contents
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`C.
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`D.
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`INTRODUCTION ........................................................................................... 1
`I.
`THE PETITION SHOULD BE DENIED UNDER THE FINTIV FACTORS
`II.
`AND 35 U.S.C. § 314(A) ........................................................................................... 1
`A.
`Factor 1: A stay is unlikely even if IPR were instituted ....................... 2
`B.
`Factor 2: The scheduled trial date precedes the Board’s
`projected statutory deadline for a final written decision ....................... 4
`Factor 3: The district court and the parties have invested
`substantially in the district court litigation ............................................ 5
`Factor 4: There is substantial overlap between issues raised in
`Ericsson’s Petition and in the district court litigation ........................... 8
`Factor 5: The parties are the same in both proceedings ...................... 10
`E.
`Factor 6: The merits of the Petition weigh against institution ............ 10
`F.
`III. THE ’426 PATENT, THE REFERENCES RELIED UPON IN THE
`PETITION, AND THE PROPOSED GROUND FOR INSTITUTION ................. 10
`A.
`The ’426 Patent ................................................................................... 10
`B.
`References Relied Upon in the Petition .............................................. 12
`1.
`European Patent App. Pub. No. 1 065 904 A1 of Aerts et
`al. (“Aerts”) (Ex. 1007) ............................................................. 13
`U.S. Patent No. 6,879,825 B1 of Daly (“Daly”) (Ex.
`1034) ......................................................................................... 14
`U.S. Patent App. Pub. No. 2013/0227138 A1 of Cai et al.
`(“Cai”) (Ex. 1035) ..................................................................... 15
`Eberspächer et al., GSM Architecture, Protocols and
`Services (3rd Edition) (“Eberspächer”) (Ex. 1008) ................... 15
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`2.
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`3.
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`4.
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`U.S. Patent No. 9,549,426 C1
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`Proposed grounds of institution .......................................................... 16
`C.
`IV. THE CHALLENGED CLAIMS ................................................................... 16
`V.
`CLAIM CONSTRUCTION .......................................................................... 18
`A.
`Claim Construction Standard .............................................................. 18
`B.
`District Court Claim Construction; Otherwise, Plain and
`Ordinary meaning ................................................................................ 18
`VI. THE PETITION DOES NOT ESTABLISH A REASONABLE
`LIKELIHOOD THAT EITHER OF CLAIMS 16 AND 17 OF THE ’426 PATENT
`IS UNPATENTABLE.............................................................................................. 19
`A. Ground 1 should be denied for failure to establish a reasonable
`likelihood that Aerts in view of Daly renders Claim 16
`unpatentable ......................................................................................... 20
`1.
`Claim 16; the Petition fails to establish that Aerts in view
`of Daly teaches the first set of subscription data that is
`“insufficient for enabling establishing a communication
`session” ..................................................................................... 20
`Claim 16; the Petition fails to establish that Aerts in view
`of Daly teaches the user equipment receiving and
`processing “a partial subscription data transfer indication
`indicative of storing only the first set of subscription data
`in the telecommunications node” .............................................. 24
`Lack of Reasonable Likelihood of Ground 1 ............................ 26
`3.
`Ground 2 should be denied for failure to establish a reasonable
`likelihood that Aerts in view of Daly and Cai renders Claim 17
`unpatentable ......................................................................................... 26
`1.
`Claim 17; the Petition fails to establish that Aerts in view
`of Daly and Cai teaches receiving the first set of
`subscription data that is “insufficient for enabling
`establishing a communication session” .................................... 26
`ii
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`B.
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`2.
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`2.
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`C.
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`Claim 17; the Petition fails to establish that Aerts in view
`of Daly and Cai teaches the user equipment receiving and
`processing “a partial subscription data transfer indication
`indicative of storing only the first set of subscription data
`in the telecommunications node” .............................................. 28
`Lack of Reasonable Likelihood of Ground 2 ............................ 29
`3.
`Ground 3 should be denied for failure to establish a reasonable
`likelihood that Aerts in view of Daly and Eberspächer renders
`Claim 16 unpatentable ......................................................................... 29
`1.
`Claim 16; the Petition fails to establish that Aerts in view
`of Daly and Eberspächer teaches receiving the first set of
`subscription data that is “insufficient for enabling
`establishing a communication session” .................................... 29
`Claim 16; the Petition fails to establish that Aerts in view
`of Daly and Eberspächer teaches the user equipment
`receiving and processing “a partial subscription data
`transfer indication indicative of storing only the first set
`of subscription data in the telecommunications node” ............. 30
`Lack of Reasonable Likelihood of Ground 3 ............................ 32
`3.
`D. Ground 4 should be denied for failure to establish a reasonable
`likelihood that Aerts in view of Daly, Cai and Eberspächer
`renders Claim 17 unpatentable ............................................................ 32
`1.
`Claim 17; the Petitioner fails to establish that Aerts in
`view of Daly, Cai, and Eberspächer teaches receiving the
`first set of subscription data that is “insufficient for
`enabling establishing a communications session” .................... 32
`Claim 17; the Petition fails to establish that Aerts in view
`of Daly, Cai, and Eberspächer teaches the user equipment
`receiving and processing “a partial subscription data
`transfer indication indicative of storing only the first set
`of subscription data in the telecommunications node” ............. 33
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`2.
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`2.
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`Lack of Reasonable Likelihood of Ground 4 ............................ 34
`3.
`VII. CONCLUSION .............................................................................................. 34
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`Table of Authorities
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`
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`Cases
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`Apple v. Fintiv, Inc., IPR2020-00019 (P.T.A.B. Mar. 20, 2020) .................... passim
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) ....................... 21
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`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752 (P.T.A.B. Sept. 12,
`2018) ..................................................................................................................1, 2
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ......................................... 19
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`Samsung Elecs. Co., Ltd. et al., v. Clear Imaging Rsch., LLC, IPR2020-01402
`(P.T.A.B., March 4, 2021) ..................................................................................... 4
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`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No. 19CV00259, 2020 WL
`1433960, (E.D. Tex. Mar. 24, 2020) ...................................................................... 4
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`
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 19
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`35 U.S.C. § 313 .......................................................................................................... 1
`Rules
`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.24 ..................................................................................................... 37
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`37 C.F.R. § 42.24(b)(1) ............................................................................................ 37
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`37 C.F.R. § 42.6(e) ................................................................................................... 38
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`I.
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`INTRODUCTION
`Patent Owner Koninklijke KPN N.V. (“Patent Owner”) respectfully submits
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`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107, responding to the Petition for inter partes review (the “Petition”) filed by
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`Ericsson Inc. (“Petitioner”) challenging Claims 16 and 17 (“the challenged
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`claims”) of U.S. Patent No. 9,549,426 C1 (the “’426 Patent”).
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`For the reasons set forth more fully below, institution should be denied.
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`II. THE PETITION SHOULD BE DENIED UNDER THE FINTIV
`FACTORS AND 35 U.S.C. § 314(A)
`The Board should deny institution under 35 U.S.C. § 314(a) because
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`institution of a trial at the PTAB would be an inefficient use of Board resources in
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`light of the “advanced state” of the parallel district court litigation, where a verdict
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`likely will be reached by the end of August 2022. See Ex. 2001 at 1; NHK Spring
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`Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19-20 (P.T.A.B. Sept. 12,
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`2018) (precedential); see also Apple v. Fintiv, Inc., IPR2020-00019, Paper 11 at
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`13-14 (P.T.A.B. Mar. 20, 2020) (precedential). In Fintiv, the Board denied
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`institution where, as here, the district court case had progressed significantly
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`without any stay expected. See id. at Papers 11 and 15. And here, the advanced
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`state of the ongoing and upcoming deadlines of the parallel district court litigation
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`are shown in the attached Sixth Amended Docket Control Order from that case.
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`See Ex. 2001. Indeed, each of the factors identified in Apple v. Fintiv, Inc. weigh in
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`favor of discretionary denial here. See Fintiv, IPR2020-00019, Paper 11, at 5-6 .
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`This IPR petition also resembles the circumstances of NHK Spring Co., Ltd.
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`v. Intri-Plex Techs., Inc., in which the Board denied institution for similar reasons.
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`See NHK Spring, IPR2018-00752, Papers 8, 20. Similar to the situation here, in
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`NHK the district court had set a trial date earlier than the Board’s deadline to issue
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`a final written decision. There has been no indication that the Eastern District of
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`Texas district court has any intention of delaying the scheduled August 22, 2022
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`trial date. See Ex. 2001 at 1.
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`A.
`Factor 1: A stay is unlikely even if IPR were instituted
`The parallel Eastern District of Texas district court proceeding has not been
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`stayed. Petitioner has not even moved for a stay; and there is no indication that,
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`even if IPR were instituted, a stay in the district court would be granted given the
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`advanced stage of the district court case.
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`District courts in the Eastern District of Texas traditionally do not grant a
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`stay until after an IPR is instituted. The deadline for institution of an IPR is in June
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`2022—only 2 months before trial is scheduled to begin in the district court in
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`August 2022, with a pretrial conference occurring as early as July 20, 2022. See
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`Ex. 2001 at 1. Even if the Board were to institute in June and Petitioner moved for
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`a stay, there is no indication that Petitioner’s request would be granted. If
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`Petitioner moved for a stay in June, fact discovery would be closed (which already
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`occurred on April 5, 2022), all expert discovery would be completed (deadline
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`May 13, 2022), and all dispositive motions would have been filed (deadline May
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`16, 2022). See id. at 3.
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`Eastern District of Texas district courts typically consider the following
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`factors when determining whether to grant a stay pending IPR: “(1) whether the
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`stay will unduly prejudice the nonmoving party, (2) whether the proceedings
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`before the court have reached an advanced stage, including whether discovery is
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`complete and a trial date has been set, and (3) whether the stay will likely result in
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`simplifying the case before the court.” Uniloc 2017 LLC v. Samsung Elecs. Am.,
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`Inc., No. 19CV00259, 2020 WL 1433960, at *2 (E.D. Tex. Mar. 24, 2020). A stay
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`would prejudice the Patent Owner because it would delay the Patent Owner’s
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`ability to prevent Petitioner’s infringement. Discovery, both fact and expert, would
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`be complete, and a trial date has already been set. See Ex. 2001 at 1, 3. At least two
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`of the above three factors, used by the Eastern District of Texas in assessing
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`whether or not to grant a stay, indicate that the district court would deny a motion
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`to stay.
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`In addition, the district court is unlikely to grant a stay even if the PTAB
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`U.S. Patent No. 9,549,426 C1
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`were to institute review because, as the Board has recognized, the Eastern District
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`of Texas and Judge Gilstrap in particular generally do not grant a stay pending an
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`IPR. See Samsung Elecs. Co., Ltd. et al., v. Clear Imaging Rsch., LLC, IPR2020-
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`01402, Paper No. 7 at 13-21 (P.T.A.B., March 4, 2021) (discussing Judge Gilstrap
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`and denial of stays).
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`In addition, in the parallel district court litigation, the Patent Owner asserts
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`that Petitioner infringes five (5) patents, one of which being the ’426 Patent.
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`Petitioner has filed Petitions requesting inter partes review of only four of the five
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`asserted patents. Even if Petitioner is successful in all of its Petitions, the parallel
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`district court litigation still will have one asserted patent with no equivalent
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`controversy raised before the Board. Therefore, the parallel district court litigation
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`will likely continue to progress and require the Court’s and the Parties attention
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`and resources.
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`The first Fintiv factor thus weighs strongly in favor of denying the Petition.
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`B.
`Factor 2: The scheduled trial date precedes the Board’s
`projected statutory deadline for a final written decision
`The Petition should also be denied because the parallel Eastern District of
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`Texas trial will occur 10 months before a final written decision would be due in an
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`IPR. As Fintiv explains, “[i]f the court’s trial date is earlier than the projected
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`statutory deadline [for a final written decision], the Board generally has weighed
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`this fact in favor of exercising authority to deny institution under NHK.” Fintiv,
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`IPR2020-00019, Paper 11, pg. 9 (PTAB Mar. 20, 2020). Here, the trial in the
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`district court proceeding is currently scheduled to begin in August 2022, some 10
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`months before the Board’s projected statutory deadline of June 2023 for a final
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`written decision. See Ex. 2001 at 1. In fact, the time between the current date and
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`the scheduled trial in August 2022 is shorter than the time between the scheduled
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`trial (in August 2022) and the Board’s projected statutory deadline (in June 2023),
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`ensuring that even if the trial date were to be unexpectedly delayed, it is almost
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`guaranteed that the trial still would precede a final written decision.
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`For the above reason, the second Fintiv factor also weighs strongly in favor
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`of discretionary denial.
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`C.
`Factor 3: The district court and the parties have invested
`substantially in the district court litigation
`The third Fintiv factor also favors discretionary denial because the parties
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`and the Eastern District of Texas court have already invested significantly in the
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`district court litigation and this investment will only increase before an institution
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`decision may be issued. The Eastern District of Texas has already issued a claim
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`construction order on March 16, 2022. See Ex. 2008. All fact discovery has already
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`been closed on April 5, 2022, and potentially even all expert discovery will be
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`complete (deadline May 13, 2022) before an institution may be issued. See Ex.
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`2001 at 3.
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`As the Board in Fintiv explicitly stated “if, at the time of the institution
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`decision, the district court has issued substantive orders related to the patent at
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`issue in the petition, this fact favors denial. Likewise, district court claim
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`construction orders may indicate that the court and parties have invested sufficient
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`time in the parallel proceeding to favor denial.” Fintiv, IPR2020-00019, Paper 11
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`at 9-10. Moreover, “[t]his investment factor is related to the trial date factor, in that
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`more work completed by the parties and court in the parallel proceeding tends to
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`support the arguments that the parallel proceeding is more advanced, a stay may be
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`less likely, and instituting would lead to duplicative costs.” Id. at 10.
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`The time for evaluating investment in the proceeding is the time when
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`institution would occur in this IPR. Although Petitioner argues that, at the time it
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`filed its Petition, “[d]iscovery is still ongoing, Markman is a month away, and trial
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`over seven months away,” (Pet. at 7), the district court’s scheduling orders
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`establish that investment by the parties in fact discovery is complete, and
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`investment in expert discovery very likely will have occurred by the time this
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`decision is entered—and the court has already invested in claim construction to the
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`extent that a claim construction order has already been issued on March 16, 2022.
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`See Ex. 2001 at 3; Ex. 2008.
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`The district court’s Sixth Amended Docket Control Order (Ex. 2001)
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`establishes significant milestones in the district court litigation in the Eastern
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`District of Texas that ensure that the parties, and the court, will have invested
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`substantially in the district court litigation before the deadline for the Board’s
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`institution decision of June 2022. For example:
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`•
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`•
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`•
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`•
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`The parties have already completed claim construction briefing. See
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`Ex. 2002-2006. In total the claim construction briefing resulted in 620
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`pages of briefing and exhibits prepared or analyzed by Patent Owner
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`and its experts.
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`The district court has already issued a claim construction order on
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`March 16, 2022. See Ex. 2008.
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`The parties have already engaged in extensive discovery, and fact
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`discovery – including all document production, written discovery, and
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`fact depositions – was closed on April 5, 2022. See Ex. 2001 at 3.
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`Opening expert reports on infringement, invalidity, and damages have
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`already been served by April 11, 2022 and rebuttal expert reports will
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`be served by May 9, 2022 with all expert discovery, including expert
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`depositions, to conclude by a May 13, 2022 deadline. See id. At the
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`very least, Patent Owner and its experts will have spent considerable
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`time and resources analyzing and responding to Petitioner’s Invalidity
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`Contentions and invalidity expert report. See Ex. 2001 at 3-4. Patent
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`Owner and its experts will have also spent considerable time and
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`resources preparing an expert report on both infringement and
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`damages. See id. at 3.
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`•
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`The parties will be finalizing – indeed, may have already filed – both
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`their Dispositive Motions and Motions to Strike Expert Testimony,
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`with a shared deadline of May 16, 2022. See id.
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`For the above reasons, the third Fintiv factor weighs heavily in favor of
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`discretionary denial.
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`D.
`Factor 4: There is substantial overlap between issues raised
`in Ericsson’s Petition and in the district court litigation
`The fourth Fintiv factor also weighs heavily in favor of Patent Owner,
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`because Petitioner’s invalidity contentions in the district court litigation include the
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`same main references that it relies upon here in its Petition: Aerts, Eberspächer,
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`Daly, and Cai. See Ex. 2007 at 52, 93-101 (stating at 96 that Aerts discloses “a
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`method for transmitting subscription data in two stages so as to reduce the load on
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`signaling links,” stating at 100 that Eberspächer evidences motivation “to include
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`an authentication procedure where authentication is performed before a location
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`update,” citing Daly at 97 for “disclosing a system designed to limit inefficient
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`registration,” and citing Cai at 101 for “implementing standardized 3GPP steps as
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`part of its disclosure”). The Board in Fintiv stated that “weighing the degree of
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`overlap is highly fact dependent.” Fintiv, IPR2020-00019, Paper 11 at 13. Here,
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`the facts are heavily in Patent Owner’s favor, because the prior art that Petitioner
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`intends to assert in the district court litigation include all of those raised here.
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`In addition, Petitioner’s suggestion in the Petition that it should be able to
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`file a “prior art stipulation” is not effective. See Petition at 8. Petitioner does not
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`actually say it is making a “stipulation,” has not made such a stipulation before the
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`trial court, and has not even informed Patent Owner it intends to make such a
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`stipulation. Even if Petitioner intends to make a “stipulation,” it has not provided
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`any insight into what type of stipulation it would make, whether a Sotera-like
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`stipulation which precludes Petitioner from pursuing in the district court “any
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`ground raised or that could have been reasonably raised,” or a narrower Sand
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`Revolution-type stipulation precluding the Petitioner from pursuing the exact same
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`grounds in the district court litigation. Furthermore, there is no showing that any
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`stipulation, even if promised, submitted, and accepted, could be enforced. The
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`Petitioner’s suggestion should therefore be disregarded by the Board.
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`E.
`Factor 5: The parties are the same in both proceedings
`The parties in the district court litigation and this case are the same.
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`Consequently, this factor entirely favors denying institution. Fintiv, IPR2020-
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`00019, Paper 15 at 15 (“Because the petitioner and the defendant in the parallel
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`proceeding are the same party, this factor weighs in favor of discretionary
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`denial.”).
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`F.
`Factor 6: The merits of the Petition weigh against
`institution
`As explained further herein, institution should be denied based on the merits.
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`In view of the Petition’s various deficiencies, this factor also weighs against
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`institution.
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`In summary, in a similar manner to that of the Fintiv and NHK cases, the
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`Board should deny institution here as an inefficient use of Board resources.
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`III. THE ’426 PATENT, THE REFERENCES RELIED UPON IN THE
`PETITION, AND THE PROPOSED GROUND FOR INSTITUTION
`A. The ’426 Patent
`The ’426 Patent discloses a technique for transferring subscription data in a
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`telecommunications system, which controls the exchange of subscription data in a
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`system that comprises a subscriber database and an attach control node to which
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`user equipment may connect. See Ex. 1001 at 1:18-23. The technique is illustrated,
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`for example, with reference to FIG. 4 of the ’426 Patent. See id. at 9:27-10:8 and
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`FIG. 4. In a first step A, a first set of subscription data is transmitted from the
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`subscriber data system 11 to the attach control node 10, but that subscription data
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`is insufficient for enabling establishment of the desired communication session
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`between the user equipment and the telecommunications system (in this exemplary
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`embodiment, a full attach state). See id. at 9:28-33. This results in a partial attach
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`state for the user equipment in the telecommunications system, where the partial
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`attach state is defined by the content of the first set of subscription data. See id. at
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`9:38-41. Only in response to another trigger, a second set of subscription data is
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`transferred, in a second step B, from the subscriber data system 11 to the attach
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`control node 10 such that a complete attach (the desired exemplary
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`“communication session” in this embodiment) of the user equipment to the
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`telecommunication system is possible. See id. at 9:42-45. This two-stage process
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`for enabling the establishment of the desired communication session allows
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`resources to be saved in the attach control node during the partial attach state,
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`while at the same time allowing the content of the first set of subscription data to
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`be used, for example to allow benefits such as individually addressing the user
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`equipment with an SMS message during the partial attach state. See id. at 9:49-
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`10:8.
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`In addition, the user equipment includes a processor that has access to
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`instructions so that, prior to initiation of the second transfer stage, the user
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`equipment receives and processes a partial subscription data transfer indication
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`indicative of storing only the first set of subscription data in the
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`telecommunications node. See id. at 15:32-35 and FIGS. 10A-10C (item vii,
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`“Attach accept (Partial attach)”).
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`B. References Relied Upon in the Petition
`As relevant here, for the reasons given in more detail below, Petitioner
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`makes no showing whatsoever that any of its references teaches a
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`telecommunications node configured to use a two-stage communication of the
`
`complete set of subscription data that are required to enable establishing a
`
`communication session between user equipment and a telecommunications system,
`
`in which the first set of subscription data is “insufficient for enabling establishing a
`
`communication session between the user equipment and the telecommunications
`
`system,” as recited in independent Claim 16, from which Claim 17 depends. In
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`addition, Petitioner makes no showing that the references teach, prior to initiation
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`of the second transfer stage, the user equipment receiving and processing “a partial
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`subscription data transfer indication indicative of storing only the first set of
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`subscription data in the telecommunications node,” as recited in independent Claim
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`3551949.v1
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
`
`
`16, from which Claim 17 depends. The Petition should be denied.
`
`1.
`European Patent App. Pub. No. 1 065 904 A1 of Aerts
`et al. (“Aerts”) (Ex. 1007)
`Aerts is directed to a “location registration system,” whose goal is to limit
`
`the load on signaling links and storage when a mobile station moves from the
`
`coverage area of one mobile switching center to another. See Ex. 1007, [0001] at
`
`1:3; [0002] at 1:32-35, 2:7-10, and 2:20-26; and [0003]. Aerts states that certain
`
`subscriber information items put “a considerable load on the SS7 signalling links.”
`
`See id., [0002] at 2:8-9. Therefore, in Aerts, when a mobile station moves from one
`
`service area to another, the information for certain optional call services is only
`
`transferred when the mobile station actually makes a call. In Aerts, a first set of
`
`information is transferred that is sufficient to enable a communication session
`
`between the user equipment and the telecommunication system, including essential
`
`items such as “subscriber identification information SII1, roaming restriction
`
`information RRI1 and regional subscription information RSI1.” See Ex. 1007,
`
`[0026] at 6:57-7:2. A second set of information provided in Aerts are not essential
`
`to enable a communication session between the user equipment and the
`
`telecommunication system, and includes optional items such as call forwarding
`
`information, call barring, closed user group information, and supplemental
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`services. See id., [0027] at 7:32-37. Aerts describes this second set of information
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`as “rather extensive” and as implicitly not “really needed” when “no call is made.”
`
`See id., [0005] at 2:44-54.
`
`2.
`U.S. Patent No. 6,879,825 B1 of Daly (“Daly”) (Ex.
`1034)
`Daly involves using an Over-the-Air Activation Function (OTAF) for
`
`registration of a new mobile station in a network. In a first phase of registration,
`
`the mobile station obtains a permanent MSID (mobile station ID) from the
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`network; and in a second phase of registration, the permanent MSID is
`
`communicated to the network to identify the mobile station to enable programming
`
`information to be downloaded to the mobile station. See Ex. 1034 at 3:27-36. In the
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`first phase of registration, the Over-the-Air Activation Function (OTAF) verifies
`
`whether an activation MSID is associated with the mobile station and, if verified,
`
`the OTAF sends a registration notification message containing the permanent
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`MSID to the MSC, which in turn communicates the permanent MSID to the
`
`mobile station, which stores the permanent MSID in its NAM or SIM memory. See
`
`id. at 3:44-53.
`
`However, in the first phase of registration of Daly, the permanent MSID is
`
`not sent from the subscriber database. Rather, it is sent from the Over-the-Air
`
`Activation Function (OTAF), which is not the HLR subscriber database that is
`
`used in Daly. See Ex. 1034 at FIG. 5, items 24 and 26. Furthermore, in the first
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`phase of registration of Daly, the permanent MSID is not stored in the MSC
`
`telecommunications node – rather, the MSC node is merely taught as
`
`communicating the permanent MSID on from the Over-the-Air Activation
`
`Function (OTAF) to the mobile station, which then stores the permanent MSID.
`
`See Ex. 1001 at 3:44-53 and 7:62-8:17.
`
`3.
`U.S. Patent App. Pub. No. 2013/0227138 A1 of Cai et
`al. (“Cai”) (Ex. 1035)
`Cai is directed generally to machine type communications (MTC) in
`
`networks using non-access stratum (NAS) signaling. As shown in FIG. 4 of Cai, a
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`machine type communications (MTC) device sends an attach request, and when
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`the Mobility Management Entity (MME) handling the attachment receives the
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`MTC device’s subscriber data, the MME notifies the MTC device that it is allowed
`
`to attach through NAS signaling only, using an “attach answer” message. See Ex.
`
`1035 at [0042] and FIG. 4. This attachment process does not involve a two-state
`
`communication, in which a first set of subscription data is insufficient for enabling
`
`establishing a communication session between the user equipment and the
`
`telecommunications system.
`
`4.
`Eberspächer et al., GSM Architecture, Protocols and
`Services (3rd Edition) (“Eberspächer”) (Ex. 1008)
`Eberspächer is cited by Petitioner as teaching that the concepts of Aerts and
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`3551949.v1
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`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426 C1
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`Daly are applicable to GSM and GPRS networks. See Petition at 65. However,
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`Eberspächer involves a single stage of receiving subscriber data, without any
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`disclosure or suggestion of a two-stage communication of the complete set of
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`subscription data required to enable establishing a communication session between
`
`user equipment and a telecommunications system. See Ex. 1008 at 185, Figure 6.1;
`
`187, Figure 6.3; and Petition at 58-59 (showing green boxes identifying “receiving
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`subscriber data” in a single stage).
`
`C.
`Proposed grounds of institution
`The proposed grounds are summarized in the table below:
`
`Ground
`1
`2
`3
`
`’426 Patent
`Claims
`16
`17
`16
`
`Primary
`Reference
`Aerts
`Aerts
`Aerts
`
`4
`
`17
`
`Aerts
`
`Secondary
`Reference(s)
`Daly
`Daly and Cai
`Daly and
`Eberspächer
`Daly, Cai, and
`Eberspächer
`
`Type of Challenge
`35 U.S.C. § 103
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`
`IV. THE CHALLENGED CLAIMS
`The Petition should be denied Institution because the Petition fails to
`
`establish a reasonable likelihood that either of Claims 16 and 17 of the ’426 Patent
`
`is unpatentable. The challenged claims are as follows.
`
`Independent Claim 16 reads:
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`3551949.v1
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`16
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`Case No. IPR