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. IPR2022-00401
`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 1019, Page 1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`IV.
`
`LIST OF EXHIBITS AND APPENDICES .......................................................................iv
`I.
`INTRODUCTION ........................................................................................ 1
`II.
`SUMMARY OF OPINIONS........................................................................ 2
`III. QUALIFICATIONS AND EXPERIENCE ................................................ 4
`A.
`Education and Work Experience .......................................................... 4
`B.
`Compensation ....................................................................................... 8
`C.
`Documents and Other Materials Relied Upon ..................................... 8
`STATEMENT OF LEGAL PRINCIPLES ................................................ 8
`A.
`Claim Construction............................................................................... 8
`B.
`Anticipation .......................................................................................... 9
`C.
`Obviousness .......................................................................................... 9
`LEVEL OF ORDINARY SKILL IN THE ART ..................................... 11
`V.
`VI. TECHNOLOGY BACKGROUND OF THE ’426 Patent ...................... 15
`A.
`A Brief History of the Evolution of Global System for Mobile
`Communications (“GSM”) ................................................................. 15
`The 3rd Generation Partnership Project ............................................. 21
`B.
`C. Mobility Management ........................................................................ 26
`D.
`Authentication Procedures ................................................................. 27
`E.
`Hardware of Network Elements ......................................................... 28
`VII. OVERVIEW OF THE ’426 PATENT ...................................................... 29
`A.
`Background and Description of the Technology in the ’426
`Patent .................................................................................................. 29
`1.
`The ’426 Patent Claims ............................................................ 36
`Prosecution History ............................................................................ 38
`1.
`Original Prosecution ................................................................ 38
`2.
`Reexamination ......................................................................... 39
`
`B.
`
`-i-
`
`ERICSSON EXHIBIT 1019, Page 2
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`C.
`D.
`
`B.
`
`X.
`
`Certificate of Correction .......................................................... 53
`3.
`Priority Date ....................................................................................... 53
`Claim Construction............................................................................. 54
`1.
`Claim 16:“enabling establishing a communication
`session between the user equipment and the
`telecommunications system” ................................................... 55
`VIII. IDENTIFICATION OF THE PRIOR ART AND SUMMARY OF
`OPINIONS ................................................................................................... 56
`A.
`Summary of European Patent Application Publication EP
`1065904 A1 (“Aerts”) ........................................................................ 56
`Summary of GSM – Architecture, Protocols and Services Third
`Edition by Eberspächer, Vogel, Bettstetter (“Eberspächer”) ........... 57
`Summary of U.S. Patent No. 6,879,825 to Daly (“Daly”) ................. 58
`C.
`Summary of U.S. Pub. No. 2013/0227138 to Cai et al. (“Cai”) ........ 58
`D.
`IX. A POSITA’s Reasons to Combine the identified prior art ..................... 59
`A.
`Aerts and Daly .................................................................................... 59
`B.
`Aerts, Daly, and Cai ........................................................................... 64
`C.
`Aerts, Daly, and Eberspächer ............................................................ 67
`D.
`Aerts, Daly, Cai, and Eberspächer ..................................................... 71
`UNPATENTABILITY OF THE ’426 PATENT CLAIMS .................... 74
`A.
`Ground 1: Aerts in view of Daly renders obvious Claim 16. ............. 74
`1.
`Independent Claim 16 .............................................................. 74
`Ground 2: Aerts in view of Daly and Cai renders obvious Claim
`17. ..................................................................................................... 114
`1.
`Claim 17 ................................................................................. 114
`Ground 3: Aerts in view of Daly and Eberspächer renders
`obvious Claim 16.............................................................................. 117
`Ground 4: Aerts in view of Daly, Cai, and Eberspächer renders
`obvious Claim 17.............................................................................. 119
`-ii-
`
`B.
`
`C.
`
`D.
`
`ERICSSON EXHIBIT 1019, Page 3
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`XI. CONCLUSION ......................................................................................... 120
`XII. DECLARATION ...................................................................................... 120
`
`-iii-
`
`ERICSSON EXHIBIT 1019, Page 4
`
`

`

`LIST OF EXHIBITS AND APPENDICES
`
`Description
`U.S. Patent No. 9,549,426 B2 (“the ’426 Patent”)
`’426 Patent Reexamination File History
`Intentionally omitted
`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”)
`Intentionally omitted
`Intentionally omitted
`Declaration of Sylvia Hall-Ellis
`Intentionally omitted
`Intentionally omitted
`Patent Owner’s Request for Supplemental Examination
`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
`Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions Pursuant to Local Patent Rules 3-1 and 3-2, KPN
`N.V. v. Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D.
`Tex. Mar. 31, 2021)
`Declaration of Dr. James Olivier
`3GPP TS 23.008 V7.8.0
`Intentionally omitted
`
`Exhibit No.1
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`
`1018
`
`1019
`1020
`1021
`
`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, 1018 and 1020 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 1019, Page 5
`
`

`

`Exhibit No.1
`1022
`1023
`1024
`1025
`
`1026
`
`1027
`
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`
`Description
`
`Intentionally omitted
`Intentionally omitted
`Claim Listing – Claims 16 and 17
`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
`Intentionally omitted
`Curriculum Vitae of Sylvia Hall-Ellis
`WYU MARC Record – Eberspächer
`OCLC MARC Record – Eberspächer
`Library of Congress Authorities
`U.S. Patent No. 6,879,825 to Daly (“Daly”)
`U.S. Pub. No. 2013/0227138 to Cai et al. (“Cai”)
`Plaintiff Koninklijke KPN N.V.’s Amended Preliminary Claim
`Constructions and Extrinsic Evidence, KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`Mar. 31, 2021)
`
`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
`
`-v-
`
`ERICSSON EXHIBIT 1019, Page 6
`
`

`

`Abbreviations and Conventions
`
`EMM
`
`Evolved Packet System (“EPS”) Mobility Management
`
`eNodeB
`
`E-UTRAN Node B
`
`EPC
`
`EPO
`
`EPS
`
`Evolved Packet Core
`
`European Patent Office
`
`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
`
`MIN
`
`MM
`
`MME
`
`MS
`
`MSID
`
`NAM
`
`Global System for Mobile Communications
`
`Home Subscriber Server
`
`Home Location Register
`
`International Mobile Subscriber Identity
`
`Internet Protocol
`
`Long Term Evolution
`
`Mobile Identification Number
`
`Mobility Management
`
`Mobility Management Entity
`
`Mobile Station
`
`Mobile Station Identification
`
`Network Access Mode
`
`Node B
`
`Base Station for UMTS
`
`-vi-
`
`ERICSSON EXHIBIT 1019, Page 7
`
`

`

`Abbreviations and Conventions
`
`PGW
`
`RAN
`
`RAT
`
`SGW
`
`TCH
`
`UE
`
`Packet Data Network Gateway
`
`Radio Access Network
`
`Radio Access Technology
`
`Serving Gateway
`
`Traffic Channel
`
`User Equipment
`
`UMTS
`
`Universal Mobile Telecommunications System
`
`UTRAN
`
`UMTS Terrestrial RAN
`
`-vii-
`
`ERICSSON EXHIBIT 1019, Page 8
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`I, James L. Olivier, Ph.D., hereby declare as follows:
`
`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 1019, Page 9
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`earliest priority date claimed by the ’426 Patent, which I have been informed is
`
`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.
`
`8.
`
`SUMMARY OF OPINIONS
`
`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 16-17 of the ’426 Patent were not patentable as of the claimed priority date.
`
`9.
`
`It is my opinion that challenged claims 16-17 are obvious in light of
`
`the prior art discussed below.
`
`2
`
`ERICSSON EXHIBIT 1019, Page 10
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`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”), GSM – Architecture, Protocols and Services Third
`
`Edition by Eberspächer, Vogel, Bettstetter (“Eberspächer”), U.S. Patent No.
`
`6,879,825 to Daly (“Daly”), and U.S. Pub. No. 2013/0227138 to Cai et al. (“Cai”).
`
`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 obvious in view of: (i)
`
`a combination of Aerts and Daly, (ii) Aerts in combination with Daly and Cai, (iii)
`
`Aerts in combination with Daly and Eberspächer, or (iv) Aerts in combination with
`
`Daly, Cai, and Eberspächer.
`
`3
`
`ERICSSON EXHIBIT 1019, Page 11
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`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
`
`The Ohio State University in 1983. My CV is attached hereto as Exhibit 1028,
`
`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
`
`Union (“ITU”). I also participated in the design and development of AT&T
`
`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
`
`4
`
`ERICSSON EXHIBIT 1019, Page 12
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`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
`
`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
`
`5
`
`ERICSSON EXHIBIT 1019, Page 13
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`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.
`
`18.
`
`I have also been the owner of Olivier Consulting since 2003 and have
`
`provided consulting services to various companies to develop networking systems
`
`6
`
`ERICSSON EXHIBIT 1019, Page 14
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`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 1019, Page 15
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`22.
`
`More details on my education, work experience and technical
`
`consulting experience, as well as a list of publications that I have authored or co-
`
`authored, are contained in my CV, attached as Exhibit 1028.
`
`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
`
`this 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 EXHBIT LIST 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
`
`specification and the prosecution history as it would have been understood by one
`
`of ordinary skill in the art at the time of the alleged invention.
`
`8
`
`ERICSSON EXHIBIT 1019, Page 16
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`26.
`
`I also understand that the claims should be construed consistent with
`
`the patent’s intrinsic record, which includes the patent itself as well as the patent’s
`
`prosecution history.
`
`27.
`
`Moreover, I understand that extrinsic evidence (including, for
`
`example, technical dictionaries and treatises) may shed light on the meaning claim
`
`terms would have to one of ordinary skill in the art. I also understand that, where
`
`extrinsic evidence conflicts with the intrinsic record, the intrinsic record governs
`
`the meaning of claim terms.
`
`B.
`
`Anticipation
`
`28.
`
` I have been informed that a patent claim is invalid if it is anticipated
`
`by prior art. I have been informed that anticipation requires a finding that a single
`
`prior art reference discloses each limitation of a claim as the limitations are
`
`arranged in the claim. I have been informed that a prior art reference’s disclosures
`
`may be express or inherent. I have been informed that a limitation is inherently
`
`disclosed by a prior art reference if the reference necessarily includes the limitation
`
`in question.
`
`C.
`
`Obviousness
`
`29.
`
`I have also been informed that obviousness is a basis for invalidity of
`
`a patent. Specifically, I understand that where a prior art reference discloses less
`
`than all of the limitations of a given patent claim, that patent claim is invalid if the
`
`9
`
`ERICSSON EXHIBIT 1019, Page 17
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`differences between the claimed subject matter and the prior art reference are such
`
`that the claimed subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the relevant art.
`
`Obviousness can be based on a single prior art reference or a combination of
`
`references that teach all limitations of the claimed invention.
`
`30.
`
`I have been informed that a claim is not obvious merely because each
`
`limitation was independently known in the prior art. I also have been informed
`
`that hindsight reasoning is not an appropriate basis for combining references to
`
`form an obviousness combination.
`
`31.
`
`I understand that obviousness is not driven by a rigid formula, but is
`
`instead a flexible inquiry that reflects the fact that a person of ordinary skill in the
`
`art exercising ordinary creativity may find a variety of reasons to combine the
`
`teachings of different references. I understand that a non-exclusive list of possible
`
`factors that may give a person of ordinary skill in the art a reason to combine
`
`references includes any one or more of the following:
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` Whether combining elements according to known methods yields
`
`predictable results;
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` Whether simple substitution of known elements obtains predictable
`
`results;
`
`10
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`ERICSSON EXHIBIT 1019, Page 18
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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
`
` How use of known techniques improves similar methods in the same
`
`way;
`
` Whether applying known techniques to known methods ready for
`
`improvement yields predictable results;
`
` Whether one can choose from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
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` How known work in one field of endeavor prompts variations for use
`
`in the same field; and
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` Some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to combine prior art reference teachings
`
`to arrive at the claimed invention.
`
`32.
`
`I have been informed that obviousness also requires that the
`
`combination could have been made with a reasonable expectation of success. I
`
`have been informed that absolute predictability is not required; however, at least
`
`some degree of predictability is required. I have been informed that predictability
`
`is determined at the time the invention was made.
`
`V.
`
`33.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`I understand that the claims and specification of a patent must be read
`
`and construed through the eyes of a person of ordinary skill in the art (“POSITA”)
`
`at the time of the priority date of the claims.
`
`11
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`ERICSSON EXHIBIT 1019, Page 19
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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
`
`34.
`
`I have also been advised that to determine the appropriate level of a
`
`person having ordinary skill in the art, the following factors may be considered:
`
`(a) the types of problems encountered by those working in the field and prior art
`
`solutions thereto; (b) the sophistication of the technology in question, and the
`
`rapidity with which innovations occur in the field; (c) the educational level of
`
`active workers in the field; and (d) the educational level of the inventors.
`
`35.
`
`Based on my education and experience, I am familiar with the level of
`
`knowledge that a person of ordinary skill would have possessed during the relevant
`
`time period.
`
`36.
`
`First, turning to the types of problems and prior art solutions in the
`
`art, the “Field of the Disclosure” to the specification of the ’426 Patent states that
`
`the patent “relates to a method and a telecommunications node for transferring
`
`subscription data in a telecommunications system.” EX1001, 1:18-20. The
`
`“Background” section further explains that the patent pertains to wireless
`
`networks. Id., 1:27-29 (“telecommunications networks that provide wireless
`
`access (e.g. GSM, UMTS, WiMax, LTE) have developed tremendously over the
`
`past years. . . .”).
`
`37.
`
`Second, turning to the sophistication of the technology and the
`
`rapidity with which innovations occur in the field, the technical specifications that
`
`governed the functionality of GSM, UMTS, WiMax, and LTE networks at the time
`
`12
`
`ERICSSON EXHIBIT 1019, Page 20
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`

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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
`
`of the alleged invention required education and experience in cellular
`
`communications technology to understand. A person skilled in the art would have
`
`been monitoring these developments.
`
`38.
`
`Third, with respect to the educational level of active workers in the
`
`field, I personally observed that the individuals that participated in development
`
`and implementation of GSM, UMTS, WiMax, and LTE systems typically had at
`
`least a bachelor’s degree in electrical engineering or a related discipline and at least
`
`several years of experience working in the cellular communications industry or in
`
`academic research in the field of cellular communications.
`
`39.
`
`Fourth, turning to the educational level of the named inventors,
`
`the ’426 Patent names three inventors: Elena Mancevska, Maurice Hiep,
`
`Annemieke Kips. I am not personally acquainted with any of these individuals, but
`
`here is a summary of the information I located from LinkedIn profiles that I
`
`reasonably believe to be associated with these individuals:
`
` Maurice Hiep’s profile indicates that he has a Bachelor’s degree in
`
`Telecommunications technologies from The Hague University. Mr.
`
`Hiep’s profile further indicates that he has over 22 years’ design
`
`experience at KPN. https://www.linkedin.com/in/maurice-hiep-
`
`960521124/?originalSubdomain=nl
`
`13
`
`ERICSSON EXHIBIT 1019, Page 21
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
` Annemieke Kips’s profile indicates that she has a Master’s Degree in
`
`Experimental Physics and a PhD in Physics from VU Amsterdam.
`
`This profile also indicates that she has over 12 years’ experience in
`
`wireless telecommunication system architecture and design.
`
`https://www.linkedin.com/in/annemieke-kips-
`
`95bb2a7/?originalSubdomain=nl
`
` I was unable to find a LinkedIn page for Elena Mancevska.
`
`40.
`
`In my opinion, a person of ordinary skill in the art at the time of the
`
`alleged invention of the ’426 Patent (July 15th, 2013) would have had a degree in
`
`electrical engineering or a similar discipline, with at least three years of relevant
`
`industry or research experience, including designing or implementing cellular
`
`systems. A POSITA would also have familiarity with the wireless standards and
`
`protocols relating to subscriber management. This definition is approximate, and
`
`more education may substitute for industry experience or vice versa.
`
`41.
`
`In addition, in my opinion, while a person of ordinary skill in the art
`
`would have some familiarity with such underlying technologies, that familiarity
`
`would need only be sufficient to utilize the technology in connection with a
`
`broader system and method. For example, a person of ordinary skill in the art
`
`would be aware of how subscription information is handled in a
`
`telecommunications network and how attach/registration requests are processed in
`
`14
`
`ERICSSON EXHIBIT 1019, Page 22
`
`

`

`DECLARATION OF DR. JAMES OLIVIER
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,549,426
`
`accordance to standards, but would not necessarily need to be an expert on the
`
`design of the EPS Attach or HSS registration procedures.
`
`42.
`
`Based on my educational and employment background, I am qualified
`
`to provide opinions concerning what a POSITA would have known and understood
`
`by July 15, 2013. Indeed, as reflected in my qualifications above, I am more than
`
`qualified as a person of ordinary skill in the art as of the relevant date of the ’426
`
`Patent.
`
`VI. TECHNOLOGY BACKGROUND OF THE ’426 PATENT
`
`43.
`
`I have been asked to provide some context to the technology related to
`
`the ʼ426 Patent and the prior art. I understand that the relevant timeframe is July
`
`15, 2013, and below I provide background on how the various technologies were
`
`developed and operating up to that time frame.2
`
`A.
`
`A Brief History of the Evolution of Global System for Mobile
`Communications (“GSM”)
`
`44.
`
`The first generation of mobile communications networks, which was
`
`retroactively dubbed “1G,” dates back to Nippon Telegraph and Telephone’s 1979
`
`launch in Tokyo. The United States approved 1G networks for use in or around
`
`2 This technology background is intended to provide an introduc