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
`U.S. Patent No. 9,549,426
`––––––––––
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS
`
`
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`ERICSSON INC.
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.
`Patent Owner.
`
`––––––––––
`
`Case No. IPR2022-00401
`U.S. Patent No. 9,549,426
`––––––––––
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS
`
`
`
`IPR2022-00401
`U.S. Patent No. 9,549,426
`
`Petitioner previously filed an IPR petition challenging different claims of the
`
`’426 Patent, IPR 2022-00068, Paper 1, filed Nov. 10, 2021. “To aid the Board in
`
`determining” why “more than one petition is necessary,” Petitioner provides the
`
`information below. See Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide, November 2019 at 59-60 (“TPG”). As explained below, the Board should
`
`institute both petitions.
`
`Ranking
`A.
`Both of the petitions are justified, meritorious, and should be instituted. Per
`
`the TPG’s recommendation, Petitioner requests that the Board consider the petitions
`
`in the following order:
`
`Rank
`
`Petition
`
`1
`
`Petition 1 (IPR2022-00068)
`
`Challenged
`Claims
`1, 6, 8-10,
`14, 18
`
`Grounds
`
`Ground 1: Claim 1 is
`anticipated by Aerts
`
`Ground 2: Claims 1, 8-
`10, and 18 are obvious in
`view of Aerts
`and
`Eberspächer
`
`Ground 3: Claim 6 is
`obvious in view of Aerts,
`Eberspächer, and Feng
`
`Ground 4: Claim 14 is
`obvious in view of Aerts,
`Eberspächer, and Velev
`
`Active 69738814.1.DOCX
`
`1
`
`
`
`2
`
`Petition 2 (IPR2022-00401)
`
`16-17
`
`IPR2022-00401
`U.S. Patent No. 9,549,426
`
`Ground 1: Claim 16 is
`obvious in view of Aerts
`and Daly
`
`Ground 2: Claim 17 is
`obvious in view of Aerts,
`Daly, and Cai
`
`Ground 3: Claim 16 is
`obvious in view of Aerts,
`Daly, and Eberspächer
`
`Ground 4: Claim 17 is
`obvious in view of Aerts,
`Daly,
`and
`Cai,
`Eberspächer
`B. Material Differences and Reasons for Institution
`The Board has recognized that “there may be circumstances in which more
`
`than one petition may be necessary.” TPG at 59-60. This in one such circumstance.
`
`The ’426 Patent includes network-side claims (Claims 1-15 and 18) and UE-side
`
`claims (Claims 16-17). Petition 1 challenges only certain network-side claims
`
`(Claims 1, 6, 8-10, and 18), and Petition 2 challenges only the two UE-side claims.
`
`Petitioner needed a second petition to challenge those two UE-side claims, because
`
`(1) the UE-side claims recite limitations not recited in the network-side claims; and
`
`(2) different references were needed to teach those additional limitations. The two
`
`petitions are thus non-overlapping, because they challenge different claims having
`
`different limitations using different combinations of references.
`
`Active 69738814.1.DOCX
`
`2
`
`
`
`IPR2022-00401
`U.S. Patent No. 9,549,426
`
`Petitioner’s two petitions were necessitated by the different scope of claims
`
`asserted against it in the district court. Petitioner—who sells network-side
`
`equipment—prepared its first petition challenging certain network-side claims.
`
`Patent Owner, however, served infringement contentions that also asserted the UE-
`
`side claims. UE-side Claims 16 and 17 recite the following limitations not present
`
`in the network-side claims:
`
` Claim 16: “wherein the user equipment comprises: a processor having
`
`access to instructions that when executed cause the user equipment to carry
`
`out operations including prior to initiation of the second transfer stage,
`
`receiving and processing at least one of: [i] a partial subscription data
`
`transfer indication indicative of storing only the first set of subscription
`
`data in the telecommunications node; or [ii] if the user equipment is a Long
`
`Term Evolution (LTE) type user equipment, a non-bearer establishment
`
`indication indicative of omission of establishment of a default bearer on a
`
`radio path between
`
`the LTE
`
`type user equipment and
`
`the
`
`telecommunications node being insufficient for enabling establishment of
`
`a communication session”; and
`
` Claim 17: “The user equipment according to claim 16, wherein the
`
`operations further include omitting requesting a communication session
`
`with the telecommunications node when having processed at least one of
`
`Active 69738814.1.DOCX
`
`3
`
`
`
`IPR2022-00401
`U.S. Patent No. 9,549,426
`
`the partial subscription data transfer indication and the non-bearer
`
`establishment indication.”
`
`Petitioner needed additional references to teach these limitations that were not
`
`needed for Petition 1. Petitioner cites to the Daly reference as teaching the added
`
`limitations in Claim 16 and the Cai reference as teaching the added limitations in
`
`Claim 17. Neither of those references was needed for the arguments in Petition 1.
`
`Petitioner needed additional words to explain its summary of these references, its
`
`motivation to combine, its reasonable expectation of success, and its application of
`
`the references to the claims that are not coextensive with Petitioner’s challenge of
`
`the network claims in Petition 1. Further, Petitioner had not learned of the Daly
`
`reference at the time Petition 1 was ready for filing and thus did not want its search
`
`for additional references for Claim 16 to delay the filing of Petition 1. Petitioner
`
`thus needed to challenge these claims in a second petition both to ensure that the
`
`grounds associated with both petitions contained the necessary specificity as to how
`
`the prior art meets the recited limitations within the word limit applicable to IPR
`
`petitions and to more expeditiously file its initial petition.
`
`The two petitions will not “place a substantial and unnecessary burden on the
`
`Board.” Both are targeted petitions that do not contain redundant grounds. And
`
`Petition 2 challenges only one independent claim and one dependent claim. Petition
`
`2 also uses the same base references—Aerts and, alternatively, Aerts in view of
`
`Active 69738814.1.DOCX
`
`4
`
`
`
`IPR2022-00401
`U.S. Patent No. 9,549,426
`
`Eberspächer—as used in the first petition and adds one reference for the added UE-
`
`side limitation in Claim 16 and one reference for dependent Claim 17. These
`
`characteristics are reflected in Petition 2’s length of 12,985 words—well under the
`
`14,000 word limit. The second petition thus will not require significant resources
`
`beyond those required for the first petition.
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`Chad C. Walters (Reg. No. 48,022)
`Lead Attorney for Petitioner
`
`Date: January 7, 2022
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Phone: (214) 953-6511
`Fax: (214) 661-4511
`chad.walters@bakerbotts.com
`
`Active 69738814.1.DOCX
`
`5
`
`
`
`IPR2022-00401
`U.S. Patent No. 9,549,426
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies on this January 7, 2022, that true and correct
`
`copies of the foregoing PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE
`
`RANKING PETITIONS served in its entirety on the following parties via FedEx
`
`Express® or Express Mail:
`
`Litigation Counsel:
`
`Correspondence Address:
`
`Andres C. Healey
`Susman Godfrey, L.L.P.
`1201 Third Avenue
`Suite 3800
`Seattle, WA 98101-3000
`
`McDonnell, Boehnen, Hulbert, &
`Berghoff LLP
`IP Section
`300 S. Wacker Drive
`32nd Floor
`Chicago, IL 60606
`
`BAKER BOTTS L.L.P.
`
`Chad C. Walters (Reg. No. 48,022)
`Lead Attorney for Petitioner
`
`Date: January 7, 2022
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Phone: (214) 953-6511
`Fax: (214) 661-4511
`chad.walters@bakerbotts.com
`
`Active 69738814.1.DOCX
`
`6
`
`
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