IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Lehtovirta et al.
`In re Patent of:
`11,039,312
`U.S. Patent No.:
`June 15, 2021
`Issue Date:
`Appl. Serial No.: 17/153,522
`Filing Date:
`January 20, 2021
`Title:
`HANDLING OF MULTIPLE AUTHENTICATION
`PROCEDURES IN 5G
`
`Attorney Docket No. 50095-0100IP1
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATION OF NARAYAN B. MANDAYAM, Ph.D.
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`By: ________
`
`____
`
`Narayan B. Mandayam, Ph.D.
`
`Date: ______ April 1, 2022________
`
`1
`
`APPLE 1003
`
`

`

`Table of Contents
`Introduction ....................................................................................................... 8
`
`I.
`
`II. Background and Qualifications ........................................................................ 9
`
`III. Level of Ordinary Skill in the Art ................................................................... 14
`
`IV. Materials Considered and Relied Upon .......................................................... 15
`
`V.
`
`Legal Standards ............................................................................................... 17
`
`A.
`
`B.
`
`Anticipation ......................................................................................... 17
`
`Obviousness ......................................................................................... 18
`
`VI. Overview of the ’312 Patent ........................................................................... 19
`
`A.
`
`B.
`
`C.
`
`Subject Matter Overview .................................................................... 19
`
`File History of the ’312 Patent ............................................................ 29
`
`Interpretation of the ’312 Patent Claims at Issue ................................ 30
`
`VII. Overview of the Cited References .................................................................. 31
`
`A.
`
`Tiwari (EX1004) ................................................................................. 31
`
`1.
`
`Tiwari is entitled to a priority date of April 8, 2019
`(Dynamic Drinkware analysis) ................................................. 36
`TS 33.501 (EX1006) ........................................................................... 47
`
`B.
`
`C. Werner (EX1007) ................................................................................ 51
`
`D. Wang (EX1011) .................................................................................. 52
`
`E.
`
`F.
`
`G.
`
`Ground 1B: Combination of Tiwari and Werner ................................ 53
`
`Ground 1C: Combination of Tiwari and Wang................................... 57
`
`Ground 1D: Combination of Tiwari, Werner, and Wang ................... 59
`
`2
`
`

`

`[1Pre] A method by an Authentication Server Function, AUSF,
`of a home public land mobile network, PLMN, configured
`to communicate through an interface with electronic
`
`[1a] receiving a first authentication request from a first PLMN
`
`[1b] obtaining a first security key used for integrity protection of
`messages delivered from the home PLMN to the electronic
`device, wherein the first security key is obtained in
`response to successful authentication based on the first
`
`[1c] receiving a second authentication request from a second
`
`[1d] obtaining a second security key used for integrity protection
`of the messages delivered from the home PLMN to the
`electronic device, wherein the second security key is
`obtained in response to successful authentication based on
`
`H. Ground 1E: Combination of Tiwari and S3-172482 ........................... 61
`I.
`Ground 1F: Combination of Tiwari, S3-172482, and Werner ............ 64
`VIII. GROUNDS 1A – 1F ....................................................................................... 67
`A. Grounds 1A-1F: Tiwari alone or in combination with one or
`more references renders obvious claims 1-3, 6, 8-12, and 15-18 ....... 67
`devices, the method comprising:............................................... 67
`that is authenticating an electronic device; ............................... 70
`authentication request; .............................................................. 71
`PLMN that is authenticating the electronic device; .................. 72
`the second authentication request; ............................................ 73
`[1e] receiving a message protection request; ...................................... 73
`security key is a latest security key; and ................................... 74
`with the message protection request. ........................................ 75
`
`[1f] determining which of the first security key and the second
`
`[1g] using the latest security key to protect a message associated
`
`[2] The method of claim 1, further comprising: generating a first
`time stamp indicating a first time when the first security
`key is obtained and associating the first time stamp with
`the first security key; and generating a second time stamp
`indicating a second time when the second security key is
`
`
`
`3
`
`

`

`obtained and associating the second time stamp with the
`
`[3Pre] The method of claim 2, wherein determining which of the
`first security key and the second security key is the latest
`
`second security key. .................................................................. 75
`security key comprises: ............................................................. 77
`[3a] obtaining the first time stamp; ..................................................... 77
`[3b] obtaining the second time stamp; ................................................ 77
`key; and ..................................................................................... 78
`security key. .............................................................................. 78
`key. ............................................................................................ 79
`responsive to the second security key being stored. ................. 80
`update message. ........................................................................ 80
`comprising: ................................................................................ 81
`comprising: ................................................................................ 81
`
`[3c] responsive to the first time of the first time stamp being later
`than the second time of the second time stamp,
`determining that the first security key is the latest security
`
`[3d] responsive to the second time of the second time stamp
`being later than the first time of the first time stamp,
`determining that the second security key is the latest
`
`[6] The method of claim 1, further comprising: responsive to the
`first security key being the latest security key, deleting the
`second security key; and responsive to the second security
`key being the latest security key, deleting the first security
`
`[8] The method of claim 6 wherein deleting the second security
`key comprises deleting the second security key responsive
`to the first security key being stored and deleting the first
`security key comprises deleting the first security key
`
`[9] The method of claim 1, wherein the message protection
`request is a message protection request for one of a
`steering of roaming, SoR, message or a UE parameter
`
`[10Pre] An Authentication Server Function, AUSF, of a
`communications system that comprises a home public land
`mobile network, PLMN, configured to communicate
`through an interface with electronic devices, the AUSF
`
`[10a] at least one processor configured to perform operations
`
`
`
`4
`
`

`

`[10b] receiving a first authentication request from a first PLMN
`
`that is authenticating an electronic device; ............................... 82
`authentication based on the first authentication request; .......... 82
`PLMN that is authenticating the electronic device; .................. 83
`
`[10c] obtaining a first security key used for integrity protection
`of messages delivered from a home public land mobile
`network, PLMN, to the electronic device, wherein the first
`security key is obtained in response to successful
`
`[10d] receiving a second authentication request from a second
`
`[10e] obtaining a second security key used for integrity
`protection of the messages delivered from the home
`PLMN to the electronic device, wherein the second
`security key is obtained in response to successful
`authentication based on the second authentication request;
`
` ................................................................................................... 83
`[10f] receiving a message protection request; ..................................... 83
`security key is a latest security key; and ................................... 83
`with the message protection request. ........................................ 84
`
`[10g] determining which of the first security key and the second
`
`[10h] using the latest security key to protect a message associated
`
`[11] The AUSF of claim 10, wherein the at least one processor is
`configured to perform further operations comprising:
`generating a first time stamp when the first security key is
`obtained and associating the first time stamp with the first
`security key; and generating a second time stamp when the
`second security key is obtained and associating the second
`
`time stamp with the second security key. ................................. 84
`latest security key comprises: ................................................... 84
`first security key was obtained;................................................. 85
`when the second security key was obtained; ............................ 85
`
`[12Pre] The AUSF of claim 10, wherein determining which of
`the first security key and the second security key is the
`
`[12a] obtaining a first time stamp indicating a first time when the
`
`[12b] obtaining a second time stamp indicating a second time
`
`
`
`5
`
`

`

`[12c] responsive to the first time being later than the second time,
`determining that the first security key is the latest security
`
`[12d] responsive to the second time being later than the first time,
`determining that the second security key is the latest
`
`[15Pre] A method in an electronic device configured to
`communicate through a wireless air interface with a home
`public land mobile network, PLMN, and visiting PLMNs,
`
`[15a] transmitting a first authentication request to a first PLMN
`
`[15b] generating a first security key used for integrity protection
`of messages delivered from the home PLMN to the
`electronic device upon successful authentication based on
`
`[15c] transmitting a second authentication request to a second
`
`[15d] generating a second security key used for integrity
`protection of the messages delivered from the home
`PLMN
`to
`the electronic device upon successful
`authentication based on the second authentication request;
`
`key; and ..................................................................................... 85
`security key. .............................................................................. 85
`the method comprising: ............................................................. 86
`to authenticate the electronic device; ........................................ 88
`the first authentication request; ................................................. 89
`PLMN to authenticate the electronic device; ............................ 91
` ................................................................................................... 92
`[15e] receiving a protected message from the home PLMN; ............. 93
`security key is a latest security key; and ................................... 96
`message received from the home PLMN. ................................. 97
`steering of roaming message. .................................................... 98
`
`[15f] determining which of the first security key and the second
`
`[15g] using the latest security key to determine contents of a
`
`[16] The method of claim 15, wherein the protected message
`comprises one of a UDM parameter update message or a
`
`[17] The method of claim 15, further comprising: generating a
`first time stamp indicating a time when the first security
`key is generated and associating the first time stamp with
`the first security key; and generating a second time stamp
`indicating a time when the second security key is
`
`
`
`6
`
`

`

`generated and associating the second time stamp with the
`
`[18Pre] The method of claim 17, wherein determining which of
`the first security key and the second security key is the
`
`second security key. .................................................................. 99
`latest security key comprises: .................................................101
`[18a] obtaining the first time stamp; .................................................101
`[18b] obtaining the second time stamp; ............................................102
`key; and ...................................................................................102
`security key. ............................................................................103
`IX. Additional Remarks ....................................................................................103
`
`[18c] responsive to the first time of the first time stamp being
`later than the second time of the second time stamp,
`determining that the first security key is the latest security
`
`[18d] responsive to the second time of the second time stamp
`being later than the first time of the first time stamp,
`determining that the second security key is the latest
`
`
`
`
`
`
`
`
`
`
`
`7
`
`

`

`
`I, Narayan B. Mandayam, Ph.D., declare that:
`
`I.
`
`Introduction
`
`1. My name is Narayan B. Mandayam, and I have been retained by
`
`counsel for Petitioner Apple Inc. (“Apple” or “Petitioner”) as an expert witness to
`
`provide assistance regarding U.S. Patent No. 11,039,312 (“the ’312 Patent”).
`
`Specifically, I have been asked to consider the validity of claims 1-3, 6, 8-12, and
`
`15-18 of the ’312 Patent (the “Challenged Claims”) in view of prior art,
`
`anticipation and obviousness considerations, and understanding of a person of
`
`ordinary skill in the art at the time of the alleged invention (“POSITA”) as it relates
`
`to the ’312 Patent. I have personal knowledge of the facts and opinions set forth in
`
`this declaration and believe them to be true. If called upon to do so, I would testify
`
`competently thereto.
`
`2.
`
`I am being compensated for my time at my standard consulting rate. I
`
`am also being reimbursed for expenses that I incur during the course of this work.
`
`My compensation is not contingent upon the results of my study, the substance of
`
`my opinions, or the outcome of any proceeding involving the challenged claims. I
`
`have no financial interest in the outcome of this matter or on the pending litigation
`
`between Petitioner and Patent Owner.
`
`3. My analysis here is based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`8
`
`
`
`

`

`those cited herein.
`
`4.
`
`I may rely upon these materials, my knowledge and experience,
`
`and/or additional materials to rebut arguments raised by the Patent Owner.
`
`Further, I may also consider additional documents and information in forming any
`
`necessary opinions, including documents that may not yet have been provided to
`
`me.
`
`5. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. Background and Qualifications
`
`6.
`
`I am a Distinguished Professor of Electrical and Computer
`
`Engineering at Rutgers University. My current curriculum vitae is included as
`
`Appendix A to this Declaration and some highlights follow.
`
`7.
`
`I received a bachelor degree (with Honors) in 1989 from the Indian
`
`Institute of Technology, Kharagpur, and M.S. and Ph.D. degrees in 1991 and 1994
`
`from Rice University, Houston, TX, all in electrical engineering.
`
`8.
`
`I was a Research Associate at the Wireless Information Network
`
`Laboratory (“WINLAB”), Department of Electrical and Computer Engineering,
`
`
`
`9
`
`

`

`Rutgers University, between 1994 and 1996. In September 1996, I joined the
`
`faculty of Department of Electrical & Computer Engineering at Rutgers where I
`
`became Associate Professor in 2001, Professor in 2003, and Distinguished
`
`Professor in 2014. I also served as the Peter D. Cherasia Endowed Faculty Scholar
`
`at Rutgers University from 2010 to 2014. Currently, I also serve as the Chair of
`
`the Electrical and Computer Engineering Department as well as Associate Director
`
`at WINLAB where I conduct research in various aspects of wireless systems and
`
`networks. I teach courses at Rutgers on the topics of Wireless System Design,
`
`Wireless Communication Technologies, Wireless Revolution, Detection and
`
`Estimation Theory and Introduction to Computing for Engineers. I was a visiting
`
`faculty fellow in the Department of Electrical Engineering at Princeton University
`
`in Fall 2002 and a visiting faculty at the Indian Institute of Science in Spring 2003.
`
`9. My research focuses on wireless networks and communications, and I
`
`have worked on various aspects of networking and wireless devices. Over the last
`
`25 years, I have published a wide range of articles on various aspects of wireless
`
`systems, including techniques for data transmission and multimedia
`
`communications, resource allocation strategies, algorithms for wireless security,
`
`mathematical modeling, and performance analysis. Using constructs from game
`
`theory, communications and networking, my work has focused on system
`
`modeling and performance, signal processing as well as radio resource
`
`
`
`10
`
`

`

`management for enabling wireless technologies to support various applications . I
`
`have coauthored two books on wireless networks (Principles of Cognitive Radio,
`
`Cambridge (2012) and Wireless Networks: Multiuser Detection in Cross-Layer
`
`Design, Springer (2005)), eight book chapters and published over 200 papers in
`
`prestigious international journals and conferences. I have also given numerous
`
`invited presentations at a variety of industry, government, and academic forums.
`
`10. Specifically, I have been doing research in various aspects of wireless
`
`data transmission for over 30 years addressing PHY, MAC, and Network layer
`
`issues. I have made seminal research contributions to wireless data
`
`communications on issues ranging from the systems level (such as power control,
`
`base station assignment, capacity evaluation, protocol design, medium access
`
`control, and radio resource management) to the physical layer (such as data
`
`transmission and reception). I have also done seminal work in the area of the PHY
`
`layer security, where properties of the radio channel are exploited for the purposes
`
`of key generation, authentication and encryption. My expertise includes cellular
`
`systems such as for 2G, 3G, 4G, and 5G, and I have published papers on a wide
`
`variety of topics related to the design and operation of GSM/TDMA, CDMA and
`
`LTE based systems. During this time, I have also worked extensively on wireless
`
`local area network (WLAN) technologies as well as wireless ad-hoc and sensor
`
`networks, and as such, I am quite familiar with 802.11 and Bluetooth.
`
`
`
`11
`
`

`

`11.
`
`I also teach both graduate and undergraduate courses at Rutgers where
`
`I introduce students to the wide area network (WAN) cellular and local area
`
`network (LAN) technologies mentioned above. I have also served as a technical
`
`consultant since its inception in 2002 to the company Mojo Networks Inc. (recently
`
`acquired by Arista Networks), a world leader in enterprise network security for
`
`WLANs that offers the next generation of intelligent edge, secure, and flexible Wi-
`
`Fi solutions. I am familiar with the early developments in the area of cellular
`
`systems (2G, 3G, 4G, and 5G) and have served on several graduate thesis defense
`
`committees pertaining to all aspects of wireless systems operation.
`
`12.
`
`I have received several prestigious awards relating to my research on
`
`wireless networks and communications: the 2015 IEEE COMSOC Advances in
`
`Communications Award for seminal work on power control in wireless data
`
`networks (this is the highest paper award given by the IEEE Communications
`
`Society to the most impactful publication in the preceding 15 years), the 2014
`
`IEEE Donald G. Fink Award (recognizes the most outstanding tutorial paper
`
`across all IEEE publications) for the paper titled “Frontiers of Wireless and Mobile
`
`Communications” that discusses the historical and future landscape of both WAN
`
`and LAN wireless technologies, and the Fred W. Ellersick Prize from the IEEE
`
`Communications Society in 2009 for work on dynamic spectrum access models
`
`and spectrum policy. I also received the Peter D. Cherasia Faculty Scholar Award
`
`
`
`12
`
`

`

`from Rutgers University in 2010, the National Science Foundation Career Award
`
`in 1998, the Institute Silver Medal from the Indian Institute of Technology,
`
`Kharagpur, in 1989 and its Distinguished Alumnus Award in 2018.
`
`13.
`
`I have served as an Editor for the journals IEEE Communication
`
`Letters (1999- 2002) and IEEE Transactions on Wireless Communications (2002-
`
`2004). I have also served as a guest editor of the IEEE JSAC Special Issues on
`
`Adaptive, Spectrum Agile and Cognitive Radio Networks (2007) and Game
`
`Theory in Communication Systems (2008). I was elected Fellow of the IEEE for
`
`“contributions to wireless data transmission.” I have also served as a
`
`Distinguished Lecturer of the IEEE Communications Society.
`
`14. My experience of over 30 years with networking and
`
`telecommunications in academic and practical situations as well as my hands on
`
`experience, has given me a detailed appreciation of the technology involved with
`
`the ’312 Patent.
`
`15.
`
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the above fields; my
`
`experience in teaching those subjects; and my experience in working with others
`
`involved in those fields. In addition, I have analyzed the following publications
`
`and materials, in addition to other materials I cite in my declaration.
`
`16. Based on my experiences described above, and as indicated in my
`
`
`
`13
`
`

`

`Curriculum Vitae, I am qualified to provide the following opinions with respect to
`
`the patents in this case. Additionally, I was at least a person having ordinary skill
`
`in the art as of the Critical Date of the ’312 Patent.
`
`III. Level of Ordinary Skill in the Art
`
`17.
`
`In rendering the opinions set forth in this declaration, I have been
`
`asked to consider the patent claims and the prior art through the eyes of a person of
`
`ordinary skill in the art (“POSITA”) at the time of the alleged invention, which I
`
`understand to be April 29, 2019 (“Critical Date”). A person of ordinary skill in the
`
`art as of the Critical Date of the ’312 Patent (hereinafter a “POSITA”) would have
`
`had at least a Bachelor’s degree in an academic area emphasizing electrical
`
`engineering or a similar discipline, and at least two years of experience in the field
`
`working with, teaching, or researching wireless communication networks.
`
`Superior education could compensate for a deficiency in work experience, and
`
`vice-versa. I base this on my own practical and educational experiences, including
`
`my knowledge of colleagues and others at the time.
`
`18.
`
`I am familiar with the knowledge and capabilities of a POSITA as
`
`noted above. Specifically, my experience working with industry, undergraduate
`
`and post-graduate students, colleagues from academia, and designers and engineers
`
`practicing in industry has allowed me to become directly and personally familiar
`
`with the level of skill of individuals and the general state of the art.
`
`
`
`14
`
`

`

`19. My opinions, as explained below, are based on my education,
`
`experience, and background in the fields discussed above. Unless otherwise stated,
`
`my testimony below refers to the knowledge of a POSITA in the fields as of the
`
`Critical Date.
`
`IV. Materials Considered and Relied Upon
`
`20.
`
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in this
`
`declaration, including the ’312 Patent, the prosecution history of the ’312 Patent,
`
`and prior art references cited herein. These materials comprise patents, related
`
`documents, and printed publications. Each of these materials is a type of document
`
`that experts in my field would have reasonably relied upon when forming their
`
`opinions.
`
`21.
`
`I have also relied on my education, training, research, knowledge, and
`
`personal and professional experience in the relevant technologies and systems that
`
`were already in use prior to, and within the timeframe of the Critical Date of
`
`the ’312 Patent.
`
`
`
`EX1001: U.S. Patent No. 11,309,312 to Lehtovirta et al. (the “’312
`
`Patent”)
`
`
`
`
`
`
`
`EX1002:
`
`Excerpts from the Prosecution History of the ’312 Patent
`
`EX1004:
`
`International Publication No. 2020/208996 to Tiwari et
`
`15
`
`

`

`al. (“Tiwari”)
`
`
`
`EX1005:
`
`Indian Provisional Application No. 201941014041 (“the
`
`Tiwari provisional”)
`
`
`
`EX1006:
`
`3GPP TS 33.501 V15.3.1, Technical Specification, 3rd
`
`Generation Partnership Project; Technical Specification Group Services and
`
`System Aspects; Security architecture and procedures for 5G System (Release 15),
`
`December 2018 (“TS 33.501”)
`
`
`
`EX1007: U.S. Patent Pub. No. 2012/0310882 to Werner et al.
`
`(“Werner”)
`
`
`
`EX1008:
`
`International Publication No. 2020/179665 to De Kievit
`
`et al. (“De Kievit”)
`
`
`
`EX1009:
`
`3GPP TS 33.501 V15.0.0, Technical Specification, 3rd
`
`Generation Partnership Project; Technical Specification Group Services and
`
`System Aspects; Security architecture and procedures for 5G System (Release 15),
`
`March 2018 (“TS 33.501-V15.0.0”)
`
`
`
`EX1010:
`
`3GPP TS 23.501 V15.1.0, Technical Specification Group
`
`Services and System Aspects; System Architecture for the 5G System; Stage 2
`
`(Release 15) March 2018 (“TS 23.501-V15.1.0”)
`
`
`
`EX1011: U.S. Patent Pub. No. 2010/0064344 to Wang et al.
`
`(“Wang”)
`
`
`
`16
`
`

`

`
`
`EX1012: 3GPP TSG-SA WG3 Meeting #95, “KAUSF
`
`desynchronization problem and solutions,” NEC, Reno (USA), May 6-10, 2019,
`
`S3-19xyza (revision of S3-19xabc) (“S3-19xyza”)
`
`
`
`EX1013:
`
`3GPP TSG-SA WG3 Meeting #95, “KAUSF
`
`desynchronization problem and solutions – updated version after conf call on 25
`
`Apr.,” NEC, Reno (USA), May 6-10, 2019, S3-191204 (revision of S3-19xabc)
`
`(“S3-191204”)
`
`
`
`EX1014:
`
`3GPP TSG-SA WG3 (Security) Meeting #88Bis,
`
`“Discussion on protection of Network Steering Information,” Ericsson, Singapore,
`
`October 9-13, 2017, S3-172482 (revision of S3-17xabc) (“S3-172482”)
`
`
`
`EX1015: Declaration of Friedhelm Rodermund
`
`
`V. Legal Standards
`
`22.
`
`In forming my analysis and conclusions expressed in this declaration,
`
`I have applied the legal principles described in the following paragraphs, which
`
`were provided to me by counsel for the Petitioner.
`
`A. Anticipation
`
`23.
`
`I have been informed by counsel that a patent claim is invalid as
`
`“anticipated” under 35 U.S.C. § 102 if each and every element of a claim, as
`
`properly construed, is found either explicitly or inherently in a single prior art
`
`
`
`17
`
`

`

`reference. Under the principles of inherency, if the prior art necessarily functions
`
`in accordance with, or includes the claimed limitations, it anticipates.
`
`24.
`
`I have been informed by counsel that a claim is invalid under 35
`
`U.S.C. § 102(a)(1) if the claimed invention was patented, described in a printed
`
`publication, or in public use, on sale, or otherwise available to the public before the
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`effective filing date of the claimed invention. I further have been informed that a
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`claim is invalid under 35 U.S.C. § 102(a)(2) if the claimed invention was described
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`in a patent issued under section 151, or in an application for patent published or
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`deemed published under section 122(b), in which the patent or application, as the
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`case may be, names another inventor and was effectively filed before the effective
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`filing date of the claimed invention.
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`B. Obviousness
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`25.
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`I have been informed by counsel that a patent claim is invalid as
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`“obvious” under 35 U.S.C. § 103 in light of one or more prior art references if it
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`would have been obvious to a person of ordinary skill in the art at the time of the
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`alleged invention (“POSITA”), taking into account (1) the scope and content of the
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`prior art, (2) the differences between the prior art and the claims, (3) the level of
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`ordinary skill in the art, and (4) any so called “secondary considerations” of non-
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`obviousness, which include: (i) “long felt need” for the claimed invention, (ii)
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`commercial success attributable to the claimed invention, (iii) unexpected results
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`18
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`of the claimed invention, and (iv) “copying” of the claimed invention by others.
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`26.
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`I have been informed by counsel that a claim can be obvious in light
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`of a single prior art reference or multiple prior art references. To be obvious in
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`light of a single prior art reference or multiple prior art references, there must be a
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`reason to modify the single prior art reference, or combine two or more references,
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`in order to achieve the claimed invention. This reason may come from a teaching,
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`suggestion, or motivation to combine, or may come from the reference or
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`references themselves, the knowledge or “common sense” of one skilled in the art,
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`or from the nature of the problem to be solved, and may be explicit or implicit
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`from the prior art as a whole. I have been informed that the combination of
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`familiar elements according to known methods is likely to be obvious when it does
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`no more than yield predictable results. I also understand it is improper to rely on
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`hindsight in making the obviousness determination.
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`VI. Overview of the ’312 Patent
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`A.
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`Subject Matter Overview
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`27. The ’312 Patent, which is titled “Handling of Multiple Authentication
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`Procedures in 5G,” is related to a “method by an AUSF of a home PLMN
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`configured to communicate through an interface with electronic devices.” EX1001,
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`Title and Abstract.
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`28.
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`In the background section, the ’312 Patent explains that the “3GPP
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`19
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`security standardization working group SA3 has finalized the security specification
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`for the Release 15 of the 5G System in TS 33.501.” Id., 1:23-25 (referencing
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`EX1009)1. “The 5G System includes many new features that require the
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`introduction of additional security mechanisms,” including “the 5G System
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`integrat[ing] non-3GPP access (e.g. WLAN) alongside 3GPP access (New Radio
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`and LTE) in a seamless manner.” Id., 1:25-30.
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`29. The ’312 Patent indicates 3G security mechanisms described in TS
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`33.501 “rely on multiple different security keys,” which are “organized in a
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`hierarchy.” Id., 1:53-61. “A successful Primary Authentication between the UE
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`and the AUSF in the Home PLMN may lead to the establishment of the KAUSF key
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`which is the second level key in the hierarchy.” Id., 1:62-65. The KAUSF key “may
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`be used for the integrity protection of the messages delivered from the Home
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`PLMN to the UE,” including for new features such as the Steering of Roaming
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`(SoR) and the UDM parameter delivery procedures. Id., 2:1-5. The ’312 Patent
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`further acknowledges that Release 15 of TS 33.501 further defines other aspects of
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`1 I note that while the ’312 Patent references Release 15 of TS 33.501, Applicant
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`never cited any version of TS 33.501 in any Information Disclosure Statement, nor
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`did the Patent Office ever acknowledge that it had considered any version of TS
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`33.501 during prosecution of the ’312 Patent. See, generally, EX1