`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`KONINKLIJKE KPN N.V.,
`
`Plaintiff,
`
`VS.
`TELEFONAKTIEBOLAGET LM
`ERICSSON AND ERICSSON INC.,
`
`Defendants.
`
`Civil Action No. 2:22-cv-282-JRG
`
`JURY TRIAL
`
`ERICSSON'S P.R. 3-3 INVALIDITY CONTENTIONS
`
`Pursuant to P.R. 3-3, P.R. 3-4, and the Comt 's Docket Contrnl Order in the above(cid:173)
`
`captioned case (Dkt. 45), Ericsson Telefonaktiebolaget LM and Ericsson Inc. (collectively
`
`"Ericsson") serve their Preliminary Invalidity Contentions with respect to the claims identified
`
`by Plaintiff KPN Koninklijke KPN N .V. ("KPN") in its Disclosme of Asserted Claims and
`
`Infringement Contentions for Ericsson (January 5, 2023) ("Infringement Contentions").
`
`I.
`
`Preliminary Statement and Reservation of Rights
`
`A.
`
`The Asserted Claims
`
`According to the Infringement Contentions, KPN asse1ts the following patents, claims,
`
`and priority dates in its Infringement Contentions.
`
`Asse1ted Patent
`7,092,705
`8,660,560
`8,886,772
`9,372,098
`10,924,500
`
`Asse1ted Claims
`1-6, and 22-25
`1 and 6-8
`1-6, 10 and 11
`17 and 20
`1, 5, 7, 9 and 10
`
`Asse1ted Priority Date( s)
`October 9, 2001
`August 7, 2008 or October 28, 2008 or October 7, 2009
`March 6, 2008 or July 31, 2008 or August 5, 2008
`October 23, 2007 or October 28, 2008,
`October 11, 2011 or October 31, 2011 or November 22,
`2012
`
`The patents identified in the foregoing table are collectively refened to as the "Asserted
`
`Patents," and the claims identified in the foregoing table are collectively refe1Ted to as the
`
`1
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 1 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`“Asserted Claims.” Any reference to an “asserted priority date” in these Preliminary Invalidity
`
`Contentions refers to the “Asserted Priority Dates” identified in the foregoing table, and further
`
`defined in section I.B, infra.
`
`Ericsson contends that each of the Asserted Claims is invalid under at least one or more
`
`of 35 U.S.C. §§ 101, 102, 103, or 112. Pursuant to the Local Patent Rules, Ericsson does not
`
`provide any contentions regarding any claims not asserted by KPN. To the extent that the Court
`
`permits KPN to assert additional claims against Ericsson in the future, Ericsson reserves all
`
`rights to amend or supplement these Preliminary Invalidity Contentions or to otherwise disclose
`
`new or supplemental invalidity contentions regarding such claims. Furthermore, because
`
`discovery is ongoing, 1 Ericsson reserves the right to revise, amend, and/or supplement the
`
`information provided herein, including identifying, charting, and relying on additional
`
`references, should discovery yield additional information or references.
`
`Ericsson further reserves the right to amend these contentions in response to any claim
`
`construction rulings, as permitted by the Local Patent Rules or with permission of the Court.
`
`Ericsson incorporates by reference the invalidity contentions from any past, current, or
`
`future case involving one or more of the asserted patents, including, but not limited to the
`
`following cases: Koninklijke KPN NV v. Xiaomi Corporation et al., 1-21-cv-00041 (DDE);
`
`1 Ericsson’s ongoing efforts include but are not limited to: serving subpoenas on prior artists and
`inventors regarding prior art, seeking additional information related to the references and
`systems disclosed in these Preliminary Invalidity Contentions, and seeking additional
`information related to available prior art systems, as well as KPN’s Infringement Contentions
`and the products accused of infringing therein. No depositions have been taken as of this time,
`including, without limitation, depositions of any inventors, authors, or entities listed on any
`references or systems identified in these Preliminary Invalidity Contentions. Further, Ericsson
`reserve the right to review and supplement these Preliminary Invalidity Contentions with respect
`to any additional prior art that becomes apparent as discovery proceeds.
`
`2
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 2 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
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`Koninklijke KPN NV v. u-blox AG et al., 1-21-cv-00046 (DDE); Koninklijke KPN NV v. Samsung
`
`Electronics America, Inc. et al., 2-14-cv-01165 (EDTX).
`
`The Infringement Contentions are deficient in multiple respects and do not provide
`
`Ericsson with sufficient information to understand the specific accused features and components
`
`and the alleged factual and evidentiary bases for KPN’s infringement allegations. Among other
`
`things, the Infringement Contentions lack the specificity required by P.R. 3-1, fail to properly
`
`identify accused instrumentalities, and fail to explain adequately KPN’s infringement theories for
`
`numerous limitations. KPN has prejudiced Ericsson’s ability to understand, for purposes of
`
`preparing these Preliminary Invalidity Contentions, what KPN alleges to be the scope of the
`
`Asserted Claims. If KPN modifies any assertion or contention in its Infringement Contentions, or
`
`presents any new assertion or contention relevant to these Preliminary Invalidity Contentions to
`
`the extent allowed by the Local Patent Rules or the Court, Ericsson reserves the right to
`
`supplement or otherwise amend these initial Invalidity Contentions.
`
`B.
`
`Priority Date Of The Asserted Patents
`
`KPN’s Infringement Contentions contain allegations regarding the priority date to which
`
`KPN alleges it is entitled for each of the Asserted Claims. Ericsson does not agree that KPN is
`
`entitled to the Asserted Priority Dates for each of the Asserted Claims, as KPN has failed to
`
`prove it is entitled to its Asserted Priority Dates.
`
`Any reference to an “asserted priority date” in these Preliminary Invalidity Contentions
`
`refers to the priority dates identified in KPN’s Infringement Contentions. Reference to a “priority
`
`date” or an “asserted priority date” should not be construed to mean that Ericsson agrees that any
`
`of the Asserted Patents are in fact entitled to such priority date, or that KPN has provided proper
`
`3
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 3 of 78
`
`
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`CONTAINS CONFIDENTIAL INFORMATION
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`notice as to its contentions for a priority date. 2 To the extent KPN alleges that any prior art relied
`
`on in these Preliminary Invalidity Contentions does not actually qualify as prior art to an
`
`Asserted Patent, Ericsson reserves the right to rebut those allegations (e.g., by demonstrating an
`
`earlier critical date for the challenged prior art and/or a later priority date for a particular
`
`Asserted Patent and/or Asserted Claim). 3 Likewise, to the extent KPN successfully establishes
`
`an invention date before any of the prior-art references relied on by Ericsson, then those
`
`references serve as evidence of obviousness, particularly, contemporaneous invention by others.
`
`C.
`
`Claim Construction
`
`Ericsson’s Preliminary Invalidity Contentions are based on (1) Ericsson’s present
`
`understanding of the Asserted Claims, (2) the claim constructions KPN appears to be proposing
`
`based on the Infringement Contentions, all without regard to whether Ericsson agrees with
`
`KPN’s apparent or expressed claim constructions, (3) the Court’s Markman Order in Koninklijke
`
`KPN NV v. Samsung Electronics America, Inc. et al., 2-14-cv-01165-JRG (E.D. Tex.), and (4)
`
`KPN’s positions taken in the Joint Claim Construction Brief (Dkt. No. 57) filed in KPN v.
`
`Xiaomi, 21-cv-00041-GBW-CJB (D. Del. June 10, 2022). Ericsson reserves the right to
`
`supplement or otherwise amend these Preliminary Invalidity Contentions in response to any
`
`proposed claim constructions or alleged supporting evidence offered by KPN, any report from
`
`any expert witness for KPN regarding claim construction issues, any claim construction briefing
`
`filed by KPN, and any position taken by KPN concerning claim construction, infringement, or
`
`invalidity.
`
`2 Ericsson reserves the right to rely on additional documents and evidence, including without
`limitation the documents cited in KPN’s Infringement Contentions, in the event that KPN fails to
`establish that any Asserted Claim of any Asserted Patent is entitled to its Asserted Priority Date.
`3 Ericsson reserves the right to rely on additional documents and evidence to rebut any efforts by
`KPN to allege any reference was not publicly available or otherwise available as prior art.
`
`4
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 4 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`Ericsson takes no position on any matter of claim construction in these Preliminary
`
`Invalidity Contentions. If Ericsson’s apparent claim constructions herein are consistent with any
`
`explicit, apparent, or implied claim constructions in the Infringement Contentions, no inference
`
`is intended and no inference should be drawn that Ericsson agrees with any of KPN’s claim
`
`constructions. Any statement herein describing or tending to describe any claim element is
`
`provided solely for the purpose of understanding and/or applying the cited prior art. Ericsson
`
`expressly reserves the right (1) to propose any claim construction Ericsson considers appropriate,
`
`(2) to contest any claim construction proposed by KPN that Ericsson considers inappropriate or
`
`inaccurate, and/or (3) to take positions with respect to claim construction issues that are
`
`inconsistent with, or even contradictory to, claim construction positions expressed or implied in
`
`these Preliminary Invalidity Contentions.
`
`Prior art not included in these Preliminary Invalidity Contentions, whether now known to
`
`Ericsson, might become relevant depending on the claim constructions proposed by Ericsson
`
`and/or the Court’s claim construction rulings. Ericsson reserves all rights to supplement or
`
`modify the positions and information in these Preliminary Invalidity Contentions, including
`
`without limitation the prior art and grounds of invalidity set forth herein, pursuant to P.R. 3-6
`
`after the Court has construed the Asserted Claims.
`
`D.
`
`Ongoing Discovery and Supplementation
`
`Ericsson’s investigation, including its investigation of prior art and grounds for invalidity,
`
`is ongoing. Furthermore, Ericsson’s invalidity positions will be the subject of expert testimony.
`
`Ericsson bases these Preliminary Invalidity Contentions on their current knowledge and
`
`understanding of the Asserted Claims, KPN’s Infringement Contentions, the prior art, systems,
`
`and other facts and information available as of the date of these contentions.
`
`5
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 5 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`Ericsson reserves the right to supplement these Preliminary Invalidity Contentions,
`
`including, without limitation, by adding additional prior art and grounds of invalidity in
`
`accordance with the Federal Rules of Civil Procedure, the Local Rules, the Local Patent Rules,
`
`the Docket Control Order, any Order issued by this Court, or otherwise.
`
`E.
`
`Prior Art Identification and Citations Thereto
`
`In these Preliminary Invalidity Contentions, Ericsson identifies specific portions of prior
`
`art references that disclose the elements of the Asserted Claims. While Ericsson has identified
`
`exemplary prior art references for each element, they do not necessarily identify every disclosure
`
`of the same element in each prior art reference. A person of ordinary skill in the art would read a
`
`prior art reference as a whole and in the context of other publications, literature, and general
`
`knowledge in the field and would rely upon other information including other publications and
`
`general scientific or engineering knowledge. Ericsson therefore reserves the right to rely upon
`
`other unidentified portions of the prior art references and on other publications and prior art
`
`products and expert testimony to provide context and to aid understanding and interpretation of
`
`the identified portions of the prior art.
`
`Ericsson also reserves the right to rely upon (1) other portions of the cited prior art
`
`references, other publications, prior art products, and the testimony of experts to establish that
`
`the alleged inventions would have been obvious to a person of ordinary skill in the art, including
`
`on the basis of modifying or combining certain cited references; (2) all versions of a cited prior
`
`art publication (e.g., citations to 3GPP technical specifications and/or reports include all
`
`versions of such technical specifications and/or reports that qualify as prior art, citations to an
`
`issued patent include the published patent application, etc.); (3) admissions relating to prior art in
`
`the Asserted Patents or related patents, the prosecution history of the Asserted Patents or related
`
`6
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 6 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`patents, or other admissions obtained during discovery; and (4) foreign counterparts of any U.S.
`
`patents identified in Ericsson’s Preliminary Invalidity Contentions.
`
`Where Ericsson identifies a particular figure in a prior art reference, the identification
`
`should be understood to encompass the caption and description of the figure as well as any text
`
`relating to the figure in the remainder of the prior art reference (e.g., for patent references, text in
`
`the specification and prosecution history). Similarly, where an identified portion of text refers to
`
`a figure or other material, the identification of the text should be understood to include the
`
`referenced figure or other material.
`
`All related prior art references that are themselves subparts or related documents of a
`
`broader set of documents, such as all references that form part of a single Release of an industry
`
`standard, should be considered a single prior art reference, as that is how a person of ordinary
`
`skill in the art would consider such related references.
`
`F.
`
`Invalidity, Unenforceability and/or Ineligibility Based On Non-Required
`Disclosure(s)
`
`Ericsson reserves the right to prove the invalidity, unenforceability and/or ineligibility of
`
`one or more of the Asserted Claims on bases other than those required to be disclosed in these
`
`disclosures pursuant to P.R. 3-3.
`
`G.
`
`No Patentable Weight
`
`Ericsson reserves the right to argue that various portions of the Asserted Claims, such as
`
`an intended use or result, non-functional descriptive material, and certain preamble language, are
`
`entitled to no patentable weight. Mapping of a portion of an Asserted Claim to a prior art
`
`reference does not represent that such portion of the claim is entitled to patentable weight when
`
`comparing the claimed subject matter to the prior art.
`
`II.
`
`Invalidity Contentions
`
`7
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 7 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`As explained herein and in Exhibits A to E, Ericsson contends that each of the Asserted
`
`Claims is invalid under 35 U.S.C. §§ 102, 103, and/or 112.
`
`A.
`
`P.R. 3-3(a) – Identification Of Prior Art
`
`Pursuant to P. R. 3-3(a), and subject to Ericsson’s reservation of rights as stated herein,
`
`Ericsson identifies the prior art that anticipates or renders obvious the Asserted Claims in the
`
`tables set forth below. 4 On information and belief, each listed reference qualifies as prior art to
`
`the Asserted Patents.
`
`To the extent that any of the following are prior art, Ericsson reserves the right to rely
`
`upon foreign counterparts of the U.S. patents identified herein; U.S. counterparts of foreign
`
`patents and foreign patent applications identified herein; and U.S. and foreign patents and patent
`
`applications corresponding to articles and publications identified herein. Ericsson also reserves
`
`the right to rely upon parent or provisional patents or ancestor patents or patent applications from
`
`which any of the patents or patent applications identified herein claim priority to as continuation,
`
`divisional, or continuation-in-part applications. Identifications of dates of publication are made
`
`based on currently available information and Ericsson reserves the right to rely upon an earlier
`
`date should evidence supporting an earlier date be discovered.
`
`
`
`
` 4
`
` Ericsson also hereby identifies any systems or products that embody the technology described
`in any patent or publication identified in these Preliminary Invalidity Contentions. Ericsson
`reserve the right to rely on any documents or other evidence regarding any such systems.
`
`8
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 8 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`1.
`
`Identification Of Prior Art
`
`a)
`
`The '705 Patent
`
`Patent/Publication No ./Document Name
`
`US6901580 ("Iwanojko")
`US6877051 ("Iwanojoko 051 ")
`US6801571 ("Hyziak")
`US6760761 (Sciacca)
`US6581095 ("Kim")
`US6389281 ("Lee")
`US6098098 ("Sandahl")
`KR20000037612 (''Yu")
`GB2324440 ("Matthews")
`EP1366578 ("Scherzer")
`TSGR3#8(99)F33 13.05 - Node B O&M
`Functional Description v 0.2. ("13")
`Tdoc S5-99130 ("S5-99130")
`DE19813754 ("Hirsch")
`US6978301 ("Tindal")
`US5434798 ("Madebrink")
`US6141565 ("Feuerstein")
`US6085335 ("Dioko")
`US6725032 ("Sheridan")
`US6611500 ("Clarkson")
`GB0022743.9 ("Shipman GB")
`WO02/23806 ("Shipman WO")
`EP1221786 ("Shipman EP")
`US7096173 ("Rappapo1t")
`
`Date of
`Issue/Publication/Priority 5
`May 31, 2005
`April 5, 2005
`October 5, 2004
`July 6, 2004
`June 17, 2003
`May 14, 2002
`August 1, 2000
`July 5, 2000
`October 21, 1998
`Febm ary 6, 2001
`
`October 1999
`
`June 1996
`April 6, 2000
`December 20, 2005
`July 18, 1995
`October 31, 2000
`July 4, 2000
`October 8, 1999
`November 4, 1999
`September 15, 2000
`March 21, 2002
`January 9, 2001
`June 22, 2006
`
`5 For any patent that claims the benefit of a provisional application(s), Ericsson may rely on the
`provisional application(s) for purposes of establishing invalidity. Ericsson may also rely upon
`the date of filing of any issued patent or patent application to show the priority date of that
`reference.
`
`9
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 9 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`b)
`
`The '772 Patent
`
`Patent/Publication No./Doclllllent Name
`
`13.05 -Node B O&M Functional Description v
`0.2.2 TSG-RAN Working Group 3 meeting #8
`TSGR3#8(99)F33 ("TSGR#8(99)")
`EP1928186B1
`https://www. broadband-
`f01um. org/technical/ download/TR-
`069 Amendment-2. pdf ("TR-069")
`US8019846 ("Rolens")
`https://www.ietf org/rfc/rfc3489. txt ("RFC3489")
`RFC 2131
`RFC 2132
`Kaminow (Selected Chapters)
`US7152117 ("Stapp")
`IP Routers McKeown
`EP1667359 ("van den Bosch")
`EP2053790 ("Wu")
`EP2515480 ("Wu")
`US8089953 ("Angelot P")
`US20040015572 ("Kang")
`US20030061315 ("Jin")
`US20090201830 ("Angelot")
`EP2124404B1 ("Ge")
`EP2106079 ("Ding")
`US20070268514 ("Freund 1 ")
`US20070268515 ("Freund 2")
`US20070268516 ("Freund 3")
`US20090150526 ("Wu")
`US8111631 ("Acke")
`US8125894 ("Jozef')
`US8150982 ("Zhang")
`EP2012502 ("Geng")
`US20040230965 (Okkonen")
`US20090086688 ("K vache")
`US6366780 ("Obhan")
`
`Date of
`Issue/Publication/Priority 6
`
`October 1999
`
`June 4, 2008
`
`December 2007
`
`September 13, 2011
`March 2003
`March 1997
`March 1997
`2008
`December 19, 2006
`2000
`June 7, 2006
`Aug 14, 2007
`Aug 14, 2007
`Jan 3, 2012
`Jan 22, 2004
`March 27, 2003
`August 13, 2009
`November 25, 2009
`September 30, 2009
`November 22, 2007
`November 22, 2007
`November 22, 2007
`June 11, 2009
`Febmarv 28, 2008
`Febmary 28, 2012
`March 4, 2010
`December 29, 2006
`November 18, 2004
`April 2, 2009
`April 2, 2002
`
`6 For any patent that claims the benefit of a provisional application(s), Ericsson may rely on the
`provisional application(s) for purposes of establishing invalidity. Ericsson may also rely upon
`the date of filing of any issued patent or patent application to show the priority date of that
`reference.
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 10 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`October 6, 2005
`December 25, 2007
`January 22, 2004
`June 7, 2006
`
`December 2005
`
`US 20050223374 (Wishart)
`US 7313606 (Donahue")
`US 20040015572 ("Kang")
`EP 1667359 (Van Den Bosch)
`Bathrick, G. (2005) applying TR-069 to Remote
`Management of Home Networking Devices. DSL
`Fornm TR-111.
`Nikolaidis, A. E., Papastefanos, S. S.,
`Stassinopoulos, G. I., Drakos, M . P., & Doumenis, May2006
`G . A. (2006).
`US 8060623 (VogeL Jr.)
`US20050060361 ("Chatrath")
`US20020073182 ("Zakurdaev")
`An Introduction to Packet Switching ("McKeown")
`
`December 1, 2005
`March 17, 2005
`July 12, 2002
`2000
`
`c)
`
`The '560 Patent
`
`Patent/Publication No./Document Name
`
`US2009/0191862Al ("Amiriioo")
`US8,175,601 ("Engstrom")
`WO2009/075620 Al ("Engstrom")
`US8165 590 ("Gunnarsson")
`US6188904 ("Marsan")
`US2007 /0097938Al ("Nylander")
`TSG-SA5 (Telecom Management)
`Repo1t of Meeting SA5#54, 25 - 29 June 2007,
`Orlando, FL USA ("S5-071401 ")
`S5-
`3GPP TSG-SA5 (Telecom Management)
`071254 Meeting SA5#54, 25 - 29 June 2007,
`Orlando, FL USA ("S5-071254")
`S5-
`3GPP TSG-SA5 (Telecom Management)
`070974 Meeting SA5#53, 07 - 11 May 2007,
`Sophia Antipolis, FRANCE ("S5-070974")
`3GPP TR 32.816 V0.2.0 ("S5-070862")
`3GPP TR 32.816 V0.3.0 ("S5-071060")
`3GPP TSG-RAN WG2 #58 R2-072044
`Kobe, Japan, May 7-11, 2007 ("R2-072044")
`3GPP TR 32.816 V l.0.0
`
`Date of
`Issue/Publication/Priority 7
`July 30, 2009
`May 8, 2012
`June 18, 2009
`April 24, 2012
`Febrnary 13, 2001
`May 3, 2007
`
`July 29, 2007
`
`June 18, 2007
`
`May 4, 2007
`
`May 7, 2007
`May 15, 2007
`
`May 4, 2007
`
`May2007
`
`7 For any patent that claims the benefit of a provisional application(s), Ericsson may rely on the
`provisional application(s) for purposes of establishing invalidity. Ericsson may also rely upon
`the date of filing of any issued patent or patent application to show the priority date of that
`reference.
`
`11
`
`Koninklijke KPN NV - Exhibit 2008
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 11 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`3GPP TR 32.816 Vl.3. 1
`3GPP TS 36.300 V8.7.0
`3GPP TS 36.300 V8.0.0
`3GPP TS 36.331 V8.7.0
`d)
`
`The '500 Patent
`
`Patent/Publication No ./Document Name
`
`WO 2011/072719 Al ("Eisl")
`US5999814 ("Cuffaro")
`us 2014/0109223 ("Jin 223")
`US6073010 ("Dufour")
`US9219744 ("Baliga")
`US 2004/0166857 ("Shim")
`US 2004/0166861 ("Trossen")
`US 2006/0230450 ("Bu")
`3GPP TSG-RAN WG2 #58bis R2-072411
`Orlando, USA ("R2-072411 ")
`3GPP TSG-RAN WG2 #77bis R2-121536
`Jeju, South Korea ("R2-121536")
`SAE and the Evolved Packet Core, Magnus
`0 ls son et al., Elsevier Academic Press, 2009
`("Olsson")
`Network Security Principles and Practices,
`Saadat Malik, Cisco Press, 2003 ("Malik")
`US5623535 ("Leung")
`
`e)
`
`The '098 Patent
`
`Patent/Publication No ./Document Name
`
`US5915225 ("Mills")
`US5546444 ("BellSouth")
`US2002/0125998 ("Petite")
`US9191774 ("Krco")
`
`November 2007
`January 5, 2009
`April 6, 2007
`September 29, 2009
`
`Date of
`Issue/Publication/Priority 8
`June 23, 2011
`December 7, 1999
`April 7, 2014
`June 6, 2000
`December 22, 2015
`Amrnst 26, 2004
`August 26, 2004
`October 12, 2006
`
`June 2007
`
`March 2012
`
`2009
`
`2003
`
`April 22, 1997
`
`Date of
`Issue/Publication/Priority 9
`June 22, 1999
`August 13, 1996
`September 12, 2002
`November 17, 2015
`
`8 For any patent that claims the benefit of a provisional application(s), Ericsson may rely on the
`provisional application(s) for purposes of establishing invalidity. Ericsson may also rely upon
`the date of filing of any issued patent or patent application to show the priority date of that
`reference.
`9 For any patent that claims the benefit of a provisional application(s), Ericsson may rely on the
`provisional application(s) for purposes of establishing invalidity. Ericsson may also rely upon
`the date of filing of any issued patent or patent application to show the priority date of that
`reference.
`
`12
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`
`
`CONTAINS CONFIDENTIAL INFORMATION
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`US7774008 ("Benaouda")
`ITU-T Recommendation 1.257.1
`ITU-T Recommendation Q.700
`ITU-T Recommendation Q.737.1
`ITU-T Recommendation Q.93 1
`ITU-T Recommendation Q.957.1
`3GPP TR 33.812
`3GPP TR 22.868
`3GPP TS 29.007
`3GPP TS 43.045
`
`Amrnst 10, 2010
`June 30, 1996
`May 16, 1994
`December 17, 1996
`May 11, 1999
`July 8, 1997
`September 2008
`March 2007
`June 2006
`December 2004
`
`2.
`
`Identification Of Prior Art Sales/Public Uses
`
`Item Offered for Sale and/or
`Publicly Used
`
`Date of Offer/Public
`Use
`
`Any product that utilizes the TR- Prior to the priority
`date of the '772 Patent
`069 standard.
`
`Ericsson 's Neighboming Cell
`Suooo1t (NCS) Applicat ion
`Any product having at least one
`of a Network Parameter
`Optimization Application and an
`expe1t system
`Automatic Neighbor Relation
`Technology Contributed to
`3GPP
`
`Prior to August 7,
`2008
`Prior to the priority
`date of the '705 Patent
`
`By June 25, 2007 to
`June 29, 2007
`
`MSC Products
`
`Prior to October 23,
`2007
`
`Person or Entity
`Who Made and
`Received Offer,
`Made Public Use, or
`Made Information Known
`Exemplar y companies may
`include N okia, Apple, Verizon,
`AT & T, and Ring Central
`Ericsson
`
`At least Ericsson and N okia
`
`Ericsson, T-Mobile, Alcatel-
`Lucent, AT &T, ORANGE SA,
`Nokia Siemens N etworks, N oitel
`Networks, HP, Huawei, China
`Mobile, Vodafone, Motorola,
`ZTE, ETSI
`At least Ericsson
`
`B.
`
`P.R. 3-3(b) - Anticipation And Obviousness
`
`Pursuant to P.R. 3-3(b), and subject to Ericsson 's reservation o frights, Ericsson attaches
`
`claim charts hereto that are directed to the prior rut references that anticipate each of the Asse1ted
`
`Claims under 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently, and/or the
`
`prior rut references that, in the alternative, would have rendered the Asserted Claims obvious
`
`13
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`
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`CONTAINS CONFIDENTIAL INFORMATION
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`under 35 U.S.C. § 103. See Exhibits A to E. Some claim charts also contain explanations about
`
`the motivation to combine the references. The combinations contained in Ericsson’s claim charts
`
`are exemplary. Any prior art reference cited herein may be combined with any other reference to
`
`demonstrate the invalidity of any of the Asserted Claims, as set forth below and in Exhibits A to
`
`E.
`
`To the extent any claim limitation is construed to have a similar meaning, or to
`
`encompass similar feature(s) and/or function(s), as any other claim limitation, the citations to
`
`prior art references for each of those claim limitations in Ericsson’s claim charts are incorporated
`
`by reference with respect to each other.
`
`Ericsson’s claim charts provide exemplary citations to the prior art references that teach
`
`or suggest every element of the Asserted Claims. To the extent that an element of an Asserted
`
`Claim is not shown in a chart, the Asserted Claims would have been obvious based on a
`
`combination of one or more other prior art references, as set forth below and in Exhibits A to E.
`
`Much of the art cited in these Preliminary Invalidity Contentions reflects common
`
`knowledge and the state of the art at the time of the earliest filing date of the Asserted Patents.
`
`Ericsson may rely on additional citations, references, expert testimony, and other material to
`
`provide context or to aid in understanding the cited portions of the references and/or cited
`
`features of the systems. Ericsson also may rely on expert testimony explaining relevant portions
`
`of references, relevant hardware or software products or systems, and other discovery regarding
`
`these subject matters. Additionally, Ericsson may rely on other portions of any prior art reference
`
`or other references relied on by the same authors or describing the same systems for purposes of
`
`explaining the background and general technical subject area of the reference.
`
`14
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`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
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`CONTAINS CONFIDENTIAL INFORMATION
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`Where an individual reference is cited with respect to all elements of an Asserted Claim,
`
`Ericsson contends that the reference anticipates the claim under 35 U.S.C. §§ 102(a), (b), (e),
`
`and/or (g) and also renders obvious the claim under 35 U.S.C. § 103, both by itself in view of the
`
`knowledge of a person of ordinary skill in the art and in combination with the other cited
`
`references to the extent the reference is not found to disclose one or more claim elements. A
`
`single prior art reference, for example, can establish obviousness where the differences between
`
`the disclosures within the reference and the claimed invention would have been obvious to one
`
`of ordinary skill in the art. For example, “[c]ombining two embodiments disclosed adjacent to
`
`each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific
`
`Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). To the extent KPN contends
`
`that an embodiment within a particular item of prior art does not fully disclose all limitations of a
`
`claim, Ericsson accordingly reserves its rights to rely on other embodiments in that prior art
`
`reference, or other information, to show single reference obviousness under 35 U.S.C. § 103(a).
`
`Where an individual reference is cited with respect to fewer than all elements of an
`
`Asserted Claim, Ericsson contends that the reference renders obvious the claim under 35 U.S.C.
`
`§ 103(a) in view of each other reference and combination of references that discloses the
`
`remaining claim element(s), as indicated in the claim charts submitted herewith. “Under § 103,
`
`the scope and content of the prior art are to be determined; differences between the prior art and
`
`the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art
`
`resolved. Against this background, the obviousness or nonobviousness of the subject matter is
`
`determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
`
`Deere Co., 383 U.S. 1, 17 (1966)).
`
`15
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`Page 15 of 78
`
`
`
`CONTAINS CONFIDENTIAL INFORMATION
`
`Exemplary motivations to combine references are discussed below and in the
`
`accompanying charts. Ericsson reserves the right to rely upon any references or assertions
`
`identified herein in connection with Ericsson’s contentions that each Asserted Claim is invalid
`
`under 35 U.S.C. § 103 and to rely upon expert testimony addressing such references and
`
`assertions. The fact that prior art is identified to anticipate the Asserted Claims presents no
`
`obstacle in also relying on that reference as a basis for invalidity based on obviousness. It is
`
`established that “a rejection for obviousness under § 103 can be based on a reference which
`
`happens to anticipate the claimed subject matter.” In re Meyer, 599 F.2d 1026, 1031 (C.C.P.A.
`
`1979). To the extent any cited prior art item may not fully disclose a limitation of an Asserted
`
`Claim or is alleged by KPN to lack disclosure of the limitation, such limitation is present and
`
`identified in another prior art item as shown in the attached claim charts.
`
`Many of the cited references cite or relate to additional references and/or products,
`
`services, or projects. Many of the cited references also cite software, hardware, or systems.
`
`Ericsson might rely upon such cited additional references and/or products and copies or
`
`exemplars of such software, hardware, or systems. Ericsson will produce or make available for
`
`inspection any such cited references, products, software, hardware, or systems that it intends to
`
`rely upon. Ericsson may also rely upon the disclosures of the references cited and/or discussed
`
`during the prosecution of the Asserted Patents and/or the assertions presented regarding those
`
`references.
`
`Ericsson reserves the right to further streamline and reduce the number of anticipation or
`
`obviousness references relied upon with respec