Trialsuspta gov
`571-I7822.
`
`Paper 22
`Date: February 13, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`V.
`
`COMMWORKSSOLUTIONS, LLC,
`Patent Owner.
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Before THU A. DANG, KEVIN C. TROCK,and
`JOHN R. KENNY,Administrative Patent Judges.
`
`KENNY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-I7822.
`
`Paper 22
`Date: February 13, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`V.
`
`COMMWORKSSOLUTIONS, LLC,
`Patent Owner.
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`Before THU A. DANG, KEVIN C. TROCK,and
`JOHN R. KENNY,Administrative Patent Judges.
`
`KENNY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2021-01297
`Patent 8,923,846 B2
`
`I.
`
`INTRODUCTION
`
`Unified Patents, LLC (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 1—6, 9-13, and 16—20 (“the challenged claims’’) of
`
`U.S. Patent No. 8,923,846 B2 (Ex. 1001, “the ’846 patent”). Paper 1
`
`(“Pet.”). CommWorksSolutions, LLC (“Patent Owner’’)filed a Preliminary
`
`Response. Paper 7 (Prelim. Resp.’’).
`
`On February 14, 2022, we instituted an interpartes review ofall
`
`challenged claims. Paper 8. Patent Ownerfiled a Patent Owner Response
`
`(Paper 12, “PO Resp.”), and Petitionerfiled a Reply (Paper 15,
`
`“Pet. Reply”). Patent Ownerdid notfile a Sur-reply. A transcript of an oral
`
`hearing held on November 16, 2022 (Paper 21, “Tr.”) has been entered into
`
`the record.
`
`Wehavejurisdiction under 35 U.S.C. § 6. For the reasons discussed
`
`below, we determinethat Petitioner has shown, by a preponderanceofthe
`
`evidence, that claims 1—6, 9-13, and 16—20 are unpatentable.
`
`RelatedProceeding
`A.
`The parties identify CommWorks Solutions, LLC v. Comcast Cable
`
`Communications, LLC, Case No. 6:21-cv-00366-ADA (W.D. Tex.) asa
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`related matter involving the ’846 patent (“Related Litigation”). Pet. 62;
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`Paper4, 1.
`
`B.
`
`846 Patent
`
`The 846 patent, titled “Recovery Techniques in Mobile Networks,”
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`wasfiled on October 21, 2013,! and issued on December30, 2014.
`
`Ex. 1001, codes (22), (45), (54). Embodiments ofthe ’846 patentrelate to
`
`' The ’846 patent claimspriority, through a series of continuation
`applications and a divisional application, to application No. 09/802,861,
`filed on March 12, 2001. Ex. 1001, code (60).
`
`2
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`
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`IPR2021-01297
`Patent 8,923,846 B2
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`“technique[s] for recovering location information of a subscriber in a mobile
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`network.” /d. at 1:54-2:16; see also id. at code (57) (“A technique for
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`protecting location information of a subscriber in a mobile network1s
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`disclosed.”’).
`
`The specification of the ’846 patent (“Specification”) explains that
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`“Mobile IP v6!?! allows a subscriber to move from onelink to another
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`without changing its IP address.” Ex. 1001, 3:11—-12. “While a subscriberis
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`attached to some foreign link away from home,it is also addressable by one
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`of more care-of-addresses, in addition to its home address.” /d. at 3:30—32.
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`The ’846 patent describes that a “care-of address is an IP address associated
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`with a mobile node while the subscriberis visiting a particular foreign link.”
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`Id. at 3:30—34. Forthis to work, “a mobile subscriber registers oneofits
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`care-of addresses with a router on its home link, requesting this router to
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`function as the “home agent.’” /d. at3:49-51. The home agent then
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`“intercept[s] any IP v6 packets addressed to the subscribers’ home address
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`(or home addresses) on the homelink and tunnels each intercepted packet to
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`the subscribers’ primary care-of address.” /d. at 3:59-62.
`
`The ’846 patent “relates to protecting the Transport Address (TA)
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`whichis a current Care of Address of a mobile subscriber is reachable from
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`loss and after Call State Control Function (CSCF) crashesandafter reset
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`situations of a network elementrealizing CSCF functionality.” Ex. 1001,
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`1:22—27. The Specification describes embodiments in the context of a 3G
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`All-IP mobile network. See id. at 6:22—26. Ina 3G All-IP network, the
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`“S-CSCF [servicing-CSCF] that the subscriber is currently registered to and
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`the TA of the roaming subscriber. .
`
`. must be known to and maintained by
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`* Internet Protocol Version 6. See Ex. 1001, 4:30-31.
`
`3
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`IPR2021-01297
`Patent 8,923,846 B2
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`the network.” /d. at2:63—67. Specifically, “[k]eeping the address of the
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`S-CSCF ensuresthatacall to a subscriber can be routed to the destination
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`node,” and “[k]eeping the current TA of the subscriber ensuresthatacall
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`madeto the subscriber which arrives at the S-CSCFcanfinally reach the
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`subscriber.” /d. at 3:66—4:3. But, “the information of the current S-CSCF
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`(stored in the HSS [HomeSubscriber Service]) is insufficient to reach the
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`subscriber uponthe loss of the subscriber TA.” /d. at 4:15-17. The
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`Specification proposes several options to remedy this problem, including
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`that “[t]he TA of the subscriber should be forwarded to the HSS at
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`registration and downloaded from the HSS to the S-CSCF during recovery.”
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`Id. at 4:27-29.
`
`Figure 4A ofthe ’846 patent, reproduced below,illustrates an
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`embodimentfor “sending subscriber TA to S-CSCF and then forwardingit
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`to HSS at registration” (id. at 2:39—40):
`
`FIG. 4A
`
`HSS
`
`RISE
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`1. INCOMING CALL
`ed
`2. LOOK UP FOR TA & DATA OF CALLED SUBSCRIBER FAILS
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`Pd
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`3. RESTORE TA & DATA FROM HSS TO S-CSCF
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`| 4, CALL TO SUBSCRIBER ROUTED BY RECOVERED TA
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`
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`IPR2021-01297
`Patent 8,923,846 B2
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`Ex. 1001, Fig. 4A. In the embodiment shown in Figure 4A above, “‘a safe
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`copy’ of the subscriber’s TA is forwardedto the HSS for storage and
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`protection”so that “[t]he TA and other data can then be restored to the S-
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`CSCFuponthe earlier loss of data by the S-CSCF.” /d. at4:37-42. In
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`particular, in step 1, “[a]n incoming call from an REP (Remote End-Point) is
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`received by the S-CSCF.” /d. at 4:43-45. “In step 2, the S-CSCFlooks for
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`the subscriber’s TA so asto route the call but fails to find the subscriber’s
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`TA.” /d. at 4:45—-46. The S-CSCFtheninitiates restoration of the TA in
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`step 3, and the call is routed to the subscriber using the recovered TA in step
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`4. Id. at4:46—-51.
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`C.
`
`Challenged Claims
`
`Of the challenged claims, claims 1, 9, and 16 are independent.
`
`Ex. 1001, 6:31-8:18. Claims 2—6 depend from claim 1; claims 10—13
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`depend from claim 9; and claims 17—20 depend from claim 16.
`
`/d.
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`Independentclaim 1 is reproducedbelow.
`
`1.
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`[1P]* A method comprising:
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`[1.1] receiving, from a first server at a second server, a
`transport address and an addressofthefirst server;
`
`[1.2] receiving, at the second server, a request from the
`first server to restore the transport address; and
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`[1.3] in response to the request from the first server to
`restore the transport address, communicating the transport
`address to the first server from the second server.
`
`Td. at 6:31-38.
`
`3 For ease of reference, we use the designationsset forth in the Petition for
`the preambles and limitations of the challenged claims.
`
`5
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`
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`IPR2021-01297
`Patent 8,923,846 B2
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`D.
`
`AppliedReferences
`
`Petitioner relies on the following referencesin the asserted grounds.
`
`Pet. 8.
`
`U.S. Patent No. 6,788,936 B1 (“Rune”)
`
`Sept. 7, 2004
`
`Ex. 1003
`
`
`
`European Telecommunications Standards
`Institute, Digital cellular
`telecommunications system (P hase 2+);
`Mobile Application Part (MAP)
`specification (GSM 09.02) (version 5.3.0)
`(“ET Sr’)
`
`4
`
`Aug. 1996
`
`Ex. 1004
`
`
`
`U.S. Patent No. 6,611,516 B1 (“Pirkola”)|Aug. 26, 2003 Ex. 1005
`
`Petitioner also relies on two declarations from its expert, Dr. Haas:
`
`Declaration of Zygmunt J. Haas, Ph.D. (Ex. 1008) and the Supplemental
`
`Declaration of Zygmunt Haas, Ph.D. (Ex. 1023). Patent Ownerhas not
`
`submitted an expert declaration in this proceeding.
`
`* Petitioner submits the Declaration of Sylvia D. Hall-Ellis, Ph.D.attesting
`that ETSI waspublicly available as of August 1996. Pet. 14-16 (citing
`Ex. 1006 §{] 22-31). Petitioner contends ETSIisprior art to the challenged
`claims at least under 35 U.S.C. §§ 102(a), (b). Pet. 14. PatentOwner does
`not challenge the status of this reference asprior art. See generally PO
`Resp. After reviewing the record, we determine that Petitioner has proven
`that ETSI qualifies as a prior art printed publication. See Hulu, LLCv.
`Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec.20,
`2019) (precedential).
`
`
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`IPR2021-01297
`Patent 8,923,846 B2
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`EB.
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`Asserted Grounds
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`Petitioner sets forth its challenges to claims 1—6, 9-13, and 16—20 on
`
`the following grounds. Pet.8.
`
`1-5, 9-12, 16-19
`
`103(a)>
`
`Rune, ETSI
`
`
`
`
`
`1, 4-6, 9, 12,13, 16,19,20|103(a) Pirkola, Rune, ETSI
`
`A.—Legal Standards
`
`I.
`
`ANALYSIS
`
`Petitioner must demonstrate unpatentability by a preponderance ofthe
`
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. §42.1(d). “In an [interpartes
`
`review], the petitioner has the burden from the onset to show with
`
`particularity why the patentit challenges is unpatentable.” Harmonic Inc.v.
`
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`
`§ 312(a)(3) (requiring interpartes review petitions to identify “with
`
`particularity . .. the evidence that supports the groundsfor the challenge to
`
`each claim’’)). This burden of persuasion nevershifts to Patent Owner. See
`
`Dynamic Drinkware, LLC v. Nat’] Graphics, Inc. , 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015) (discussing the burden ofproofin interpartes review).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented andthe prior art are such
`
`that the subject matter as a whole would have been obviousat the time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`> Becausethe application leading to the ’846 patent has an earliest effective
`filing date before March 16, 2013, patentability is governed by the version
`of 35 U.S.C. §§ 102 and 103 preceding the Leahy-Smith America Invents
`Act (“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011).
`
`7
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`IPR2021-01297
`Patent 8,923,846 B2
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`subject matter pertains.” KSR Int’] Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousnessis resolved on the basis of underlying
`
`factual determinations including: (1) the scope and contentof the priorart;
`
`(2) any differences between the claimed subject matter and the priorart;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness.° Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`An obviousnessanalysis “need not seek out precise teachings directed to the
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`specific subject matter of the challenged claim, for a court can take account
`
`of the inferences and creative steps that a person ofordinary skill in the art
`
`would employ.” ASR, 550 U.S. at 418; accordIn re Translogic Tech., Inc.,
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`504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner cannotsatisfy its
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`burden of proving obviousness by employing “mere conclusory statements.”
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`Inre Magnum Oil Tools Int’l, Ltd. , 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Instead, Petitioner mustarticulate a reason whyan ordinarily skilled artisan
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`would have combinedthe prior art references. /n re NuVasive, 842 F.3d
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`1376, 1382 (Fed. Cir. 2016).
`
`Weanalyzethe asserted grounds of unpatentability in accordancewith
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`these principles to determine whetherPetitioner has metits burden ofproof.
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`Level ofOrdinary Skill in the Art
`B.
`Wereview the groundsof unpatentability in view of the
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`understanding of an ordinarily skilled artisan at the time of the invention.
`
`Graham, 383 U.S. at 17. Petitioner contends that a person having ordinary
`
`skill in the art would have had “(1) an undergraduate degree in electrical
`
`engineering orclosely related scientific field, such as computer engineering,
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`° The parties have not asserted or otherwise directed our attention to any
`objective evidence of non-obviousness.
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`8
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`Patent 8,923,846 B2
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`or similar post-undergraduate education; and (2) at least two years of
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`experience in mobile telecommunications, with more education substituting
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`for less experience and vice versa.” Pet. 5—6 (citing Ex. 1008 4 30-32).
`
`Patent Ownerdoesnot contest Petitioner’s definition of an ordinarily skilled
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`artisan. See generally PO Resp.
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`Weadopt Petitioner’s proposed description of an ordinarily skilled
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`artisan asit 1s supported by Dr. Haas’s testimonyandis consistent with the
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`°846 patent and the assertedpriorart.
`
`C.
`
`Claim Construction
`
`Forthis interpartes review proceeding claim terms
`
`shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under
`35 U.S.C.
`[§] 282(b),
`including
`construing the claim in
`accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the
`prosecution history pertaming to the patent.
`
`37 C.F.R. § 42.100(b) (2019). Further, “[a]ny prior claim construction
`
`determination concerning a term ofthe claim in a civil action, or a
`
`proceeding before the International Trade Commission,that is timely made
`
`of record in the inter partes review proceeding will be considered.” /d.
`
`Underthe standardset forth in Phillips v. AWH Corp., 415 F.3d 1303,
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`1312-19 (Fed. Cir. 2005) (en banc), claim termsare given their ordinary and
`
`customary meaning, as would have been understood by a person of ordinary
`
`skill in the art at the time of the invention, in light of the language of the
`
`claims, the specification, and the prosecution history of record. See Thorner
`
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365—66 (Fed. Cir. 2012).
`
`Only those claim termsthat are in controversy need to be construed, and
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`only to the extent necessary to resolve the controversy. Nidec Motor Corp.
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`
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`IPR2021-01297
`Patent 8,923,846 B2
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`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`
`2017).
`
`1. TransportAddress
`
`Petitioner requests that we construe the term “transport address,”
`
`whichis recited in challenged claims 1, 4—6, 9, 12, 13, 16, 19, and 20.
`
`Pet. 6-7.
`
`a. Parties’ Arguments
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`Petitioner contendsthe term transport address should be construed as
`
`“the current address, other than its home address, through which the mobile
`
`subscriber can be reached, such as when a mobile subscriber has roamed
`
`outside of its home network.” Pet. 6 (emphasis omitted). Petitioner argues
`
`that the Specification describes a transport address as “the current address
`
`wherethe subscriber is reachable.” /d. (quoting Ex. 1001, 5:10—18).
`
`Petitioner further arguesthat the Specification refers to a transport addressas
`
`a location or identity information and describes as an objective of the
`
`Specification protecting location information of a subscriber in a mobile
`
`network because the S-CSCF’ (servicing-call state control function) may
`
`have no recordof the subscriberidentity due to a restart or another event.
`
`Id. at 6—7 (citing Ex. 1001, code (57), 1:54—2:3).
`
`Petitionerasserts that the Specification distinguishes the transport
`
`address from the mobile subscriber’s home addressby noting that the
`
`transport addressis not the static home address, but instead is a temporary
`
`current address wherethe subscriber can be reached.
`
`/d. at 7 (citing
`
`Ex. 1001, 5:14—21). Further, Petitioner argues that the Specification
`
`7 Petitioner identified this function as S-SCSF, but that appears to be a
`typographical error becausethe abstract, which Petitioner quoted,identifies
`the function as S-CSCF. Pet. 7; Ex. 1001, code (57).
`
`10
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`IPR2021-01297
`Patent 8,923,846 B2
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`describes the transport address as the current Care of Address of a mobile
`
`subscriber.
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`/d. In addition, Petitioner asserts that the Specification discloses
`
`that the care of addressalternatively servesas part of the transport address.
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`Id. (citing Ex. 1001, 5:14—21).
`
`In its Preliminary Response, Patent Owner proposedconstruing the
`
`term “transport address”as an “IP address associated with a mobile node
`
`while the subscriberis visiting a particular foreign link.” Prelim. Resp.3.
`
`ForourInstitution Decision, we accepted Petitioner’s proposed
`
`construction. Inst. Dec. 11—14. We indicated that the doctrine of claim
`
`differentiation with respect to claims 1 and 6 supported Petitioner’s
`
`proposed construction over Patent Owner’s. /d. at 12. We further indicated
`
`that the Specification teachesthatits applications are not limited to All-IP
`
`mobile networksand thus the term transport address should not be construed
`
`to require an IP address.
`
`/d.
`
`In its Response, Patent Owneragain proposesthat“a transport
`
`address” should be construed as an “IP address associated with a mobile
`
`node while the subscriberis visiting a particular foreign link.” PO Resp.5.
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`Patent Ownerarguesthat prosecution history for the priority ’861
`
`application®, sets forth that “the [transport address] is defined as the Care of
`
`Address which is an IP address associated with a mobile node.” /d. at6
`
`(quoting Ex. 2007, 28) (emphases by Patent Owner). Patent Ownerfurther
`
`arguesthat the Specification expressly defines the term transport address as
`
`a current Care of Address of a mobile subscriber.
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`/d. at 6 (citing Ex. 1001,
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`1:22—24),
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`8 US Serial No. 09/802,861.
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`11
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`Patent Ownerarguesthat the Specification teachesthat “care of
`
`address is an IP address associated with a mobile node while the subscriber
`
`is visiting a particular foreign link.” PO Resp. 6 (quoting Ex. 1001, 3:32-
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`34.). Patent Ownerfurtherasserts that the 846 patent and the prosecution
`
`history of the ’861 priority application explicitly reference an IP address and
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`refer to the problem and identified solution of successfully routing to a
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`subscriber within 3G All-IP networks.
`
`/d. at7. Patent Owneralso argues
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`that the written description of the ’846 patent and the prosecution history of
`
`the 861 priority application overcome any presumptionarising from claim
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`differentiation.
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`/d. at9. Further, Patent Ownerasserts that there is no
`
`support for the requirementin Petitioner’s construction that the transport
`
`address not bea home address.
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`/d. at 10. In addition, Patent Ownerargues
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`that the Western District of Texas construed the term “transport address”to
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`be an IP address.
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`/d. at 11.
`
`In its Reply, Petitioner argues that the statements in the Specification
`
`of the *846 patent that (1) a transport address is a care of address and(11) a
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`care of address is an IP address do not show a clear intent to redefine the
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`term transport address. Pet. Reply 4. Further, Petitioner asserts that claim
`
`differentiation supports its proposed construction.
`
`/d. at5. Petitioner argues
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`that, even if a transport addresses must comprise a care of address, that does
`
`not mean the transport address must be an IP address because the
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`Specification does not define a transport address to be a specific type of
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`care-of address in a specific network.
`
`/d. at 5—6.
`
`Petitioner contendsthat the prosecution of the ’861 priority
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`application does not support Patent Owner’s proposed construction because
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`the claims of the ’861 priority application were amendedto recite that a
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`12
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`transport address was a care of address. Pet. Reply 7-8. Further, Petitioner
`
`arguesthat the district court’s construction of transport address is not
`
`pertinent becausethelitigation parties did not dispute whethera transport
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`address was a care of address.
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`/d. at9. Petitioner also argues that the Board
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`need not reach the dispute betweenthe parties as to whether a transport
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`address can bea home address.
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`/d. at 10. Petitioner argues that noneofits
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`grounds mapthe transport address toa home address.
`
`/d.
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`b. Analysis
`Weconstrue a transport addressas “the current address through which
`
`the mobile subscriber can be reached,” which1s Petitioner’s proposed
`
`construction excluding Petitioner’s proposed requirementthat a transport
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`address excludes a home address.
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`The Specification supports the above construction. The Specification
`
`describes a transport address as “the current address where the subscriberis
`
`reachable.” Ex. 1001, 5:14-18. Moreover, Patent Ownerdoesnotdispute
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`that a transport address is a current address where the mobile subscriber can
`
`be reached. PO Resp. 4—13.
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`Asdiscussed above, Patent Ownerarguesthat a transport address
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`should not be construed,as Petitionerinitially proposed, to exclude home
`
`addresses. PO Resp. 10-11. As further discussed above, however,
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`Petitioner agrees that the construction of transport addressin this proceeding
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`does not need to exclude home addresses. Pet. Reply 10-11. In light of the
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`parties’ agreementon this issue, our construction does not exclude home
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`addresses.
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`Asdiscussed above, Patent Ownerfurther argues that a transport
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`address should be construed to require an IP address, specifically an IP
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`13
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`address associated with a mobile node while the subscriberis visiting a
`
`particular foreign link. PO Resp. 6-10. Wedisagree.
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`Werecognize that the Specification discloses that a transport address
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`can be a current Care of Address andthat the latter can be an IP address. In
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`particular, the Field section of the Specification discloses: “[m]ore
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`particularly, the present disclosure relates to protecting the Transport
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`Address (TA) whichis a current Care of Address of a mobile subscriberis
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`reachable from loss.” Ex. 1001, 1:21—25. The Detailed Description ofthe
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`Preferred Embodimentsstates: “[a] care-of address is an IP address
`
`associated with a mobile node while the subscriberis visiting a particular
`
`foreign link.” /d. at 3:32—34. We do not, however,interpret these combined
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`disclosures from the Field section and Detailed Description of the Preferred
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`Embodiments as requiring that every transport address have an IP address.
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`The Specification makesclear that its disclosure 1s not limited to 3G
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`All-IP mobile networks: “the example embodiments ofthe present invention
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`have been described with respect to currently used networks, such as 3[G]
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`All-IP mobile networks, and standards for simplicity.
`
`It 1s, of course,
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`understood that the present invention is not limitedthereto.” Id. at 6:22—27
`
`(emphasis added). We credit Dr. Haas’s testimony that limiting the term
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`“transport address”to an IP address would limit the invention in a manner
`
`that is inconsistent with the above disclosure. Ex. 1023 95. We further
`
`credit Dr. Haas’s testimony that the term IP address waswell knownbythe
`
`effective filing of the ’846 patent, and that the choice by the Applicants to
`
`instead use the broader term transport addressindicates that the Applicants
`
`did not intend to limit the claimed invention to IP networks.
`
`/d.
`
`14
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`IPR2021-01297
`Patent 8,923,846 B2
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`Asdiscussed above, Patent Ownerarguesthat the claimed invention
`
`could be limited to IP networks evenif it were not limited to 3G All-IP
`
`networks. PO Resp. 9-10. Patent Ownerproposesthat the claimed
`
`invention could encompasslater LTE and 5G networksandthus the term
`
`transport address should be construed to require an IP address.
`
`/d. at 10.
`
`Wedo notread the above passage from the Specification that the claimed
`
`invention is not limited to 3G All IP mobile networks as nevertheless
`
`limiting the claimed invention to 3G All IP mobile networksandlater
`
`developed IP networks. The plain language of that passage does not support
`
`such an interpretation (Ex. 1001, 6:22—27; Ex. 1023 4 5), and if Applicants
`
`had wantedto so limit that description, they easily could have doneso.
`
`Ex. 1023 45.
`
`The only evidence Patent Ownercites for its interpretation ofthe
`
`description in the Specification that the claimed inventionis not limited to
`
`3G All IP networksis a 2019 article (Ex. 2008) that describes 5G networks.
`
`POResp. 10 n. 4; Ex. 2018. This article may demonstrate that, by 2019,
`
`yearsafter the issuance of the ’846 patent (in 2014), 5G was a recognized IP
`
`technology. Ex. 2008. That fact, however, provides no evidencethat, as of
`
`the effective filing date or date of invention, an ordinarily skilled artisan
`
`would have viewedthe claimed invention as limited to 3G All-IP mobile
`
`networksand future IP networksthat had yet to be developed. Ex. 1001,
`
`code (45); Ex. 2018; Ex. 1023 95. Further, Patent Ownerprovides no
`
`expert testimony to support this claim construction argument. PO
`
`Resp. 5-11.
`
`Second, claim differentiation supports construing a transport address
`
`as not being limited to an IP address. As mentioned, Patent Ownerargues
`
`15
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`IPR2021-01297
`Patent 8,923,846 B2
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`that a transport address should be limited to an IP address because in the
`
`specification (1) a transport addressis limited to a care of address and (11) a
`
`care of addressis limited to an IP address. PO Resp. 5—6. Thus, Patent
`
`Owner’s proposed construction of a transport address as an IP address1s
`
`premised on limiting a transport address to be a care of address. As noted in
`
`our Institution Decision, however, and as not disputed by Patent Owner,
`
`limiting a transport address to be a care of address would renderthe
`
`additional recitations of dependentclaim 6 (versus claim 1) superfluous. As
`
`we explained in the Institution Decision, underthe doctrine of claim
`
`differentiation, such a constructionis disfavored:
`
`[C]laim 6, which dependsfrom claim 1, further recites “wherein
`the transport address comprises a care-of-address of a mobile
`subscriber.” Ex. 1001, 6:48—49. Construing transport addressto
`be limited to the care-of-address would render claim 6
`superfluous. See Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d
`1325,
`1330 (Fed. Cir.
`2004)
`(‘The doctrine of claim
`differentiation ‘create[s] a presumption that each claim in a
`
`
`
`patent a=differenthas scope.’” (quoting Comark
`
`
`Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187
`(Fed. Cir. 1998))).
`
`Inst. Dec. 12.
`
`Patent Ownerdoesnotdispute that its proposed construction would
`
`renderthe additionalrecitations of claim 6 (versus claim 1) superfluous. PO
`
`Resp. 5—13. Patent Owner, however, argues that the written description and
`
`prosecution history of a patent can overcome any presumption arising from
`
`the doctrine of claim differentiation.
`
`/d. at 8-9. Although we agreethat the
`
`written description and prosecution of a patent can overcome a presumption
`
`arising from the doctrine of claim differentiation, we do not agree that the
`
`16
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`IPR2021-01297
`Patent 8,923,846 B2
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`written description and prosecution of the ’846 patent overcomesthe
`
`presumption of claim differentiation between claims1 and6.
`
`The written description of the ’846 patent merely teachesthatits
`
`disclosure “relates to protecting the Transport Address (TA) whichis a
`
`current Care of Address of a mobile subscriber 1s reachable from loss.”
`
`Ex. 1001, 1:21—25 (emphasis added). It does not teach that, underall
`
`circumstances, the transport address must be a current care of address.
`
`/d.
`
`Further, the Specification disclosesthat its invention is not limited to the IP
`
`network it describes in its disclosed embodiments.
`
`/d. at 6:22—27. Thus, the
`
`Specification does not overcome the presumption of claim differentiation
`
`between claims 1 and 6. See ln re Am. Acad. ofSci. Tech. Ctr., 367 F.3d
`
`1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations
`
`into a claim from the preferred embodiment described in the specification,
`
`even if it is the only embodiment described, absentclear disclaimer in the
`
`specification.”); e.g., Baxalta Inc. v. Genentech, Inc. , 972 F.3d 1341, 1346-
`
`48 (Fed. Cir. 2020) (reversing district court finding that the statement
`
`“Ta|ntibodies are immunoglobulin molecules .
`
`. .” defined “antibodies,”
`
`observing that such a construction would read out other examples in the
`
`specification and invalidate dependentclaims).
`
`Further, the prosecution history of the ’861 priority application does
`
`not support construing a transport address to be an IP address. As Patent
`
`Ownernotes, during the prosecution ofthe ’861 priority application,
`
`Applicants stated: “[t]he TA [transport address] is defined as the Care of
`
`Address whichis an IP address associated with a mobile node.” PO Resp.6
`
`17
`
`
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`IPR2021-01297
`Patent 8,923,846 B2
`
`(quoting Ex. 2007, 28°). Applicants madethis statement in their March 1,
`
`2004 Amendment, in which Applicants also amendedpending claim 1 to
`
`expressly recite that that the subscriber’s transport addressis a current care
`
`of address of the subscriber. Ex. 2007, 1, 14,28. As amended, pending
`
`claim 1 read (with additions underlined and omissionsstruck through):
`
`1. (Currently Amended) A methodofrecovering location
`information of a subscriber in a mobile network, the method
`comprising:
`
`forwarding a registration request from the subscriberto an
`S-CSCE-a ¢Serving-Call State Control Function} (S-CSCF)
`including the subscriber’s FA €Transport Address} (TA) which
`is a current Care ofAddress of the subscriber;
`
`forwarding a location update from the S-CSCF toan-HSS
`¢a Home Subscription Server (HSS) including the subscriber's
`TA and the-an address of the S-CSCFaddress; and
`
`storing data including the subscriber's TAin the HSS so as
`to be protected againstloss.
`
`Id. at 14. The fact that in the March 1, 2004 Amendment, Applicant stated
`
`that the transport addressis defined as the Care of Address does not support
`
`construing the term “transport address”ofthe challenged claimsaslimited
`
`to a care of address. Applicant expressly amended pending claim 1 of the
`
`°861 priority application to define a transport addressas a care of address.
`
`Id. at 1, 14,28. None of the challenged independent claims have such a
`
`recitation. !° Ex. 1001, 6:31-8:18. Further, we agree with Petitionerthat, if
`
`anything, this amendment showsthat the term transport address need not be
`
`” Patent Ownerand wecite to the page numbersthat Patent Owner added
`whenpreparing this exhibit, rather than the amendment’s original page
`numbers.
`© Dependentclaims 6, 13, and 20 each recite “wherein the transport address
`comprises a care-of-address of a mobile subscriber.” Ex. 1001, 6:48-8:18.
`
`18
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`IPR2021-01297
`Patent 8,923,846 B2
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`a Care of Address because Applicant found it necessary to add sucha
`
`recitation to the pending claim to so limit its clam. Ex. 2007, 1, 4, 28; Pet.
`
`Reply 9.
`
`Third, the district court in the Related Litigation did not substantively
`
`address the issue of whether the term “transport address” should be limited
`
`to an IP address. As Patent Ownernotes (PO Resp.11), the district court
`
`construed a transport addressto be an IP address, providing the following
`
`construction for transport address:
`
`IP address associated with a mobile node while the subscriberis
`visiting a particular foreign link. Note: transport address 1s
`different than a static home address.
`
`Ex. 2001, 6. Neither party, however, has provided us with any analysis by
`
`the district court for this construction (and the district court appears not to
`
`haveissued any such analysis). See Tr. 34. Further, each proposed
`
`construction bythelitigation parties defined the term “transport address”as
`
`an IP address. Ex. 2006, 16. Thus, the district court was not presented with
`
`a dispute betweenthelitigation parties as to whether the term “transport
`
`address” should be construed as an IP address. Without sucha dispute
`
`before the district court, and without any analysis from the district court
`
`regarding its construction, the district court’s construction 1s not helpful to
`
`us in resolving whetherthe term “transport address” should be limited to an
`
`IP address.
`
`Weconstrue a transport addressas “the current address through which
`
`the mobile subscriber can be reached.”
`
`19
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`IPR2021-01297
`Patent 8,923,846 B2
`
`D.—Overview ofthe AssertedReferences
`
`I. Rune
`
`Runeis titled “Gateway Location Register Fault Recovery.”
`
`Ex. 1003, code (54). Rune “relates to mobile communications systems, and
`
`more specifically, to recovery of a gateway location register from a fault.”
`
`Id. at 1:36-38. Figure 1 of Rune is reproduced below.
`
`FIG.
`
`Figure 1 above “illustrates a wireless communication system in accordance
`
`with the Global System for Mobile communication (GSM) standard.” /d. at
`
`1:39-41. Rune explains that, in the GSM standard, a “mobile subscriber
`
`typically has a subscription with a network which1s designated as the
`
`mobile subscriber’s home public land mobile network 110 CHPLMN).” /d.
`
`at 1:45-48. The HPLMN 110 includes homelocation register 115 (HLR).
`
`Id. at 1:48-49. Runefurther explains that, when a mobile subscriberis
`
`20
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`
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`IPR2021-01297
`Patent 8,923,846 B2
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`roaming, the “visited public land mobile network 120 (VPLMN)... requires
`
`certain data regarding the mobile subscriber’s subscription.” /d. at 1:51—54.
`
`“The mobile subscriber’s profile is transferred from the HLRtoavisitor
`
`location register (VLR) in the VPLMN,”(e.g., MSC/VLR 130 or 135). Jd.
`
`at 1:56—-58; see id. at 1:59-2:7. Rune specifies that “[t]he protocol used by
`
`GSM/UMTS (Universal Mobile Telecommunications System) systemsfor
`
`transferring data between VLRs and HLRs1s the mobile applications part
`
`(MAP).” Id. at 2:39-41.
`
`Figure 5 of Rune 1s reproduced below.
`
`VR
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