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UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

NOKIA SOLUTIONS AND NETWORKS US LLC; AND NOKIA SOLUTIONS

AND NETWORKS OY,

Petitioners

v.

HUAWEI TECHNOLOGIES CO. LTD.,

Patent Owner

____________

Case: IPR2017-00658

U.S. Patent No. 8,537,779

____________

PETITIONERS’ EXHIBIT NO. NSN779-1003

DECLARATION OF MARK LANNING

Exhibit NSN779-1003, page i

TABLE OF CONTENTS

I. INTRODUCTION ....................................................................................... 1

II. PROFESSIONAL BACKGROUND .......................................................... 1

III. SCOPE OF THE ENGAGEMENT............................................................ 4

IV. PERSON OF ORDINARY SKILL IN THE ART..................................... 8

V. LEGAL UNDERSTANDINGS................................................................... 9Claim Interpretation............................................................................. 9Prior Art............................................................................................. 11Anticipation ....................................................................................... 11Obviousness....................................................................................... 12

Motivation to Combine ........................................................... 14Secondary Considerations ....................................................... 16

Date of Invention............................................................................... 17

VI. OVERVIEW OF THE ’779 PATENT ..................................................... 18

VII. BACKGROUND OF TECHNOLOGY.................................................... 19The 4G LTE Cellular Network .......................................................... 19The 3rd Generation Partnership Project (“3GPP”) Standards ........... 19

3GPP Organization.................................................................. 193GPP Documentation .............................................................. 21

3GPP-based Network Architectures at the Time of thePurported Invention ........................................................................... 23

The Evolution from 2G Networks to 3G Networks................. 23The Evolution to 4G LTE Networks ....................................... 284G LTE Network Elements ..................................................... 30

The Attach Procedure ........................................................................ 322G Attach Procedure ............................................................... 333G Attach Procedure ............................................................... 334G Attach Procedure ............................................................... 374G Handover Attach Procedure from non-3GPP (Wi-Fi)to 3GPP ................................................................................... 42

VIII. THE ’779 PATENT ................................................................................... 49Introduction ....................................................................................... 49Prosecution History of the Application Leading to the ’779Patent................................................................................................. 54

Exhibit NSN779-1003, page ii

Priority Documents.................................................................. 55Chinese PCT Filing ................................................................. 55USPTO Examination............................................................... 57

Challenged Claims of the ’779 Patent ............................................... 65Priority Date ...................................................................................... 66

IX. CLAIM INTERPRETATION OF THE ’779 PATENT ......................... 66“Create Bearer Request message” in Claim 4.................................... 67“obtaining unit,” “identifying unit,” and “processing unit” inclaim 11 ............................................................................................. 70

X. COUNT 1: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11BASED ON THE ADMITTED PRIOR ART IN VIEW OFSODERBACKA ......................................................................................... 73

’779 Admitted Prior Art—Chinese Priority Application(NSN779-1002, pgs. 1019–40).......................................................... 73Soderbacka et al., US 2003/0114158 (NSN779-1007) ...................... 79Motivation to Combine the ’779 Admitted Prior Art withSoderbacka ........................................................................................ 84Reasons to Consider Soderbacka....................................................... 88Limitation-by-Limitation Obviousness Analysis............................... 88

Method for Handover Processing (Elements 1preamble)........ 89Network Element (Element 11preamble) ................................ 91Attach Request Message Sent During Handover(Elements 1a & 11a)................................................................ 92Information Element Indicating Handover (Elements 1b,11b, and 11c) ........................................................................... 95PDN GW Address/Identity (Elements 1c, 11d, 9, 10)............. 99Bearer Creation Procedure (Elements 1d, 11e, 4preamble,4b) ......................................................................................... 102Create Bearer Request message (Element 4a) ....................... 104

XI. COUNT 2: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11BASED ON THE ’779 ADMITTED PRIOR ART IN VIEW OFTDOC S2-072255 (“THE NOKIA SUBMISSION”) ............................. 105

’779 Admitted Prior Art—Chinese Priority Application(NSN779-1002, pgs. 1019–40)........................................................ 105TDoc S2-072255 (“the Nokia Submission”) (NSN779-1008)......... 112Motivation to Combine the Admitted Prior Art with the NokiaSubmission ...................................................................................... 118Limitation-by-Limitation Obviousness Analysis............................. 122

Exhibit NSN779-1003, page iii

Method for Handover Processing (Elements 1preamble)...... 123Network Element (Element 11preamble) .............................. 125Attach Request Message Sent During Handover(Elements 1a & 11a).............................................................. 126Information Element Indicating Handover (Elements 1b,11b & 11c)............................................................................. 129PDN GW Address/Identity (Elements 1c, 11c, 9, 10) ........... 134Bearer Creation Procedure (Elements 1d, 11e, 4preamble,4b) ......................................................................................... 137Create Bearer Request message (Element 4a) ....................... 139

XII. COUNT 3: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11BASED ON TDOC S2-072252 (“THE MOTOROLASUBMISSION”) IN VIEW OF TDOC S2-072255 (“THE NOKIASUBMISSION”)....................................................................................... 140

TDoc S2-072252 (“the Motorola Submission”) (NSN779-1009).... 140TDoc S2-072255 (“the Nokia Submission”) (NSN779-1008)......... 150Motivation to Combine the Motorola Submission with theNokia Submission............................................................................ 156Limitation-by-Limitation Obviousness Analysis............................. 161

Method for Handover Processing (Elements 1preamble)...... 161Network Element (Element 11preamble) .............................. 163Attach Request Message Sent During Handover(Elements 1a & 11a).............................................................. 164Information Element Indicating Handover (Elements 1b,11b and 11c) .......................................................................... 166PDN GW Address/Identity (Elements 1c, 11c, 9, 10) ........... 172Bearer Creation Procedure (Elements 1d, 11e, 4preamble,4b) ......................................................................................... 174Create Bearer Request message (Element 4a) ....................... 178

XIII. COUNT 4: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11BASED ON TDOC S2-072252 (“THE MOTOROLASUBMISSION”) IN VIEW OF SODERBACKA .................................. 179

TDoc S2-072252 (“the Motorola Submission”) (NSN779-1009).... 179Soderbacka et al., US 2003/0114158 (NSN779-1007) .................... 189Motivation to Combine the Motorola Submission withSoderbacka ...................................................................................... 194Limitation-by-Limitation Obviousness Analysis............................. 198

Method for Handover Processing (Elements 1preamble)...... 198

Exhibit NSN779-1003, page iv

Network Element (Element 11preamble) .............................. 200Attach Request Message Sent During Handover(Elements 1a & 11a).............................................................. 201Information Element Indicating Handover (Elements 1b,11b and 11c) .......................................................................... 204PDN GW Address/Identity (Elements 1c, 11d, 9, 10)........... 208Bearer Creation Procedure (Elements 1d, 11e, 4preamble,4b) ......................................................................................... 211Create Bearer Request message (Element 4a) ....................... 215

XIV. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS....................................................................................... 216

XV. CONCLUSION ........................................................................................ 217

Exhibit NSN779-1003, page 1

I. INTRODUCTION

1. My name is Mark R. Lanning. I have been asked by Petitioners to

provide my expert opinions in support of the above-captioned petition for inter

partes review of Patent No. 8,537,779 (“the ’779 Patent”), challenging the validity

of claims 1, 4, 9–10, and 11 of the ’779 Patent.

2. Specifically, I have been asked to provide testimony as to what one of

ordinary skill in the art would have understood with respect to the patent at issue

and various prior art. I provide this testimony below.

II. PROFESSIONAL BACKGROUND

3. I have personal knowledge of the facts contained in this Declaration,

am of legal age, and am otherwise competent to testify.

4. I have extensive experience in the field of telecommunications

including: circuit-switched networks; multiple generations of cellular networks;

and packet-switched networks.

5. Further detail on my education, work experience, and the cases in

which I have previously given testimony in at least the past four years is contained

in my curriculum vitae (CV) included as Exhibit NSN779-1024.

6. I am currently the president of two consulting companies: Telecom

Architects, Inc. and Reticle Consulting, LLC. Telecom Architects provides


consulting services to fixed and wireless telecom service providers and their

equipment suppliers. I have been President of Telecom Architects since 1999.

7. I have over 38 years’ experience working in the telecommunications

industry that began in the U.S. Army Signal Corp. My experience relevant to this

case includes my work as an architect of various telecommunications systems and

my work developing equipment used in telecommunications systems. This

experience includes extensive design, implementation, and testing work on the

wireless interface functionality (between the base station and mobile phones) for

multiple generations of cellular standards.

8. I received a Bachelor’s of Science in Computer Science from

Southern Methodist University (SMU) in 1983.

9. Digital Switch Corporation (DSC), now a part of Alcatel, hired me in

1983 where I was a software development manager on the team responsible for

converting DSC’s PSTN telephone switch into a Mobile Switching Center (MSC)

for Motorola to sell as a part of their cellular product in the U.S. and many other

countries.

10. In 1991, I began working as a consultant to Motorola for its

“SuperCell” base station product and as a consultant to British Telecom to upgrade

its current analog cellular network. I was one of the network architects responsible

for the design and rollout of British Telecom’s Global System for Mobile


Communications (GSM) network known as Cellnet. Beginning in the early 1990s,

I was responsible for implementation of the Short Message Service (SMS) service,

including working with suppliers of the SMS Center (SMSC), Mobile Switching

Centers (MSCs) and cellular phones to define and roll out the functionality that

was to be provided.

11. I worked personally with Nokia, Ericsson, Motorola and other

equipment suppliers in this effort.

12. Since 1995, I have also provided second generation (2G) and third

generation (3G) Code Division Multiple Access (CDMA) network architecture and

equipment design and implementation consulting services to companies such as

Sprint, Nextel, Nokia, and Ericsson. While consulting to Nextel, which has since

become part of Sprint, as one of the network architects for its iDEN network, one

of my responsibilities was to define the network and mobile phone functionality

required to support the Multimedia Messaging Service (MMS) and advanced data

communications capability.

13. I am a member of the Institute of Electrical and Electronics Engineers

(IEEE), including the IEEE Standards Association. I am also a member of the

Association for Computing Machinery (ACM). While employed at DSC, I was a

member of the American National Standards Institute (ANSI) T1 and T1X1


standard groups responsible for the definition and standardization of the Advanced

Intelligent Network (AIN) and Signaling System 7 (SS7) protocol.

III. SCOPE OF THE ENGAGEMENT

14. I have been retained by Alston & Bird LLP on behalf of Nokia

Solutions and Networks US LLC and Nokia Solutions and Networks Oy

(“Petitioners”) to provide analysis and opinions in connection with U.S. Patent No.

8,537,779. I have also been asked to evaluate whether one of ordinary skill in the

art at the time of the invention would have considered certain technologies and

prior art to be relevant or material to determining the validity of the claims at issue.

15. My opinions are based on my experience, knowledge, and the

information I have reviewed as of the date of this report. In connection with my

analysis, I have reviewed everything in the exhibit table below:

Exhibit Short Name Description

NSN779-1001 ’779 Patent U.S. Patent No. 8,537,779

NSN779-1002’779

Application FileHistory

File History of U.S. Patent No. 8,537,779(Appl. No. 12/581,575)

NSN779-1004Bertenyi

DeclarationDeclaration of Balazs Bertenyi under 37C.F.R. § 1.68

NSN779-1005Newton’sDictionary

Newton’s Telecom Dictionary (18th ed.2002)



NSN779-1006Patent Owner’sDistrict Court

Complaint

Huawei Techs. Co. Ltd. v. T-Mobile US, Inc.,2:16-cv-00056, D.I. 1 (E.D. Tex. Jan. 15,2016)

NSN779-1007 Soderbacka

U.S. Printed Patent Application Number US2003/0114158 to inventors Lauri Soderbacka,Jarmo Virtanen, Kari Kauranen, HannuHietalahti, Jari Liukkonen, and AnttiPitkamaki, titled “Intersystem Handover of aMobile Terminal”

NSN779-1008Nokia

Submission

3GPP TSG SA Meeting #57, TDoc S2-072255, GPRS functionality for IMSemergency services support, submitted byNokia Siemens Networks and Nokia,available as “S2-072255.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Docs/ (uploaded 4/27/2007at 9:29 AM)

NSN779-1009Motorola

Submission

3GPP TSG SA WG2 Architecture – S2#57,TDoc S2-072252, Handover from non-3GPPAccess to E-UTRAN (TS 23.402), submittedby Motorola, available as “S2-072252.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Docs/ (uploaded 4/27/2007at 9:28 AM)

NSN779-1010S2#57 Meeting

Report

3GPP TSG SA WG2 Architecture—S2#57,Report of SA WG2 meeting #57 (April 23-27,2007), available as“Approved_Report_v100_SA2_57.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Report/ (uploaded6/23/2009)



NSN779-1011S2#57 Attendee

List

List of Registered Attendees, MeetingSA2#57, available athttp://webapp.etsi.org/3GPPRegistration/fViewPart.asp?mid=26044 (last accessed1/9/2017)

NSN779-1012Huawei

Submission

3GPP TSG SA WG2 Architecture – S2#58,TDoc S2-072558, Attach Type in attachprocedure, submitted by Huawei, available as“S2-072558.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_58_Orlando/Docs/ (uploaded6/19/2007 at 12:59 PM)

NSN779-1013Nokia-Huawei

Submission

3GPP TSG SA WG2 Meeting #61, TDoc S2-075847, Principle of differentiating InitialAttach and Handover Attach to EPS via LTEor non-3GPP IP Access, submitted by NokiaSiemens Networks, Nokia, and Huawei,available as “S2-075847.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_61_Ljubljana/Docs/ (uploaded11/16/2007 at 4:17 PM)

NSN779-1014Ericsson

Submission

3GPP TSG SA Architecture – S2#57, TDocS2-071738, GW selection for LTE and non-3GPP accesses, submitted by Ericsson,available as “S2-071738.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Docs/ (uploaded 4/18/2007at 1:33 PM)

NSN779-1015 About 3GPP

About 3GPP Home, 3GPP: A GlobalInitiative, available athttp://www.3gpp.org/about-3gpp/about-3gpp(last accessed 1/10/2017)



NSN779-10163GPP

Delegates’Corner

Delegates Corner, 3GPP: A Global Initiative,available athttp://www.3gpp.org/specifications-groups/delegates-corner (last accessed1/10/2017)

NSN779-1017 3GPP FAQ

3GPP FAQs, 3GPP: A Global Initiative,available athttp://www.3gpp.org/contact/3gpp-faqs (lastaccessed 1/10/2017)

NSN779-1018S2#57

Document List

3GPP Public FTP File Server TSG S2#57Document List, available athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Docs/ (last accessed1/9/2017)

NSN779-1019 TS 23.060

3GPP TS 23.060 V4.6.0 (2009-09), 3rdGeneration Partnership Project; TechnicalSpecification Group Services and SystemAspects; General Packet Radio Service(GPRS); Service description; Stage 2(Release 4), available athttps://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=758 (uploaded 10/2/2002)

NSN779-1020 * * *European File History of InternationalApplication Number PCT/CN2008/070909

NSN779-1021 TS 23.401

3GPP TS 23.401 V0.4.1 (2007-04), 3rdGeneration Partnership Project; TechnicalSpecification Group Services and SystemAspects; GPRS enhancements for E-UTRANaccess (Release 8), available athttps://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=849 (uploaded 4/16/2007)



NSN779-1023Joint Claim

ConstructionChart

Huawei Techs. Co. Ltd. v. T-Mobile US, Inc.,2:16-cv-00056, D.I. 110 (E.D. Tex. Dec. 08,2016)

NSN779-1027TS 24.008

3GPP TS 24.008 V7.7.0 (2007-03), 3rdGeneration Partnership Project; TechnicalSpecification Group Core Network andTerminals; Mobile radio interface Layer 3specification; Core network protocols’ Stage3 (Release 7), available athttps://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=1015 (uploaded 3/20/2007)

16. I am being compensated for my time spent on the present matter at a

rate of $550 per hour. My compensation is not in any way contingent on my

performance, the result of this proceeding, or any of the issues involved therein. I

am also being reimbursed for expenses incurred as a result of activities performed

as an expert.

IV. PERSON OF ORDINARY SKILL IN THE ART

17. All of the opinions I express in this Declaration have been made from

the standpoint of a person of ordinary skill in the field of the ’779 Patent at the

time of the invention.


18. I consider that a person of ordinary skill in the art (“POSITA”) at the

time of the invention would have had a Bachelor’s degree in Electrical

Engineering, Computer Science, or Computer Engineering with at least 2 to 3

years of experience in the cellular telecommunications industry, including

experience operating or implementing 3GPP networks. Additional education might

substitute for some of the experience, and substantial experience might substitute

for some of the educational background. I have those capabilities myself beginning

at least at the time of the earliest priority date of the patent at issue.

V. LEGAL UNDERSTANDINGS

Claim Interpretation

19. I am not a Patent Attorney, and I do not opine in this paper on any

particular methodology for interpreting patent claims. My opinions are limited to

what I believe a person of ordinary skill in the art would have understood the

meaning of certain claim terms to be based on the patent documents. I use the

principles below, however, as a guide in formulating my opinions.

20. I understand that it is a basic principle of patent law that assessing the

validity of a patent claim involves a two-step analysis. In the first step, the claim

language must be properly construed to determine its scope and meaning. In the

second step, the claim as properly construed must be compared to the alleged prior

art to determine whether the claim is valid.


21. I understand that the words of a patent claim have their plain and

ordinary meaning for a person skilled in the art at the time of the invention. This

meaning must be ascertained from a reading of the patent documents, paying

special attention to the language of the claims, the written specifications, and the

prosecution history. I understand that an inventor may attribute special meanings to

some terms by defining those terms or by otherwise incorporating such meanings

in these documents.

22. My methodology for determining the meaning of claim phrases was

first to carefully study the patent. In particular, I studied the claims themselves,

followed by the background, detailed specification, figures, and other patent

content. Next, I reviewed the file histories looking for any clarifications or

limitations that might be attached to claim terms. In some circumstances, I looked

at other documents, such as references applied by the patent office.

23. I understand that in an inter partes review, claim terms are given their

broadest reasonable interpretation in light of the specification of the patent in

which they appear. I understand that under the broadest reasonable interpretation

standard, claim terms are presumed to be given their ordinary and customary

meaning as understood by one of ordinary skill in the art in the context of the

entire disclosure at the time of the invention. I understand that one must be careful

not to read a specific embodiment appearing in the written description into the


claim if the claim language is broader than the embodiment . I further understand

that any special definition for a claim term must be set forth with reasonable

clarity, deliberateness, and precision. I have considered each of the claim terms

using the broadest reasonable interpretation standard.

24. I understand that certain claim terms may be written as means-plus-

function claim terms. I also understand that for means-plus-function terms, the

structure performing the claimed function is limited to the corresponding structure

described in the specification and equivalents thereof.

Prior Art

25. It is my understanding that information which satisfies one of the

categories of prior art set forth in 35 U.S.C. § 102 may be used in an invalidity

analysis under §§ 102 or 103. If information is not properly classified as prior art

under one of the subsections of § 102 of the Patent Code, then it may not form the

basis of an anticipation or obviousness determination. It is also my understanding

that, for inter partes review, applicable prior art is limited to patents and printed

publications.

Anticipation

26. I understand that, to anticipate a patent claim under 35 U.S.C. § 102, a

single asserted prior art reference must disclose each and every element of the

claimed invention, either explicitly or inherently, to a person of ordinary skill in


the art. I understand that a disclosure of an asserted prior art reference can be

“inherent” if the missing element is necessarily present or is the inevitable outcome

of the process and/or thing that is explicitly described in the asserted prior art

reference.

Obviousness

27. I am also informed and understand that a patent claim is invalid under

35 U.S.C. § 103 if the differences between the invention and the prior art are such

that the subject matter as a whole would have been obvious at the time of the

invention to a person having ordinary skill in the art to which the subject matter

pertains. Obviousness, as I understand, is based on the scope and content of the

prior art, the differences between the prior art and the claim, the level of ordinary

skill in the art, and secondary indications of non-obviousness to the extent they

exist.

28. I understand that whether there are any relevant differences between

the prior art and the claimed invention is to be analyzed from the view of a person

of ordinary skill in the art at the time of the invention. A person of ordinary skill in

the art is a hypothetical person who is presumed to be aware of all of the relevant

art at the time of the invention. The person of ordinary skill is not an automaton

and may be able to fit together the teachings of multiple patents employing


ordinary creativity and the common sense that familiar items may have obvious

uses in another context or beyond their primary purposes.

29. In analyzing the relevance of the differences between the claimed

invention and the prior art, I understand that I must consider the impact, if any, of

such differences on the obviousness or non-obviousness of the invention as a

whole, not merely some portion of it. The person of ordinary skill faced with a

problem is able to apply his or her experience and ability to solve the problem and

also look to any available prior art to help solve the problem.

30. I understand that an invention is obvious if a person of ordinary skill

in the art, facing the wide range of needs created by developments in the field,

would have seen an obvious benefit to the solutions tried by the applicant. When

there is a design need or market pressure to solve a problem and there are a finite

number of identified, predictable solutions, it would be obvious to a person of

ordinary skill to try the known options. If a technique has been used to improve

one device, and a person of ordinary skill in the art would recognize that it would

improve similar devices in the same way, using the technique would have been

obvious.

31. I understand that I do not need to look for precise teaching in the prior

art directed to the subject matter of the claimed invention. I understand that I may

take into account the inferences and creative steps that a person of ordinary skill in


the art would have employed in reviewing the prior art at the time of the invention.

For example, if the claimed invention combined elements known in the prior art

and the combination yielded results that were predictable to a person of ordinary

skill in the art at the time of the invention, then this evidence would make it more

likely that the claim was obvious. On the other hand, if the combination of known

elements yielded unexpected or unpredictable results, or if the prior art teaches

away from combining the known elements, then this evidence would make it more

likely that the claim that successfully combined those elements was not obvious. I

understand that hindsight must not be used when comparing the prior art to the

invention for obviousness.

Motivation to Combine

32. I understand that obviousness may be shown by demonstrating that it

would have been obvious to modify what is taught in a single piece of prior art to

create the patented invention. Obviousness may also be shown by demonstrating

that it would have been obvious to combine the teachings of more than one item of

prior art. I understand that a claimed invention may be obvious if some teaching,

suggestion, or motivation exists that would have led a person of ordinary skill in

the art to combine the invalidating references. I also understand that this suggestion

or motivation may come from sources such as explicit statements in the prior art,

or from the knowledge of a person having ordinary skill in the art. Alternatively,


any need or problem known in the field at the time and addressed by the patent

may provide a reason for combining elements of the prior art. I also understand

that when there is a design need or market pressure, and there are a finite number

of predictable solutions, a person of ordinary skill may be motivated to apply both

his skill and common sense in trying to combine the known options in order to

solve the problem.

33. In determining whether a piece of prior art could have been combined

with other prior art or with other information within the knowledge of a person

having ordinary skill in the art, the following are examples of approaches and

rationales that may be considered:

Combining prior art elements according to known methods to yield

predictable results;

Simple substitution of one known element for another to obtain

predictable results;

Use of a known technique to improve similar devices, methods, or

products in the same way;

Applying a known technique to a known device, method, or product

ready for improvement to yield predictable results;

Applying a technique or approach that would have been “obvious to

try” (choosing from a finite number of identified, predictable solutions,

with a reasonable expectation of success);

Known work in one field of endeavor may prompt variations of it for

use in either the same field or a different one based on design incentives


or other market forces if the variations would have been predictable to a

person having ordinary skill in the art; or

Some teaching, suggestion, or motivation in the prior art that would

have led one of ordinary skill to modify the prior art reference or to

combine prior art reference teachings to arrive at the claimed invention.

Secondary Considerations

34. As noted above, I understand that certain objective factors, sometimes

known as “secondary considerations,” may also be taken into account in

determining whether a claimed invention would have been obvious. In most

instances, these secondary considerations of non-obviousness are raised by the

patentee. In that context, the patentee argues an invention would not have been

obvious in view of these considerations, which include: (a) commercial success of

a product due to the merits of the claimed invention; (b) a long-felt, but unsatisfied

need for the invention; (c) failure of others to find the solution provided by the

claimed invention; (d) deliberate copying of the invention by others; (e)

unexpected results achieved by the invention; (f) praise of the invention by others

skilled in the art; (g) lack of independent simultaneous invention within a

comparatively short space of time; (h) teaching away from the invention in the

prior art. I also understand that these objective indications are only relevant to

obviousness if there is a connection, or nexus, between them and the invention

covered by the patent claims.


35. I understand that certain “secondary considerations,” such as

independent invention by others within a comparatively short space of time,

indicates obviousness.

36. I also understand that secondary considerations of non-obviousness

are inadequate to overcome a strong showing on the primary considerations of

obviousness. For example, where the inventions represented no more than the

predictable use of prior art elements according to their established functions, the

secondary considerations are inadequate to establish non-obviousness.

Date of Invention

37. I understand that absent clear and convincing evidence of an invention

date prior to the filing date of a patent, the invention date of the patent is presumed

to be its filing date. A prior invention requires a complete conception of the

invention and a reduction to practice of that invention. The patentee has the burden

of establishing by clear and convincing evidence a date of conception earlier than

the filing date of the patent.

38. I understand that conception is the formation in the mind of the

inventor of a definite and permanent idea of the complete and operative invention.

I also understand that conception must be proved by corroborating evidence which

shows that the inventor disclosed to others his complete thought expressed in such

clear terms as to enable those skilled in the art to make the claimed invention. The


inventor must also show possession of every feature recited in the claims and that

every limitation was known to the inventor at the time of the alleged conception.

Furthermore, the patentee must show that he or she has exercised reasonable

diligence in later reducing the invention to practice, either actual or constructive.

The filing of a patent application can serve as a constructive reduction to practice.

VI. OVERVIEW OF THE ’779 PATENT

39. The purported novelty of the ’779 Patent is to place a known data

field (i.e., information element), in a known message, to serve a known function.

The details are explained in more depth below, but this purported “novelty” was

taught in Computer Communications 101. For example, the two Figures below are

a simplified representation of the state of the art “Before” and “After” the ’779

Patent. The difference (highlighted in yellow) between these two figures is the

purported point of novelty of the ’779 Patent:


VII. BACKGROUND OF TECHNOLOGY

The 4G LTE Cellular Network

40. The relevant technology for the purported invention relates to

modifications to the Fourth Generation Long Term Evolution (4G LTE) cellular

network. The 4G LTE standards are created and maintained by the 3rd Generation

Partnership Project (“3GPP”).

The 3rd Generation Partnership Project (“3GPP”) Standards

41. The ’779 Patent is closely related to Patent Owner’s work involving

modifications to the then-current 4G LTE specification promulgated by the 3GPP

standards body. The face of the patent cites a number of 4G LTE specifications.

Furthermore, it is clear from Patent Owner’s District Court Complaint that it

believes the purported invention is directly related to the 3GPP 4G LTE standards.

See, e.g., Huawei Techs. Co. Ltd. v. T-Mobile US, Inc., 2:16-CV-00056, D.I. 1, at

¶¶7–9, 16–17 (E.D. Tex. Jan. 15, 2016) (NSN779-1006). Therefore, the following

discussion will outline the procedures and practices of the 3GPP standards body.

3GPP Organization

42. 3GPP is a standards-setting organization. As cellular

telecommunications technology developed in the late 1980s, network operators

began to realize that standardization was necessary to ensure subscriber mobility

and compatibility of the equipment provided from multiple suppliers. In other

words, mobile phone subscribers wanted to be able connect across the country on


their subscribed mobile network and “roam” on third-party networks. Thus, the

3GPP began in 1998 as a joint partnership between several telecommunications

companies to develop and standardize various aspects of 2G, 3G, and 4G mobile

network operator systems. See also NSN779-1015, pg. 4 (3GPP About).

43. The 3GPP is a group enterprise, and in my experience, changes occur

gradually. Within the larger 3GPP umbrella are four primary plenary Technical

Specification Groups (“TSGs”) (e.g., Systems and Architecture (“SA”)), under

which are several working groups (e.g., Systems and Architecture Working Group

2 (“SA-2” or “S2”)). The meetings for each plenary and working group are

numbered sequentially (e.g., TSG SA, Meeting #14 (“SP-14”); SA-2, Meeting #22

(“S2-22”)). In my experience, the working groups met roughly every month and

were responsible for drafting and editing specific standards and change requests.

See also NSN779-1015, pg. 4 (3GPP About). All change requests had to be

approved by the plenary group before the change requests were incorporated into a

specific release of the standard. See also NSN779-1015, pg. 4 (3GPP About).

44. Major changes to the 3GPP standard are defined in “Releases,” and in

my experience certain groups of releases are informally referred to as a

generation. As shown by the table below, each generation of cellular network has

multiple releases.


Generation Release End Date1

“2G” Release 98 2/12/1999“3G” or “UMTS” Release 99 12/17/1999

Release 4 6/21/2001Release 5 9/12/2002Release 6 9/28/2005Release 7 3/13/2008

“4G” or “LTE” Release 8 3/12/2009Release 9 3/25/2010

. . . . . . . . .

3GPP Documentation

45. Standardization in 3GPP is an ongoing, collaborative effort. It

involves hundreds of engineers from companies that are interested in developing

the technology. Each 3GPP working group typically holds monthly meetings in

different locations around the world. The members of the working group submit

written contributions (called “temporary documents” or “TDocs”) and discussion

documents, ultimately capturing accepted proposals and changes in Technical

Reports and Technical Specifications. In my experience, 3GPP has stored and

controlled documents electronically, and these documents are retained on the

1 All of these end dates are available on the 3GPP website. See Releases,

3GPP: THE MOBILE BROADBAND STANDARD,

http://www.3gpp.org/specifications/67-releases.


public 3GPP server indefinitely. See also NSN779-1016, pgs. 2–3 (3GPP

Delegates).

46. In my experience the general practice of 3GPP, both now and at the

time of the purported invention, is to distribute TDocs and discussion documents to

group members prior to each meeting. Then at the meeting itself, the members

publicly discuss those TDocs and discussion documents. Members also vote on the

TDocs and, if approved, incorporate them into the standard. See also NSN779-

1016 (3GPP Delegates). Sometimes TDocs are drafted, edited, or combined during

the meeting. The new and edited TDocs are given new TDoc numbers and

uploaded to the public 3GPP file server, usually soon after the meeting. NSN779-

1017, pg. 8 (3GPP FAQ). Sometimes, the new and edited TDocs are further

circulated for e-mail approval—that is, they can be distributed and voted upon via

e-mail.

47. In my experience, both now and at the time of the purported

invention, TDocs and discussion documents are publicly circulated to group

members before and after meetings in two ways. First, they can be uploaded to the

public 3GPP file server prior to each meeting. See NSN779-1016, pgs. 2–3 (3GPP

Delegates); NSN779-1017, pg. 8 (3GPP FAQ). If so, the file will receive a date

and time stamp. In my experience, the date and time stamp can be relied upon to

indicate when the upload occurred, making the document available to the public on


the Internet. See NSN779-1017, pgs. 8–9 (3GPP FAQ). Second, TDocs and

discussion documents can be distributed to the public using the group’s public e-

mail exploder. See NSN779-1017, pg. 8 (3GPP FAQ).

3GPP-based Network Architectures at the Time of the PurportedInvention

48. The ’779 Patent’s alleged point of novelty was disclosed in prior

generation networks. To appreciate the routine nature of the purported novelty, it is

helpful to trace 3GPP’s network evolution from the 2G architecture to the 4G LTE

architecture.

The Evolution from 2G Networks to 3G Networks

49. Early releases of the 3GPP standards created a network that could

only offer voice calls to landline phones or other mobile phones. This network,

commonly called the 2G network, can be divided into two main areas: radio

access, which enabled a phone to connect to the network over a wireless interface,

and the core network, which typically provided wired connections across a wide

geographic area. Given that these early 2G networks only supported voice calls,

they only needed a circuit-switched core network. A simplified diagram of the

2G Core Network architecture is below:


50. But by the late 1990s, mobile phone subscribers required more from

their devices than just voice calling capability and wanted access to services like e-

mail and Internet. These services require transferring data to and from subscribers

in small chunks called packets. Therefore the 3GPP 3G Universal Mobile

Telecommunications Service (3G UMTS) standard body added a packet-switched

core network called the General Packet Radio Service (“GPRS”), as shown by the

bottom rectangle in the simplified diagram below.


51. As can be seen above, the 3G UMTS network was comprised of a

circuit-switched core network and a packet-switched core network. The packet-

switched network was used for data communications for many different types of

data. The circuit-switched core network is shown in the figure above as the top

rectangle in the “Core Network” box, and the packet-switched core network is

shown in the figure above as the bottom rectangle in the “Core Network” box.

52. In my opinion, a POSITA would have understood that a “packet-

switched” network typically enables the transfer of data packets from one point to

another. Each data packet contains at least one address that identifies the intended

destination of that packet. A “packet-switched” network typically relies on one or

more intermediate nodes to route the data packets from source to destination. A

simplified version of that network equipment (showing those nodes contained

inside of the green, “packet-switched” network box above) is below:


53. In the 3G UMTS network, User Equipment (e.g., a mobile phone)

connects to a mobile phone tower, commonly referred as a NodeB (NB). The NB

is connected, typically through a wired connection, to a Radio Network Controller

(RNC). Usually, several NBs are connected to a given RNC. The RNC is

connected, typically through a wired connection, to a Serving GPRS Support Node

(SGSN). The SGSN retrieves subscriber information from the database stored in

the Home Location Register (HLR). Based on the subscriber’s information and the

subscriber’s desired packet data service (e.g., e-mail, Internet connection, etc.), the

SGSN selects a Gateway GPRS Support Node (GGSN). In a 3G UMTS packet-

switched network, the pathway (i.e., data connection) from mobile phone to GGSN

is referred to as a specific Packet Data Protocol (PDP) context. Once the PDP

context (i.e., connection) was established, the mobile phone could send and receive

data to and from the service.


54. One aspect of the 3G UMTS system is that the SGSN had to be able

to handle both “control-plane” messages and “user-plane” messages.

55. In a 3G network, the SGSN is the main control element. When

initially establishing a PDP context (i.e., at “attach”), the SGSN is responsible for

control-plane functions, such as selecting a GGSN that could exchange packets

with the user’s desired packet data service. Once the PDP context (i.e., data

connection) is established, the SGSN is also responsible for maintaining the

connection. If the user physically moves and their mobile phone connects to a new

cell phone tower (NB) and possibly to a new RNC (a process generally referred to

as “handover”), the SGSN has to ensure that user data packets from the GGSN are

sent to the new RNC and/or NB. These tasks require the SGSN to exchange

control-plane messages with the RNC and GGSN. A person of ordinary skill in the

art would have understood this as “control-plane messaging.”

56. On the other hand, the SGSN is also responsible for routing the user

data packets to the GGSN. These user data packets allow the mobile phone to

communicate with the PDN to receive services like e-mail and Internet. A person

having ordinary skill in the art would have understood this as “user-plane

messaging.”

57. This dual-role configuration meant that the SGSN was responsible for

both controlling functions such as mobility as well as routing user data to and from


the PDN (e.g., Internet). As a result, when many mobile phones were connected to

the same SGSN, this configuration could create a bottleneck. The SGSN could

become too busy with user-plane messaging (i.e., sending data packets to and from

the PDN via the GGSN) and, therefore, not have sufficient processing power or

memory to devote to control-plane messaging (e.g., handling the mobile phone’s

mobility needs). In other words, because the SGSN was tasked with performing

both control-plane and user-plane functions, the SGSN could not be optimized for

handling either one. Recognizing this problem, in Release 8, the 3GPP standards

body defined a new architecture for the packet-switched domain that separated the

network equipment that would handle the control-plane functions from the network

equipment that would handle the user-plane functions. This new architecture was

called the 4G Long Term Evolution (4G LTE) network.

The Evolution to 4G LTE Networks

58. At the time of the purported invention, the 3GPP standards body was

working to evolve the 3G UMTS standard into the 4G LTE network. The 4G LTE

architecture includes network equipment that serves functions similar to that of the

3G UMTS architecture network equipment. However, to help with the

optimization problem described above, the SGSN’s user-plane functionality and

control-plane functionality was split into two separate network elements: the

Serving Gateway (S-GW) and the Mobility Management Entity (MME). A


simplified diagram of the logical architecture for a 4G LTE packet-switched core

network appears below:

59. The 4G LTE architecture also allows a mobile phone to access the

network through a non-3GPP (Wi-Fi) access point, such as a wireless router. In

order for the 4G LTE network to support this type of access point, the 3GPP

standards body added new network elements to the 4G LTE packet-switched core

network. I will also refer to a “non-3GPP access point” as a Wi-Fi access point. As

the “non-3GPP” name implies, the Wi-Fi access point (and other non-3GPP access

points) are not governed by the 3GPP standards body. A simplified diagram of the

logical architecture for a 4G LTE network where a mobile phone accessed the

network through a Wi-Fi access point is shown below:


4G LTE Network Elements

60. This section describes the elements that are relevant to the 4G LTE

packet-switched core network when connecting to a Wi-Fi access point. As shown

in the diagrams below, there are multiple elements inside and outside the 4G LTE

packet-switched core network that are relevant to the ’779 Patent.

61. The network elements that are relevant to the ’779 Patent are:


eNB (eNodeB): In general terms, the eNB performs the function of a

base station. The eNB communicates wirelessly with many mobile

devices and typically communicates over wired connections with the

core network. I will refer to the eNB as a “base station.”

S-GW (Serving Gateway): An S-GW supports one or more eNBs for

management and transmission of user-plane packet data. The S-GW is

connected to one or more MMEs, one or more eNBs, and one or more

PDN GWs through a wired connection. The S-GW forwards data

packets from the eNB to the PDN GW.

PDN GW (Packet Data Network Gateway): The PDN GW is

responsible for interworking between the 4G LTE packet-switched

network and the Internet. In other words, the PDN GW is the

demarcation point between the 4G LTE cellular network and the public

Internet. When a mobile phone seeks to handover its data connection

from a Wi-Fi access point to an eNB, the PDN GW serves as the anchor

where the switch is made.

MME (Mobility Management Entity): The MME is responsible for

managing the mobility of the mobile phone and other control-plane

functions. The MME keeps track of the mobile phone’s location and


keeps the other network elements informed about the status of the

mobile phone.

HSS (Home Subscriber Server): The HSS stores subscriber

information about the phone. The HSS also stores information about

which PDN GW a particular mobile phone is connected to.

ePDG (evolved Packet Data Gateway): The ePDG communicates

with the Wi-Fi router and PDN GW to allow a mobile phone to access

the 4G LTE network through a Wi-Fi access point.

62. A person of ordinary skill in the art would have also understood that a

mobile phone was often referred to as a UE or User Equipment. I use the terms

“UE” and “mobile phone” interchangeably.

The Attach Procedure

63. Before a mobile phone can use the data services of a 2G, 3G, or 4G

cellular network, it must first successfully establish a connection with the network.

This process is referred to as the “Attach” process. While the specific steps of an

Attach process differ for each generation of network, the concepts and objectives

are the same—to get a data connection between the mobile phone and the cellular

network.

64. For example, when a mobile phone is powered on, it acquires a nearby

base station in the 4G LTE network and performs the “Attach” procedure. After


the network successfully validates the mobile phone, it can use the network for

voice calls or data connections.

2G Attach Procedure

65. The 2G Attach procedure was initially established for 3GPP networks

when an architecture enhancement was added to the voice-only GSM network in

order to support data packet connections. This enhancement is referred to as

General Packet Radio Service (GPRS) and has now evolved into the 3G and 4G

networks.

3G Attach Procedure

66. The 3G network standard divides the Attach procedure into at least

two steps: (1) registering the mobile phone with the network; and (2) creating an

initial data bearer (connection) for the mobile phone in the network. As an

example, the Attach procedure depicted in 3GPP TS 23.060 V4.6.0 from 2002 is

discussed below, along with a simplified version of the steps relevant to the ’779

Patent:


NSN779-1019, pg. 47 & fig. 22.

67. In the first part of the procedure, the mobile phone first sends an

Attach Request message to a NB, which routes the Attach Request to the SGSN

through the RNC (depicted as step 1 in the message diagram above and with

reference to the system architecture below). The Attach Request message


contained an information element called “Attach Type” that “indicates which type

of attach is to be performed.” NSN779-1019, pg. 48; see also NSN779-1027, at

428 (“The attach type is a type 1 information element.”); NSN779-1027, at 428

(“The purpose of the attach type information element is to indicate the type of the

requested attach . . . .”). The SGSN receives the Attach Request message and

identifies the contents of the information element.

68. A person of ordinary skill in the art would have understood that an

“information element” is nothing more than the name for a data field inside of a

message. NSN779-1005, at 373.

69. In the second part of the procedure, the SGSN uses information

provided by the mobile phone to select a GGSN that the mobile phone will use to

connect to the Internet (i.e., PDN).


70. After the SGSN selects the GGSN, the SGSN sends an Activate PDP

Context Request message to the selected GGSN to create a PDP context (also

known as a “bearer”).

71. Once the GGSN receives the message requesting that a bearer be

created, the network, in turn, creates the data bearer (connection) that will allow

the mobile phone to access the Internet and other services.


72. The data bearers allow the mobile phone to communicate with the

network, and ultimately the PDN, to receive e-mail and Internet service.

4G Attach Procedure

73. At the time the ’779 Patent application was filed, the 3GPP standards

body had defined nearly all aspects of the 4G LTE Attach procedure. As in the 3G

UMTS network Attach procedure, when a mobile phone initially performs an

Attach procedure with the 4G LTE network (e.g., when the phone is turned on for

the first time), it must register with the network and create an initial bearer. To do


so, the mobile phone executed the Attach procedure outlined in TS 23.401 V0.4.1

§ 5.3.2 (NSN779-1021). The message flow diagram and a simplified explanation

of the steps relevant to the ’779 Patent is reproduced below:

NSN779-1021, fig. 5.3.2-1.


74. First, like in the 3G UMTS Attach procedure, the mobile phone sends

a control-plane Attach Request message to an eNB, which routes the Attach

Request to the MME (depicted as steps 1 & 2 in the message flow diagram above

and with reference to the system architecture below). In this, the MME receives the

Attach Request message.

75. Using information provided by the mobile phone in the Attach

Request message, the MME selects a new PDN GW that the mobile phone will use

to connect to the Internet (i.e., PDN).


76. After the MME selects the PDN GW, the MME sends a create bearer

request message to the Serving GW associated with the selected PDN GW

(depicted in step 12 in the message flow diagram above), and the Serving GW

sends a create bearer request message to the PDN GW selected by the MME

(depicted in step 13 in the message flow diagram above). This step is depicted with

reference to the system architecture below.


77. Once the PDN GW receives the create bearer request message, the

network, in turn, creates the bearer that will allow the mobile phone to access the

Internet and other services (depicted in steps 15 and 16 in the message flow

diagram above and with reference to the system architecture below).

78. The bearer allows the mobile phone to communicate with the

network, and ultimately the PDN (Internet), to receive e-mail and Internet service.


4G Handover Attach Procedure from non-3GPP (Wi-Fi) to 3GPP

79. At the time the patent application was filed, the 3GPP standards body

had also discussed and defined many aspects of the 4G LTE Attach procedure that

would be used when the mobile phone performed a handover from a Wi-Fi (non-

3GPP) access point to a 4G LTE (3GPP) base station. This 4G handover Attach

procedure mirrored the initial 4G Attach procedure, with a few differences as

described below.

80. When a mobile phone was attached through a Wi-Fi (non-3GPP)

access point and needed to handover to a 4G (3GPP) base station, it was known

that the MME located in the 4G network would need to re-select the same PDN

GW (also in the 4G network) that the mobile phone was connected to through the

Wi-Fi access point. By re-selecting the same PDN GW that the mobile phone was

connected to, the 4G network could better ensure a seamless handover. In order to


re-select the PDN GW, the mobile phone performed the “Handover Attach”

procedure. Below is Patent Owner’s representation of the prior art “handover”

Attach procedure. This prior art procedure is disclosed in Patent Owner’s earliest

filed Chinese priority application:

NSN-1005, fig. 2

81. A simplified version of the steps relevant to the ’779 Patent is

explained below as well as in Patent Owner’s earliest filed priority application.

82. Just as in the “initial” Attach procedure, the mobile phone sent the

Attach Request message to an MME (depicted in step 3 in the message flow

diagram above and depicted with reference to the system architecture below).

83. A person having ordinary skill in the art would have understood that,

just as in the “initial” Attach procedure, the mobile phone sends the message


through an eNB (base station) for it to reach the MME. In this case, the MME

receives the Attach Request message.

84. Second, just as in the “initial” Attach procedure, the MME needs to

select a PDN GW at this step. However, in the “handover” Attach procedure, the

MME needs to re-select the PDN GW that the mobile phone is connected to using

the Wi-Fi access point (see blue box below). The PDN GW in the blue box below

acts as the anchor point when the message flows are switched during handover.

The address of the PDN GW is stored in the HSS.


85. To re-select the PDN GW that the mobile phone is connected to

through the Wi-Fi access point, the MME contacts the HSS to obtain the address of

the PDN GW that the mobile phone is connected to through the Wi-Fi access point

(depicted in step 4 in the message flow diagram above and with reference to the

system architecture below).


86. Once the MME re-selects the PDN GW, the MME sends a message to

the PDN GW requesting it to create a bearer (depicted in step 5 in the message

flow diagram above and with reference to the system architecture below). A person

having ordinary skill in the art would have understood that there is no direct

interface between the MME and the PDN GW. See NSN-1001, fig. 1 (showing the

network equipment and interfaces); NSN-1001, at 18:44–59 (describing how the

message is processed through the Serving GW). Thus, a person having ordinary

skill in the art would have also understood that all requests from the MME to the

PDN GW must be sent through the S-GW.

87. Once the PDN GW receives the message requesting that a bearer

(connection) be created, the PDN GW, in turn, creates the bearer that will allow the

mobile phone to access the Internet and other services (depicted in step 7 in the

message flow diagram above and with reference to the system architecture below).


88. Using the re-selected PDN GW as the anchor and the newly created

bearer as the communication path, the network switches the message flow so that

the mobile phone can now communicate with the 3GPP network along the newly

created bearer through the eNB (base station) instead of the Wi-Fi access point.

89. Given that the “handover” Attach procedure closely mirrored the

“initial” Attach procedure and that both procedures used an Attach Request


message with the same structure, the network needed to distinguish between

situations (1) where the mobile phone was requesting an “initial” Attach, and (2)

where the mobile phone was requesting a “handover” Attach, so the MME could

re-select the correct PDN GW. This minor detail had not been implemented by the

3GPP standards body when Patent Owner filed its Chinese priority application,

which covers the most basic and obvious methods for doing so.

90. However, the need for this minor detail was already recognized by

participants in the 3GPP standards committee before the time of Patent Owner’s

patent application. See, e.g., NSN779-1014, pg. 1. Indeed, Ericsson stated: “There

are two main cases for selecting a GW (both PDN GW and Serving GW): [1]

Initial GW selection, i.e., selecting a new GW for a UE. This typically happens

when the UE attaches to the system. [2] Maintain the selected GW during

handovers between 3GPP access and non-3GPP access.” NSN779-1014, pg. 1

(second emphasis added)). A person having ordinary skill in the art would have

understood that the Ericsson Submission outlined situations where the mobile

phone would handover from Wi-Fi (non-3GPP) to LTE (3GPP). NSN779-1014,

fig. 1.


VIII. THE ’779 PATENT

Introduction

91. The ’779 Patent discloses the long-existing principle of placing an

information element in an Attach Request message. Using the information element,

the network can distinguish (1) the Attach Request message caused by a

“handover” Attach procedure, from (2) the Attach Request message cause by an

“initial” Attach procedure.

92. In other words, the alleged novelty of the ’779 Patent is not directed to

the message flow, as that was prior art. Instead, the only alleged novelty from

exemplary claim 1 is the element “wherein the attach request message comprises

an information element (IE) indicating handover.” Patent Owner’s purported

invention was simply a specific parameter sent within a known message, within a

known system. The parameter capitalizes on an obvious consequence of gradual

changes being made during the standardization process. The triviality of this

alleged novelty is demonstrated by the difference (highlighted in yellow) in the

“Before” and “After” diagrams below:


BEFORE THE ’779 PATENT

AFTER THE ’779 PATENT

93. The same purported novelty can be represented with the simplified

message flow diagram as well:


94. But further, as shown below, this same “Attach Type” information

element was already being used in the 3G network, in the same message, to

“indicate[] which type of attach is to be performed.” NSN779-1016, pg. 48; see

also NSN779-1027, at 428 (“The purpose of the attach type information element is

to indicate the type of the requested attach . . . .”).

95. In my opinion, the techniques and processes recited in claims 1, 4, 9–

10, and 11 of the ’779 Patent describe nothing more than conventional features for

distinguishing messages in a network. Specifically, the ’779 Patent claims the use


of an “information element” contained within the Attach Request message that

distinguishes the “initial” Attach Request message from the “handover” Attach

Request message. An information element is nothing more than the name of a data

field in a message, and the use of an “information element” to distinguish an

Attach Request message was known before the ’779 Patent. Patent Owner merely

ported this conventional idea into the non-3GPP (Wi-Fi) handover context. Patent

Owner acknowledged that every other claimed part of the procedure was known

and in the existing protocol.

96. Indeed, Patent Owner disclosed and admitted much more about the

prior art Wi-Fi to LTE handover procedure in its Chinese priority application than

it did in the specification of the ’779 Patent. However, the USPTO did not receive

a translation of the Chinese priority application until well after the other prior art

showing that an information element indicating handover was common knowledge.

97. Below is a summary table showing where each element of exemplary

challenged claim 1 can be found. Every element except for the “information

element” that was copied and pasted from the 3G Attach procedure, and disclosed

in other documents, was disclosed as prior art in Patent Owner’s Chinese priority

application.


Claim 1 Prior Art Disclosure1. [1preamble]. Ahandover processingmethod, comprising:

Patent Owner admits a handover processing methodwas in the prior art:

“FIG. 2 is a flowchart of a handover from a non-3GPP access system to a 3GPP access system for aUE [mobile phone] in the prior art;”

[1a] receiving, by aMobility ManagementEntity (MME), an attachrequest message sent by aUser Equipment (UE)during a handover from anon 3rd GenerationPartnership Project (non-3GPP) network to a 3rdGeneration Partnership(3GPP) network,

Patent Owner admits this element was in the prior art.In describing the non-3GPP to 3GPP prior arthandover procedure, Patent Owner states:

“3. The UE sends an Attach Request . . . message tothe MME.”

[1b] wherein the attachrequest message comprisesan information element(IE) indicating handover;

From Soderbacka: “a new information element . . .added to the SETUP message transmitted by themobile terminal to the communication network.”NSN779-1007, ¶0032. That information elementindicates that handover should be performed.

From the Nokia Submission: “Attach Type[information element] indicates which type of attachis to be performed.” NSN779-1008, pg. 4.

[1c] identifying, by theMME, a Packet DataNetwork Gateway (PDNGW) whose address is usedby the UE in the non-3GPPnetwork by communicatingwith a Home SubscriberServer (HSS); and


“4. An authentication procedure is performedbetween the UE, the MME, and the HSS to obtain thePDN GW address used by the UE.5. The MME sends a Create Bearer Request messageto the obtained PDN GW address, . . .”


Claim 1 Prior Art Disclosure[1d] requesting, by theMME, the PDN GW toinitiate a bearer creationprocedure.


“5. The MME sends a Create Bearer Request messageto the obtained PDN GW address, requesting thenetwork side to initiate bearer creation procedure.. . .7. The PDN GW initiates a network-side bearercreation procedure to create the bearer of the user.”

98. The above chart is addressed in significantly more detail below.

Prosecution History of the Application Leading to the ’779 Patent

99. Viewed as a whole, the prosecution history demonstrates a few key

points: First, Patent Owner repeatedly distinguished the prior art using the

“information element” limitation that the International Searching Authority (during

prosecution of the Chinese PCT) believed was disclosed by the Soderbacka prior

art reference that is described below. Second, despite this, the examiner never

discussed or cited the Soderbacka reference. Third, the examiner was not presented

with a translation of the Chinese priority document—detailing Patent Owner’s

admissions of the prior art Wi-Fi to LTE handover procedure—until April 2013,

years after the Soderbacka reference was identified among other references in an

IDS.

100. The discussion below contains a detailed explanation showing these

points.


Priority Documents

101. Patent Owner filed four foreign priority applications in the Chinese

patent office:

CN 2007 1 0104400, on May 11, 2007 (NSN779-1002, pg. 443(Certified Copy of Chinese Application));

CN 2007 1 0181758, on October 24, 2007 (NSN779-1002, pg. 463(Certified Copy of Chinese Application));

CN 2007 1 0165540, on November 2, 2007 (NSN779-1002, pg. 497(Certified Copy of Chinese Application); and

CN 2008 1 0085729, on March 13, 2008 (NSN779-1002, pg. 547(Certified Copy of Chinese Application).

Chinese PCT Filing

102. Patent Owner then filed a Chinese-language PCT application,

PCT/CN2008/070909, on May 9, 2008 (NSN779-1002, pg. 616 (Certified Copy of

Chinese PCT Application)). Based on three prior art references, the International

Searching Authority (ISA) concluded that certain claims were unpatentable for

failure to comply with PCT article 33(2) and (3)—they lacked novelty and

inventive step. NSN779-1002, pg. 349 (Translation of International Searching

Authority Written Opinion).

103. In the Written Opinion, the Searching Authority cited CN1605222 A

to Nokia Corp. This reference—CN1605222 A—is a Chinese counterpart to U.S.

Patent Application US 2003/0114158 to Soderbacka (hereinafter, “Soderbacka”)

(NSN779-1007). NSN779-1002, pg. 349 (Translation of International Searching


Authority Written Opinion). The Written Opinion stated that numerous claims of

PCT/CN2008/070909 were explicitly disclosed by the Chinese counterpart to

Soderbacka. NSN779-1002, pgs. 349. Of importance here is claim 34. The

Searching Authority stated that placing an information element indicating

handover in an Attach Request message was already in the prior art. The Written

Opinion stated: “The appendant features of claim 34 . . . are explicitly disclosed

in” the counterpart to the Soderbacka reference. NSN779-1002, pg. 350 (emphasis

added). In the original PCT Application PCT/CN2008/070909, claim 34 read:

34. The UE of claim 33, wherein the reporting unit reports in one of thefollowing:including the processing type information in a IE of an Attach Request

message and reporting the message;including the processing type information in a IE of a Tracking Area Update,

TAU, Request message and reporting the message;including the processing type information in a IE of a Routing Area Update,

RAU, Request message and reporting the message;including the processing type information in a IE of an Access Request

message and reporting the message;including the processing type information in a IE of an Access Authentication

message or an Authentication message and reporting the message; andincluding the processing type information in a IE of an Internet Key Exchange

Protocol Version 2, IKEv2, or IP Security Protocol Security Association,IPsec SA, Setup request message and reporting the message.

NSN-1020, pg. 318 (English Translation of PCT/CN2008/070909)

104. In other words, the International Searching Authority clearly believed

that placing “processing type information in a IE” of various messages was

disclosed by the Chinese version of the Soderbacka reference. An IE is shorthand


for an “information element.” In other words, Patent Owner’s method of including

an information element to distinguish processing type (i.e., “handover” versus

“initial” attach) was already known and disclosed by Soderbacka.

105. While claim 34 above is a broader version of the ultimate claims of

the ’779 Patent, Patent Owner did not add any novelty to narrow the claims beyond

what Patent Owner admitted was prior art.

106. On October 19, 2009, Patent Owner filed a continuation of its Chinese

PCT in the United States, which was assigned Application number 12/581,575.

Application number 12/581,575 would later issue as the ’779 Patent.

USPTO Examination

107. Patent Owner submitted a translation of the Written Opinion of the

International Searching Authority with respect to PCT/CN2008/070909 on July 9,

2010. However, Patent Owner did not initially provide a translation of the Chinese

priority application detailing the admissions about the prior art. As a result, the

U.S. patent examiner focused on other references during examination.

108. But further, when Patent Owner submitted the ’779 Patent’s

application to the USPTO, Patent Owner removed all references to the admitted

prior art handover procedure. In fact, when the examiner signed off on Soderbacka,

the examiner had no knowledge that Patent Owner had admitted every other

element of the claimed method was prior art. Simply put, the examiner never


discussed or cited Soderbacka in combination with Patent Owner’s admitted prior

art:

109. But even without the translation of the Chinese priority application

disclosing the prior art elements, the examiner still rejected certain claims then

pending in the application under § 102 and § 112 in an office action mailed

November 15, 2010. Claims 1–4, 7, 9, 10 and 12–17 were rejected under § 102(e)

as being anticipated by U.S. Application 2009/0073933 to Madour et al.

(“Madour”). Claims 8 and 11 were rejected under 35 U.S.C. § 103(a) as being

unpatentable over Madour in view of U.S. Application 2008/0320149 to Faccin

(“Faccin I”). The examiner noted that claims 5 and 6 would be allowable subject

matter if rewritten to overcome the rejections under 35 U.S.C. § 112. NSN779-

1002, pgs. 359–75 (11/15/2010 Non-Final Rejection).

110. Patent Owner’s February 14, 2011 Response amended the claims and

attempted to traverse the Madour and Faccin I rejections. First, Patent Owner

argued that Madour failed to teach or suggest “a registration request message

comprising registration processing information” (e.g., information indicating


whether the registration processing was due to “handover” attach or “initial”

attach). NSN779-1002, pg. 701 (2/14/2011 Patent Owner Response). However,

this claim limitation is nearly identical to the claim element rejected by the

International Searching Authority in light of Soderbacka. Second, Patent Owner

focused on the fact that Madour did not specifically disclose a method that

identified a registration processing type according to the registration processing

type information (e.g., information indicating whether the registration processing

type was “handover” attach or “initial” attach). NSN779-1002, pg. 701 (2/14/2011

Patent Owner Response). Finally, Patent Owner argued that Madour did not

disclose initiating a bearer creation procedure when the registration type equaled

handover registration. NSN779-1002, pg. 701 (2/14/2011 Patent Owner Response).

Of course, this last limitation constituted admitted prior art from the Chinese

priority application. However, at this point during the examination, the examiner

did not have the verified translation of the Chinese application.

111. Patent Owner also added new claims. In particular, Patent Owner

added claim 18, which explicitly recites that “the registration request message is an

attach request message and includes an Attach Type information element in the

Attach Request message, wherein values of the Attach Type comprise an Initial

Attach or Handover Attach.” NSN779-1002, pg. 696 (2/14/2011 Patent Owner

Response).


112. On April 25, 2011, the examiner issued a final rejection based on a

new reference, U.S. Application 2006/0109817 to Ramanna et al., (“Ramanna”).

Specifically, the examiner found that claims 7, 9–11, 14, 16, and 23 were

anticipated by Ramanna. NSN779-1002, pg. 718 (4/25/2011 Final Rejection).

Next, the examiner found that claims 1, 4–6, 12, and 18–22 were unpatentable over

Ramanna in view of U.S. Application 2008/0254768 to Faccin (“Faccin II”).

NSN779-1002, pg. 723.

113. Patent Owner responded to the Final Rejection on July 11, 2011, and

requested continued examination under 37 C.F.R. 1.114. Patent Owner again

amended the claims and added new claims.

114. In Patent Owner’s response, Patent Owner first distinguished

Ramanna on a new ground. Patent Owner again confirmed that the purported point

of novelty of its invention is the transmission of a registration request message, in

this case, a handover-type registration request message, distinguishing Ramanna on

the basis that the “HANDOFF REQUEST is not a registration request message.”

NSN779-1002, pg. 748 (7/11/2011 Patent Owner Response). Patent Owner next

distinguished Ramanna on the same grounds listed above, namely, that Ramanna

fails to teach or suggest identifying, by the network element, a handover

processing type of the registration request according to the registration processing

type information. NSN779-1002, pgs. 748–49. Patent Owner argued that, in


Ramanna, the base station receives a direct handoff request and does not identify

the processing type (i.e., “handover” or “initial”) according to any registration

processing type information. NSN779-1002, pg. 748. However, this claim

limitation is nearly identical to the claim limitation rejected by the International

Searching Authority in light of Soderbacka.

115. On December 6, 2011, the patent examiner issued a non-final

rejection finding Patent Owner’s arguments distinguishing its messages over the

prior art persuasive. NSN779-1002, pg. 772. However, finding a new ground of

rejection in Faccin II, the examiner again rejected the claims as unpatentable under

§ 103(a) using Ramanna in view of Faccin II. NSN779-1002, pg. 774.

116. On March 6, 2012, Patent Owner filed a Response and Amendment to

the examiner’s rejection. In the amendment to claim 1, Patent Owner changed

“registration request message” to “attach request message.” NSN779-1002, pg. 797

(3/6/2012 Patent Owner Response). Patent Owner also added new claims.

117. In Patent Owner’s Response, Patent Owner attempted to traverse the

rejections of Ramanna in view of Faccin II from above. First, Patent Owner argued

that Ramanna teaches handover between two non-3GPP networks; not a non-3GPP

network and a 3GPP network. NSN779-1002, pg. 802 (3/6/2012 Patent Owner

Response). Second, Patent Owner argued that Ramanna teaches the use of the base

station and a HANDOFF REQUEST message to initiate handover, but the


amended claims used an MME and an attach request message. NSN779-1002, pgs.

802–03. Specifically, Patent Owner stated: “An attach procedure enables a UE

to register itself to an MME for receiving packet service . . . .” NSN779-1002,

pg. 803 (emphasis added).

118. This portion of the file history confirms that the attach request

message is a part of the initial connection establishment signaling that the mobile

phone uses “to register itself to an MME for receiving packet service.” NSN779-

1002, pg. 803. This message is precisely the kind of message that the International

Searching Authority thought was disclosed by Soderbacka (as discussed above).

119. On May 3, 2012, the examiner issued another Final Rejection. The

examiner stated that Patent Owner’s arguments were persuasive. However,

examiner put forth a new ground of rejection, rejecting claims 7, 9, 10, 16, 19, 20,

and 26–33 under § 102 as being anticipated by U.S. Application 2008/0181178 to

Shaheen (“Shaheen I”). NSN779-1002, pgs. 900–03 (5/3/2012 Final Rejection).

120. On August 3, 2012, Patent Owner filed a Response to the Final Office

Action. Patent Owner did not amend any claims. Patent Owner focused its

argument on the idea that “Shaheen fails to disclose ‘identifying, by the MME, a

Packet Data Network Gateway (PDN GW) whose address is used by the UE in the

non-3GPP network by communicating with a Home Subscriber Server (HSS).’”

NSN779-1002, pg. 916 (8/3/2012 Patent Owner Response). This element was


already present in the existing protocol. This element was also described in the

admitted prior art that Patent Owner removed from the Chinese application before

it filed the U.S. application. But the examiner would have been unaware of this fact

because the verified translation of the Chinese application was still not submitted

at this point. Patent Owner never argued that Shaheen I failed to disclose “wherein

the attach request message comprises an information element (IE) indicating

handover. NSN779-1002, pgs. 916–18.

121. On August 16, 2012, the examiner filed an Advisory Action Before

the Filing of an Appeal Brief. NSN779-1002, pg. 925 (8/16/2012 Advisory

Action).

122. On September 4, 2012, Patent Owner filed a Pre-Appeal Brief

Request for Review. NSN779-1002, pgs. 927–31. Patent Owner repeated its

arguments about the missing limitation from Shaheen I raised in the Response to

the Final Office Action filed on August 3, 2012. NSN779-1002, pgs. 928–30

(9/4/2012 Pre-Appeal Brief). On the same day, Patent Owner also filed a Notice of

Appeal. NSN779-1002, pg. 932.

123. On November 7, 2012, the panel filed a Notice of Panel Decision

from Pre-Appeal Brief Review. NSN779-1002, pgs. 942–43. In the Notice of Panel

Decision, the panel instructed the examiner to re-open prosecution and indicated


that “A conference has been held. The rejection is withdrawn and a new Office

action will be mailed.” NSN779-1002, pg. 943.

124. On December 18, 2012, the examiner mailed a Non-Final Rejection.

NSN779-1002, pgs. 944–51. In the Non-Final Rejection, the examiner largely

repeated its arguments, but this time with a different Shaheen reference (U.S.

Application 2008/0316971) (“Shaheen II”). NSN779-1002, pgs. 947–50.

125. Finally, on April 18, 2013, Patent Owner submitted a Response and

argued that Shaheen II was not prior art by filing a certified translation of the

Chinese priority document, CN200710104400.7. NSN779-1002, pg. 1016

(4/18/2013 Patent Owner Response). The translated foreign priority document

would have been the first time the examiner saw that Patent Owner had knowledge

of the prior art handover message flow from Wi-Fi (non-3GPP) to LTE (3GPP).

NSN779-1002, pgs. 1019–40 (4/18/2013 Submission of Verified Translation). The

verified translation reveals that, in the PCT specification and U.S. Application,

Patent Owner chose to omit Figure 2 of the original specification and the entire

admitted prior art handover description of Figure 2.

126. Without further rejections from the examiner, a Notice of Allowance

issued on May 23, 2013. NSN779-1002, pgs. 1050–51. After further IDS

statements were submitted, the ’779 Patent was issued on September 17, 2013.


Challenged Claims of the ’779 Patent

127. Claims 1, 4, 9–10, and 11 (“the Challenged Claims”) are challenged in

this Petition. I have reproduced the challenged claims below.

1. [1preamble] A handover processing method, comprising:

[1a] receiving, by a Mobility Management Entity (MME), an attach requestmessage sent by a User Equipment (UE) during a handover from a non 3rdGeneration Partnership Project (non-3GPP) network to a 3rd GenerationPartnership (3GPP) network,

[1b] wherein the attach request message comprises an information element(IE) indicating handover;

[1c] identifying, by the MME, a Packet Data Network Gateway (PDN GW)whose address is used by the UE in the non-3GPP network bycommunicating with a Home Subscriber Server (HSS); and

[1d] requesting, by the MME, the PDN GW to initiate a bearer creationprocedure.

4. [4preamble] The method of claim 1, wherein the requesting a the PDNGW to initiate a bearer creation procedure comprises:

[4a] sending, by the MME, a Create Bearer Request message to the PDNGW; and

[4b] initiating, by the PDN GW, the bearer creation procedure.

9. The method of claim 1, wherein the MME identifies the PDN GW byobtaining an identity of the PDN GW from the HSS.

10. The method of claim 1, wherein the MME identifies the PDN GW byobtaining the PDN GW address from the HSS.


11. [11preamble] A network element, comprising:

[11a] an obtaining unit, configured to receive an attach request message sentby a User Equipment (UE) during a handover from a non 3rd GenerationPartnership Project (non-3GPP) network to a 3rd Generation PartnershipProject (3GPP) network,

[11b] wherein the attach request message comprises an information elementindicating handover;

[11c] an identifying unit, configured to identify that the attach requestmessage is due to the handover according to the IE indicating handover; and

[11d] a processing unit, configured to identify a Packet Data NetworkGateway (PDN GW) whose address is used by the UE in the non-3GPPnetwork by communicating with a Home Subscriber Server (HSS),

[11e] and request the PDN GW to initiate a bearer creation procedure.

Priority Date

128. I understand from the face of the ’779 Patent that the purported

priority date for the ’779 Patent is May 11, 2007. I also understand that prior art

references published on or before May 11, 2007, are considered prior art to the

’779 Patent, and this is the date I have used for my analysis.

IX. CLAIM INTERPRETATION OF THE ’779 PATENT

129. In my review of the claims of the ’779 Patent, I understand that the

following terms should be given the broadest reasonable interpretation in view of

the specification from the perspective of one skilled in the relevant field. I applied

this standard in my analysis below for all of the claim terms.


“Create Bearer Request message” in Claim 4

130. Claim 4 of the ’779 Patent includes the limitation of a “Create Bearer

Request message.”

131. I understand that in the pending district court litigation Petitioners

have taken the position that this limitation should be construed as “a message titled

Create Bearer Request.” I agree.

132. A person having ordinary skill in the art would have understood that

independent Claim 4 of the ’779 Patent claims the use of a specific message—a

Create Bearer Request message.

133. Further, a person having ordinary skill in the art would have

understood that this specific message having that title—Create Bearer Request—

was used in the Tracking Area Update Procedure (TAU) at the time of the priority

date of the ’779 Patent. NSN779-1021, § 5.3.3.1. Indeed, Figure 5.3.3-1 shows the

message flow diagram for a TAU procedure using a “Create Bearer Request”

message at step 8 (see blue box below):


NSN779-1021, § 5.3.3 & fig. 5.3.3-1 (blue box added)

134. A person having ordinary skill in the art at the time of the ’779 Patent

would have also understood that the TAU procedure is an integral part of the ’779

Patent specification. In fact, the TAU procedure and its corresponding messages

are referenced throughout the ’779 Patent specification. E.g., NSN779-1001, fig. 7

(showing the mobile phone sending a “TAU Request” message and the MME

responding with a “TAU Accept” message); fig. 13 (same); 1:29–31 (“[T]he

handover procedure is implemented via Attach or Tracking Area Update (TAU)

procedure by the UE in a new access system.”); 1:32–35 (“In the process of


developing the present invention, the inventor finds that the processing mechanism

of an Attach or TAU process caused by handover differs sharply from the

processing mechanism of a normal Attach/TAU process.”); 1:42–45 (“In the

normal TAU process, the network does not handle the bearers of the user, but in

the TAU process caused by handover, the network needs to recreate all bearers

previously created by the user.”); 5:19–20 (“[T]he reporting unit includes the

processing type information in an IE of a TAU request message.”); 5:33–35

(“[T]he reporting unit sends different TAU request messages to the network based

on different registration types.”); 7:3–13 (“An Update Type IE is added in the

TAU request message. For example, the values of the Update Type IE are 0 and 1.

The value ‘0’ corresponds to Normal TAU (also known as Initial TAU), and

indicates that the TAU request message is a normal TAU request message (also

known as initial TAU request message); and the value ‘1’ corresponds to Handover

TAU, and indicates that the TAU request message is caused by handover.

Alternatively, the UE adds an indication bit in the TAU request message to

indicate that the TAU request message is caused by handover. The original TAU

request message indicates a normal TAU request message (also known as initial

TAU request message).”); 7:16–17 (“[A] Cause IE. The UE sets the Cause IE to

‘TAU due to Handover.’”); 7:20–21 (“For example, a new Handover TAU Request


message is defined. This message indicates a TAU request message caused by

handover.”).

135. There are plenty more examples in the ’779 Patent specification. It is

my opinion that a person having ordinary skill in the art would have understood

that the inventors of the ’779 Patent were referring to the specific messages in the

TAU procedure and that the inventors would have known that the “Create Bearer

Request” message was a message used in this TAU procedure.

“obtaining unit,” “identifying unit,” and “processing unit” in claim11

136. Claim 11 of the ’779 Patent describes a “network element” that

includes an “obtaining unit,” “identifying unit,” and “processing unit.” Based on

the functions performed by the “network element,” claim 11 relates to an MME,

and the claimed “obtaining unit,” “identifying unit,” and “processing unit” are

components within the MME.

137. I understand that Petitioners in the pending district court litigation

have taken the position that “obtaining unit,” “identifying unit,” and “processing

unit” are means-plus-function claim elements. If that is the case, I understand that

the corresponding structure for these claim terms must be found in the

specification of the ’779 Patent. The ’779 Patent, however, provides no

corresponding structure for these claim elements and, instead, defines them in both

the claims and the specification in purely functional terms. See, e.g., NSN-1001, at


5:40–6:2. Figure 6, which is purportedly a “structure” of an MME, provides no

actual structural disclosure:

NSN-1001, fig. 6.

138. The following table provides the corresponding structure that has been

identified by the parties in the co-pending district court litigation:

Limitation/Recited Function Petitioner’s ProposedCorresponding

Structure

Patent Owner’sDisclosure of

Structure2

an obtaining unit, configured toreceive an attach requestmessage sent by a UserEquipment (UE) during ahandover from a non 3rdGeneration Partnership Project(non-3GPP) network to a 3rdGeneration Partnership Project(3GPP) network, wherein the

No correspondingstructure

“obtaining unit in anetwork-side networkelement andequivalents thereof”

2 In the Joint Claim Construction Chart in the corresponding district court

litigation, Patent Owner proposed the below structure if the Court determines the

term is subject to 35 U.S.C. § 112 ¶6. NSN-1023, Ex. A, pgs. 20–28.


Limitation/Recited Function Petitioner’s ProposedCorresponding

Structure

Patent Owner’sDisclosure of

Structure2

attach request messagecomprises an informationelement indicatinghandover;an identifying unit, configured toidentify that the attach requestmessage is due to the handoveraccording to the IE indicatinghandover; and


“identifying unit in anetwork-side networkelement andequivalents thereof”

a processing unit, configured toidentify a Packet Data NetworkGateway (PDN GW) whoseaddress is used by the UE in thenon-3GPP network bycommunicating with a HomeSubscriber Server (HSS), andrequest the PDN GW to initiate abearer creation procedure.


“one or moreprocessors in anetwork-side elementand equivalentsthereof”

NSN779-1023, Exh. A, pgs. 20–28.

139. However, for purposes of this declaration, and consistent with the

broadest reasonable interpretation standard, I haven interpreted these claim terms

to mean hardware or software configured to accomplish the function recited in the

claim. In particular, “hardware or software obtaining unit,” “hardware or software

identifying unit,” and “hardware or software processing unit.”

140.


X. COUNT 1: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11 BASEDON THE ADMITTED PRIOR ART IN VIEW OF SODERBACKA

141. I believe that claims 1, 4, 9–10, and 11 are obvious in view of the ’779

Admitted Prior Art (’779 APA) in light of U.S. Printed Patent Application Number

US 2003/0114158 to inventors Lauri Soderbacka, Jarmo Virtanen, Kari Kauranen,

Hannu Hietalahti, Jari Liukkonen, and Antti Pitkamaki (hereinafter,

“Soderbacka”).

’779 Admitted Prior Art—Chinese Priority Application (NSN779-1002, pgs. 1019–40)

142. The ’779 Admitted Prior Art is found in the translated version of the

earliest filed Chinese priority application in the File History of the ’779 Patent.

Specifically, the ’779 APA in the section titled “Specification,” on page 1025, lines

11–30 (describing prior art Figure 1), page 1026, lines 8–29 (describing the

“existing protocol” in prior art Figure 2), page 1026, lines 29–35 and page 1027,

lines 1–6 (describing the “existing protocol” in prior art Figure 3) , and page 1028,

lines 13–17 (describing Figures 1–4 as prior art). The ’779 APA also includes

Figures 1–4 on pages 1036–37.

143. As Patent Owner stated, Figure 2 “is a flowchart of a handover from a

non-3GPP access system to a 3GPP access system for a UE in the prior art.”

NSN779-1002, pg. 1028, ll. 14–15. That figure is illustrative:


NSN779-1002, pg. 1036, fig. 2 (blue box added).

144. As the Chinese Priority Document describes:

In the existing protocol, the handover procedure is implemented via

Attach (Attach) . . . procedure by the UE in a new access system. As

shown in FIG. 2, the handover procedure from the non-3GPP access

system to the 3GPP access system of the UE comprises the following

steps:

. . .

3. The UE sends an Attach Request . . . message to the MME.

4. An authentication procedure is performed between the UE, the

MME, and the HSS to obtain the PDN GW address used by the UE.

5. The MME sends a Create Bearer Request message to the obtained

PDN GW address, requesting the network side to initiate bearer

creation procedure. In this way, the service used by the UE in the non-

3GPP AN is re-created in the new access system.


. . .

7. The PDN GW initiates a network-side bearer creation procedure to

create the bearer of the user.

NSN779-1002, pg. 1026, ll. 10–29 (emphasis added).

145. In this, Patent Owner admitted critical information. First, it was

known that the MME receives an Attach Request message sent by a mobile phone

(UE) during handover from a Wi-Fi (non-3GPP) network to a LTE (3GPP)

network: Step 3 (“The UE sends an Attach Request . . . message to the MME.”).

NSN779-1002, pg. 1026, ll. 17–18.

NSN779-1002, pg. 1036, fig. 2 (blue boxes added).

146. Second, it was known that the MME communicates with the HSS to

identify the PDN GW that the mobile phone (UE) was connected to in the non-

3GPP network: Step 4 (“An authentication procedure is performed between the


UE, the MME, and the HSS to obtain the PDN GW address used by the

UE.”)). NSN779-1002, pg. 1026, ll. 19–20.


147. Third, it was known that the MME requests the PDN GW to initiate a

bearer creation procedure: Step 5 & 7 (“The MME sends a Create Bearer Request

message to the obtained PDN GW address, requesting the network side to initiate

bearer creation procedure. . . . The PDN GW initiates a network-side bearer

creation procedure to create the bearer of the user.”). NSN779-1002, pg. 1026, ll.

21–29.


(Prior Art) (Present Invention)


148. Indeed, in the verified Chinese translation of the priority document,

Figure 2 (the prior art message flow diagram) is identical to Figure 9 (the message

flow diagram of the first embodiment of the ’779 Patent):

NSN779-1002, pg. 1036, fig. 2 & pg. 1039, fig. 9; see also NSN779-1002, pg.1028, ll. 14–15 (“[Figure 2] is a flowchart of a handover from a non-3GPP accesssystem to a 3GPP access system for a UE in the prior art.” (emphasis added));NSN779-1002, pg. 1028, l. 23 (“[Figure 9 is] a flowchart of the first embodimentof the present invention.”).



the message flow, as that was prior art. Instead, the only alleged novelty of


an information element (IE) indicating handover.” Specifically, Patent Owner’s

purported invention was merely to add a known information element (i.e., data

field) to a known message.




150. As Patent Owner explains in the verified Chinese translation, this

information element allows the network to distinguish a normal (e.g., “initial”)

Attach procedure from the Attach procedure caused by handover. NSN779-1002,

pg. 1027, ll. 14–17.

Soderbacka et al., US 2003/0114158 (NSN779-1007)

151. United States Printed Patent Application Number US 2003/0114158

to inventors Lauri Soderbacka, Jarmo Virtanen, Kari Kauranen, Hannu Hietalahti,

Jari Liukkonen, and Antti Pitkamaki (hereinafter, “Soderbacka”) was published by

the United States Patent and Trademark Office on June 19, 2003 (NSN779-1007).

Thus, Soderbacka was publicly accessible at least as early as June 19, 2003, and

therefore, I understand Soderbacka is prior art to the ’779 Patent under § 102(b).

During the prosecution of the ’779 Patent application, Soderbacka was disclosed to

the USPTO in an Information Disclosure Statement dated January 27, 2010.


Soderbacka was discussed by the International Searching Authority during the

Chinese PCT application process. However, Soderbacka was never mentioned or

discussed by the United States patent examiner and, importantly, was never

reviewed contemporaneously with the Admitted Prior Art discussed above.

152. Soderbacka is generally directed to systems and methods for

performing an intersystem handover of a mobile phone (UE) accessing a

communication network. NSN779-1007, ¶0001. Soderbacka acknowledges the

desirability of accessing the communication system (i.e., the network) via all

concerned types of radio access technologies (RATs), including non-3GPP

technologies such as Wi-Fi. NSN779-1007, ¶0001. In fact, Soderbacka states,

“[T]he intersystem handover of the invention . . . [can be implemented] for a

handover of a mobile terminal from a WLAN (wireless local area network

[Wi-Fi]) to GSM [3GPP].” NSN779-1007, ¶0039 & fig. 1 (emphasis added).

153. A person of ordinary skill in the art at the time of the invention would

have understood that WLAN (or a wireless local area network) is a non-3GPP

network commonly referred to as Wi-Fi. A person of skill in the art would have

also understood that a GSM network is a 3GPP 2G network. As a result,

Soderbacka explicitly discloses a method of handover between a non-3GPP access

point to a 3GPP base station.


154. Soderbacka discloses an exemplary 3GPP access system. Figure 1 is

an example of a network architecture utilizing a handover method between a 3GPP

2G system (described by the architecture on the right side of the figure below with

the “BSC” and “2G-SGSN” components) and a 3GPP 3G system (described by the

architecture on the left side of the figure below with the “RNC” and “3G-SGSN”

components).

NSN779-1007, fig. 1

155. A person of ordinary skill in the art would have understood that a 3G

access system utilizes different network elements than a 4G access system (as

discussed earlier). In a 3G access system, the mobile phone communicates with a

Base Station (BS) that is connected to a Radio Network Controller (RNC). The


RNC is connected to a Serving GPRS Support Node (3G-SGSN), which is

connected to a GPRS Support Node (GGSN).

156. Soderbacka discloses that when the mobile phone needs to handover,

“the intersystem handover is initiated by a transmission of the mobile terminal

[e.g., a mobile phone] to the communication network, which transmission

comprises information indicating that an intersystem handover from the radio

access network of the first type [e.g., non-3GPP] to the radio access network

of said second type [e.g., 3GPP] should be performed.” NSN779-1007, at

[Abstract] (emphasis added).

157. While Fig. 1 of Soderbacka shown above depicts a handover between

two different types of 3GPP networks (2G GSM and 3G UMTS), Soderbacka also

discloses that one of these networks can be a non-3GPP network:

Accordingly, the intersystem handover of the invention cannot only be

implemented for WCDMA [3G UMTS] and GSM/GPRS [2G GSM],

but for any systems between which such an intersystem handover may

be of interest, for instance also for a handover of a mobile terminal

from a WLAN (wireless local area network) [Wi-Fi] to GSM

[3GPP].

NSN779-1007, ¶0039. (emphasis added).

158. Given that Soderbacka discloses that the “radio access network of the

first type” can be a non-3GPP access network, and that the “radio access network

of the second type” can be a 3GPP access network, Soderbacka discloses that the


mobile phone sends a transmission with information indicating that an intersystem

handover from a non-3GPP network to 3GPP network should be performed.

NSN779-1007, ¶0037.

159. More specifically, Soderbacka discloses that the invention provides

for “an information element added to the current connection establishment

signaling.” NSN779-1007, ¶0113 (emphasis added). For example, in the second

embodiment, Soderbacka discloses that “a new information element” could be

“added to the SETUP message transmitted by the mobile terminal to the

communication network.” NSN779-1007, ¶0032 (emphasis added). A person of

ordinary skill in the art would have understood that a “SETUP” message is a part

of the connection establishment signaling for the network described in Soderbacka,

just as an “Attach Request” message is a part of the initial connection

establishment signaling in a 4G network described in the ’779 Patent.

160. The information contained inside the information element disclosed in

Soderbacka “indicat[es] that an intersystem handover . . . should be

performed.” NSN779-1007, at [Abstract] (emphasis added). Indeed, the

information element disclosed in Soderbacka contains the type of radio access

technology that the mobile phone needs to access. Based on the information

element, the network recognizes that the needed radio access technology is not the

current radio access technology, and thus, the information element “indicat[es]


that an intersystem handover from the radio access network of the first type

to the radio access network of said second type should be performed .”

NSN779-1007, at [Abstract] (emphasis added).

161. It is my opinion that Soderbacka squarely teaches placing an

information element indicating handover in the connection establishment signaling.

This is the equivalent of claim element 1b “wherein the attach request message

comprises an information element (IE) indicating handover.”

Motivation to Combine the ’779 Admitted Prior Art withSoderbacka

162. It would have been obvious to combine the ’779 Admitted Prior Art

and Soderbacka at the time of the ’779 Patent. Specifically, the ’779 APA shows

that the non-3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well known in

the prior art, prior to the date of invention of the ’779 Patent. With this knowledge,

the person having ordinary skill in the art would have found explicit motivation

within Soderbacka to include necessary information in the handover procedure so

the mobile phone can access “networks for which the mobile terminal is currently

not registered.” NSN779-1007, ¶0031. Indeed, not only does Soderbacka identify a

problem with current handover procedures, but it explicitly recites the inclusion of

an information element to allow the network to make decisions as to the type of

handover to perform. NSN779-1007, ¶0032. Given that Soderbacka explicitly

includes an information element, a person having ordinary skill in the art would


have had a reasonable expectation of success when using it in conjunction with the

handover procedure outlined in the ’779 APA.

163. Both the ’779 APA and Soderbacka are directed to the same field of

endeavor; namely, handover procedures from a non-3GPP network to a 3GPP

network. Therefore, a person of ordinary skill in the art would have been motivated

to look for solutions arising in the field (for example, solutions already established

for previous generations of 3GPP) to solve problems arising in the same field

(apply those established solutions to later generations of 3GPP). Indeed, 3GPP

standards and specifications are constantly evolving, and it is common in 3GPP for

previous solutions to be used in subsequent generations.

164. In particular, one of ordinary skill in the art at the time of the alleged

invention would have been motivated to use an information (IE) indicating

handover, similar to that described in Soderbacka, to distinguish the type of attach

request message described in the ’779 APA because a person of ordinary skill

would have looked to the 3GPP 3G handover procedures (like that disclosed in

Soderbacka) when designing the 3GPP 4G handover procedures (like that

disclosed in the ’779 APA). In other words, one of ordinary skill in the art at the

time of the invention would have been motivated to look to known methods

(handover information elements) from the third generation network to solve the

similar problems (distinguishing the attach request message to the network) when


designing the fourth generation mobile phone network. A person having ordinary

skill in the art would have had a reasonable expectation of success given the

teachings of Soderbacka.

165. Further, such an ordinarily skilled person would have found it a

predictable and common sense implementation to use an information element

indicating handover, such as that described in Soderbacka, with the message flow

outlined in the ’779 APA. Soderbacka had long taught the use of information

elements in connection establishment messages sent by the mobile phone to the

network, so merely implementing this known process in the ’779 APA to achieve a

similar result is not inventive. An information element was a known mechanism

for identifying the attach type, and it was not inventive for Patent Owner to use

that mechanism for the very same purpose in a 4G handover between a 3GPP

network and a non-3GPP network.

166. Even further, other 3GPP documents make clear that the ’779 APA

was ready for the exact clarification implemented in the ’779 Patent. Patent Owner

states that the prior art lacked a method to distinguish an initial Attach Request

message from a handover Attach Request message. See NSN779-1002, pg. 1027,

ll. 14–17. Again, this issue was already identified by other 3GPP participants. See,

e.g., NSN779-1014, pg. 1. Indeed, Ericsson stated: “There are two main cases for

selecting a GW (both PDN GW and Serving GW): [1] Initial GW selection, i.e.,


selecting a new GW for a UE. This typically happens when the UE attaches to the

system. [2] Maintain the selected GW during handovers between 3GPP access

and non-3GPP access.” NSN779-1014, pg. 1 (second emphasis added)). Given

the function of an Attach Request message, Soderbacka supplies the known

technique to yield the predictable result described above. Thus, there is even

further motivation to combine Soderbacka with the ’779 APA, and this renders the

claims of the ’779 Patent obvious.

167. Finally, one of ordinary skill in the art at the time of the alleged

invention would have been motivated to distinguish different Attach Request

messages using an information element because doing so is one of a finite number

of identified, predictable solutions. Soderbacka discloses that a problem arises

when the mobile terminal (e.g., mobile phone) seeks to handover to a “radio access

network[] for which the mobile terminal is currently not registered.” NSN779-

1007, ¶0031. Soderbacka discloses the limited set of possibilities that might solve

this problem: (1) “an information element [is] added to the current connection

establishment signaling;” or “[a]lternatively, new messages could be added to the

signaling sequence.” NSN779-1007, ¶¶0113–0114. The ’779 Patent also discloses

the same finite solutions: (1) “an Attach Type IE is added in the Attach Request

message;” or (2) “A new message is defined.” NSN-1001, at 6:19–23. Given the

limited number of solutions to distinguish two messages of the same type, one of


ordinary skill in the art at the time of the invention would have obviously tried one

of these two solutions to solve the problem and had a reasonable expectation of

success in doing so.

Reasons to Consider Soderbacka

168. Soderbacka was disclosed in an information disclosure statement

during prosecution of the ’779 Patent. The examiner, however, never mentioned or

commented on Soderbacka. Further, Soderbacka was never discussed or cited in

combination with the Admitted Prior Art. In fact, Soderbacka was first disclosed in

2010, while the admitted prior art was not disclosed to the patent office until

2013.

Limitation-by-Limitation Obviousness Analysis

169. The following table provides a summary of the disclosed elements by

each prior art reference for Count 1.

Claim Elements Claim Numbering Exemplary Disclosure in PriorArt

Method forHandoverProcessing

1preamble ’779 APA

Network Element 11preamble ’779 APA



Attach RequestMessage SentDuring Handover

1a, 11a ’779 APA

Informationelement indicatinghandover

1b, 11b, 11c Soderbacka

PDN GWAddress/Identity

1c, 11d, 9, 10 ’779 APA

Bearer CreationProcedure

1d, 11e, 4preamble, 4b ’779 APA

Create BearerRequest message

4a ’779 APA

Method for Handover Processing (Elements 1preamble)

1preamble: “A handover processing method, comprising:”

170. To the extent the preamble is limiting, the ’779 APA teaches a

handover processing method. For example, the ’779 APA discloses that “FIG. 2 is

a flowchart of a handover from a non-3GPP access system to a 3GPP access

system for a UE in the prior art;”


NSN779-1002, pg. 1028 & pg. 1036, fig. 2.

171. The specification describes the message flow procedure from Figure

2:

In the existing protocol, the handover procedure is implemented

via Attach (Attach) . . . procedure by the UE in a new access

system. As shown in FIG. 2, the handover procedure from the

non-3GPP access system to the 3GPP access system of the UE

comprises the following steps:

. . .

3. The UE sends an Attach Request or a Tracking Area Update

Request message to the MME.








. . .


create the bearer of the user.


172. Thus, element 1preamble is disclosed in the ’779 APA.

Network Element (Element 11preamble)

11preamble: “A network element, comprising:”

173. The ’779 APA discloses a network element. For example:

FIG. 1 shows system architecture of an evolved network in the prior

art;

NSN779-1002, pg. 1028, l. 13.

FIG 1 shows system architecture of the evolved network. The

architecture includes:

. . .

a Mobile Management Entity (MME), responsible for control plane

mobility management, including user context and Mobility state

management, and allocation of temporary mobile subscriber

identifiers;. . .

NSN779-1002, pg. 1025, ll. 9–16.



174. A person having ordinary skill in the art would have understood that a

network entity that is “responsible for control plane mobility management” would

be involved in the handover process. Thus, claim element 11preamble is met by the

’779 APA.

Attach Request Message Sent During Handover (Elements 1a &11a)

1a: “receiving, by a Mobility Management Entity (MME), an attach requestmessage sent by a User Equipment (UE) during a handover from a non 3rdGeneration Partnership Project (non-3GPP) network to a 3rd GenerationPartnership (3GPP) network”

11a: “an obtaining unit, configured to receive an attach request message sentby a User Equipment (UE) during a handover from a non 3rd Generation


Partnership Project (non-3GPP) network to a 3rd Generation PartnershipProject (3GPP) network,”

175. The ’779 APA discloses receiving, by a Mobility Management Entity

(MME), an attach request message sent by a User Equipment (UE) during a

handover from a non 3rd Generation Partnership Project (non-3GPP) network to a

3rd Generation Partnership (3GPP) network.

176. The ’779 APA also discloses a network element having software of

hardware configured to receive an attach request message sent by a User

Equipment (UE) during a handover from a non 3rd Generation Partnership Project

(non-3GPP) network to a 3rd Generation Partnership Project (3GPP) network (i.e.,

an obtaining unit).

177. The ’779 APA discloses:

FIG. 2 is a flowchart of a handover from a non-3GPP access system to

a 3GPP access system for a UE in the prior art;



Attach (Attach) or Tracking Area Update (TAU) procedure by the UE

in a new access system. As shown in FIG. 2, the handover

procedure from the non-3GPP access system to the 3GPP access

system of the UE comprises the following steps:

. . .


NSN779-1002, pg. 1026, ll. 10–18; pg. 1028, ll. 14–15 & pg. 1036, fig. 2(emphasis and blue boxes added).


when the mobile phone (UE) sends an Attach Request message to the MME, the

MME receives that Attach Request message. As stated, the procedure occurs

during handover from the non-3GPP access system to the 3GPP access system.

179. A person having ordinary skill in the art would have also understood a

network element that is capable of receiving a message, like an MME, must have


hardware or software configured to receive those messages (i.e., an obtaining unit).

Given that the ’779 APA discloses an MME capable of receiving an Attach

Request message sent by a mobile phone (UE) during a handover from a non-

3GPP (Wi-Fi) network to a 3GPP network (LTE), the ’779 APA discloses an

obtaining unit configured to receive an Attach Request message sent by a mobile

phone (UE) during a handover from a non-3GPP network to a 3GPP network.

180. Thus, elements 1a and 11a are disclosed in the ’779 APA.

Information Element Indicating Handover (Elements 1b, 11b, and11c)

1b: “wherein the attach request message comprises an information element(IE) indicating handover;”

11b: “wherein the attach request message comprises an information elementindicating handover;”

11c: “an identifying unit, configured to identify that the attach requestmessage is due to the handover according to the IE indicating handover and;”

181. Soderbacka discloses a message sent by the mobile phone into the

network comprising an information element indicating handover and a network

element configured to identify that the message is due to the handover according to


the IE indicating handover and software or hardware configured to identify the

contents of that information element (i.e., an identifying unit). For example,

Soderbacka discloses that the mobile phone sends a transmission which comprises

information indicating that intersystem (e.g., non-3GPP to 3GPP) handover should

take place:

In order to enable an access to the communication network with a

radio access technology required or desired by the mobile terminal,

the intersystem handover is initiated by a transmission of the mobile

terminal [i.e., UE] to the communication network, which

transmission comprises information indicating that an

intersystem handover from the radio access network of the first

type to the radio access network of said second type should be

performed.

NSN779-1007, at [Abstract].

182. Soderbacka also discloses that the radio access network of the first

type could be a non-3GPP (Wi-Fi) network and the radio access network of the

second type could be a 3GPP network:

Accordingly, the intersystem handover of the invention [could be] . . .

for any systems between which such an intersystem handover may be

of interest, for instance . . . for a handover of a mobile terminal

from a WLAN (wireless local area network [Wi-Fi]) to GSM

[3GPP 2G] . . . .

NSN779-1007, ¶0039 (emphasis added).



WLAN system is a non-3GPP network commonly referred to as Wi-Fi and that

GSM is a 2G 3GPP network.

184. Further, Soderbacka discloses that the “information indicating . . . an

intersystem handover” is contained in an information element:

The mobile terminal further comprises means for signaling a request

for a preferred radio access technology to the communication network

in an information element added to the current connection

establishment signaling.

NSN779-1007, ¶0113 (emphasis added)).


Soderbacka discloses an information element containing a radio access technology

and that this radio access technology indicates handover. In Soderbacka, the radio

access technology is referred to as “service related information”:

Based on a service related information provided by the mobile

terminal at the beginning of a call, the mobile terminal is handed

over, if a handover is required for this service.

NSN779-1007, ¶0031.

186. In other words, a person having ordinary skill in the art would have

understood that Soderbacka discloses that the service related information in the

information element is used to indicate handover. Specifically, when the service

related information contained in the information element does not match the


service currently being provided to the mobile phone (terminal), “the mobile

terminal is handed over.” NSN779-1007, ¶0031. Thus, a person having ordinary

skill in the art would have understood that the information contained within the

information element indicates handover.

187. In Soderbacka, the information element indicating handover is

contained in a message that establishes an initial connection between the mobile

phone and the network. An Attach Request message also establishes an initial

connection between the mobile phone and the network. A person having ordinary

skill in the art would have understood that there are various ways to describe 3G

and 4G systems, but in both systems, the mobile phone must establish an initial

connection to the network in order to receive service. The ’779 Patent specification

(and the ’779 APA) discloses that the purpose of the Attach Request message is to

establish the initial connection between the mobile phone and the network. This

same message is also where the information element is located in Soderbacka:

“[A]n information element [is] added to the current connection establishment

signaling.” NSN779-1007, ¶0113 (emphasis added)).

188. Finally, a person having ordinary skill in the art would have

understood that the network entity receiving the message with the information

element in Soderbacka would contain hardware or software configured to identify

the contents of that information element and, therefore, would contain an


identifying unit configured to identify that the attach request message is due to the

handover according to the IE indicating handover.

189. As a result, Soderbacka discloses claim elements 1b, 11b, and 11c.

PDN GW Address/Identity (Elements 1c, 11d, 9, 10)

1c: “identifying, by the MME, a Packet Data Network Gateway (PDN GW)whose address is used by the UE in the non-3GPP network bycommunicating with a Home Subscriber Server (HSS)”

11d: “a processing unit, configured to identify a Packet Data NetworkGateway (PDN GW) whose address is used by the non-3GPP network bycommunicating with a Home Subscriber Service (HSS),”

9: “The method of claim 1, wherein the MME identifies the PDN GW byobtaining an identity of the PDN GW from the HSS.”

10: “The method of claim 1, wherein the MME identifies the PDN GW byobtaining the PDN GW address from the HSS.”

190. The ’779 APA discloses identifying, by the MME, a Packet Data

Network Gateway (PDN GW) whose address is used by the UE in the non-3GPP

network by communicating with a Home Subscriber Server (HSS). The ’779 APA

also discloses a method wherein the MME identifies the PDN GW by obtaining an

identity of the PDN GW from the HSS. The ’779 APA also discloses a method


wherein the MME identifies the PDN GW by obtaining the PDN GW address from

the HSS. Finally, the ’779 APA also discloses hardware or software configured to

identify a Packet Data Network Gateway (PDN GW) whose address is used by the

non-3GPP network by communicating with a Home Subscriber Service (HSS) (i.e.,

a processing unit).

191. For example, the ’779 APA discloses that Figure 2 “is a flowchart of a

handover from a non-3GPP access system to a 3GPP access system for a UE in the

prior art;” NSN779-1002, pg. 1028, ll. 14–15.

192. Figure 2 discloses the MME communicating with the HSS to identify

a Packet Data Network Gateway (PDN GW):


As shown in FIG. 2, the handover procedure from the non-3GPP

access system to the 3GPP access system of the UE comprises the

following steps:

…


MME, and the HSS to obtain the PDN GW address used by the

UE.

5. The MME sends a Create Bearer Request message to the

obtained PDN GW address, requesting the network side to initiate

bearer creation procedure. In this way, the service used by the UE in

the non-3GPP AN is re-created in the new access system.

NSN779-1002, pg. 1026, ll. 12–23 & pg. 1036, fig. 2 (emphasis & blue boxesadded).


in order to “send[] a Create Bearer Request message to the obtained PDN GW

address,” the MME must identify the PDN GW address and its identity. Step 4

makes clear that the identification process happens when the MME obtains the

PDN GW identity (e.g., address) by communicating with the HSS. Furthermore,

while step 4 leaves open the possibility that the PDN GW address could be

obtained by communicating with the mobile phone or the HSS, a person of

ordinary skill in the art would have understood that the possibility to obtain it from

either the HSS or the mobile phone is nevertheless present and disclosed.


network element configured to receive messages in the network would also have


hardware or software (i.e., a processing unit) configured to identify the contents of

those messages because both the PDN GW and the HSS are defined network

equipment in the 3GPP standards that have a processor, database, communication

capability, etc.

195. Finally, a person of ordinary skill in the art at the time of the invention

would have seen no meaningful difference between an “identity” of a PDN GW

and an “address,” of the PDN GW, and Patent Owner’s patent confirms this

understanding. Indeed, claim 9 is the only time the word “identity” appears in the

’779 Patent.

196. Thus, elements 1c, 11d, 9, and 10 are disclosed by the ’779 APA.

Bearer Creation Procedure (Elements 1d, 11e, 4preamble, 4b)

1d: “requesting, by the MME, the PDN GW to initiate a bearer creationprocedure.”

11e: “and request the PDN GW to initiate a bearer creation procedure.”

4preamble: “The method of claim 1, wherein the requesting a the [sic] PDNGW to initiate a bearer creation procedure comprises:”

4b: “initiating, by the PDN GW, the bearer creation procedure.”


197. The ’779 APA discloses requesting, by the MME, the PDN GW to

initiate a bearer creation procedure. The ’779 APA also discloses a network

element configured to request the PDN GW to initiate a bearer creation procedure.

Finally, the ’779 APA also discloses a method wherein requesting the PDN GW to

initiate a bearer creation procedure comprises initiating, by the PDN GW, the

bearer creation procedure.

198. For example, the ’779 APA discloses Figure 2 “is a flowchart of a


prior art.” NSN779-1002, pg. 1028, ll. 14–15.

199. Figure 2 discloses that the MME sends a “Create Bearer Request” to

the PDN GW to initiate a bearer creation procedure:




following steps:

. . .



bearer creation procedure. In this way, the service used by the UE

in the non-3GPP AN is re-created in the new access system.

. . .

7. The PDN GW initiates a network-side bearer creation

procedure to create the bearer of the user.

NSN779-1002, pg. 1026, ll. 12–29 & pg. 1036, fig. 2 (emphasis and blue boxesadded).

200. Thus, the ’779 APA discloses the elements 1d, 11e, 4preamble, and

4b.

Create Bearer Request message (Element 4a)

4a: “sending, by the MME, a Create Bearer Request message to the PDNGW; and”

201. The ’779 APA discloses sending, by the MME, a Create Bearer

Request message to the PDN GW.

202. For example, the ’779 APA states: “The MME sends a Create Bearer

Request message to the obtained PDN GW address . . . .” NSN779-1002, pg.

1026, l. 21 (emphasis added).

203. As a result, the ’779 APA discloses element 4a.


204. Based on Count 1, it is my opinion after reviewing the prior art

patents and submissions to the various standards that the technology claimed is not

new. As such, the methods and devices described and claimed in the ’779 Patent

did not require any technological innovation. This patent resulted from a problem

identified by others in the industry that was solved using a conventional

arrangement of old and well-known elements.

XI. COUNT 2: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11 BASEDON THE ’779 ADMITTED PRIOR ART IN VIEW OF TDOC S2-072255 (“THE NOKIA SUBMISSION”)

205. In addition to my opinions with respect to the ’779 APA in

combination with Soderbacka, I also believe that claims 1, 4, 9–10, and 11 of the

’779 Patent are obvious in light of the ’779 APA in combination with TDoc S2-

072255 (“the Nokia Submission”).

’779 Admitted Prior Art—Chinese Priority Application (NSN779-1002, pgs. 1019–40)

206. The ’779 APA is also discussed in Section X.A above.

207. The ’779 Admitted Prior Art is found in the translated version of the

earliest filed Chinese priority application in the File History of the ’779 Patent.

Specifically, the ’779 APA in the section titled “Specification,” on page 1025, lines

11–30 (describing prior art Figure 1), page 1026, lines 8–29 (describing the

“existing protocol” in prior art Figure 2), page 1026, lines 29–35 and page 1027,

lines 1–6 (describing the “existing protocol” in prior art Figure 3) , and page 1028,


lines 13–17 (describing Figures 1–4 as prior art). The ’779 APA also includes

Figures 1–4 on pages 1036–37.

208. As Patent Owner stated, Figure 2 “is a flowchart of a handover from a

non-3GPP access system to a 3GPP access system for a UE in the prior art.”

NSN779-1002, pg. 1028, ll. 14–15. That figure is illustrative:


209. As the Chinese Priority Document describes:


Attach (Attach) . . . procedure by the UE in a new access system. As

shown in FIG. 2, the handover procedure from the non-3GPP access

system to the 3GPP access system of the UE comprises the following

steps:

. . .









. . .


create the bearer of the user.”


210. In this, Patent Owner admitted critical information. First, it was

known that the MME receives an Attach Request message sent by a mobile phone

(UE) during handover from a Wi-Fi (non-3GPP) network to a LTE (3GPP)

network: Step 3 (“The UE sends an Attach Request . . . message to the MME.”).

NSN779-1002, pg. 1026, ll. 17–18.



211. Second, it was known that the MME communicates with the HSS to

identify the PDN GW that the mobile phone (UE) was connected to in the non-

3GPP network: Step 4 (“An authentication procedure is performed between the

UE, the MME, and the HSS to obtain the PDN GW address used by the

UE.”)). NSN779-1002, pg. 1026, ll. 19–20.



212. Third, it was known that the MME requests the PDN GW to initiate a

bearer creation procedure: Step 5 & 7 (“The MME sends a Create Bearer Request

message to the obtained PDN GW address, requesting the network side to initiate

bearer creation procedure. . . . The PDN GW initiates a network-side bearer

creation procedure to create the bearer of the user.”). NSN779-1002, pg. 1026, ll.

21–29.


(Prior Art) (Present Invention)


213. Indeed, in the verified Chinese translation of the priority document,

Figure 2 (the prior art message flow diagram) is identical to Figure 9 (the message

flow diagram of the first embodiment of the ’779 Patent):

NSN779-1002, pg. 1036, fig. 2 & pg. 1039, fig. 9; see also NSN779-1002, pg.1028, ll. 14–15 (“[Figure 2] is a flowchart of a handover from a non-3GPP accesssystem to a 3GPP access system for a UE in the prior art.” (emphasis added));NSN779-1002, pg. 1028, l. 23 (“[Figure 9 is] a flowchart of the first embodimentof the present invention.”).



the message flow, as that was prior art. Instead, the only alleged novelty of


an information element (IE) indicating handover.” Specifically, Patent Owner’s

purported invention was merely to add a known information element (i.e., data

field) to a known message.




215. As Patent Owner explains in the verified Chinese translation, this

information element allows the network to distinguish a normal (e.g., “initial”)

Attach procedure from the Attach procedure caused by handover. NSN779-1002,

pg. 1027, ll. 14–17.

TDoc S2-072255 (“the Nokia Submission”) (NSN779-1008)

216. I downloaded TDoc S2-02255 (“the Nokia Submission”) from the

3GPP website at the following location:

http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_57_Beijing/Docs/

217. The Nokia Submission, on its face, discloses that it was generated for

“3GPP TSG SA WG2 Architecture – S2#57,” which according to the document,

took place in Beijing, China from April 23, 2007, to April 27, 2007. NSN779-

1008, pg. 1. The Attendee list for the S2#57 meeting confirms that this document

was publicly available to persons of ordinary skill in the art at that meeting.


NSN779-1011; NSN779-1010, pg. 7881. The 3GPP file server indicates that the

Nokia Submission was uploaded to the 3GPP file server on April 27, 2007, and

thus, was publicly accessible to anyone with an Internet connection on April 27,

2007. NSN779-1018, pg. 9; see also NSN779-1004, ¶29.

218. To the extent that further proof of the document’s public accessibility

is needed, the Approved Report from meeting #57 confirms my conclusion above.

The Approved Report states that the Nokia Submission was discussed and

approved at the meeting that took place April 23 to April 27, 2007. NSN779-1010,

pg. 14.

219. According to the 3GPP website and in my experience, this means that

the Nokia Submission was publicly available because it was disseminated to

persons having ordinary skill in the art, and it was also uploaded “[s]oon after the

meeting” to the public server. NSN779-1017, pg. 8 (3GPP FAQ). When the Nokia

Submission was uploaded, it received a time stamp, and the website states that “the

time stamp of the Zip file can be relied upon to indicate when the upload

occurred.” NSN779-1017, pgs. 8–9 (3GPP FAQ). Here, the time stamp reads April

27, 2007.

220. But if even further proof is necessary, the 3GPP website also states

that the “zip file for a TDoc [like the Nokia Submission] typically contains a Word

file which has a particular date/time-stamp, which puts an absolute limit on the


earliest moment that the TDoc could have become available in that form.”

NSN779-1017, pg. 8 (3GPP FAQ). Here, the time stamp on the word version of

the Nokia Submission is April, 27, 2007. All of this confirms that the Nokia

Submission was generated, discussed, and publicly disclosed to the 3GPP

standards participants on April 27, 2007, and was uploaded to the public,

unrestricted server and publicly disseminated on the Internet that same day. Thus, I

understand that the Nokia Submission is prior art to the ’779 Patent under § 102(b).

221. The Nokia Submission is a Change Request directed at prior art

standard TS 23.060. TS 23.060 discloses the message flow diagram and an Attach

procedure for a Combined GPRS/IMSI Attach. Figure 22 illustrates the message

flow diagram:


NSN779-1008, fig. 22.

222. The Nokia Submission discloses an Attach Request message. The

Nokia Submission further discloses that the Attach Request message can include

an information element indicating to the network element the type of attach that is

being performed. In particular, the Nokia Submission discloses:


1) In A/Gb mode, the MS [i.e., mobile phone] initiates the attach

procedure by the transmission of an Attach Request (IMSI or

P-TMSI and old RAI, Classmark, CKSN, Attach Type, DRX

Parameters, old P-TMSI Signature) message to the SGSN.

NSN779-1008, pg. 4 (emphasis added).


the “Attach Request” message above is the 3G equivalent of the attach request

message required by the claims. A person having ordinary skill in the art would

have also understood that an “MS” is shorthand for a mobile station, which is the

same as the mobile phone (or UE) required by the claims.

224. Moreover, the corresponding description of the message flow diagram

describes the information elements contained within the Attach Request message.

1) In A/Gb mode, the MS [i.e., UE] initiates the attach procedure by

the transmission of an Attach Request (IMSI or P-TMSI and old

RAI, Classmark, CKSN, Attach Type, DRX Parameters, old

P-TMSI Signature) message to the SGSN. . . . 3

3 Acronym definitions are:

A/Gb mode (indicates that the system operates with a functional division that is inaccordance with the use of an A or Gb interface between the radio access networkand the core network) NSN779-1019, at 13;

IMSI (International Mobile Station Identity) NSN779-1019, at 160;

P-TMSI (Packet-Temporary Mobile Subscriber Identity) NSN779-1019, at 158;

RAI (Routing Area Identity) NSN779-1019, at 15;

Classmark (Provides the data capabilities of the MS) NSN779-1019, at 110;


NSN779-1008, pg. 4 (emphasis added). A person of ordinary skill in the art would

have understood that the bolded terms above—e.g., Attach Type—represent

information elements contained within the Attach Request message. See also

NSN779-1027, at 428 (“The attach type is a type 1 information element.”)

225. One of those information elements is called “Attach Type,” and the

Nokia Submission discloses that “Attach Type indicates which type of attach is

to be performed.” NSN779-1008, pg. 4 (emphasis added). A person having

ordinary skill in the art would have understood that the “Attach Type” information

element is used to distinguish the type of Attach Request message.

226. A person having ordinary skill would have needed to look no further

than the Nokia Submission to find that an information element called “Attach

Type” indicates which type of attach is to be performed. NSN779-1008, pg. 4

(emphasis added). Thus, the prior art disclosed a pre-existing mechanism to

distinguish Attach Request messages of different types.

227. While the Attach Type information element in the Nokia Submission

distinguished between (1) an Attach Request message for GPRS only attach, and

(2) an Attach Request message for a combined GPRS/IMSI attach (among other

CKSN (Ciphering Key Sequence Number identifies the ciphering key used forauthenticating the MS by the network) NSN779-1019, at 158; and

DRX Parameters (indicates whether the MS uses discontinuous reception or not)NSN779-1019, at 158.


things), the Nokia Submission nevertheless discloses the tool to distinguish

between different Attach Request messages. A person having ordinary skill in the

art would have understood that using an Attach Type information element to

distinguish which type of attach should be performed does not need to be limited to

GPRS only or GPRS/IMSI combined attach and could indicate other types of

attach as well. Indeed, about a month after the priority document for the ’779

Patent was filed, Patent Owner made this minor modification and copied and

pasted this exact information element and exact description into a TDoc submitted

to the 3GPP standards body. NSN779-1012, pg. 3 (“Attach Type indicates which

type of attach is to be performed, i.e. Initial Attach, or Handover Attach.”).

Motivation to Combine the Admitted Prior Art with the NokiaSubmission

228. A person having ordinary skill would have been motivated to utilize

an “Attach Type” information element indicating which type of attach should be

performed, as disclosed in the Nokia Submission, in the Attach Request message

from the ’779 APA.

229. It would have been obvious to a person having ordinary skill in the art

to combine the ’779 APA and the Nokia Submission. Specifically, the ’779 APA

shows that the non-3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well

known in the prior art, prior to the date of invention of the ’779 Patent. With this

knowledge, a person having ordinary skill in the art would have found explicit


motivation within the Nokia Submission to include an information element in the

handover procedure, in order to “indicate[] which type of attach is to be

performed.” NSN779-1008, at 4. In other words, when an Attach Request can be

used for two types of attach, the solution is to include an information element

indicating which one to execute. Indeed, not only does the Nokia Submission

highlight the problem that occurs when Attach Request messages can indicate

multiple types of attach, but it explicitly recites the inclusion of an information

element to indicate the type of attach as its solution. NSN779-1008, pg. 4. Given,

that the Nokia Submission explicitly includes an information element for this

purpose, the a person having ordinary skill in the art would have had a reasonable

expectation of success using it in conjunction with the handover described in the

’779 APA.

230. Merely adding “Handover or Initial Attach” to the contents of the

known information element distinguishing “GPRS only or combined GPRS/IMSI

Attach” obtains the very predictable result of indicating which type of attach

should be performed. The Nokia Submission discloses an Attach Request message

with an Attach Type information element, and a person of ordinary skill would

have been motivated to combine this element with the Attach Request message in

the ’779 APA. The result achieved is the exact same. Indeed, at the very next

meeting, Patent Owner submitted a separate TDoc to 3GPP making this minor


modification. NSN779-1012, pg. 3 (“Attach Type indicates which type of attach

is to be performed, i.e. Initial Attach, or Handover Attach”). This addition is all

the invention purports to be, and it is not inventive.

231. It is my opinion that a person of ordinary skill in the art would have

been motivated to include an information element indicating which type of attach

is to be performed, as disclosed in the Nokia Submission, to distinguish the attach

request message disclosed in the ’779 APA. In fact, the Nokia Submission

discloses placing the information element in the 3G version of the Attach Request

message. Both the ’779 APA and the Nokia Submission are directed to the same

field of endeavor; namely Attach Request messages. Therefore, a person of

ordinary skill in the art would have been motivated to look for solutions arising in

the field (for example, solutions already established for previous generations of

3GPP) to solve problems arising in the same field (apply those established

solutions to later generations of 3GPP). Indeed, 3GPP standards and specifications

are constantly evolving, and it is common in 3GPP for previous solutions to be

used in subsequent generations.

232. In addition, one of ordinary skill in the art at the time of the alleged

invention would have been motivated to use an information (IE) indicating which

type of attach should be performed, similar to that described in the Nokia

Submission, to distinguish the attach request message described in the ’779 APA.


A person of ordinary skill would have looked to 3G Attach Request messages (like

that disclosed in the Nokia Submission) when designing a 4G Attach Request

messages (like that disclosed in the ’779 APA). One of ordinary skill in the art at

the time of the invention would have been capable of looking to known methods

(information elements) to solve the similar problems (indicating which type of

attach should be performed) in the context of these Attach Request messages.

233. Further, there was a motivation to combine an information element

indicating which type of attach should be performed, as disclosed in the Nokia

Submission, with the attach request message disclosed in the ’779 APA because

doing so yielded predictable results. Both the ’779 APA and the Nokia Submission

disclose the known method of using an Attach Request message. The Nokia

Submission discloses the use of an information element to distinguish different

attach types, and the ’779 Patent merely combines this prior art element according

to the known method—i.e., placing the information element in the Attach Request

message—to achieve the predictable result of distinguishing which type of attach

should be performed. Indeed, an information element was a known mechanism for

identifying the attach type, and it was not inventive for Patent Owner to use that

mechanism for the very same purpose in a 4G handover between a 3GPP network

and a non-3GPP network.


234. In addition, other 3GPP documents make clear that the ’779 APA was

ready for this exact clarification. Patent Owner states that the prior art lacked a

method to distinguish an initial Attach Request message from a handover Attach

Request message. See NSN779-1002, pg. 1027, ll. 14–17. But this problem was

already identified by other 3GPP participants. See, e.g., NSN779-1014, pg. 1

(“There are two main cases for selecting a GW (both PDN GW and Serving GW):

[1] Initial GW selection, i.e., selecting a new GW for a UE. This typically

happens when the UE attaches to the system. [2] Maintain the selected GW

during handovers between 3GPP access and non-3GPP access .” (second

emphasis added)). Thus, the Nokia Submission supplies the known technique of

including an information element called “Attach Type” to yield the predictable

result of distinguishing which type of attach is to be performed. Thus, there is even

further motivation to combine the Nokia Submission with the ’779 APA.






1preamble ’779 APA

Network Element 11preamble ’779 APA


Attach RequestMessage SentDuring Handover

1a, 11a ’779 APA


1b, 11b, 11c The Nokia Submission


1c, 11d, 9, 10 ’779 APA


1d, 11e, 4preamble, 4b ’779 APA


4a ’779 APA



236. The ’779 APA discloses this claim element as discussed in Section

X.E.i.

237. To the extent the preamble is limiting, the ’779 APA teaches a

handover processing method. For example, the ’779 APA discloses that “FIG. 2 is

a flowchart of a handover from a non-3GPP access system to a 3GPP access

system for a UE in the prior art;”


NSN779-1002, pg. 1028 & pg. 1036, fig. 2.

238. The specification describes the message flow procedure from Figure

2:

In the existing protocol, the handover procedure is implemented

via Attach (Attach) . . . procedure by the UE in a new access

system. As shown in FIG. 2, the handover procedure from the

non-3GPP access system to the 3GPP access system of the UE

comprises the following steps:

. . .

3. The UE sends an Attach Request or a Tracking Area Update

Request message to the MME.








. . .


create the bearer of the user.”


239. Thus, element 1preamble is disclosed in the ’779 APA.




X.E.ii.

241. The ’779 APA discloses a network element. For example:

“FIG. 1 shows system architecture of an evolved network in the prior art;”

NSN779-1002, pg. 1028, l. 13.

FIG 1 shows system architecture of the evolved network. The

architecture includes:

. . .

a Mobile Management Entity (MME), responsible for control plane

mobility management, including user context and Mobility state

management, and allocation of temporary mobile subscriber

identifiers;. . .

NSN779-1002, pg. 1025, ll. 9–16.




network entity that is “responsible for control plane mobility management” would

be involved in the handover process. Thus, claim element 11preamble is met by the

’779 APA.



11a: “an obtaining unit, configured to receive an attach request message sentby a User Equipment (UE) during a handover from a non 3rd Generation


Partnership Project (non-3GPP) network to a 3rd Generation PartnershipProject (3GPP) network,”

243. The ‘’779 APA discloses these claim elements as discussed in Section

X.E.ii.

244. The ’779 APA discloses receiving, by a Mobility Management Entity

(MME), an attach request message sent by a User Equipment (UE) during a

handover from a non 3rd Generation Partnership Project (non-3GPP) network to a

3rd Generation Partnership (3GPP) network.

245. The ’779 APA also discloses a network element having software of

hardware configured to receive an attach request message sent by a User

Equipment (UE) during a handover from a non 3rd Generation Partnership Project

(non-3GPP) network to a 3rd Generation Partnership Project (3GPP) network (i.e.,

an obtaining unit).

246. The ’779 APA discloses:

FIG. 2 is a flowchart of a handover from a non-3GPP access system to

a 3GPP access system for a UE in the prior art;



Attach (Attach) or Tracking Area Update (TAU) procedure by the UE

in a new access system. As shown in FIG. 2, the handover

procedure from the non-3GPP access system to the 3GPP access

system of the UE comprises the following steps:

. . .


NSN779-1002, pg. 1026, ll. 10–18; pg. 1028, ll. 14–15 & pg. 1036, fig. 2(emphasis and blue boxes added).


when the mobile phone (UE) sends an Attach Request message to the MME, the

MME receives that Attach Request message. As stated, the procedure occurs

during handover from the non-3GPP access system to the 3GPP access system.




hardware or software configured to receive those messages (i.e., an obtaining unit).

Given that the ’779 APA discloses an MME capable of receiving an Attach

Request message sent by a mobile phone (UE) during a handover from a non-

3GPP (Wi-Fi) network to a 3GPP network (LTE), the ’779 APA discloses an

obtaining unit configured to receive an Attach Request message sent by a mobile

phone (UE) during a handover from a non-3GPP network to a 3GPP network.

249. Thus, elements 1a and 11a are disclosed in the ’779 APA.

Information Element Indicating Handover (Elements 1b, 11b& 11c)



11c: “an identifying unit, configured to identify that the attach requestmessage is due to the handover according to the IE indicating handover; and,”

250. The Nokia Submission discloses wherein the attach request message

comprises an information element (IE) indicating which type of attach should be

performed and software or hardware configured to identify the contents of that


information element (i.e., an identifying unit). For example, Figure 22 shows a

combined GPRS/IMSI Attach Procedure in 3G.

NSN779-1008, pg. 3 & fig. 22 (blue box added).



the “Attach Request” above is the 3G version of the attach request message

described in the claims. Further, a POSITA would have understood that the SGSN

was responsible for control plane messaging in a 3G UMTS network, just as an

MME is responsible for control-plane messaging in a 4G LTE network. Moreover,

the corresponding description of the message flow diagram describes the Attach

Request message in detail:




P-TMSI Signature) message to the SGSN.4



the elements described as a part of the Attach Request are information elements.

One of those elements is an information element called an “Attach Type.” As the

Nokia Submission discloses, “Attach Type indicates which type of attach is to

be performed . . .” NSN779-1008, pg. 4 (emphasis added).

253. In the Nokia Submission, the information element indicates to the

network whether to perform a “GPRS only or combined GPRS/IMSI” attach.

However, it would have been trivial, or at most obvious, to a person of ordinary

4 See acronym definitions for the same quote above.


skill in the art to add an additional attach reason to the same information element.

For example, it would have been a minor modification to add “Initial or Handover”

attach to the information element already configured to “indicate[] which type of

attach is to be performed.” NSN779-1008, pg. 4.

254. Patent Owner set forth in the ’779 APA that the exact problem to be

solved was that “the network side needs to know whether the normal

Attach . . . procedure or the Attach . . . procedure caused by the handover is

initiated. However, the existing mechanism cannot distinguish them.” NSN779-

1002, pg. 1027, ll. 16–17. As described in the motivation to combine section, this

problem had already been identified by the 3GPP standards body.

255. Therefore, a person having ordinary skill in the art would have needed

to look no further than the Nokia Submission to find that an information element

called “Attach Type indicates which type of attach is to be performed.”

NSN779-1008, pg. 4. Thus, there was a pre-existing mechanism to distinguish

Attach Request messages of different types. In other words, the method to

distinguish between different Attach Types was already present in the prior art.

256. Indeed, about a month after the ’779 APA was filed, Patent Owner

copied and pasted this exact information element and exact description into a

separate TDoc containing this minor modification. NSN779-1012, pg. 3 (“Attach

Type indicates which type of attach is to be performed, i.e. Initial Attach, or


Handover Attach.” (emphasis added)). Patent Owner also copied nearly identical

language into its own patent application and specification:

The registration processing type may be reported in one of the

following ways:

(1) An Attach Type IE is added in the Attach Request message.

For example, the values of the Attach Type IE are 0 and 1. The value

‘0’ corresponds to Normal Attach (also known as Initial Attach) . . .;

and the value ‘1’ corresponds to Handover Attach, and indicates that

the Attach Request message is caused by handover.

NSN779-1001, at 6:35–44.


understood that the network entity receiving that message—in the Nokia

Submission, the SGSN—would have hardware or software configured to identify

the contents of that message (i.e., an identifying unit) and, therefore, would be

configured to identify that the attach request message indicates which type of

attach should be performed. In the 4G network, a person having ordinary skill in

the art would have understood that the MME receives the attach request message

and, therefore, would have hardware or software (i.e., an identifying unit) to

perform the same function.


258. Therefore I conclude that the Nokia Submission discloses elements

1b, 11b, and 11c.

PDN GW Address/Identity (Elements 1c, 11c, 9, 10)


11d: “a processing unit, configured to identify a Packet Data NetworkGateway (PDN GW) whose address is used by the UE in the non-3GPPnetwork by communicating with a Home Subscriber Server (HSS).”



259. The ’779 APA discloses these claim elements as discussed in Section

X.E.v.

260. The ’779 APA discloses identifying, by the MME, a Packet Data

Network Gateway (PDN GW) whose address is used by the UE in the non-3GPP

network by communicating with a Home Subscriber Server (HSS). The ’779 APA

also discloses a method wherein the MME identifies the PDN GW by obtaining an

identity of the PDN GW from the HSS. The ’779 APA also discloses a method

wherein the MME identifies the PDN GW by obtaining the PDN GW address from

the HSS. Finally, the ’779 APA also discloses hardware or software configured to


identify a Packet Data Network Gateway (PDN GW) whose address is used by the

non-3GPP network by communicating with a Home Subscriber Service (HSS) (i.e.,

a processing unit).

261. For example, the ’779 APA discloses that Figure 2 “is a flowchart of a


prior art;” NSN779-1002, pg. 1028, ll. 14–15.

262. Figure 2 discloses the MME communicating with the HSS to identify

a Packet Data Network Gateway (PDN GW):



following steps:

…



MME, and the HSS to obtain the PDN GW address used by the

UE.



bearer creation procedure. In this way, the service used by the UE in

the non-3GPP AN is re-created in the new access system.

NSN779-1002, pg. 1026, ll. 12–23 & pg. 1036, fig. 2 (emphasis & blue boxesadded).


in order to “send[] a Create Bearer Request message to the obtained PDN GW

address,” the MME must identify the PDN GW address and its identity. Step 4

makes clear that the identification process happens when the MME obtains the

PDN GW identity (e.g., address) by communicating with the HSS. Furthermore,

while step 4 leaves open the possibility that the PDN GW address could be

obtained by communicating with the mobile phone or the HSS, a person of

ordinary skill in the art would have understood that the possibility to obtain it from

either the HSS or the mobile phone is nevertheless present and disclosed.







capability, etc.





’779 Patent.

266. Thus, elements 1c, 11d, 9, and 10 are disclosed by the ’779 APA.






267. The ’779 APA discloses these claim elements as discussed in Section

X.E.vi.


268. The ’779 APA discloses requesting, by the MME, the PDN GW to

initiate a bearer creation procedure. The ’779 APA also discloses a network

element configured to request the PDN GW to initiate a bearer creation procedure.

Finally, the ’779 APA also discloses a method wherein requesting the PDN GW to

initiate a bearer creation procedure comprises initiating, by the PDN GW, the

bearer creation procedure.

269. For example, the ’779 APA discloses Figure 2 “is a flowchart of a


prior art.” NSN779-1002, pg. 1028, ll. 14–15.

270. Figure 2 discloses that the MME sends a “Create Bearer Request” to

the PDN GW to initiate a bearer creation procedure:




following steps:

. . .



bearer creation procedure. In this way, the service used by the UE

in the non-3GPP AN is re-created in the new access system.

. . .

7. The PDN GW initiates a network-side bearer creation

procedure to create the bearer of the user.

NSN779-1002, pg. 1026, ll. 12–29 & pg. 1036, fig. 2 (emphasis and blue boxesadded).

271. Thus, the ’779 APA discloses the elements 1d, 11e, 4preamble, and

4b.

272.




X.E.vii.

274. The ’779 APA discloses sending, by the MME, a Create Bearer

Request message to the PDN GW.


275. For example, the ’779 APA states: “The MME sends a Create Bearer

Request message to the obtained PDN GW address . . . .” NSN779-1002, pg.

1026, l. 21 (emphasis added).

276. As a result, the ’779 APA discloses element 4a.

277. Consequently, based on Count 2, it is my opinion after reviewing the

prior art patents and submissions to the various standards that the technology

claimed is not new. As such, the methods and devices described and claimed in the

’779 Patent did not require any technological innovation. This patent resulted from

a problem identified by others in the industry that was solved using a conventional


XII. COUNT 3: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11 BASEDON TDOC S2-072252 (“THE MOTOROLA SUBMISSION”) IN VIEWOF TDOC S2-072255 (“THE NOKIA SUBMISSION”)

278. In addition to my opinions with respect to the ’779 APA in

combination with the Nokia Submission, I also believe that claims 1, 4, 9–10 and

11 are obvious in light of TDoc S2-072252 (“the Motorola Submission”) in

combination with the Nokia Submission.

TDoc S2-072252 (“the Motorola Submission”) (NSN779-1009)

279. I downloaded TDoc S2-072252 (“the Motorola Submission”) from the

3GPP file server at the following location:



280. The Motorola Submission, on its face, discloses that it was generated

for 3GPP TSG SA WG2 Architecture – Meeting S2#57, which according to the

document, took place in Beijing, China from April 23, 2007, to April 27, 2007.

NSN779-1009, pg. 1. The Attendee list for the S2#57 meeting confirms that this

document was publicly available to persons of ordinary skill in the art at that

meeting. NSN779-1011; NSN779-1010, pg. 7881. The 3GPP file server indicates

that the Motorola Submission was uploaded to the 3GPP file server on April 27,

2007, and thus, was publicly accessible to anyone with an Internet connection on

April 27, 2007. NSN779-1018, pg. 9; see also NSN779-1004, ¶30.


is needed, the Approved Report from meeting S2#57 confirms my conclusion

above. The Approved Report makes clear that the Motorola Submission was

discussed during the meeting and left for final e-mail approval. NSN779-1010, pg.

27.


the Motorola Submission was publicly available at the meeting, but was also

uploaded “[s]oon after the meeting” to the public server. NSN779-1017, pg. 8

(3GPP FAQ). When the Motorola Submission was uploaded, it received a time

stamp, and the website states that “the time stamp of the Zip file can be relied upon

to indicate when the upload occurred.” NSN779-1017, pgs. 8–9 (3GPP FAQ). Here


the Motorola Submission time stamp reads April 27, 2007. But if even further

proof is necessary, the 3GPP website also states that the “zip file for a TDoc [like

the Motorola Submission] typically contains a Word file which has a particular

date/time-stamp, which puts an absolute limit on the earliest moment that the TDoc

could have become available in that form.” NSN779-1017, pg. 8 (3GPP FAQ).

Here, the time stamp on the word version of the Motorola Submission is April, 27,

2007. All of this confirms that the Motorola Submission was generated, discussed,

and publicly disclosed to the 3GPP standards participants on April 27, 2007, and

then was uploaded to the public, unrestricted server and publicly disseminated on

the Internet that same day. Thus, I understand that the Motorola Submission is

prior art to the ’779 Patent under § 102(b).

283. The Motorola Submission is titled “Handover from non-3GPP Access

to E-UTRAN (TS 23.402).” NSN779-1009, pg. 1. The document states that “[T]his

contribution proposes a procedure for handover from non-3GPP access to LTE

[4G] access based on PMIPv6 for the scenario where the PMIP client is located at

the serving GW.” NSN779-1009, pg. 1 (emphasis added). The Motorola

Submission introduces the following message flow diagram as Figure 5.x (titled

“Handover from trusted non-3GPP access to E-UTRAN access with PMIPv6 on

S2a and S5 interfaces”) and the following corresponding steps:


NSN779-1009, fig. 5.x.

284. Given that the Motorola Submission was submitted with substantial

redlines to the 3GPP server, I reproduce the exact screenshots of the relevant steps

below:


NSN779-1009, pgs. 3–4.

285. I conclude that the Motorola Submission discloses all elements of the

independent claims of the ’779 Patent except the element requiring “wherein the

attach request message comprises an information element (IE) indicating

handover.”

286. First, the Motorola Submission discloses that the MME receives an

Attach Request message sent by a UE. Step 3: “The UE sends an Attach Request

which is routed by E-UTRAN to an MME instance in the EPS . . . .” NSN779-

1009, pg. 3. A person having ordinary skill in the art at the time of the invention

would have understood that a mobile phone (UE) does not directly communicate


with an MME and that, instead, all messages are routed through E-UTRAN as

shown in the blue boxes in message flow diagram.

NSN779-1009, fig. 5.x (blue boxes added)

287. Second, the Motorola Submission discloses that the MME identifies

the PDN GW used by the mobile phone by communicating with an HSS. Step 4

states: “The MME contacts the HSS [Home Subscriber Server] and authenticates

the UE. As part of the authentication procedure, the IP address of the PDN GW

that needs to be used is conveyed to the MME.” NSN779-1009, pg. 4. This step is

also represented in the blue boxes in the message flow diagram:



288. Third, although not explicitly stated, the Motorola Submission

discloses that the MME requests the PDN GW to initiate a bearer creation

procedure (see Step 6 & 7). The message flow diagram helps clarify this

understanding (see the blue boxes below):



289. In step 6, the MME transmits a message requesting that a bearer

(connection) be created. Specifically, the MME sends a “Create Default Bearer

Request” message to the Serving GW (step 6), which then sends a Proxy Binding

Update message to the PDN GW (step 7). As the Editor’s note contemplates, this

Proxy Binding Update could provide equivalent functionality of the GTP Create

Bearer Request message. Thus, the Motorola Submission discloses that the 3GPP

working group (and the authors of the Motorola Submission) contemplated that the

last network entity to receive the MME’s request to create a bearer could be the


PDN GW. A person having ordinary skill in the art would have understood that,

when the MME’s request is finished, the PDN GW would respond to the Create

Bearer Request message by initiating a bearer (connection) creation procedure.

290. Further, a person having ordinary skill would have understood that a

bearer creation procedure can consist of multiple steps, but a single network entity

must initiate this sequence of steps. The first of these steps requires the PDN GW

to signal the Serving GW with a Proxy Binding Acknowledgement that

“effectively switches the PMIPv6 tunnel from the non-3GPP network to the

Serving GW” (see Step 8). The Serving GW, in turn, sends the response to the

MME, and the MME acknowledges the Attach Acceptance to the mobile phone

(UE). Step 11 discloses that the Radio and S1-U bearer is then set up. A person

having ordinary skill in the art would have understood that a Radio bearer is a

wireless connection from the mobile phone to eNB, and the S1 bearer is a wired

connection from the eNB to the Serving GW.

291. Given that the PDN GW is the last entity to receive the message

requesting a bearer creation procedure from the MME, and given that the PDN

GW is the first entity to send a message back into the network that results in the

bearer (connection) being established, a person having ordinary skill in the art

would have understood that the PDN GW initiates the bearer creation procedure in

the Motorola Submission because bearer creation is done in the reverse direction of


the request. Patent Owner’s earliest priority document describing the prior art

procedure confirms this understanding.

292. Thus, the only missing element from the claims is that the attach

request message contain an information element indicating that the attach request

is due to handover.

TDoc S2-072255 (“the Nokia Submission”) (NSN779-1008)

293. The Nokia Submission is discussed in Section X.B.

294. I downloaded TDoc S2-02255 (“the Nokia Submission”) from the

3GPP website at the following location:


295. The Nokia Submission, on its face, discloses that it was generated for

“3GPP TSG SA WG2 Architecture – S2#57,” which according to the document,

took place in Beijing, China from April 23, 2007, to April 27, 2007. NSN779-

1008, pg. 1. The Attendee list for the S2#57 meeting confirms that this document

was publicly available to persons of ordinary skill in the art at that meeting.

NSN779-1011; NSN779-1010, pg. 7881. The 3GPP file server indicates that the

Nokia Submission was uploaded to the 3GPP file server on April 27, 2007, and

thus, was publicly accessible to anyone with an Internet connection on April 27,

2007. NSN779-1018, pg. 9; see also NSN779-1004, ¶29.



is needed, the Approved Report from meeting #57 confirms my conclusion above.

The Approved Report states that the Nokia Submission was discussed and

approved at the meeting that took place April 23 to April 27, 2007. NSN779-1010,

pg. 14.


the Nokia Submission was publicly available because it was disseminated to

persons having ordinary skill in the art, and it was also uploaded “[s]oon after the

meeting” to the public server. NSN779-1017, pg. 8 (3GPP FAQ). When the Nokia

Submission was uploaded, it received a time stamp, and the website states that “the

time stamp of the Zip file can be relied upon to indicate when the upload

occurred.” NSN779-1017, pgs. 8–9 (3GPP FAQ). Here, the time stamp reads April

27, 2007.

298. But if even further proof is necessary, the 3GPP website also states

that the “zip file for a TDoc [like the Nokia Submission] typically contains a Word

file which has a particular date/time-stamp, which puts an absolute limit on the

earliest moment that the TDoc could have become available in that form.”

NSN779-1017, pg. 8 (3GPP FAQ). Here, the time stamp on the word version of

the Nokia Submission is April, 27, 2007. All of this confirms that the Nokia

Submission was generated, discussed, and publicly disclosed to the 3GPP


standards participants on April 27, 2007, and was uploaded to the public,

unrestricted server and publicly disseminated on the Internet that same day. Thus, I

understand that the Nokia Submission is prior art to the ’779 Patent under § 102(b).

299. The Nokia Submission is a Change Request directed at prior art

standard TS 23.060. TS 23.060 discloses the message flow diagram and an Attach

procedure for a Combined GPRS/IMSI Attach. Figure 22 illustrates the message

flow diagram:


NSN779-1008, fig. 22.

300. The Nokia Submission discloses an Attach Request message. The

Nokia Submission further discloses that the Attach Request message can include

an information element indicating to the network element the type of attach that is

being performed. In particular, the Nokia Submission discloses:


1) In A/Gb mode, the MS [i.e., mobile phone] initiates the attach

procedure by the transmission of an Attach Request (IMSI or

P-TMSI and old RAI, Classmark, CKSN, Attach Type, DRX

Parameters, old P-TMSI Signature) message to the SGSN.



the “Attach Request” message above is the 3G equivalent of the attach request

message required by the claims. A person having ordinary skill in the art would

have also understood that an “MS” is shorthand for a mobile station, which is the

same as the mobile phone (or UE) required by the claims.

302. Moreover, the corresponding description of the message flow diagram

describes the information elements contained within the Attach Request message.




P-TMSI Signature) message to the SGSN. . . . 5

5 Acronym definitions are:

A/Gb mode (indicates that the system operates with a functional division that is inaccordance with the use of an A or Gb interface between the radio access networkand the core network) NSN779-1019, at 13;

IMSI (International Mobile Station Identity) NSN779-1019, at 160;

P-TMSI (Packet-Temporary Mobile Subscriber Identity) NSN779-1019, at 158;

RAI (Routing Area Identity) NSN779-1019, at 15;

Classmark (Provides the data capabilities of the MS) NSN779-1019, at 110;


NSN779-1008, pg. 4 (emphasis added). A person of ordinary skill in the art would

have understood that the bolded terms above—e.g., Attach Type—represent

information elements contained within the Attach Request message. See also

NSN779-1027, at 428 (“The attach type is a type 1 information element.”)

303. One of those information elements is called “Attach Type,” and the

Nokia Submission discloses that “Attach Type indicates which type of attach is

to be performed.” NSN779-1008, pg. 4 (emphasis added). A person having

ordinary skill in the art would have understood that the “Attach Type” information

element is used to distinguish the type of Attach Request message.

304. A person having ordinary skill would have needed to look no further

than the Nokia Submission to find that an information element called “Attach

Type” indicates which type of attach is to be performed. NSN779-1008, pg. 4

(emphasis added). Thus, the prior art disclosed a pre-existing mechanism to

distinguish Attach Request messages of different types.

305. While the Attach Type information element in the Nokia Submission

distinguished between (1) an Attach Request message for GPRS only attach, and

(2) an Attach Request message for a combined GPRS/IMSI attach (among other

CKSN (Ciphering Key Sequence Number identifies the ciphering key used forauthenticating the MS by the network) NSN779-1019, at 158; and

DRX Parameters (indicates whether the MS uses discontinuous reception or not)NSN779-1019, at 158.


things), the Nokia Submission nevertheless discloses the tool to distinguish

between different Attach Request messages. A person having ordinary skill in the

art would have understood that using an Attach Type information element to

distinguish which type of attach should be performed does not need to be limited to

GPRS only or GPRS/IMSI combined attach and could indicate other types of

attach as well. Indeed, about a month after the priority document for the ’779

Patent was filed, Patent Owner made this minor modification and copied and

pasted this exact information element and exact description into a TDoc submitted

to the 3GPP standards body. NSN779-1012, pg. 3 (“Attach Type indicates which

type of attach is to be performed, i.e. Initial Attach, or Handover Attach.”).

Motivation to Combine the Motorola Submission with the NokiaSubmission

306. It is my opinion that a person of ordinary skill in the art at the time of

the purported invention would have been motivated to use an information element

(IE), like that described in the Nokia Submission, in an Attach Request message

described in the Motorola Submission. In fact, both the Nokia Submission and the

Motorola Submission describe the use of Attach Request messages, and both raise

the same problem: an Attach Request message can be used for multiple purposes.

A person having ordinary skill in the art looking to solve this known problem

would have seen that the Nokia Submission uses an “Attach Type” information

element to solve the problem and, therefore, have expected a very similar result


when used in the Motorola Submission. Indeed, a person of ordinary skill in the art

looking to solve the problem posed by S2-072252 (the Motorola Submission)

would have only needed to look three TDocs later to S2-072255 (the Nokia

Submission) to find the solution. That is, because both documents were directed to

the solving the same problem, the person of ordinary skill in the art would have

looked to them together to achieve the recited result.

NSN779-1018, pg. 9 (red boxes added)

307. In fact, both the Motorola Submission and the Nokia Submission were

publicly disclosed to the same working group, at the same meeting, and uploaded

to the same 3GPP file server, on the same day, only one minute apart. In other

words, not only was the solution easy to locate, using the information element from

the Nokia Submission in the Motorola Submission would have achieved an

expected result.

308. Further, a person of ordinary skill in the art at the time of the

invention would have been motivated use an information element (IE), like that

described in the Nokia Submission, in an Attach Request message described in the


Motorola Submission because both documents relate to the same field of endeavor

and solve similar problems. Specifically, the Motorola Submission and the Nokia

Submission disclose a method of using an Attach Request message in a 3GPP

network. Therefore, a person of ordinary skill in the art would have been motivated

to look for solutions arising in the field (for example, solutions already established

for previous generations of 3GPP) to solve problems arising in the same field

(apply those established solutions to later generations of 3GPP). Indeed, 3GPP

standards and specifications are constantly evolving, and it is common in 3GPP for

previous solutions to be used in subsequent generations.


invention would have been motivated to use an information element (IE) indicating

which type of attach should be performed, as described in the Nokia Submission,

to distinguish the type of Attach Request message described in the Motorola

Submission. A person of ordinary skill would have looked to how 3G systems

distinguished Attach Request messages (like that disclosed in the Nokia

Submission) when designing how 4G systems should distinguish Attach Request

messages. One of ordinary skill in the art at the time of the purported invention

would have been capable of looking to known methods (information elements) to

solve the similar problems (indicating which type of attach should be performed).


310. Further, there were other motivations to combine an information

element indicating which type of attach should be performed, as disclosed in the

Nokia Submission, with the Attach Request message disclosed in the Motorola

Submission. For example, doing so yielded predictable results. Both the Motorola

Submission and the Nokia Submission disclose the known method of using an

Attach Request message. The Nokia Submission discloses the use of an

information element to distinguish different attach types, and the ’779 Patent

merely combines this prior art element according to the known method—i.e.,

placing the information element in the attach request message—to achieve the

predictable result of distinguishing which type of attach should be performed.

Indeed, an information element (i.e., a data field) was a known mechanism for

identifying the attach type, and it was not inventive for Patent Owner to use that

mechanism for the very same purpose in a 4G handover between a 3GPP network

and a non-3GPP network.

311. A person having ordinary skill would have been motivated to utilize

an “Attach Type” information element indicating which type of attach should be

performed, as disclosed in the Nokia Submission, with the Attach Request message

from the Motorola Submission. Merely adding different parameters to the

information element—i.e., adding “Initial or Handover attach” to “GPRS only or

combined GPRS/IMSI attach”—obtains the very predictable result of indicating


which type of attach should be performed. The Nokia Submission discloses the

known element of an Attach Request message with an Attach Type information

element, and a person of ordinary skill would have been motivated to combine this

element with the Attach Request message in the Motorola Submission. The result

achieved is the exact same and laid out in the Nokia Submission. Indeed, at the

very next meeting, Patent Owner submitted a separate TDoc to the same 3GPP

working group making this minor modification. NSN779-1012, pg. 3 (“Attach


Handover Attach”). This modification is all the invention purports to be, and it is

not inventive.

312. Finally, other 3GPP documents make clear that the Motorola

Submission was ready for this exact clarification. Patent Owner states that the prior

art lacked a method to distinguish an initial Attach Request message from a

handover Attach Request message. See NSN779-1002, pg. 1027, ll. 14–17. But this

problem was already identified by other 3GPP participants. See, e.g., NSN779-

1014, pg. 1 (“There are two main cases for selecting a GW (both PDN GW and

Serving GW): [1] Initial GW selection, i.e., selecting a new GW for a UE. This

typically happens when the UE attaches to the system. [2] Maintain the selected

GW during handovers between 3GPP access and non-3GPP access.” (second

emphasis added)). Thus, the Nokia Submission supplies the known technique of


including an information element called “Attach Type” to yield the predictable

result of distinguishing the Attach Request message. Thus, there is even further

motivation to combine the Nokia Submission with the Motorola Submission.






1preamble The Motorola Submission

Network Element 11preamble The Motorola SubmissionAttach RequestMessage SentDuring Handover

1a, 11a The Motorola Submission


1b, 11b, 11c The Nokia Submission


1c, 11d, 9, 10 The Motorola Submission


1d, 11e, 4preamble, 4b The Motorola Submission


4a The Motorola Submission



314. To the extent the preamble is determined to be limiting, the Motorola

Submission discloses a handover processing method. For example, the Introduction

states:


This contribution proposes a procedure for handover from non-

3GPP access to LTE access based on PMIPv6 for the scenario where

the PMIP client is located at the serving GW.

NSN779-1009, pg. 1.


“LTE” is a 3GPP access, and therefore, the contribution proposes a procedure for

handover from non-3GPP access to 3GPP access. As a further example, the

message flow diagram for the handover procedure is reproduced below:

NSN779-1009, pg. 3 & fig. 5.x.

316. Thus, element 1preamble is disclosed in the Motorola Submission.




317. To the extent the preamble is considered limiting, the Motorola

Submission discloses a network element. For example, the Motorola Submission

discloses that the MME is a network element.

NSN779-1009, pg. 3 & fig. 5.x (blue box added).

318. Thus, the Motorola Submission discloses element 11preamble.




11a: “an obtaining unit, configured to receive an attach request message sentby a User Equipment (UE) during a handover from a non 3rd GenerationPartnership Project (non-3GPP) network to a 3rd Generation PartnershipProject (3GPP) network,”

319. The Motorola Submission discloses receiving, by a Mobility

Management Entity (MME), an attach request message sent by a User Equipment

(UE) during a handover from a non 3rd Generation Partnership Project (non-3GPP)

network to a 3rd Generation Partnership (3GPP) network. The Motorola

Submission also discloses a network element having software or hardware

configured to receive an attach request message sent by a User Equipment (UE)

during a handover from a non 3rd Generation Partnership Project (non-3GPP)

network to a 3rd Generation Partnership Project (3GPP) network (i.e., an obtaining

unit).




NSN779-1009, pg. 1. A person having ordinary skill in the art would have

understood that “LTE” is a 3GPP access, and therefore, the contribution proposes a

procedure for handover from non-3GPP access to 3GPP access.


320. The Motorola Submission discloses that the MME receives an Attach

Request message sent by a UE during this procedure (see blue boxes below):

NSN779-1009, pg. 3 & fig. 5.x (blue boxes added).

321. Step 3 describes the message in the blue box above:

“3. The UE sends an Attach Request which is routed by E-UTRAN to anMME instance in the EPSC as specified in TS 23.401.”

NSN779-1009, pg. 3.


the Attach Request message is sent by a mobile phone (UE), routed through E-


UTRAN, and then received by the MME. Thus, the MME receives an Attach

Request message sent by a UE.



hardware or software (i.e., an obtaining unit) configured to receive those messages.

Given that the Motorola Submission discloses an MME capable of receiving an

Attach Request message sent by a mobile phone (UE) during a handover from a

non-3GPP (Wi-Fi) network to a 3GPP network (LTE), the Motorola Submission

discloses an obtaining unit configured to receive an Attach Request message sent

by a mobile phone (UE) during a handover from a non-3GPP network to a 3GPP

network.

324. Thus, elements 1a & 11a are disclosed in the Motorola Submission.

Information Element Indicating Handover (Elements 1b, 11b and11c)




11c: “an identifying unit, configured to identify that the attach requestmessage is due to the handover according to the IE indicating handover; and”

325. The Nokia Submission discloses these claim elements as discussed in

Section XI.D.iv.

326. The Nokia Submission discloses wherein the attach request message

comprises an information element (IE) indicating which type of attach should be

performed and software or hardware configured to identify the contents of that

information element (i.e., an identifying unit). For example, Figure 22 shows a

combined GPRS/IMSI Attach Procedure in 3G.


NSN779-1008, pg. 3 & fig. 22 (blue box added).


the “Attach Request” above is the 3G version of the attach request message


described in the claims. Further, a POSITA would have understood that the SGSN

was responsible for control plane messaging in a 3G UMTS network, just as an

MME is responsible for control-plane messaging in a 4G LTE network. Moreover,

the corresponding description of the message flow diagram describes the Attach

Request message in detail:




P-TMSI Signature) message to the SGSN.6



the elements described as a part of the Attach Request are information elements.

One of those elements is an information element called an “Attach Type.” As the

Nokia Submission discloses, “Attach Type indicates which type of attach is to

be performed . . .” NSN779-1008, pg. 4 (emphasis added).

329. In the Nokia Submission, the information element indicates to the

network whether to perform a “GPRS only or combined GPRS/IMSI” attach.

However, it would have been trivial, or at most obvious, to a person of ordinary

skill in the art to add an additional attach reason to the same information element.

For example, it would have been a minor modification to add “Initial or Handover”

6 See acronym definitions for the same quote above.


attach to the information element already configured to “indicate[] which type of

attach is to be performed.” NSN779-1008, pg. 4.

330. Patent Owner set forth in the ’779 APA that the exact problem to be

solved was that “the network side needs to know whether the normal

Attach . . . procedure or the Attach . . . procedure caused by the handover is

initiated. However, the existing mechanism cannot distinguish them.” NSN779-

1002, pg. 1027, ll. 16–17. As described in the motivation to combine section, this

problem had already been identified by the 3GPP standards body.

331. Therefore, a person having ordinary skill in the art would have needed

to look no further than the Nokia Submission to find that an information element

called “Attach Type indicates which type of attach is to be performed.”

NSN779-1008, pg. 4. Thus, there was a pre-existing mechanism to distinguish

Attach Request messages of different types. In other words, the method to

distinguish between different Attach Types was already present in the prior art.

332. Indeed, about a month after the ’779 APA was filed, Patent Owner

copied and pasted this exact information element and exact description into a

separate TDoc containing this minor modification. NSN779-1012, pg. 3 (“Attach


Handover Attach.” (emphasis added)). Patent Owner also copied nearly identical

language into its own patent application and specification:


The registration processing type may be reported in one of the

following ways:

(1) An Attach Type IE is added in the Attach Request message.

For example, the values of the Attach Type IE are 0 and 1. The value

‘0’ corresponds to Normal Attach (also known as Initial Attach) . . .;

and the value ‘1’ corresponds to Handover Attach, and indicates that

the Attach Request message is caused by handover.

NSN779-1001, at 6:35–44.


understood that the network entity receiving that message—in the Nokia

Submission, the SGSN—would have hardware or software configured to identify

the contents of that message (i.e., an identifying unit) and, therefore, would be

configured to identify that the attach request message indicates which type of

attach should be performed. In the 4G network, a person having ordinary skill in

the art would have understood that the MME receives the attach request message

and, therefore, would have hardware or software (i.e., an identifying unit) to

perform the same function.


334. Therefore I conclude that the Nokia Submission discloses elements

1b, 11b, and 11c.

PDN GW Address/Identity (Elements 1c, 11c, 9, 10)


11d: “a processing unit, configured to identify a Packet Data NetworkGateway (PDN GW) whose address is used by the UE in the non-3GPPnetwork by communicating with a Home Subscriber Server (HSS),”



335. The Motorola Submission discloses identifying, by the MME, a


non-3GPP network by communicating with a Home Subscriber Server (HSS). The

Motorola Submission also discloses a method wherein the MME identifies the

PDN GW by obtaining an identity of the PDN GW from the HSS. The Motorola

Submission also discloses a method wherein the MME identifies the PDN GW by

obtaining the PDN GW address from the HSS. Finally, the Motorola Submission

also discloses hardware or software configured to identify a Packet Data Network

Gateway (PDN GW) whose address is used by the UE in the non-3GPP network

by communicating with a Home Subscriber Server (HSS) (i.e., a processing unit).


336. For example, Step 4 shows the MME communicating with an HSS,

and the corresponding description of Step 4 discloses that the MME retrieves the

PDN GW address from the HSS during that communication.

4. The MME contacts the HSS and authenticates the UE. As part

of the authentication procedure, the IP address of the PDN GW that

needs to be used is conveyed to the MME.

NSN779-1009, pg. 4 & fig. 5.x (emphasis & blue boxes added).







capability, etc.





’779 Patent.

339. Thus, the Motorola Submission discloses claim elements 1c, 11d, 9,

and 10.







340. The Motorola Submission discloses requesting, by the MME, the

PDN GW to initiate a bearer creation procedure. The Motorola Submission also

discloses a network element configured to request the PDN GW to initiate a bearer

creation procedure. Finally, the Motorola Submission also discloses a method

wherein requesting the PDN GW to initiate a bearer creation procedure comprises

initiating, by the PDN GW, the bearer creation procedure.

341. For example, Step 6 and Step 7 show the MME sending a message

that terminates at the PDN GW. The PDN GW then responds to the request by

initiating a procedure to create bearers for the mobile phone. The message flow

diagram helps clarify this understanding (see blue boxes below).


NSN779-1009, fig. 5.x (blue boxes added).






Bearer Request message. NSN779-1009, pg. 4. Thus, the Motorola Submission

discloses that the 3GPP working group (and the authors of the Motorola

Submission) contemplated that the last network entity to receive the MME’s


request to create a bearer could be the PDN GW. A person having ordinary skill in

the art would have understood that, when the MME’s request is finished, the PDN

GW would respond to the Create Bearer Request message by initiating a bearer

(connection) creation procedure. The PDN GW imitates the bearer request

procedure because bearer creation is done in the reverse direction of the request.






Serving GW” (see Step 8). NSN779-1009, pg. 4. The Serving GW, in turn, sends

the response to the MME, and the MME acknowledges the Attach Acceptance to

the mobile phone (UE). NSN779-1009, pg. 4. Step 11 discloses that the Radio and

S1-U bearer is then set up. NSN779-1009, pg. 4. A person having ordinary skill in

the art would have understood that the Radio bearer runs along the wireless

connection from the mobile phone to eNB, and the S1 bearer runs along the wired


344. Thus, the Motorola Submission discloses claim elements 1d, 11e,

4preamble, and 4b.




345. The Motorola Submission discloses sending, by the MME, a Create

Bearer Request message to the PDN GW.

346. For example, the Motorola Submission contemplates the Create

Default Bearer Request message and the Proxy Binding Update Message “suffices

to provide equivalent functionality to the GTP ‘Create Bearer Request’ message

and if additional messages are required.” NSN779-1009, pg. 4 (emphasis added).

This message would travel from the MME to the PDN GW. Although this option

had not been implemented, it was nevertheless disclosed.

347. Thus, element 4a is disclosed in the Motorola Submission.








XIII. COUNT 4: OBVIOUSNESS OF CLAIMS 1, 4, 9–10, AND 11 BASEDON TDOC S2-072252 (“THE MOTOROLA SUBMISSION”) IN VIEWOF SODERBACKA

349. In addition to my opinions with respect to the Motorola Submission in

combination with the Nokia Submission, I also believe that claims 1, 4, 9–10, and

11 are obvious in light of the Motorola Submission in combination with

Soderbacka.

TDoc S2-072252 (“the Motorola Submission”) (NSN779-1009)

350. The Motorola Submission is discussed in Section XII.A above.

351. I downloaded TDoc S2-072252 (“the Motorola Submission”) from the

3GPP file server at the following location:


352. The Motorola Submission, on its face, discloses that it was generated

for 3GPP TSG SA WG2 Architecture – Meeting S2#57, which according to the

document, took place in Beijing, China from April 23, 2007, to April 27, 2007.

NSN779-1009, pg. 1. The Attendee list for the S2#57 meeting confirms that this

document was publicly available to persons of ordinary skill in the art at that

meeting. NSN779-1011; NSN779-1010, pg. 78–81. The 3GPP file server indicates

that the Motorola Submission was uploaded to the 3GPP file server on April 27,

2007, and thus, was publicly accessible to anyone with an Internet connection on

April 27, 2007. NSN779-1018, pg. 9; see also NSN779-1004, ¶30.



is needed, the Approved Report from meeting S2#57 confirms my conclusion

above. The Approved Report makes clear that the Motorola Submission was

discussed during the meeting and left for final e-mail approval. NSN779-1010, pg.

27.


the Motorola Submission was publicly available at the meeting, but was also

uploaded “[s]oon after the meeting” to the public server. NSN779-1017, pg. 8

(3GPP FAQ). When the Motorola Submission was uploaded, it received a time

stamp, and the website states that “the time stamp of the Zip file can be relied upon

to indicate when the upload occurred.” NSN779-1017, pgs. 8–9 (3GPP FAQ). Here

the Motorola Submission time stamp reads April 27, 2007. But if even further

proof is necessary, the 3GPP website also states that the “zip file for a TDoc [like

the Motorola Submission] typically contains a Word file which has a particular

date/time-stamp, which puts an absolute limit on the earliest moment that the TDoc

could have become available in that form.” NSN779-1017, pg. 8 (3GPP FAQ).

Here, the time stamp on the word version of the Motorola Submission is April, 27,

2007. All of this confirms that the Motorola Submission was generated, discussed,

and publicly disclosed to the 3GPP standards participants on April 27, 2007, and

then was uploaded to the public, unrestricted server and publicly disseminated on


the Internet that same day. Thus, I understand that the Motorola Submission is

prior art to the ’779 Patent under § 102(b).

355. The Motorola Submission is titled “Handover from non-3GPP Access

to E-UTRAN (TS 23.402).” NSN779-1009, pg. 1. The document states that “[T]his

contribution proposes a procedure for handover from non-3GPP access to LTE

[4G] access based on PMIPv6 for the scenario where the PMIP client is located at

the serving GW.” NSN779-1009, pg. 1 (emphasis added). The Motorola

Submission introduces the following message flow diagram as Figure 5.x (titled

“Handover from trusted non-3GPP access to E-UTRAN access with PMIPv6 on

S2a and S5 interfaces”) and the following corresponding steps:


NSN779-1009, fig. 5.x.

356. Given that the Motorola Submission was submitted with substantial

redlines to the 3GPP server, I reproduce the exact screenshots of the relevant steps

below:


NSN779-1009, pgs. 3–4.

357. I conclude that the Motorola Submission discloses all elements of the

independent claims of the ’779 Patent except the element requiring “wherein the

attach request message comprises an information element (IE) indicating

handover.”

358. First, the Motorola Submission discloses that the MME receives an

Attach Request message sent by a UE. Step 3: “The UE sends an Attach Request

which is routed by E-UTRAN to an MME instance in the EPS . . . .” NSN779-

1009, pg. 3. A person having ordinary skill in the art at the time of the invention

would have understood that a mobile phone (UE) does not directly communicate


with an MME and that, instead, all messages are routed through E-UTRAN as

shown in the blue boxes in message flow diagram.


359. Second, the Motorola Submission discloses that the MME identifies

the PDN GW used by the mobile phone by communicating with an HSS. Step 4

states: “The MME contacts the HSS [Home Subscriber Server] and authenticates

the UE. As part of the authentication procedure, the IP address of the PDN GW

that needs to be used is conveyed to the MME.” NSN779-1009, pg. 4. This step is

also represented in the blue boxes in the message flow diagram:



360. Third, although not explicitly stated, the Motorola Submission

discloses that the MME requests the PDN GW to initiate a bearer creation

procedure (see Step 6 & 7). The message flow diagram helps clarify this

understanding (see the blue boxes below):








Bearer Request message. Thus, the Motorola Submission discloses that the 3GPP

working group (and the authors of the Motorola Submission) contemplated that the

last network entity to receive the MME’s request to create a bearer could be the


PDN GW. A person having ordinary skill in the art would have understood that,

when the MME’s request is finished, the PDN GW would respond to the Create

Bearer Request message by initiating a bearer (connection) creation procedure.






Serving GW” (see Step 8). The Serving GW, in turn, sends the response to the

MME, and the MME acknowledges the Attach Acceptance to the mobile phone

(UE). Step 11 discloses that the Radio and S1-U bearer is then set up. A person

having ordinary skill in the art would have understood that a Radio bearer is a

wireless connection from the mobile phone to eNB, and the S1 bearer is a wired


363. Given that the PDN GW is the last entity to receive the message

requesting a bearer creation procedure from the MME, and given that the PDN

GW is the first entity to send a message back into the network that results in the

bearer (connection) being established, a person having ordinary skill in the art

would have understood that the PDN GW initiates the bearer creation procedure in

the Motorola Submission because bearer creation is done in the reverse direction of


the request. Patent Owner’s earliest priority document describing the prior art

procedure confirms this understanding.

364. Thus, the only missing element from the claims is that the attach

request message contain an information element indicating that the attach request

is due to handover.

Soderbacka et al., US 2003/0114158 (NSN779-1007)

365. Soderbacka is discussed in Section X.B above.

366. United States Printed Patent Application Number US 2003/0114158

to inventors Lauri Soderbacka, Jarmo Virtanen, Kari Kauranen, Hannu Hietalahti,

Jari Liukkonen, and Antti Pitkamaki (hereinafter, “Soderbacka”) was published by

the United States Patent and Trademark Office on June 19, 2003 (NSN779-1007).

Thus, Soderbacka was publicly accessible at least as early as June 19, 2003, and

therefore, I understand Soderbacka is prior art to the ’779 Patent under § 102(b).

During the prosecution of the ’779 Patent application, Soderbacka was disclosed to

the USPTO in an Information Disclosure Statement dated January 27, 2010.

Soderbacka was discussed by the International Searching Authority during the

Chinese PCT application process. However, Soderbacka was never mentioned or

discussed by the United States patent examiner and, importantly, was never

reviewed contemporaneously with the Admitted Prior Art discussed above.


367. Soderbacka is generally directed to systems and methods for

performing an intersystem handover of a mobile phone (UE) accessing a

communication network. NSN779-1007, ¶0001. Soderbacka acknowledges the

desirability of accessing the communication system (i.e., the network) via all

concerned types of radio access technologies (RATs), including non-3GPP

technologies such as Wi-Fi. NSN779-1007, ¶0001. In fact, Soderbacka states,

“[T]he intersystem handover of the invention . . . [can be implemented] for a

handover of a mobile terminal from a WLAN (wireless local area network

[Wi-Fi]) to GSM [3GPP].” NSN779-1007, ¶0039 & fig. 1 (emphasis added).

368. A person of ordinary skill in the art at the time of the invention would

have understood that WLAN (or a wireless local area network) is a non-3GPP

network commonly referred to as Wi-Fi. A person of skill in the art would have

also understood that a GSM network is a 3GPP 2G network. As a result,

Soderbacka explicitly discloses a method of handover between a non-3GPP access

point to a 3GPP base station.

369. Soderbacka discloses an exemplary 3GPP access system. Figure 1 is

an example of a network architecture utilizing a handover method between a 3GPP

2G system (described by the architecture on the right side of the figure below with

the “BSC” and “2G-SGSN” components) and a 3GPP 3G system (described by the


architecture on the left side of the figure below with the “RNC” and “3G-SGSN”

components).

NSN779-1007, fig. 1

370. A person of ordinary skill in the art would have understood that a 3G

access system utilizes different network elements than a 4G access system (as

discussed earlier). In a 3G access system, the mobile phone communicates with a

Base Station (BS) that is connected to a Radio Network Controller (RNC). The

RNC is connected to a Serving GPRS Support Node (3G-SGSN), which is

connected to a GPRS Support Node (GGSN).

371. Soderbacka discloses that when the mobile phone needs to handover,

“the intersystem handover is initiated by a transmission of the mobile terminal


[e.g., a mobile phone] to the communication network, which transmission

comprises information indicating that an intersystem handover from the radio

access network of the first type [e.g., non-3GPP] to the radio access network

of said second type [e.g., 3GPP] should be performed.” NSN779-1007, at

[Abstract] (emphasis added).

372. While Fig. 1 of Soderbacka shown above depicts a handover between

two different types of 3GPP networks (2G GSM and 3G UMTS), Soderbacka also

discloses that one of these networks can be a non-3GPP network:

Accordingly, the intersystem handover of the invention cannot only be

implemented for WCDMA [3G UMTS] and GSM/GPRS [2G GSM],

but for any systems between which such an intersystem handover may

be of interest, for instance also for a handover of a mobile terminal

from a WLAN (wireless local area network) [Wi-Fi] to GSM

[3GPP].

NSN779-1007, ¶0039. (emphasis added).

373. Given that Soderbacka discloses that the “radio access network of the

first type” can be a non-3GPP access network, and that the “radio access network

of the second type” can be a 3GPP access network, Soderbacka discloses that the

mobile phone sends a transmission with information indicating that an intersystem

handover from a non-3GPP network to 3GPP network should be performed.

NSN779-1007, ¶0037.


374. More specifically, Soderbacka discloses that the invention provides

for “an information element added to the current connection establishment

signaling.” NSN779-1007, ¶0113 (emphasis added). For example, in the second

embodiment, Soderbacka discloses that “a new information element” could be

“added to the SETUP message transmitted by the mobile terminal to the

communication network.” NSN779-1007, ¶0032 (emphasis added). A person of

ordinary skill in the art would have understood that a “SETUP” message is a part

of the connection establishment signaling for the network described in Soderbacka,

just as an “Attach Request” message is a part of the initial connection

establishment signaling in a 4G network described in the ’779 Patent.

375. The information contained inside the information element disclosed in

Soderbacka “indicat[es] that an intersystem handover . . . should be

performed.” NSN779-1007, at [Abstract] (emphasis added). Indeed, the

information element disclosed in Soderbacka contains the type of radio access

technology that the mobile phone needs to access. Based on the information

element, the network recognizes that the needed radio access technology is not the

current radio access technology, and thus, the information element “indicat[es]

that an intersystem handover from the radio access network of the first type

to the radio access network of said second type should be performed.”

NSN779-1007, at [Abstract] (emphasis added).


376. It is my opinion that Soderbacka squarely teaches placing an

information element indicating handover in the connection establishment signaling.

This is the equivalent of claim element 1b “wherein the attach request message

comprises an information element (IE) indicating handover.”

Motivation to Combine the Motorola Submission with Soderbacka

377. It would have been obvious to combine the Motorola Submission and

Soderbacka at the time of the ’779 Patent. Specifically, the Motorola Submission

shows that the non-3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well

known in the prior art, prior to the date of invention of the ’779 Patent. With this

knowledge, the person having ordinary skill in the art would have found explicit

motivation within Soderbacka to include necessary information in the handover

procedure so the mobile phone can access “networks for which the mobile terminal

is currently not registered.” NSN779-1007, ¶0031. Indeed, not only does

Soderbacka identify a problem with current handover procedures, but it explicitly

recites the inclusion of an information element to allow the network to make

decisions as to the type of handover to perform. Given that Soderbacka explicitly

includes an information element, a person having ordinary skill in the art would

have had a reasonable expectation of success when using it in conjunction with the

handover procedure outlined in the Motorola Submission.


378. Both the Motorola Submission and Soderbacka are directed to the

same field of endeavor; namely, handover procedures from a non-3GPP network to

a 3GPP network. Therefore, a person of ordinary skill in the art would have been

motivated to look for solutions arising in the field (for example, solutions already

established for previous generations of 3GPP) to solve problems arising in the

same field (apply those established solutions to later generations of 3GPP). Indeed,

3GPP standards and specifications are constantly evolving, and it is common in

3GPP for previous solutions to be used in subsequent generations.


invention would have been motivated to use an information (IE) indicating

handover, similar to that described in Soderbacka, to distinguish the type of Attach

Request message described in the Motorola Submission because a person of

ordinary skill would have looked to the 3GPP 3G handover procedures (like that

disclosed in Soderbacka) when designing the 3GPP 4G handover procedures (like

that disclosed in the ’779 APA). In other words, one of ordinary skill in the art at

the time of the invention would have been motivated to look to known methods

(handover information elements) from the third generation of mobile phone

network to solve the similar problems (distinguishing the attach request message to

the network) when designing the fourth generation mobile phone network. A


person having ordinary skill in the art would have had a reasonable expectation of

success given the teachings of Soderbacka.

380. Further, such an ordinarily skilled person would have found it a

predictable and common sense implementation to use an information element

indicating handover, such as that described in Soderbacka, with the message flow

outlined in the Motorola Submission. Soderbacka had long taught the use of

information elements in connection establishment messages sent by the mobile

phone to the network, so merely implementing this known process in the Motorola

Submission to achieve a similar result is not inventive. An information element

was a known mechanism for identifying the attach type, and it was not inventive

for Patent Owner to use that mechanism for the very same purpose in a 4G

handover between a 3GPP network and a non-3GPP network.

381. Even further, other 3GPP documents make clear that the Motorola

Submission was ready for this exact clarification. Patent Owner states that the prior

art lacked a method to distinguish an initial Attach Request message from a

handover Attach Request message. See NSN779-1002, pg. 1027, ll. 14–17. Again,

this issue was already identified by other 3GPP participants. See, e.g., NSN779-

1014, pg. 1. Indeed, Ericsson stated: “There are two main cases for selecting a GW

(both PDN GW and Serving GW): [1] Initial GW selection, i.e., selecting a new

GW for a UE. This typically happens when the UE attaches to the system. [2]


Maintain the selected GW during handovers between 3GPP access and non-

3GPP access.” NSN779-1014, pg. 1 (second emphasis added)). Given the function

of an Attach Request message, Soderbacka supplies the known technique to yield

the predictable result described above. Thus, there is even further motivation to

combine Soderbacka with the Motorola Submission, and this renders the claims of

the ’779 Patent obvious.

382. Finally, one of ordinary skill in the art at the time of the alleged

invention would have been motivated to distinguish different attach request

messages using an information element because doing so is one of a finite number

of identified, predictable solutions. Soderbacka discloses that a problem arises

when the mobile terminal (e.g., mobile phone) seeks to handover to a “radio access

network[] for which the mobile terminal is currently not registered.” NSN779-

1007, ¶0031. Soderbacka discloses the limited set of possibilities that might solve

this problem: (1) “an information element [is] added to the current connection

establishment signaling;” or “[a]lternatively, new messages could be added to the

signaling sequence.” NSN779-1007, ¶¶0113–0114. The ’779 Patent also discloses

the same finite solutions: (1) “an Attach Type IE is added in the Attach Request

message;” or (2) “A new message is defined.” NSN-1001, at 6:19–23. Given the

limited number of solutions to distinguish two messages of the same type, one of

ordinary skill in the art at the time of the invention would have obviously tried one


of these two solutions to solve the problem and had a reasonable expectation of

success in doing so.






1preamble The Motorola Submission

Network Element 11preamble The Motorola SubmissionAttach RequestMessage SentDuring Handover

1a, 11a The Motorola Submission


1b, 11b, 11c Soderbacka


1c, 11d, 9, 10 The Motorola Submission


1d, 11e, 4preamble, 4b The Motorola Submission


4a The Motorola Submission



384. The Motorola Submission discloses this claim element as discussed in

Section XII.D.i.


385. To the extent the preamble is determined to be limiting, the Motorola

Submission discloses a handover processing method. For example, the Introduction

states:




NSN779-1009, pg. 1.


“LTE” is a 3GPP access, and therefore, the contribution proposes a procedure for

handover from non-3GPP access to 3GPP access. As a further example, the

message flow diagram for the handover procedure is reproduced below:


NSN779-1009, pg. 3 & fig. 5.x.

387. Thus, element 1preamble is disclosed in the Motorola Submission.




Section XII.D.ii.

389. To the extent the preamble is considered limiting, the Motorola

Submission discloses a network element. For example, the Motorola Submission

discloses that the MME is a network element.


NSN779-1009, pg. 3 & fig. 5.x (blue box added).

390. Thus, the Motorola Submission discloses element 11preamble.


1a: “receiving, by a Mobility Management Entity (MME), an attach requestmessage sent by a User Equipment (UE) during a handover from a non 3 rd

Generation Partnership Project (non-3GPP) network to a 3 rd GenerationPartnership (3GPP) network”

11a: “an obtaining unit, configured to receive an attach request message sentby a User Equipment (UE) during a handover from a non 3rd GenerationPartnership Project (non-3GPP) network to a 3rd Generation PartnershipProject (3GPP) network,”



Section XII.D.iii.

392. The Motorola Submission discloses receiving, by a Mobility

Management Entity (MME), an attach request message sent by a User Equipment

(UE) during a handover from a non 3rd Generation Partnership Project (non-3GPP)

network to a 3rd Generation Partnership (3GPP) network. The Motorola

Submission also discloses a network element having software or hardware

configured to receive an attach request message sent by a User Equipment (UE)

during a handover from a non 3rd Generation Partnership Project (non-3GPP)

network to a 3rd Generation Partnership Project (3GPP) network (i.e., an obtaining

unit).




NSN779-1009, pg. 1. A person having ordinary skill in the art would have

understood that “LTE” is a 3GPP access, and therefore, the contribution proposes a

procedure for handover from non-3GPP access to 3GPP access.

393. The Motorola Submission discloses that the MME receives an Attach

Request message sent by a UE during this procedure (see blue boxes below):


NSN779-1009, pg. 3 & fig. 5.x (blue boxes added).

394. Step 3 describes the message in the blue box above:

3. The UE sends an Attach Request which is routed by E-UTRAN

to an MME instance in the EPSC as specified in TS 23.401.

NSN779-1009, pg. 3.


the Attach Request message is sent by a mobile phone (UE), routed through E-

UTRAN, and then received by the MME. Thus, the MME receives an Attach

Request message sent by a UE.




hardware or software (i.e., an obtaining unit) configured to receive those messages.

Given that the Motorola Submission discloses an MME capable of receiving an

Attach Request message sent by a mobile phone (UE) during a handover from a

non-3GPP (Wi-Fi) network to a 3GPP network (LTE), the Motorola Submission

discloses an obtaining unit configured to receive an Attach Request message sent

by a mobile phone (UE) during a handover from a non-3GPP network to a 3GPP

network.

397. Thus, elements 1a & 11a are disclosed in the Motorola Submission.

Information Element Indicating Handover (Elements 1b, 11band 11c)



11c: “an identifying unit, configured to identify that the attach requestmessage is due to the handover according to the IE indicating handover; and”


398. Soderbacka discloses these claim limitations as discussed in Section

X.E.iv.

399. Soderbacka discloses a message sent by the mobile phone into the

network comprising an information element indicating handover and a network

element configured to identify that the message is due to the handover according to

the IE indicating handover and software or hardware configured to identify the

contents of that information element (i.e., an identifying unit). For example,

Soderbacka discloses that the mobile phone sends a transmission which comprises

information indicating that intersystem (e.g., non-3GPP to 3GPP) handover should

take place:

In order to enable an access to the communication network with a

radio access technology required or desired by the mobile terminal,

the intersystem handover is initiated by a transmission of the mobile

terminal [i.e., UE] to the communication network, which

transmission comprises information indicating that an

intersystem handover from the radio access network of the first

type to the radio access network of said second type should be

performed.

NSN779-1007, at [Abstract].

400. Soderbacka also discloses that the radio access network of the first

type could be a non-3GPP (Wi-Fi) network and the radio access network of the

second type could be a 3GPP network:


Accordingly, the intersystem handover of the invention [could be] . . .

for any systems between which such an intersystem handover may be

of interest, for instance . . . for a handover of a mobile terminal

from a WLAN (wireless local area network [Wi-Fi]) to GSM

[3GPP 2G] . . . .

NSN779-1007, ¶0039 (emphasis added).


WLAN system is a non-3GPP network commonly referred to as Wi-Fi and that

GSM is a 2G 3GPP network.

402. Further, Soderbacka discloses that the “information indicating . . . an

intersystem handover” is contained in an information element:

The mobile terminal further comprises means for signaling a request

for a preferred radio access technology to the communication network

in an information element added to the current connection

establishment signaling.

NSN779-1007, ¶0113 (emphasis added)).


Soderbacka discloses an information element containing a radio access technology

and that this radio access technology indicates handover. In Soderbacka, the radio

access technology is referred to as “service related information”:

Based on a service related information provided by the mobile

terminal at the beginning of a call, the mobile terminal is handed

over, if a handover is required for this service.


NSN779-1007, ¶0031.

404. In other words, a person having ordinary skill in the art would have

understood that Soderbacka discloses that the service related information in the

information element is used to indicate handover. Specifically, when the service

related information contained in the information element does not match the

service currently being provided to the mobile phone (terminal), “the mobile

terminal is handed over.” NSN779-1007, ¶0031. Thus, a person having ordinary

skill in the art would have understood that the information contained within the

information element indicates handover.

405. In Soderbacka, the information element indicating handover is

contained in a message that establishes an initial connection between the mobile

phone and the network. An Attach Request message also establishes an initial

connection between the mobile phone and the network. A person having ordinary

skill in the art would have understood that there are various ways to describe 3G

and 4G systems, but in both systems, the mobile phone must establish an initial

connection to the network in order to receive service. The ’779 Patent specification

(and the ’779 APA) discloses that the purpose of the Attach Request message is to

establish the initial connection between the mobile phone and the network. This

same message is also where the information element is located in Soderbacka:


“[A]n information element [is] added to the current connection establishment

signaling.” NSN779-1007, ¶0113 (emphasis added)).


understood that the network entity receiving the message with the information

element in Soderbacka would contain hardware or software configured to identify

the contents of that information element and, therefore, would contain an

identifying unit configured to identify that the attach request message is due to the

handover according to the IE indicating handover.

407. As a result, Soderbacka discloses claim elements 1b, 11b, and 11c.

PDN GW Address/Identity (Elements 1c, 11d, 9, 10)


11d: “a processing unit, configured to identify a Packet Data NetworkGateway (PDN GW) whose address is used by the UE in the non-3GPPnetwork by communicating with a Home Subscriber Server (HSS),”





Section XII.D.v.

409. The Motorola Submission discloses identifying, by the MME, a


non-3GPP network by communicating with a Home Subscriber Server (HSS). The

Motorola Submission also discloses a method wherein the MME identifies the

PDN GW by obtaining an identity of the PDN GW from the HSS. The Motorola

Submission also discloses a method wherein the MME identifies the PDN GW by

obtaining the PDN GW address from the HSS. Finally, the Motorola Submission

also discloses hardware or software configured to identify a Packet Data Network

Gateway (PDN GW) whose address is used by the UE in the non-3GPP network

by communicating with a Home Subscriber Server (HSS) (i.e., a processing unit).

410. For example, Step 4 shows the MME communicating with an HSS,

and the corresponding description of Step 4 discloses that the MME retrieves the

PDN GW address from the HSS during that communication.


4. The MME contacts the HSS and authenticates the UE. As part

of the authentication procedure, the IP address of the PDN GW that

needs to be used is conveyed to the MME.

NSN779-1009, pg. 4 & fig. 5.x (emphasis & blue boxes added).







capability, etc.





’779 Patent.

413. Thus, the Motorola Submission discloses claim elements 1c, 11d, 9,

and 10.







Section XII.D.vi.


415. The Motorola Submission discloses requesting, by the MME, the

PDN GW to initiate a bearer creation procedure. The Motorola Submission also

discloses a network element configured to request the PDN GW to initiate a bearer

creation procedure. Finally, the Motorola Submission also discloses a method

wherein requesting the PDN GW to initiate a bearer creation procedure comprises

initiating, by the PDN GW, the bearer creation procedure.

416. For example, Step 6 and Step 7 show the MME sending a message

that terminates at the PDN GW. The PDN GW then responds to the request by

initiating a procedure to create bearers for the mobile phone. The message flow

diagram helps clarify this understanding (see blue boxes below).


NSN779-1009, fig. 5.x (blue boxes added).






Bearer Request message. NSN779-1009, pg. 4. Thus, the Motorola Submission

discloses that the 3GPP working group (and the authors of the Motorola

Submission) contemplated that the last network entity to receive the MME’s


request to create a bearer could be the PDN GW. A person having ordinary skill in

the art would have understood that, when the MME’s request is finished, the PDN

GW would respond to the Create Bearer Request message by initiating a bearer

(connection) creation procedure. The PDN GW imitates the bearer request

procedure because bearer creation is done in the reverse direction of the request.






Serving GW” (see Step 8). NSN779-1009, pg. 4. The Serving GW, in turn, sends

the response to the MME, and the MME acknowledges the Attach Acceptance to

the mobile phone (UE). NSN779-1009, pg. 4. Step 11 discloses that the Radio and

S1-U bearer is then set up. NSN779-1009, pg. 4. A person having ordinary skill in

the art would have understood that the Radio bearer runs along the wireless

connection from the mobile phone to eNB, and the S1 bearer runs along the wired


419. Thus, the Motorola Submission discloses claim elements 1d, 11e,

4preamble, and 4b.





Section XII.D.vii.

421. The Motorola Submission discloses sending, by the MME, a Create

Bearer Request message to the PDN GW.

422. For example, the Motorola Submission contemplates the Create

Default Bearer Request message and the Proxy Binding Update Message “suffices

to provide equivalent functionality to the GTP ‘Create Bearer Request’ message

and if additional messages are required.” NSN779-1009, pg. 4 (emphasis added).

This message would travel from the MME to the PDN GW. Although this option

had not been implemented, it was nevertheless disclosed.

423. Thus, element 4a is disclosed in the Motorola Submission.








XIV. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS

425. I have found no evidence of secondary considerations of

nonobviousness that outweigh my conclusion that the claims of the ’779 Patent are

obvious. For example, the addition of an information element into an Attach

Request message has received no praise by others. Indeed, when the 3GPP

standards body adopted the idea to add an “Attach Type” information element to

the attach request message, it was described as a mere “clarification” to the

existing standard. NSN779-1013, pg. 1 (emphasis added). There’s nothing

praiseworthy about a clarification. Further, I find no evidence of a long felt need.

The TDoc adding this “clarification” was proposed by Patent Owner just one

month after the Motorola Submission was adopted and ultimately adopted by the

standards committee just six months after the Motorola Submission. NSN779-

1013, pg. 1 (dated November 2007). In addition, I have found no teaching away by

others or skepticism by experts. In fact, as described above, I have found that

Soderbacka teaches this exact idea in a very similar context. Further, I have found

no copying of the invention by others, no failure of others, and no indications of

commercial success. I understand that Patent Owner believes that infringement is

based on implementation of TS 23.401 and TS 23.402, among other standards.

Even if the standard is implemented in a particular product as alleged by Patent

Owner in the district court litigation, I do not believe that there is any nexus

between the claimed technology and the sales of that product. All of these findings

lead me to conclude that there are no secondary considerations of nonobviousness.

XV. CONCLUSION

426. Based on my findings above, it is clear to me that the Challenged

Claims are not patentable in light of the grounds of rejection outlined herein.

Mark. R. Lanning
