petitioners’ exhibit no. nsn677-1003 declaration of … · 2017-02-07 · nsn677-1003, page 1 i....
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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: IPR2017-00657
U.S. Patent No. 8,031,677
____________
PETITIONERS’ EXHIBIT NO. NSN677-1003
DECLARATION OF MARK LANNING
NSN677-1003, 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................................................................... 8Claim Interpretation............................................................................. 8Prior Art............................................................................................. 10Anticipation ....................................................................................... 10Obviousness....................................................................................... 11
Motivation to Combine ........................................................... 13Secondary Considerations ....................................................... 15
Date of Invention............................................................................... 16
VI. BACKGROUND OF TECHNOLOGY.................................................... 17The 4G LTE Cellular Network .......................................................... 17The 3rd Generation Partnership Project (“3GPP”) Standards............ 17
3GPP Organization.................................................................. 183GPP Documentation .............................................................. 20
3GPP-based Network Architectures at the Time of thePurported Invention ........................................................................... 21
The Evolution from 2G Networks to 3G Networks................. 21The Evolution to 4G LTE Networks ....................................... 264G LTE Network Elements ..................................................... 28
The Detach Procedure ....................................................................... 303G Detach Procedure............................................................... 314G LTE Detach Procedure During Handover from 3GPPto Wi-Fi ................................................................................... 37
VII. THE ’677 PATENT ................................................................................... 45Disclosure of the ’677 Patent............................................................. 45Prosecution of the Application Leading to the ’677 Patent ............... 48
Priority Documents.................................................................. 48Chinese PCT Filing ................................................................. 48USPTO Examination............................................................... 48Supplementary European Search Report ................................. 50
NSN677-1003, page ii
Challenged Claims of the ’677 Patent ............................................... 53Priority Date ...................................................................................... 55
VIII. CLAIM INTERPRETATION OF THE ’677 PATENT ......................... 55“detaching, by the MME, the UE from the 3GPP network”(claim 1) and “detach the UE from the 3GPP network” (claim8)........................................................................................................ 55The Preamble of Claim 1 is Limiting ................................................ 58
IX. COUNT 1: OBVIOUSNESS OF CLAIMS 1–3 AND 8–10 BASEDON S2-072603 (“THE CATT SUBMISSION”) IN VIEW OF TS23.401 V1.1.0 .............................................................................................. 59
TDoc S2-072603 (“the CATT Submission”) (Exhibit NSN677-1006).................................................................................................. 59TS 23.401 V1.1.0 (Exhibit NSN677-1007) ....................................... 63Motivation to Combine the CATT Submission with TS 23.401........ 69Reasons to Consider the CATT Submission with TS 23.401 ............ 71Limitation-by-Limitation Obviousness Analysis............................... 72
Method for Detaching During Handover................................. 73Mobility Management Network Element ................................ 74MME Receiving Delete Bearer Request Message Sent byPDN Via SGW ........................................................................ 75Cause Information Element Indicating Handover ................... 79Setting Cause IE to “UE’s accessing RAT . . .” ...................... 80Deleting Bearer Resources ...................................................... 82Detaching the UE by Deleting MM Context ........................... 84
X. COUNT 2: OBVIOUSNESS OF CLAIMS 1–3 AND 8–10 BASEDON THE ADMITTED PRIOR ART IN VIEW OF TS 23.401V1.1.0 .......................................................................................................... 85
The ’677 Admitted Prior Art (’677 APA) (Exhibit NSN677-1001).................................................................................................. 85TS 23.401 V1.1.0 (Exhibit NSN677-1007) ....................................... 90Motivation to Combine the ’677 APA with TS 23.401 ..................... 95Reasons to Consider the ’677 APA with TS 23.401.......................... 97Limitation-by-Limitation Obviousness Analysis............................... 98
Method for Detaching During Handover................................. 99Mobility Management Network Element .............................. 100MME Receiving Delete Bearer Request Sent by PDN viaSGW...................................................................................... 100Cause Information Element Indicating Handover ................. 104
NSN677-1003, page iii
Setting Cause IE to “UE’s accessing RAT . . .” .................... 105Deleting Bearer Resources .................................................... 107Detaching the UE by Deleting MM Context ......................... 107
XI. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS....................................................................................... 109
XII. CONCLUSION ........................................................................................ 109
NSN677-1003, 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. 8,031,677 (“the ’677 Patent”), challenging the validity
of claims 1–3 and 8–10 of the ’677 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 NSN677-1017.
6. I am currently the president of two consulting companies: Telecom
Architects, Inc. and Reticle Consulting, LLC. Telecom Architects provides
NSN677-1003, page 2
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
NSN677-1003, page 3
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
NSN677-1003, page 4
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.
8,031,677. 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
NSN677-1001 ’677 Patent U.S. Patent No. 8,031,677
NSN677-1002’677
Application FileHistory
File History of U.S. Patent No. 8,031,677
NSN677-1004Bertenyi
DeclarationDeclaration of Balazs Bertenyi under 37C.F.R. § 1.68
NSN677-1005Patent Owner’sDistrict Court
Complaint
Huawei Techs. Co. Ltd. v. T-Mobile US, Inc.,2:16-cv-00052, D.I. 1 (E.D. Tex. Jan. 15,2016)
NSN677-1003, page 5
Exhibit Short Name Description
NSN677-1006CATT
Submission
3GPP TSG SA WG2 Architecture – S2#58,TDoc S2-072603, EPS bearer releaseprocedure during handover from 3GPP tonon 3GPP, submitted by CATT, available as“S2-072603.zip” athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_58_Orlando/Docs/ (uploaded6/19/2007 at 12:17 PM)
NSN677-1007 TS 23.401
3GPP TS 23.401 V1.1.0 (2007-07), 3rdGeneration Partnership Project; TechnicalSpecification Group Services and SystemAspects; GPRS enhancements for E-UTRANaccess (Release 8), available athttp://list.etsi.org/scripts/wa.exe?A2=ind0707&L=3GPP_TSG_SA_WG2&F=&S=&P=261969 (uploaded 7/16/2007)
NSN677-1008S2#58 Attendee
List
List of Registered Attendees, MeetingSA2#58, available athttp://webapp.etsi.org/3GPPRegistration/fViewPart.asp?mid=26045#Bottom (last accessed1/9/2017)
NSN677-1009 About 3GPP
About 3GPP Home, 3GPP: A GlobalInitiative, available athttp://www.3gpp.org/about-3gpp/about-3gpp(last accessed 1/10/2017)
NSN677-10103GPP
Delegates’Corner
Delegates Corner, 3GPP: A Global Initiative,available athttp://www.3gpp.org/specifications-groups/delegates-corner (last accessed1/10/2017)
NSN677-1003, page 6
Exhibit Short Name Description
NSN677-1011 3GPP FAQ
3GPP FAQs, 3GPP: A Global Initiative,available athttp://www.3gpp.org/contact/3gpp-faqs (lastaccessed 1/10/2017)
NSN677-1012 TS 23.060
3GPP TS 23.060 V4.6.0 (2002-09), 3rdGeneration Partnership Project; TechnicalSpecification Group Services and SystemAspects; GPRS Service description Stage 2(Release 4), available athttps://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=758 (uploaded 10/2/2002)
NSN677-1013S2#58
Document List
3GPP Public FTP File Server TSG S2#58Document List, available athttp://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_58_Orlando/Docs/ (last accessed1/9/2017)
NSN677-1014 TS 32.251
3GPP TS 32.251 V7.3.0 (2007-03), 3rdGeneration Partnership Project; TechnicalSpecification Group Services and SystemAspects; Telecommunication management;Charging Management; Packet Switched(PS) domain charging (Release 7), availableathttps://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=1898 (uploaded 3/26/2007)
NSN677-1015Joint Claim
ConstructionChart
Joint Claim Construction Chart, HuaweiTechs. Co. Ltd. v. T-Mobile US, Inc., 2:16-cv-00056, D.I. 110, Ex. A (E.D. Tex. Dec. 8,2016)
NSN677-1003, page 7
Exhibit Short Name Description
NSN677-1016TS 23.401
V8.0.0
3GPP TS 23.401 V8.0.0 (2007-12), 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 12/13/2007)
NSN677-1018 TS 32.423
3GPP TS 32.423 V7.4.0 (2006-12), 3rdGeneration Partnership Project; TechnicalSpecification Group Services and SystemAspects; Telecommunication management;Subscriber and equipment trace; Trace datadefinition and management (Release 7),available at,https://portal.3gpp.org/desktopmodules/Specifications/SpecificationDetails.aspx?specificationId=2010 (uploaded 12/15/2006)
NSN677-1019 * * * European File History of EP 08 78 3835
NSN677-1020Newton’sDictionary
Newton’s Telecom Dictionary (18th ed.2002)
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.
NSN677-1003, page 8
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 ’677 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
NSN677-1003, page 9
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
NSN677-1003, page 10
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.
Prior Art
24. 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
25. 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
NSN677-1003, page 11
“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
26. 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.
27. 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.
NSN677-1003, page 12
28. 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.
29. 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.
30. 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
NSN677-1003, page 13
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
31. 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
NSN677-1003, page 14
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.
32. 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
NSN677-1003, page 15
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
33. 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.
NSN677-1003, page 16
34. I understand that certain “secondary considerations,” such as
independent invention by others within a comparatively short space of time,
indicates obviousness.
35. 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
36. 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.
37. 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
NSN677-1003, page 17
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. BACKGROUND OF TECHNOLOGY
38. In my opinion, the ’677 Patent claims functionality that was taught in
“Computer Communications 101.” The alleged invention is a specific parameter
sent within a known message, within a known system, and a known detach
solution. The parameter capitalizes on an obvious consequence of gradual changes
being made during the standardization process in the 3GPP networks.
The 4G LTE Cellular Network
39. 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
40. The ’677 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
NSN677-1003, page 18
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) (NSN677-1005). Therefore, the following
discussion will outline the procedures and practices of the 3GPP standards body.
3GPP Organization
41. 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 NSN677-1009, pg. 4 (3GPP About).
42. 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
NSN677-1003, page 19
(“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 NSN677-1009, 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 id.
43. 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
. . . . . . . . .
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.
NSN677-1003, page 20
3GPP Documentation
44. 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
public 3GPP server indefinitely. See also NSN677-1010, pgs. 2–3 (3GPP
Delegates).
45. 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 NSN677-
1010 (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. NSN677-
1011, pg. 8 (3GPP FAQ). Sometimes, the new and edited TDocs are further
NSN677-1003, page 21
circulated for e-mail approval—that is, they can be distributed and voted upon via
e-mail.
46. 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 also NSN677-1010, pgs. 2–3
(3GPP Delegates); NSN677-1011, 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 NSN677-1011, 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 NSN677-1011, pg. 8 (3GPP FAQ).
3GPP-based Network Architectures at the Time of the PurportedInvention
47. The ’677 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
48. Early releases of the 3GPP standards created a network that could
only offer voice calls to landline phones or other mobile phones. This network,
NSN677-1003, page 22
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:
49. 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.
NSN677-1003, page 23
50. 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.
51. 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:
NSN677-1003, page 24
52. 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.
NSN677-1003, page 25
53. 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.
54. 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.”
55. 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.”
56. 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
NSN677-1003, page 26
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
57. 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
NSN677-1003, page 27
simplified diagram of the logical architecture for a 4G LTE packet-switched core
network appears below:
58. 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:
NSN677-1003, page 28
4G LTE Network Elements
59. 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 ’677 Patent.
60. The network elements that are relevant to the ’677 Patent are:
NSN677-1003, page 29
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
NSN677-1003, page 30
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.
61. 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 Detach Procedure
62. The “detach” procedure—the subject of the claims of the ’677
Patent—is a long-existing procedure. In all generations of 3GPP networks (2G,
3G, and 4G), the mobile phone undergoes a process to disconnect from the
network. For example, a mobile phone will typically disconnect from the network
when it is turned off, it no longer needs a currently assigned data bearer
connection, or its subscription to the network was cancelled. Upon disconnection,
the network can release the data bearer connection so this resource can be
NSN677-1003, page 31
reallocated to other mobile phones. This process of disconnecting came to be
known as a “detach.”
3G Detach Procedure
63. The 3GPP standards define multiple ways that a mobile phone can
detach from the network, and different steps can be taken depending on the type of
detach that is being performed. In the 3G UMTS network, one of multiple network
elements can make the decision to detach the mobile phone. For example, an
SGSN (which has similar functionality to the MME and S-GW network elements
in the 4G LTE network) can initiate a detach procedure, an HLR (which has
similar functionality to the HSS in the 4G LTE network) can initiate a detach
procedure, or the mobile phone itself can initiate a detach procedure. The specific
network entity that initiates the detach procedure is based on the reason for the
detach procedure.
64. As an example, the paragraphs below explain how an HLR can
perform a detach procedure in the 3G UMTS network. As the specification notes,
the “HLR use[s] this procedure for operator-determined purposes to request the
removal of a subscriber’s MM and PDP contexts at the SGSN.” NSN677-1012,
§ 6.6.2.2, pg. 52 (emphasis added); see also id. § 1 (“The present document defines
the stage-2 service description for the packet domain, which includes the General
Packet Radio Service (GPRS) in GSM and UMTS.”). A person of ordinary skill in
NSN677-1003, page 32
the art would have understood that a PDP context contains the subscriber’s session
information for a specific data “bearer” (i.e., connection) when the subscriber has
an active session. The following message flow diagram is taken from the 2002
version of TS 23.060 V4.6.0 (NSN779-1012):
NSN677-1012, § 6.6.2.2, pg. 52, fig. 25.
65. In the first step (1) shown in the diagram above, the HLR initiates the
detach procedure by sending a “Cancel Location” message to the SGSN. The
description of step 1 states: “If the HLR wants to request the immediate deletion of
a subscriber’s MM [mobility management] and PDP [packet data protocol]
contexts from the SGSN, the HLR shall send a Cancel Location (IMSI,
Cancellation Type) message to the SGSN with Cancellation Type set to
Subscription Withdrawn.” NSN677-1012, § 6.6.2.2, pg. 52. As can be seen, the
Cancel Location message contains “information elements” such as an IMSI
NSN677-1003, page 33
(International Mobile Subscriber Identity) and Cancellation Type that is used to
distinguish Cancel Location messages caused by different events. See NSN677-
1018, at 21 (listing under “IE name” both “IMSI” and “Cancellation Type”). A
person having ordinary skill in the art would have understood that IE stands for
information element, and would have understood that the specifications often use
the above format—message name and parentheses—to indicate information
elements contained in the message. Below is a representation of this step in the
system architecture.
66. 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. NSN677-1020, pg. 373.
67. At the second step (2) shown in the message flow diagram above, the
SGSN requests the mobile phone to perform a detach procedure by sending a
NSN677-1003, page 34
“Detach Request” to the mobile phone. NSN677-1012, § 6.6.2.2, pg. 52. This step
is represented below in the simplified architecture diagram:
68. At the third step (3), the SGSN sends a “Delete PDP Context
Request” to the GGSN, requesting the GGSN to delete the data bearer that is no
longer being used. NSN677-1012, § 6.6.2.2, pg. 52. This step is represented below
in the simplified architecture diagram.
NSN677-1003, page 35
69. During this procedure, the MM context stored in the SGSN is also
deleted. NSN677-1012, § 6.6.2.2, pg. 52 (“The HLR uses this procedure for
operator-determined purposes to request the removal of a subscriber’s MM and
PDP contexts at the SGSN.”). This step is represented below in the simplified
architecture diagram.
70. A person having ordinary skill in the art would have understood that
the MM context for each mobile phone is a data record that is stored in the SGSN,
which contains, among other things, information about a mobile phone’s location
(e.g., current location area and base station) that the network needs in order to
communicate with the mobile phone. For a list of the attributes stored in the MM
context, see, for example, NSN677-1012, § 13.2, pgs. 158–59.
71. A person of ordinary skill in the art would have understood that when
a mobile phone needs to rejoin the network within a short period of time after the
detach is performed—for example, if the phone was just being restarted or the
NSN677-1003, page 36
mobile phone temporarily lost contact with the base station—that the network may
clear the bearer resources of the mobile phone to help ease congestion in the
network but will not necessarily delete the MM context of the mobile phone. As
discussed in more detail below, a person having ordinary skill in the art would
have understood that the MM context of the mobile phone is deleted when the
mobile phone is not expected to rejoin the network within a relatively short time
frame.
72. For example, a person having ordinary skill in the art would have
understood the design tradeoffs, inefficiencies, and cost of frequently deleting and
re-establishing the MM context and its associated data fields for each mobile
phone every time a mobile phone temporarily lost contact with the base station and
was detached. Thus, a person having ordinary skill in the art would have
understood that in some circumstances it would be more efficient to keep the MM
context for each mobile phone intact in at the SGSN for situations where the
network expects the mobile phone to rejoin the network within a relatively short
period of time.
73. For the HLR-initiated detach procedure shown in the message flow
diagram and figures above, the MM context is deleted because the subscriber’s
subscription is being deleted from the network. NSN677-1012, § 6.6.2.2, pg. 52
(showing the Cancellation Type information element set to “Subscription
NSN677-1003, page 37
Withdrawn”). A person having ordinary skill in the art would have understood that
the HLR stored the user’s subscription data. NSN677-1012, § 5.4.3, pg. 23. A
person having ordinary skill would have also understood that the HLR will be
notified when a subscriber’s subscription was cancelled, e.g., the subscriber
withdrew the subscription. Similarly, a person having ordinary skill would have
understood that when a user cancelled the mobile phone’s subscription, there’s no
expectation that the mobile phone will rejoin the network. Thus, the HLR would
instruct the network to remove all the resources by setting the “Cancellation Type”
information element to “Subscription Withdrawn.” NSN677-1012, § 6.6.2.2, pg.
52 (“If the HLR wants to request the immediate deletion of a subscriber’s MM and
PDP contexts from the SGSN, the HLR shall send a Cancel Location (IMSI,
Cancellation Type) message to the SGSN with Cancellation Type set to
Subscription Withdrawn.”). Therefore, the MM context data record associated with
the mobile phone would be deleted from the MME so that a new mobile phone
could use those computing resources.
4G LTE Detach Procedure During Handover from 3GPP to Wi-Fi
74. At the time of the purported invention, the 3GPP standards body was
contemporaneously developing (1) the 4G LTE detach procedure, and (2) the 4G
LTE detach procedure during handover from a 3GPP (LTE) to a non-3GPP (Wi-
Fi) network. However, the ultimate goal of both of these 4G LTE detach
NSN677-1003, page 38
procedures is the same as the goal of the 3G UMTS detach procedures—to release
resources in the network so they can be reallocated to another mobile phone.
75. Just as in the 3G UMTS network, multiple network elements can also
initiate a detach procedure in a 4G LTE network. The HSS-initiated detach
procedure is the 4G LTE equivalent to the 3G UMTS HLR-detach procedure
described above. At the time of the purported invention, the 3GPP specification TS
23.401 § 5.3.9.3 defined the HSS-initiated detach procedure. NSN677-1007,
§ 5.3.9.3, pg. 46.
76. Just as in the 3G detach procedure, this specification states, “If the
HSS wants to request the immediate deletion of a subscriber’s MM contexts and
EPS Bearers, the HSS shall send a Cancel Location (IMSI, Cancellation Type)
message to the MME . . . .” NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added). At
the time of the purported invention, it was for further studies (FFS) whether one of
the information elements could be set to inform the MME that the reason for the
HSS-initiated detach was “‘implicit detach because of UE’s accessing RAT [Radio
Access Technology—network type] changed from 3GPP [LTE] to Non-3GPP
[e.g., Wi-Fi].” NSN677-1007, § 5.3.9.3, pg. 46; see also NSN677-1018, at 21
(listing under “IE name” both “IMSI” and “Cancellation Type”). A person having
ordinary skill in the art would understand that IE stands for information element.
NSN677-1003, page 39
77. However, for the implemented HSS-initiated Detach procedure, i.e.,
the portion of the procedure the standards body had already agreed upon, the
reason that the HSS requests the deletion of the MM context stored in the MME in
a 4G LTE network is the same reason the HLR requests deletion of the MM
context stored in the SGSN in a 3G UMTS network: the user’s subscription has
been cancelled. NSN677-1007, § 5.3.9.3, pg. 46 (“If the HSS wants to request the
immediate deletion of a subscriber’s MM contexts and EPS Bearers, the HSS shall
send a Cancel Location (IMSI, Cancellation Type) message to the MME with
Cancellation Type set to Subscription Withdrawn.”). Just as in the 3G UMTS
network, there is no expectation that the mobile phone would rejoin the network
within a relatively short period of time if the user’s subscription to the network was
cancelled.
78. A person having ordinary skill in the art would also have understood
that the MM context is stored in the MME in a 4G LTE network. Thus, the HSS-
initiated detach procedure causes the MME to delete the MM context in the MME.
For example, the MM context data structure in the MME is comprised of multiple
records where each record is for a specific mobile phone and each record is
comprised of many fields, e.g. P-TMSI and IMSI. For the fields of the MM context
in the 3G UMTS version of the MM context stored in the SGSN, see, for example
NSN677-1012, § 13.2, pg. 158–59. For the fields of the MM context in the 4G
NSN677-1003, page 40
LTE version of the MM context stored in the MME (which were very similar to the
fields stored in the 3G UMTS version of the MM context), see, for example 3GPP
TS 23.401 V8.0.0 (2007-12) § 5.6.2. NSN677-1016, § 5.6.2, pg. 115. At the time
of the purported invention, it was known that the MM context would be stored in
the MME, but the details had not been filled in at that time. NSN677-1017, § 5.6,
pg. 71 (“This section describes the context information that is stored in the
different nodes, eg . . . MME.”).
79. However, also like in a 3G UMTS network, in a 4G LTE network, a
network element other than the HSS can initiate a detach procedure—for example,
the PDN GW. The ’677 Patent discloses the PDN GW-initiated detach procedure
that was prior art at the time of the purported invention. This detach procedure was
used when the UE was handed over or switched from a 3GPP (LTE) network to a
non-3GPP (Wi-Fi) network. As the ’677 Patent states, Figure 2 “is a flow chart of a
process that the UE is handed over or switched from a 3GPP network to a non-
3GPP network in the prior art”:
NSN677-1003, page 41
NSN677-1001, at 4:63–65 & fig. 2 (emphasis added).
80. At step 201, the mobile phone is connected to the 3GPP (e.g., LTE)
network and wants to handover to the non-3GPP (e.g., Wi-Fi) network as shown
by step 202. Just as in a 3G UMTS network, an MM context exists for the mobile
phone, but it is stored in the MME in the 4G network as shown by the simplified
diagram below.
NSN677-1003, page 42
81. The ’677 Patent then describes the prior art steps that occur for the
mobile phone (UE) to attach to the non-3GPP (Wi-Fi) network. Given that the
claims of the ’677 Patent focus on what occurs in the 3GPP network immediately
after the network switched the message flows to non-3GPP (Wi-Fi), I skip the
details of steps 203–207. However, a simplified representation of the resulting
3GPP/non-3GPP network architecture diagram after the message flows are
switched is below:
NSN677-1003, page 43
82. Next, in step 208 of Figure 2 above, the ’677 Patent states that it was
known that “the PDN GW sends a delete bearer request message to the serving
GW, and the serving GW sends the delete bearer request message to the MME”
(depicted as step 208 in the message diagram above and with reference to the
network architecture below). NSN677-1001, at 2:45–48. In other words, the PDN
GW initiates the detach procedure.
NSN677-1003, page 44
83. As a result of these messages, the now unused bearer that was
allocated to the mobile phone is removed so that the unused bearer can be allocated
to another mobile phone on the 3GPP network. See also NSN677-1007, § 5.3.9.3,
pg. 46 (“[A]fter the PDN deletes the EPS Bearer, the PDN GW should release the
UE’s PDP address of the Bearer and assign the PDP address to other UE.”).
84. The ’677 Patent’s description of the prior art stops short of disclosing
that the MM context in the MME would be deleted. However, deleting the MM
context in the core network was a part of the process in the 3G UMTS system2 and
was explicitly disclosed to be a part of the 4G HSS-initiated detach procedure (as
described in paragraphs 75 through 78 above).
2 See the discussion of the HLR-initiated detach procedure above at
paragraphs 64 through 73.
NSN677-1003, page 45
85. Further, the ’677 Patent’s description of the prior art stops short of
disclosing that an information element informing the MME of the reason for the
detach would be contained in the delete bearer request message. However, as
explained above, an information element performing this function was already
defined in the 4G HSS-initiated detach procedure (as described above in
paragraphs 75 through 78 above).
86. In other words, Patent Owner’s purported invention merely ports these
two ideas—(1) deleting the MM context and (2) an information element containing
the reason for the detach—from the 4G HSS-initiated detach procedure into the 4G
PDN GW-initiated detach procedure.
VII. THE ’677 PATENT
Disclosure of the ’677 Patent
87. The ’677 Patent discloses the long-existing principle of placing an
information element (i.e., data field) into a network message. In doing this, the
MME can distinguish (1) a detach caused by handover from a 3GPP (LTE) base
station to a non-3GPP (Wi-Fi) access point, from (2) a detach caused by other
reasons, e.g., cancellation of a subscriber’s subscription.
88. The ’677 Patent also discloses the long-existing principle of deleting
the MM context so that this resource can be reallocated to another mobile phone.
NSN677-1003, page 46
89. In other words, the alleged novelty of the ’677 Patent is not directed to
the message flow, as this was prior art. The purported novelty is also not directed
to the specific network elements that send and receive these messages, as this was
also prior art. Instead, the only alleged novelty is (1) to include an information
element (i.e., a data field) in a message and (2) to delete the MM context. This
purported novelty is shown in the simplified diagram below. The differences
“Before” and “After” the ’677 Patent is highlighted in yellow.
BEFORE THE ’677 PATENT
NSN677-1003, page 47
AFTER THE ’677 PATENT
90. However, as discussed above, these two concepts were not novel. The
4G HSS-initiated detach procedure had already disclosed the routine ideas of (1)
including an information element that would inform the MME that the detach was
due to handover from 3GPP (LTE) to non-3GPP (Wi-Fi) and (2) deleting the MM
context stored in the MME.
91. In my opinion, the techniques and processes recited in claims 1–3 and
8–10 of the ’677 Patent describe nothing more than conventional features for
distinguishing messages in a network and common steps for detaching the mobile
phone from the network. Specifically, the ’677 Patent claims the use of a “cause
information element that indicates the UE [e.g., mobile phone] handovers from the
3GPP network to the non-3GPP network.” NSN677-1001, at cl. 1. An information
element is nothing more than the name of a data field in a message, and the use of
a “cause information element” was known before the ’677 Patent. Further, deleting
NSN677-1003, page 48
the MM context during detach was known before the ’677 Patent. The Patent
Owner merely ported these conventional ideas into the PDN GW-initiated detach
procedure. The Patent Owner acknowledged that every other claimed part of the
procedure was known and in the existing protocol.
Prosecution of the Application Leading to the ’677 Patent
Priority Documents
92. Patent Owner filed one foreign priority application in the Chinese
patent office, CN 2007 1 0137568, on August 7, 2007.
Chinese PCT Filing
93. Patent Owner then filed a Chinese-language PCT application,
PCT/CN2008/071842, on July 31, 2008.
94. Rather than entering the national phase in the United States, on
October 19, 2009, Patent Owner filed a continuation of its Chinese PCT in the
United States, which was assigned Application No. 12/479,216. Patent Owner then
filed a continuation of that Application, which was given Application No.
13/169,619. Application No. 13/169,619 later issued as the ’677 Patent.
USPTO Examination
95. On June 27, 2011, Patent Owner filed Application No. 13/169,619.
On the same day, Patent Owner petitioned for Accelerated Examination. NSN677-
1002, pg. 8.
NSN677-1003, page 49
96. In support of its Petition for Accelerated Examination, Patent Owner
filed an Accelerated Examination Support Document. NSN677-1002, pg. 278–330.
In the Accelerated Examination Support Document, Patent Owner was required to
provide support from the specification for each and every claim limitation in the
’677 Patent.
97. In doing this, Patent Owner revealed the limited scope of the claims.
For example, in every instance where Patent Owner provided support for the
“detaching” terms, Patent Owner acknowledged that deleting the MM context
supported the “detaching” limitations.
98. In addition, Patent Owner provided an analysis in the Accelerated
Examination Support document of certain prior art references under § 102(a),
including TS 23.401. However, I understand that Patent Owner only discussed TS
23.401 in terms of 35 U.S.C. § 102, arguing that “[i]ndependent claim 1 is not
anticipated by 3GPP TS [23.401] at least because 3GPP TS [23.401] fails to
disclose steps of: receiving, by a mobility management entity (MME) of the 3GPP
network, a delete bearer request sent by a serving gateway (GW) of the 3GPP
network which carries a cause information element (IE) . . . .” NSN677-1002, pg.
298. However, while those specific steps may not have been explicitly disclosed in
TS 23.401, they were already known and proposed by other 3GPP participants as
NSN677-1003, page 50
disclosed in at least the CATT Submission. The CATT Submission was not
disclosed or discussed by the Patent Owner or the USPTO during prosecution.
Supplementary European Search Report
99. While the USPTO allowed the claims of the ’677 Patent, the European
Patent Office originally rejected similar claim elements using TS 23.401. At the
time of the European Search Report, the relevant element of Claim 1 read
“determining, by a network element on a network side, whether to detach the UE
from the source network; if yes, detaching the UE from the source network .”
NSN677-1002, pg. 272 (emphasis added); see also NSN677-1019, at 300.
100. With respect to the “detaching” step, the European Search Report
states:
The scenario of detaching from a source network (i.e.
update/remove MM context and deleting the EPS bearers) in
response to a 3GPP to non-3GPP handover is described as being
‘FFS’ in [TS 23.401 V1.1.0]. ‘FFS’ means ‘for further study’ in the
context of 3GPP standardization documents. This means that it was
not yet decided at the time of generating V1.1.0 of 3GPP TS 23.401
whether this will be indeed implemented. However, the option was
already there.
NSN677-1002, pg. 272 (emphasis added); see also NSN677-1019, at 300.
101. In other words, the European Patent Office believed that the idea to
delete the MM context in response to a 3GPP (LTE) to non-3GPP (Wi-Fi)
NSN677-1003, page 51
handover had been conceived and presented. All that was left was a decision on
whether and where to implement the idea.
102. The Supplementary European Report goes on to state, “As a
consequence, Claim 1 does not meet the requirements . . . in that its subject-
matter lacks novelty and is thus not allowable.” NSN677-1002, pg. 272 (emphasis
added); see also NSN677-1019, at 300. In other words, the European Patent Office
found the claim element anticipated.
103. With respect to TS 23.401, the Supplementary European Search
Report goes on to say, “It is further noted that even if Patent Owner would
interpret the disclosure of [TS 23.401] in a slightly different manner than the
examiner has done in the above analysis, and based on his interpretations would
come to the conclusion that there are differences between the subject-matter of
present Claim 1 and [TS 23.401] which would then establish novelty . . . then these
differences, even if they could be acknowledged as such would only be of so
minor nature that they could not be the basis for establishing the presence of any
inventive step . . . .” NSN677-1002, pgs. 272–73 (emphasis added); see also
NSN677-1019, pgs. 300–01. The Report States: “[TS 23.401] discloses the same
object and the same type of solution as the present application . . . .” NSN677-
1002, pg. 273 (emphasis added); see also NSN677-1019, pg. 301. In other words,
the European Search Report also found the claim element obvious.
NSN677-1003, page 52
104. Again, I agree with the Supplementary European Search Report. It is
my opinion that TS 23.401 discloses the routine idea of detaching the mobile from
the 3GPP network when all the bearer resources of the UE are deleted, even when
“detaching” is construed to mean deleting an/the MM context. It is also my opinion
that TS 23.401 discloses an information element that indicates that the mobile
phone handovers from the 3GPP (LTE) network to the non-3GPP (Wi-Fi)
network.3
3 Ultimately, claim 1 of the European counterpart application was allowed
when Patent Owner amended the claim and added additional limitations not
present in independent claim 1 of the ’677 Patent, including (1) a step that requires
the MME to “find[] all the bear source [sic] of the UE are deleted,” and (2) a step
that requires “determining, by the MME, to detach the UE from the source network
if the cause IE carried in the received delete bearer request message is represented
as ‘UE’s accessing RAT changed from a 3GPP network to a non-3GPP network.’”
NSN677-1019, at 351. Therefore, the European claim is narrower because of these
additional limitations, namely, a (1) finding step and (2) determining step based on
the specific nature of the information element.
However, importantly, the European Patent Office, like Patent Owner,
treated TS 23.401 as an anticipatory reference. Neither the USPTO nor the
NSN677-1003, page 53
Challenged Claims of the ’677 Patent
105. The challenged claims of the ’677 Patent are claims 1–3 and 8–10. I
have reproduced the challenged claims below.
1. [1preamble] A method for detaching a user equipment (UE) when ahandover from a 3rd generation partnership project (3GPP) network to a non-3GPP network occurs, comprising:
[1a] receiving, by a mobility management entity (MME) of the 3GPPnetwork, a delete bearer request sent by a serving gateway (GW) of the 3GPPnetwork which carries a cause information element (IE),
[1b] wherein the cause IE indicates the UE handovers from the 3GPPnetwork to the non-3GPP network;
[1c] deleting, by the MME, bearer resources of the UE;
[1d] detaching, by the MME, the UE from the 3GPP network when all thebearer resources of the UE are deleted.
2. [2preamble] The method according to claim 1,
[2a] wherein the cause IE is set to “UE’s accessing RAT changed from a3GPP network to a non-3GPP network”.
3. [3preamble] The method according to claim 2, further comprising:
[3a] setting, by a packet data network gateway (PDN GW), the cause IE to“UE’s accessing RAT changed from a 3GPP network to a non-3GPPnetwork”;
European Patent Office analyzed TS 23.401 in combination with the CATT
Submission—precisely what the Petitioners seek.
NSN677-1003, page 54
[3b] sending, by the PDN GW, the delete bearer request message carrying thecause IE to the serving GW; and
[3c] sending, by the serving GW, the delete bearer request message carryingthe cause IE to the MME.
8. [8preamble] A mobility management entity, configured to:
[8a] receive a delete bearer request sent by a serving gateway (GW) of a3GPP network when a handover from the 3GPP network to a non-3GPPnetwork occurs,
[8b] wherein the delete bearer request carries a cause information element(IE) which indicates a user equipment handovers from the 3GPP network tothe non-3GPP network;
[8c] delete bearer resources of the user equipment; and
[8d] detach the UE from the 3GPP network when all the bearer resources ofthe UE are deleted.
9. [9preamble] The mobility management entity according to claim 8,
[9a] wherein the cause IE is set to “UE’s accessing RAT changed from a3GPP network to a non-3GPP network”.
10. [10preamble] The mobility management entity according to claim 9,
[10a] wherein the delete bearer request is sent from a packet data networkgateway to the mobility management entity via the serving gateway,
[10b] wherein the cause IE is set to “UE’s accessing RAT changed from a3GPP network to a non-3GPP network” by the packet data network gateway.
NSN677-1003, page 55
Priority Date
106. I understand from the face of the ’677 Patent that the purported
priority date for the ’677 Patent is August 7, 2007. I also understand that prior art
references published on or before August 7, 2007, are considered prior art to the
’677 Patent, and this is the date I have used for my analysis.
VIII. CLAIM INTERPRETATION OF THE ’677 PATENT
107. In my review of the claims of the ’677 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.
“detaching, by the MME, the UE from the 3GPP network” (claim1) and “detach the UE from the 3GPP network” (claim 8)
108. I understand in the district court litigation that both Patent Owner and
Petitioners agree that “detaching, by the MME, the UE from the 3GPP network”
and “detach the UE from the 3GPP network” have a meaning narrower than the
plain and ordinary meaning. I understand that both parties agree that the detaching
step includes deleting an MM context. NSN677-1015, Ex. A, pgs. 30–35.
109. Specifically, I understand that Patent Owner proposes that the terms
mean “deleting/delete, by an MME, an MM context,” and Petitioners propose that
the terms mean “deleting/delete, by an MME, the MM context.” NSN677-1015,
Ex. A, pgs. 30–35. As evidenced by the dispute over the words “an” and “the” in
NSN677-1003, page 56
the district court litigation, I understand the parties appear to disagree about
whether more than one MM context for a particular mobile phone is stored in the
MME at any given time. It is my opinion that this disagreement has no relevance
here. The prior art cited herein discloses deleting an MM context, regardless of
what the MM context may mean in the district court litigation.
110. However, a person of ordinary skill in the art would have understood
that there is only one MM context per mobile phone stored at an MME (or SGSN
in a 3G network) at any given time. Although TS 23.401 and TS 23.402 do not
explicitly state so, TS 32.251 does: “There can be only one MM context per
UE/MS [i.e., mobile phone] at a time . . . .” NSN677-1014, § 5.2.1.2, pg. 20. This
single MM context4 is the MM context that a person of ordinary skill in the art
would have understood the inventors are referring to in the ’677 Patent.
4 I understand that the parties in the co-pending district court litigation agree
that there is also an MM context stored at the mobile phone. This understanding
comports with what a person of ordinary skill in the art would have also
understood. However, I also understand that both parties agree that neither
proposed construction refers to or requires a deletion of an MM context that is
stored in the mobile phone itself. Thus, the dispute over “an” or “the” does not
implicate this MM context on the mobile phone.
NSN677-1003, page 57
111. Indeed, when the ’677 Patent describes deleting an/the MM context,
the specification uses Petitioners’ proposed definition of “the MM context”
approximately seventy times.5
112. However, the ’677 Patent only uses Patent Owner’s proposed
definition of “an MM context” once.6 Patent Owner cherry-picks this one example
in an attempt to completely change the definition of MM context to imply that
there are multiple MM contexts stored in the MME.
113. Finally, to the extent that this claim is defined by the Board to be
broader than that proposed by both Patent Owner and Petitioners in the district
court litigation, the prior art discloses “detaching,” which would satisfy any
construction associated with that term.
5 References to “the MM context”: NSN677-1001, at 13:38, 13:41, 13:50,
13:52–53, 13:55–56, 13:65, 14:1, 14:4, 14:26, 14:29, 14:33, 14:47, 14:51, 15:6,
15:11, 15:33, 16:1, 16:10, 16:13, 16:23, 16:26, 16:29, 16:42, 16:46, 17:2, 17:5,
17:9, 17:31, 18:48, 18:50–51, 19:10, 19:16, 19:19, 19:25, 19:28, 19:45–46, 19:49,
21:12, 21:17, 21:29, 23:35, 23:38, 24:60, 25:2, 25:5, 25:9, 25:10, 25:12, 25:18,
25:20–21, 25:22, 25:29–30, 25:32, 25:33, 25:50, 25:54, 25:57, 26:13, 26:22, 26:58,
27:2, 27:5–6, 27:17, 27:21, 27:42, 27:47, 27:52, 27:59, 28:37, 28:55.
6 References to “an MM context”: NSN677-1001, at 13:29.
NSN677-1003, page 58
The Preamble of Claim 1 is Limiting
114. I understand that, in the district court litigation, Petitioners contend
that the preamble of claim 1 is limiting.
115. A person having ordinary skill in the art would understand that the
preamble of claim 1 provides a fundamental characteristic of the invention.
Specifically, the fact that the steps of the claim take place “when a handover from
a 3GPP network to a non-3GPP network occurs” is a fundamental characteristic of
the invention. NSN677-1001, cl. 1 (preamble). Indeed, the ’677 Patent states,
“[t]he present invention relates to . . . a method, system, and device for user
detachment when a handover or change occurs in a heterogeneous network .”
NSN677-1001, at 1:21–24 (emphasis added). Indeed, detaching the mobile phone
when a handover or change occurs in a heterogeneous network was the precise
problem the inventors of the ’677 Patent sought to solve: “To sum up, during
researches and applications, the inventor(s) of the present invention finds that the
prior art has at least the following problems: the prior art [does not] provide[] a
specific solution for user detachment when a handover or change occurs in a
heterogeneous network . . . .” NSN677-1001, at 3:49-52 (emphasis added). A
person having ordinary skill in the art would understand that the invention in claim
1, therefore, must take place “when a handover” occurs.
NSN677-1003, page 59
116. Further, a person having ordinary skill in the art would have
understood that a “heterogeneous network” means a network of two different
types, e.g., 3GPP (LTE) and non-3GPP (Wi-Fi).
117. Thus, I also agree that the preamble of claim 1 should be construed as
limiting.
IX. COUNT 1: OBVIOUSNESS OF CLAIMS 1–3 AND 8–10 BASED ONS2-072603 (“THE CATT SUBMISSION”) IN VIEW OF TS 23.401V1.1.0
118. I believe that claims 1–3 and 8–10 are obvious based on the CATT
Submission in light of TS 23.401.
TDoc S2-072603 (“the CATT Submission”) (Exhibit NSN677-1006)
119. I downloaded TDoc S2-072603 (“the CATT Submission”) from the
public 3GPP file server found at the following location:
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/TSGS2_58_Orlando/Docs/ .
120. The CATT Submission is a TDoc, which on its face discloses that it
was generated for meeting “3GPP TSG SA WG2 Architecture – S2#58,” which
according to the document, took place in Orlando, Florida from June 25, 2007, to
June 29, 2007. NSN677-1006, pg. 1. The Attendee list for the S2#58 meeting
confirms that this document was publicly available to persons of ordinary skill in
the art at that meeting, including Weihua Hu, one of the inventors of the ’677
Patent. NSN677-1008, pg. 3. The 3GPP file server indicates that the CATT
NSN677-1003, page 60
Submission was uploaded to the public, unrestricted 3GPP file server on June 19,
2007, and thus, was publicly accessible to anyone with an Internet connection on
June 19, 2007. NSN677-1013, pg. 5; see also NSN677-1004, ¶29.
121. In other words, when the CATT Submission was uploaded it received
a time stamp, and the 3GPP website states that “the time stamp of the Zip file can
be relied upon to indicate when the upload occurred.” NSN677-1011, pgs. 8–9
(3GPP FAQ). Here the date and time stamp reads June 19, 2007. Thus, I
understand that the CATT Submission is prior art to the ’677 Patent under
§ 102(b).
122. The CATT Submission is titled “EPS bearer release procedure during
handover from 3GPP to non 3GPP” and is directed to the prior art 3GPP
specification TS 23.402. NSN677-1006, pg. 1. The document states, “This
contribution describes the EPS bearer release procedure during handover from
3GPP to non 3GPP” (e.g., LTE to Wi-Fi). NSN677-1006, pg. 1. The CATT
Submission introduces the following message flow diagram as Figure 1 (titled
“The SAE bearer release procedure during handover from 3GPP to non 3GPP”):
NSN677-1003, page 61
NSN677-1006, fig. 1 (blue box added).
123. A person of ordinary skill in the art would have understood that this
message flow diagram represents steps in a PDN GW-initiated detach procedure
because at step 4, the PDN GW initiates the detach procedure by sending a “Delete
EPS Bearer Request” message to the S-GW, which then sends a message with the
same name to the MME.
124. The CATT Submission discloses that the this “Delete EPS Bearer
Request” should contain a “cause” information element: “4. PDN GW has
discovered that UE has attached to non 3GPP system, then PDN GW checks the
EPS bearer associated with UE [e.g., mobile phone] in 3GPP system, and if there
are bearers for UE in 3GPP system, then PDN GW sends the Delete EPS Bearer
NSN677-1003, page 62
Request ( cause ) to serving GW and serving GW sends this message to
MME.” NSN677-1006, pg. 2 (emphasis added). A person of ordinary skill in the
art would have understood that the bolded “( cause )” term represents an
information element.
125. A person of ordinary skill in the art at the time of the purported
invention would have understood that the “cause” information element indicates to
the other network elements that the cause of the message is 3GPP (LTE) to non-
3GPP (Wi-Fi) handover. A person of ordinary skill in the art would have also
understood that the MME needs to know the “cause” of the delete bearer request
message in order to ensure service continuity of the mobile phone after the
handover. Specifically, the CATT Submission discloses, “In order to ensure the
service continuity of UE [e.g., mobile phone], PDN GW shall check and release all
of EPS bearers associated with UE in 3GPP system and ensure IP address of UE
is unchanged after the UE has completed attachment procedure in non 3GPP
access system.” NSN677-1006, pg. 1 (emphasis added). In other words, the PDN
GW must alert the MME that the cause of the Delete EPS Bearer Request is for a
non-3GPP handover so that the IP address of the mobile phone (UE) is unchanged
when it is communicating over the Wi-Fi network. To do so, the CATT
Submission proposes including a “cause” information element in the message.
NSN677-1003, page 63
126. Thus, the CATT Submission contains all the claim elements of the
challenged claims except the specific detach solution in the ’677 Patent (i.e.,
deleting an/the MM context stored at the MME). However, as described above, this
specific step was disclosed in other references.
TS 23.401 V1.1.0 (Exhibit NSN677-1007)
127. I downloaded TS 23.401 V1.1.0 from the 3GPP public e-mail
exploder list as an attachment to an e-mail sent by Gavin Wong. The e-mail and
attachment can be downloaded at the following location:
http://list.etsi.org/scripts/wa.exe?A2=ind0707&L=3GPP_TSG_SA_WG2&F=&S=&P=261969.
128. A screenshot of that e-mail is below, showing it was sent on Monday,
July 16, 2007.
NSN677-1003, page 64
129. The e-mail states that a copy of the updated TS 23.401, including the
agreed contributions from SA2#58, was attached. The Attendee list for SA2#58
confirms that numerous persons having ordinary skill in the art attended SA2#58,
including Weihua Hu, one of the inventors listed on the face of the ’677 Patent.
NSN677-1008, pg. 3. Thus, TS 23.401 was disclosed to numerous persons having
ordinary skill in the art when the e-mail was sent on July 16, 2007. NSN677-1004
¶30. Therefore I understand that TS 23.401 is prior art under § 102(b).
130. TS 23.401 discloses a series of detach procedures. First, TS 23.401
discloses a UE-initiated Detach Procedure. NSN677-1007, § 5.3.9.1, pgs. 44–45.
Second, TS 23.401 discloses an MME-initiated Detach Procedure. NSN677-1007,
NSN677-1003, page 65
§ 5.3.9.2, pgs. 45–46. Third, TS 23.401 discloses an HSS-Initiated Detach
Procedure. NSN677-1007, § 5.3.9.3, pgs. 46–47. In addition, TS 23.401 notes that
it was for further study (FFS) whether the PDN GW could initiate a detach
procedure. NSN677-1007, pg. 44 (“[I]t is FFS whether a PDN GW . . . may also
initiate a Detach procedure.”). The document also notes that “[t]hese [detach]
procedures should cover the case that detach is required because the UE [mobile
phone] is attached to a non-3GPP RAT,” and that the procedures “need to be
updated according to later con[c]lusions.” NSN677-1007, pg. 44. In other words,
the PDN GW-Initiated Detach procedure was contemplated as a detach option (and
proposed above by the CATT Submission) before the ’677 Patent, and the
standards body identified that the procedures would need to be updated.
131. At the time, the 3GPP standards body contemplated that the HSS-
Initiated Detach Procedure might be used during handover from 3GPP to non-
3GPP, but the issue was for further studies (FFS). NSN677-1007, pg. 46 (“It is
FFS, if the HSS initiates a detach procedure to update the subscriber’s MM context
at the MME and to delete the EPS bearer because that the UE[’s] accessing RAT is
changed from 3GPP to Non-3GPP.”). Ultimately, the 3GPP standards body chose
to use the PDN GW-initiated detach procedure for this purpose.
132. The two minor details that are the alleged point of novelty (see
discussion of ’677 Patent in Section VII.A above) are present in the HSS-Initiated
NSN677-1003, page 66
Detach Procedure disclosed in prior art reference TS 23.401. Patent Owner merely
copied and pasted the minor details into the procedure initiated by the PDN GW
(which was admitted to be in the prior art in the specification of the ’677 Patent
and was disclosed by the CATT Submission).
133. First, Patent Owner’s claim to an information element indicating
handover from 3GPP (LTE) to non-3GPP (Wi-Fi) was already present in TS
23.401:
1. If the HSS wants to request the immediate deletion of a subscriber’s
MM contexts7 and EPS Bearers, the HSS shall send a Cancel Location
(IMSI, Cancellation Type) message to the MME with Cancellation
Type set to Subscription Withdrawn.
It is FFS whether the Cancellation type can be set to “implicit detach
because of UE’s accessing RAT changed from 3GPP to Non-3GPP”.
7 Although this particular instance in the specification uses the term “MM
contexts” (plural), a person having ordinary skill in the art would have understood
that there can be only one MM context for each mobile phone stored at an MME
(or SGSN in a 3G network) at a time. See NSN677-1014 § 5.2.1.2, pg. 20 (“There
can be only one MM context per UE/MS [i.e., mobile phone] at a time . . . .”).
Further, I understand that the parties agree that an MM context stored at the mobile
phone is not at issue in these claims.
NSN677-1003, page 67
NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
134. A person having ordinary skill in the art would have understood that
when the standards body says “FFS,” it means “for further study.” A POSITA
would have also understood that “Cancellation Type” is an information element.
See also NSN677-1018, at 21 (listing under “IE name” both “IMSI” and
“Cancellation Type”). A person having ordinary skill in the art would understand
that IE stands for information element.
135. A person having ordinary skill in the art would have also understood
that an information element set to “implicit detach because UE’s accessing RAT
changed from 3GPP to Non-3GPP” is an information element that indicates
handover from 3GPP (LTE) to non-3GPP (Wi-Fi). Thus, while the standards body
had not yet implemented the option of setting the Cancellation Type information
element to this value in the context of a PDN GW-initiated detach procedure, the
idea to use an information element for this purpose—and the value of that
information element—was disclosed in the context of an HSS-initiated detach
procedure.
136. In addition, Patent Owner’s claim to detaching, by the MME, the UE
from the 3GPP network when all the bearer resources are deleted was already
disclosed in TS 23.401. Specifically, where the detaching step is construed as
NSN677-1003, page 68
“deleting, by the MME, an/the MM context of the UE,” (as the parties propose in
the district court litigation), TS 23.401 already disclosed this procedure:
1. If the HSS wants to request the immediate deletion of a
subscriber’s MM contexts and EPS Bearers, the HSS shall send a
Cancel Location (IMSI, Cancellation Type) message to the MME with
Cancellation Type set to Subscription Withdrawn.
NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
137. Therefore, regardless of whether Petitioners’ or Patent Owner’s claim
construction is adopted, the concept of deleting an/the MM context is disclosed in
TS 23.401. As noted above, the European Patent Office agreed with this
assessment in its Supplementary European Search Report. See NSN677-1002, pgs.
267–76; see also NSN677-1019, pg. 300 (finding that “detaching from a source
network (i.e. update/remove MM context and deleting the EPS bearers)” was
disclosed by TS 23.401).
138. Further, to the extent that the Board does not adopt either Petitioners’
or Patent Owner’s construction from the district court litigation and opts for a plain
and ordinary meaning, the broader concept of “detaching” was present in TS
23.401 as well. NSN677-1007, § 5.3.9.3 (describing an “HSS-initiated detach
procedure” and noting a PDN GW-initiated detach procedure was contemplated).
NSN677-1003, page 69
Motivation to Combine the CATT Submission with TS 23.401
139. A person of ordinary skill in the art would have been motivated to
combine the CATT Submission with TS 23.401. Both the CATT Submission and
TS 23.401 deal with the non-3GPP handover procedure and the resulting detach
process.
140. A person having ordinary skill would have looked to TS 23.401 to
determine the infrastructure of the system and the instructions for a detach
procedure. TS 23.401 explicitly identified that the then-current detach procedures
“need to be updated” to “cover the case that detach is required because the UE
[mobile phone] is attached to a non-3GPP” access point. NSN677-1007, § 5.3.9,
pg. 44. The CATT Submission provided the foundational aspects of that update.
Specifically, the CATT Submission, in its disclosure to the same working group
responsible for updating TS 23.401, noted that its solution describes “EPS bearer
release procedure during handover from 3GPP to non 3GPP.” NSN677-1006, pg.
1. In other words, the CATT Submission, by disclosing the PDN GW-initiated
detach procedure, provided large swaths of the update needed to cover the use case
that TS 23.401 explicitly stated was needed.
141. Thus, a person having ordinary skill in the art would have a
reasonable expectation of success implementing the CATT Submission along with
the minor, already-agreed-upon details for non-3GPP handover contained in TS
NSN677-1003, page 70
23.401; specifically, (1) the specific detaching solution of deleting the MM
context, (2) the specific information element to alert the MME to the reason for the
detach, and (3) the specific contents of that information element.
142. Further, such an ordinarily skilled person would have found it a
predictable and common sense implementation to use the specific solutions already
associated with non-3GPP handover in TS 23.401 with the message flow outlined
in the CATT Submission. TS 23.401 taught—in the same procedure the standards-
body thought would be used for non-3GPP handover—the ideas of (1) the specific
solution of deleting the MM context during detach, (2) the information element
indicating the cause of the detach to the MME, and (3) the specific contents of that
information element. Thus, a person having ordinary skill in the art would have a
reasonable expectation of success in implementing these known ideas in the CATT
Submission to achieve a similar result.
143. Finally, one of ordinary skill in the art at the time of the alleged
invention would have been motivated to include the step of deleting the MM
context in the detach solution because doing so is one of a finite number of
identified, predictable solutions to the problem posed by TS 23.401; namely, that
the detach procedures need to be updated to cover the use case associated with
non-3GPP access points. NSN677-1007, § 5.3.9, pg. 44. The MM context can
either be “deleted” or “not deleted” during a detach procedure. The HSS-initiated
NSN677-1003, page 71
process from TS 23.401 taught the idea that the MM context should be “deleted”
and associated that idea with the non-3GPP handover process. NSN677-1007,
§ 5.3.9.3, pg. 46. Thus, a person having ordinary skill in the art would have a
reasonable expectation of success in implementing the idea.
Reasons to Consider the CATT Submission with TS 23.401
144. Although TS 23.401 was disclosed to the USPTO examiner, the
CATT Submission was not disclosed. Therefore, the examiner never considered
the CATT Submission in combination with TS 23.401.
145. Further, I understand that when Patent Owner discussed TS 23.401 in
the Accelerated Examination support document, Patent Owner treated TS 23.401
as a § 102 anticipation reference. Therefore Patent Owner argued that
“Independent claim 1 is not anticipated by 3GPP TS [23.401] at least because
3GPP TS [23.401] fails to disclose steps of: receiving, by a mobility management
entity (MME) of the 3GPP network, a delete bearer request sent by a serving
gateway (GW) of the 3GPP network which carries a cause information element
(IE) . . .” NSN677-1002, pg. 298.
146. However Petitioners are not arguing that TS 23.401 disclosed the
correct message flows and, therefore, are not arguing that TS 23.401 disclosed the
network entities that would be sending and receiving the messages. The CATT
Submission does disclose those message flows and the correct network entities that
NSN677-1003, page 72
would send and receive the claimed messages. Instead, Petitioners are arguing that
Patent Owner copied and pasted the already-agreed-upon minor details of the
handover procedure from TS 23.401—for example, using an information element
indicating 3GPP to Wi-Fi handover and deleting the MM context—into the correct
message flow disclosed in the CATT Submission.
147. Therefore, TS 23.401 is a prime reference to consider under § 103 in
combination with the CATT Submission, not § 102.
Limitation-by-Limitation Obviousness Analysis
148. 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 forDetaching DuringHandover
1preamble, 2preamble3preamble
CATT Submission
MobilityManagementNetwork Element
8preamble, 9preamble10preamble
CATT Submission
MME ReceivingDelete BearerRequest MessageSent by PDN GWvia SGW
1a, 8a, 10a, 3b, 3c CATT Submission
Cause InformationElement IndicatingHandover
1b, 8b CATT Submission
Setting Cause IE to“UE’s accessingRAT . . .”
2a, 3a, 9a, 10b TS 23.401
NSN677-1003, page 73
Claim Elements Claim Numbering Exemplary Disclosure in PriorArt
Deleting BearerResources
1c, 8c CATT Submission
Detaching the UEby Deleting MMContext
1d, 8d TS 23.401
Method for Detaching During Handover
1preamble: “A method for detaching a user equipment (UE) when a handoverfrom a 3rd generation partnership project (3GPP) network to a non-3GPPnetwork occurs, comprising:”
2preamble: “The method according to claim 1,”
3preamble: “The method according to claim 2, further comprising:”
149. To the extent the preamble is limiting, the CATT Submission
discloses a method for detaching mobile phone (UE) when a handover from a 3rd
generation partnership project (3GPP) network to a non-3GPP network occurs.
150. For example, the title of the CATT Submission is “EPS bearer release
procedure during handover from 3GPP to non 3GPP.” NSN677-1006, pg. 1. A
person having ordinary skill in the art would have understood that an EPS bearer
release procedure is a type of detach procedure and would have understood that
these bearers are released during (i.e., when) handover from a 3GPP to non 3GPP
occurs. NSN677-1006, pg. 1 (“In order to ensure the service continuity of UE,
PDN GW shall check and release all of EPS bearers associated with UE in 3GPP
system . . . .” (emphasis added)).
NSN677-1003, page 74
151. The message flow diagram in the CATT Submission also shows the
method for detaching:
NSN677-1006, fig. 1.
152. Thus, the CATT Submission discloses claim limitations 1preamble,
2preamble, and 3preamble.
Mobility Management Network Element
8preamble: “A mobility management entity, configured to:”
9preamble: “The mobility management entity according to claim 8,”
10preamble: “The mobility management entity according to claim 9,”
153. The CATT Submission discloses a mobility management entity. A
person of ordinary skill in the art would have understood that a mobility
NSN677-1003, page 75
management entity is abbreviated “MME,” and the CATT Submission discloses an
MME (see blue box in figure below).
NSN677-1006, fig. 1 (blue box added).
154. Thus, the CATT Submission discloses claim limitation 8preamble,
9preamble, and 10preamble.
MME Receiving Delete Bearer Request Message Sent by PDN ViaSGW
1a: “receiving, by a mobility management entity (MME) of the 3GPPnetwork, a delete bearer request sent by a serving gateway (GW) of the 3GPPnetwork which carries a cause information element (IE),”
8a: “receive a delete bearer request sent by a serving gateway (GW) of a3GPP network when a handover from the 3GPP network to a non-3GPPnetwork occurs,”
NSN677-1003, page 76
3b: “sending, by the PDN GW, the delete bearer request message carrying thecause IE to the serving GW; and”
3c: “sending, by the serving GW, the delete bearer request message carryingthe cause IE to the MME.”
10a: “wherein the delete bearer request is sent from a packet data networkgateway to the mobility management entity via the serving gateway,”
155. The CATT Submission discloses the step of receiving, by a mobility
management entity (MME) of the 3GPP network a delete bearer request sent by a
serving gateway (GW) of the 3GPP network which carries a cause information
element. The CATT Submission also discloses sending, by the PDN GW the delete
bearer request message carrying the cause IE to the serving GW. In addition, the
CATT Submission discloses sending, by the serving GW, the delete bearer request
message carrying the cause IE to the MME.
156. The message flow diagram shows a delete bearer request (1) sent by a
PDN GW to the serving GW, (2) received by the serving GW, (3) sent by the
serving GW to the MME, and (3) received by the MME.
NSN677-1003, page 77
NSN677-1006, fig. 1 (blue boxes added).
157. In the corresponding description of the message flow diagram above,
the CATT Submission discloses that the Delete EPS Bearer Request carries a
“cause” information element:
4．PDN GW has discovered that UE has attached to non 3GPP
system, then PDN GW checks the EPS bearer associated with UE in
3GPP system, and if there are bearers for UE in 3GPP system, then
PDN GW sends the Delete EPS Bearer Request ( cause )to serving
GW and serving GW sends this message to MME.
NSN677-1006, pg. 2 (emphasis added).
158. A person having ordinary skill in the art would have understood that
the bolded text inside of the parentheses “( cause )” discloses a cause information
NSN677-1003, page 78
element (i.e., data field) inside of the Delete EPS Bearer Request message. Indeed,
this format was commonly used by the 3GPP standards body for this purpose.8
159. In addition, a person having ordinary skill in the art would have also
understood that a “cause” information element is added in some messages to
represent the cause value of a certain operation, which is a common technical
means. For example, the Chinese Patent Office rejected the claims in a counterpart
application by stating, “[I]n the mobile communication field, a ‘cause’ IE is added
in some messages to represent the cause value of a certain operation, which is a
common technical means.” NSN677-1002, pg. 258–59.
160. Thus, claim limitations 1a, 3b, 3c, 8a, and 10a are disclosed by the
CATT Submission.
8 For example, the TS 23.401 specification uses the same format in the
corresponding Cancel Location message: “the HSS shall send a Cancel Location
(IMSI, Cancellation Type) message to the MME.” NSN677-1007, § 5.3.9.3, pg.
47 (emphasis added). Another section of the standard shows a table, and in the
table under the heading “IE name”—or information element name—the table lists
both IMSI and Cancellation Type as IEs that are a part of a Cancel Location
message. NSN677-1014, § 4.4, pg. 21.
NSN677-1003, page 79
Cause Information Element Indicating Handover
1b: “wherein the cause IE indicates the UE handovers from the 3GPPnetwork to the non-3GPP network”
8b: “wherein the delete bearer request carries a cause information element(IE) which indicates a user equipment handovers from the 3GPP network tothe non-3GPP network”
161. A person having ordinary skill in the art would have understood that
the CATT Submission discloses that the cause information element (IE) indicates
that the mobile phone is handed over from the 3GPP network to the non-3GPP
network.
162. The entire point of the CATT disclosure is to meet the “requirement
of service continuity.” NSN677-1006, pg. 1. To meet the “requirement of service
continuity,” the “IP address of the UE shall be unchanged after handover from
3GPP to non 3GPP.” NSN677-1006, pg. 1. A person of ordinary skill in the art
would have understood that unless the MME receives notice, by way of a cause
information element, that the mobile phone is still connected through the Wi-Fi
(non-3GPP) access point, the mobile phone’s IP address might be changed. Thus,
the MME is notified of the cause of the detach through a cause information
element. To the extent the cause information element could stand for something
else, it would have been obvious, at minimum, to a person of ordinary skill in the
art to use the pre-existing “cause” information disclosed by the CATT Submission
for the purposes of handover for the same reasons as discussed above.
NSN677-1003, page 80
163. Further, TS 23.401 discloses that an information element indicating
handover is needed when the mobile phone hands over from 3GPP to non-3GPP
and also states that the reason why this information element would be necessary is
to keep the address unchanged:
It is FFS, if the Cancellation type is set to “implicit detach because of
UE[’s] accessing RAT changed from 3GPP to Non-3GPP”, after the
PDN deletes the EPS Bearer, the PDN GW should not release the
UE’s PDP address of the Bearer.
NSN677-1007 § 5.3.9.3, pg. 46 (emphasis added).
164. A person having ordinary skill in the art would have understood that
the PDP address of the Bearer from TS 23.401 is the same as the IP address
disclosed in the CATT Submission. Thus, TS 23.401 confirms that a potential
problem during handover from 3GPP to non-3GPP is that the IP addresses might
change and that the information element solves this problem.
165. Thus, claim limitations 1b and 8b are disclosed by the CATT
Submission. To the extent Patent Owner argues these limitations are not disclosed
by the CATT Submission, the limitations are certainly disclosed by TS 23.401.
Setting Cause IE to “UE’s accessing RAT . . .”
2a: “wherein the cause IE is set to ‘UE’s accessing RAT changed from a3GPP network to a non-3GPP network’.”
3a: “setting, by a packet data network gateway (PDN GW), the cause IE to‘UE’s accessing RAT changed from a 3GPP network to a non-3GPPnetwork’”;
NSN677-1003, page 81
9a: “wherein the cause IE is set to ‘UE’s accessing RAT changed from a3GPP network to a non-3GPP network’.”
10b: “wherein the cause IE is set to ‘UE’s accessing RAT changed from a3GPP network to a non-3GPP network’ by the packet data network gateway.”
166. TS 23.401 discloses setting a cause IE to “UE’s accessing RAT
changed from a 3GPP network to a non-3GPP network.”
167. The CATT Submission discloses a “cause” information element as
described above. TS 23.401 discloses the contents of that information element:
“UE’s accessing RAT changed from 3GPP to Non-3GPP.” NSN677-1007,
§ 5.3.9.3, pg. 46. A PHOSITA would understand that the known information
element in the CATT Submission would contain the language used in TS 23.401.
TS 23.401 explicitly states that in the HSS-initiated detach procedure it was FFS
whether the information element could be set to “UE’s accessing RAT changed
from 3GPP to Non-3GPP.” NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
The concept was specifically disclosed, and it was merely a matter of choosing
whether and where to use it in the 3GPP specification. Ultimately, the information
element was implemented in the PDN GW-initiated procedure (disclosed by the
CATT Submission), but merely porting the already-agreed-upon minor detail about
what the information element would say into a previously disclosed PDN GW-
initiated detach procedure is not inventive.
NSN677-1003, page 82
168. A person having ordinary skill in the art would have understood that
the network entity sending the message would also be the network entity setting
the values of the information element in the message. In the HSS-initiated
procedure, the HSS would set the value, but in a PDN GW-initiated procedure, it
would have been common sense to a person of ordinary skill in the art that the
PDN GW would set the value. Further, a person having ordinary skill in the art
would have understood that there is no fundamental technical difference between
the information element shown in TS 23.401 and a “cause” information element.
169. Thus, claim limitations 2a, 3a, 9a, and 10b are disclosed by TS
23.401.
Deleting Bearer Resources
1c: “deleting, by the MME, bearer resources of the UE;”
8c: “delete bearer resources of the user equipment; and”
170. The CATT Submission discloses deleting, by the MME, the bearer
resources of the UE. For example, steps 4 and 5 of the message flow diagram
discloses this claim limitation:
NSN677-1003, page 83
NSN677-1006, fig. 1 (blue box added).
171. The corresponding description for step 4 makes clear that the MME
receives the request to the delete the EPS bearer (the bearer that runs along the
wired connection between the eNB and the PDN GW). Once the MME receives
the request to delete the EPS bearer, a person having ordinary skill in the art would
have understood that the MME executes that request and deletes the EPS bearer.
Further, the corresponding description for step 5 states that “5. All of radio access
bearers between MME and eNodeB shall be released. MME sends Delete Bearer
Request message to eNodeB.” NSN677-1006, pg. 2. Thus, the MME can also
delete the radio access bearers (the bearers that run along the wireless radio
connection between the UE and eNB) by sending a request to the eNB.
NSN677-1003, page 84
172. Thus, the CATT Submission discloses claim limitation 1c and 8c.
Detaching the UE by Deleting MM Context
1d: “detaching, by the MME, the UE from the 3GPP network when all thebearer resources of the UE are deleted.”
8d: “detach the UE from the 3GPP network when all the bearer resources ofthe UE are deleted.”
173. Although the CATT Submission discloses a detaching solution (i.e.,
disconnecting all radio and all EPS bearers), the CATT Submission does not
disclose the specific detaching solution contemplated by the ’677 Patent as
proposed by both parties in the co-pending district court litigation (i.e., deleting
an/the MM context stored in the MME). NSN677-1006, pg. 1 (“PDN GW shall
check and release all of EPS bearers associated with UE in 3GPP system.”).
However, TS 23.401 discloses detaching (by deleting an/the MM context stored at
the MME), by the MME, the UE from the 3GPP network when all the bearer
resources of the UE are deleted.
174. TS 23.401 discloses a detach procedure. Step 1 of the HSS-initiated
detach procedure states, “If the HSS wants to request the immediate deletion of a
subscriber’s MM contexts and EPS Bearers, the HSS shall send a Cancel
Location (IMSI, Cancellation Type) message to the MME . . .” NSN677-1007
§ 5.3.9.3, pg. 46 (emphasis added). In this, a person of ordinary skill in the art
would have understood that the HSS is requesting the MME to delete the MM
context stored in the MME and that the MME executes that request (i.e., deletes
NSN677-1003, page 85
the MM context). However, I understand that Patent Owner may argue TS 23.401
does not disclose the precise timing of the deletion process (i.e., whether the MM
context is deleted when all the EPS bearers are deleted). NSN677-1002, pg. 22.
But all that the claim requires is that the MME delete the MM context “when all
the bearer resources of the UE are deleted.” NSN677-1001, cl. 1. Nevertheless, a
person of ordinary skill in the art would have understood that the MM context of a
mobile phone holds information about the mobile phone. That information is still
being used by the network up and until all the bearer resources have been released.
Therefore a person of ordinary skill in the art would have understood that the MM
context must be deleted when all the EPS bearers are deleted, not before.
175. Thus, TS 23.401 discloses claim limitations 1d and 8d.
X. COUNT 2: OBVIOUSNESS OF CLAIMS 1–3 AND 8–10 BASED ONTHE ADMITTED PRIOR ART IN VIEW OF TS 23.401 V1.1.0
176. I believe that claims 1–3 and 8–10 are obvious in view of the ’677
Admitted Prior Art in light of TS 23.401.
The ’677 Admitted Prior Art (’677 APA) (Exhibit NSN677-1001)
177. Specifically, the ’677 APA is located in the ’677 Patent at 1:30–48
(describing figure 1), 2:3–51 (describing figure 2), 4:61–65 (describing the prior
art figures) & figs. 1–2. E.g., NSN677-1001, at 2:3–6 (“FIG. 2 is a flow chart of a
process that the UE is handed over or switched from a 3GPP network to a non-
3GPP network in the prior art. The process includes the following steps.”
NSN677-1003, page 86
(emphasis added)); NSN677-1001, at 4:61–65 (“FIG. 1 is a schematic structural
view of an evolution network system for a 3GPP network in the prior art; FIG. 2
is a flow chart of a process that the UE is handed over or switched from a 3GPP
network to a non-3GPP network in the prior art.” (emphasis added)).
178. Figure 2 is admitted to be “a flowchart of a process that the UE is
handed over or switched from a 3GPP network to a non-3GPP network in the
prior art.” NSN677-1001, at 2:3–6 (emphasis added). Figure 2 is reproduced
below:
NSN677-1001, at fig. 2.
NSN677-1003, page 87
179. The relevant steps to the claims of the ’677 Patent are steps 208 and
209.
180. Steps 201–207 describe the actual switching of the message flow from
3GPP (LTE) to non-3GPP (Wi-Fi). These steps occur before the steps in the claims
of the ’677 Patent. Therefore, by the time the procedure gets to step 208, the
mobile phone has left the 3GPP network and is attached to the Wi-Fi (non-3GPP)
access point. The figure accompanying paragraph 81 above shows the state of the
system architecture after step 207 has been performed. Steps 208 and 209 deal with
releasing the now-unused resources of the previously connected mobile phone in
the 3GPP network.
181. In step 208, “the PDN GW sends a delete bearer request message to
the serving GW, and the serving GW sends the delete bearer request message to
the MME.” NSN677-1001, at 2:45–47.
NSN677-1003, page 88
NSN677-1001, at fig. 2 (blue boxes added).
182. In step 209, “the MME deletes bearer resources related to the UE,
returns a delete bearer response message to the serving GW, and the serving GW
returns the delete bearer response message to the PDN GW.” NSN677-1001, at
2:48–51.
NSN677-1003, page 89
NSN677-1001, at fig. 2 (blue boxes added).
183. Thus, the only claim elements not disclosed in the ’677 APA are (1)
an information element indicating handover within the Delete Bearer Request
message, and (2) the detach solution of deleting the MM context. However, as
described above, these elements are disclosed in TS 23.401.
NSN677-1003, page 90
TS 23.401 V1.1.0 (Exhibit NSN677-1007)
184. TS 23.401 is discussed in Section IX.B above.
185. I downloaded TS 23.401 V1.1.0 from the 3GPP public e-mail
exploder list as an attachment to an e-mail sent by Gavin Wong. The e-mail and
attachment can be downloaded at the following location:
http://list.etsi.org/scripts/wa.exe?A2=ind0707&L=3GPP_TSG_SA_WG2&F=&S=&P=261969.
186. A screenshot of that e-mail is below, showing it was sent on Monday,
July 16, 2007.
187. The e-mail states that a copy of the updated TS 23.401, including the
agreed contributions from SA2#58, was attached. The Attendee list for SA2#58
NSN677-1003, page 91
confirms that numerous persons having ordinary skill in the art attended SA2#58,
including Weihua Hu, one of the inventors listed on the face of the ’677 Patent.
NSN677-1008, pg. 3. Thus, TS 23.401 was disclosed to numerous persons having
ordinary skill in the art when the e-mail was sent on July 16, 2007. NSN677-1004
¶30. Therefore I understand that TS 23.401 is prior art under § 102(b).
188. TS 23.401 discloses a series of detach procedures. First, TS 23.401
discloses a UE-initiated Detach Procedure. NSN677-1007, § 5.3.9.1, pgs. 44–45.
Second, TS 23.401 discloses an MME-initiated Detach Procedure. NSN677-1007,
§ 5.3.9.2, pgs. 45–46. Third, TS 23.401 discloses an HSS-Initiated Detach
Procedure. NSN677-1007, § 5.3.9.3, pgs. 46–47. In addition, TS 23.401 notes that
it was for further study (FFS) whether the PDN GW could initiate a detach
procedure. NSN677-1007, pg. 44 (“[I]t is FFS whether a PDN GW . . . may also
initiate a Detach procedure.”). The document also notes that “[t]hese [detach]
procedures should cover the case that detach is required because the UE [mobile
phone] is attached to a non-3GPP RAT,” and that the procedures “need to be
updated according to later con[c]lusions.” NSN677-1007, pg. 44. In other words,
the PDN GW-Initiated Detach procedure was contemplated as a detach option (and
proposed above by the CATT Submission) before the ’677 Patent, and the
standards body identified that the procedures would need to be updated.
NSN677-1003, page 92
189. At the time, the 3GPP standards body contemplated that the HSS-
Initiated Detach Procedure might be used during handover from 3GPP to non-
3GPP, but the issue was for further studies (FFS). NSN677-1007, pg. 46 (“It is
FFS, if the HSS initiates a detach procedure to update the subscriber’s MM context
at the MME and to delete the EPS bearer because that the UE[’s] accessing RAT is
changed from 3GPP to Non-3GPP.”). Ultimately, the 3GPP standards body chose
to use the PDN GW-initiated detach procedure for this purpose.
190. The two minor details that are the alleged point of novelty (see
discussion of ’677 Patent in Section VII.A above) are present in the HSS-Initiated
Detach Procedure disclosed in prior art reference TS 23.401. Patent Owner merely
copied and pasted the minor details into the procedure initiated by the PDN GW
(which was admitted to be in the prior art in the specification of the ’677 Patent
and was disclosed by the CATT Submission).
191. First, Patent Owner’s claim to an information element indicating
handover from 3GPP (LTE) to non-3GPP (Wi-Fi) was already present in TS
23.401:
NSN677-1003, page 93
1. If the HSS wants to request the immediate deletion of a subscriber’s
MM contexts9 and EPS Bearers, the HSS shall send a Cancel Location
(IMSI, Cancellation Type) message to the MME with Cancellation
Type set to Subscription Withdrawn.
It is FFS whether the Cancellation type can be set to “implicit detach
because of UE’s accessing RAT changed from 3GPP to Non-3GPP”.
NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
192. A person having ordinary skill in the art would have understood that
when the standards body says “FFS,” it means “for further study.” A POSITA
would have also understood that “Cancellation Type” is an information element.
See also NSN677-1018, at 21 (listing under “IE name” both “IMSI” and
“Cancellation Type”). A person having ordinary skill in the art would understand
that IE stands for information element.
9 Although this particular instance in the specification uses the term “MM
contexts” (plural), a person having ordinary skill in the art would have understood
that there can be only one MM context for each mobile phone stored at an MME
(or SGSN in a 3G network) at a time. See NSN677-1014 § 5.2.1.2, pg. 20 (“There
can be only one MM context per UE/MS [i.e., mobile phone] at a time . . . .”).
Further, I understand that the parties agree that an MM context stored at the mobile
phone is not at issue in these claims.
NSN677-1003, page 94
193. A person having ordinary skill in the art would have also understood
that an information element set to “implicit detach because UE’s accessing RAT
changed from 3GPP to Non-3GPP” is an information element that indicates
handover from 3GPP (LTE) to non-3GPP (Wi-Fi). Thus, while the standards body
had not yet implemented the option of setting the Cancellation Type information
element to this value in the context of a PDN GW-initiated detach procedure, the
idea to use an information element for this purpose—and the value of that
information element—was disclosed in the context of an HSS-initiated detach
procedure.
194. In addition, Patent Owner’s claim to detaching, by the MME, the UE
from the 3GPP network when all the bearer resources are deleted was already
disclosed in TS 23.401. Specifically, where the detaching step is construed as
“deleting, by the MME, an/the MM context of the UE,” (as the parties propose in
the district court litigation), TS 23.401 already disclosed this procedure:
1. If the HSS wants to request the immediate deletion of a
subscriber’s MM contexts and EPS Bearers, the HSS shall send a
Cancel Location (IMSI, Cancellation Type) message to the MME with
Cancellation Type set to Subscription Withdrawn.
NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
195. Therefore, regardless of whether Petitioners’ or Patent Owner’s claim
construction is adopted, the concept of deleting an/the MM context is disclosed in
NSN677-1003, page 95
TS 23.401. As noted above, the European Patent Office agreed with this
assessment in its Supplementary European Search Report. See NSN677-1002, pgs.
267–76; see also NSN677-1019, pg. 300 (finding that “detaching from a source
network (i.e. update/remove MM context and deleting the EPS bearers)” was
disclosed by TS 23.401).
196. Further, to the extent that the Board does not adopt either Petitioners’
or Patent Owner’s construction from the district court litigation and opts for a plain
and ordinary meaning, the broader concept of “detaching” was present in TS
23.401 as well. NSN677-1007, § 5.3.9.3 (describing an “HSS-initiated detach
procedure” and noting a PDN GW-initiated detach procedure was contemplated).
Motivation to Combine the ’677 APA with TS 23.401
197. A person of ordinary skill in the art would have been motivated to
combine the ’677 APA with TS 23.401. Both the ’677 APA and TS 23.401 deal
with a non-3GPP handover procedure and the resulting detach process.
198. A person having ordinary skill would have looked to TS 23.401 to
determine the infrastructure of the system and the instructions for a detach
procedure. TS 23.401 explicitly identified that the then-current detach procedures
“need to be updated” to “cover the case that detach is required because the UE
[mobile phone] is attached to a non-3GPP” access point. NSN677-1007, § 5.3.9,
pg. 44. With knowledge of the ’677 APA—which covers a large portion of the
NSN677-1003, page 96
update needed to cover the specific use case that was needed—a person having
ordinary skill in the art would have had a reasonable expectation of success
implementing the minor, already-agreed-upon details for non-3GPP handover
already contained and associated with the non-3GPP handover procedure in TS
23.401. Specifically, (1) the specific detaching solution of deleting the MM
context, (2) the information element to alert the MME to the reason for the detach,
and (3) the specific contents of that information element.
199. Further, such an ordinarily skilled person would have found it a
predictable and common sense implementation to use the specific solutions already
associated with non-3GPP handover in TS 23.401 with the message flow outlined
in the ’677 APA. TS 23.401 taught—in the same procedure that the standards-body
thought could be used for non-3GPP handover—the ideas of (1) the specific
solution of deleting the MM context during detach, (2) the specific solution of
including an information element containing the cause of the detach, and (3) the
specific contents of that information element. NSN677-1007, § 5.3.9.3, pg. 46.
Thus, a person having ordinary skill in the art would have had a reasonable
expectation of success in implementing these known ideas in the ’677 APA to
achieve a similar result.
200. Finally, one of ordinary skill in the art at the time of the alleged
invention would have been motivated to include the step of deleting the MM
NSN677-1003, page 97
context in the detach solution disclosed in the ’677 APA because doing so is one of
a finite number of identified, predictable solutions to the problem posed by TS
23.401; namely, that the detach procedures need to be updated to cover the use
case associated with non-3GPP access points. NSN677-1007, § 5.3.9, pg. 44. The
MM context can either be “deleted” or “not deleted” during a detach procedure.
The HSS-initiated process from TS 23.401 taught that the MM context should be
“deleted” and associated that idea with the non-3GPP handover process. NSN677-
1007, § 5.3.9.3, pg. 46. Thus, a person having ordinary skill in the art would have a
reasonable expectation of success in implementing the idea in the known prior art.
Reasons to Consider the ’677 APA with TS 23.401
201. Although both the ’677 APA and TS 23.401 were before the USPTO
examiner, the examiner never commented on either reference in combination.
202. Further, when Patent Owner discussed TS 23.401 in the Accelerated
Examination support document, I understand Patent Owner treated TS 23.401 as a
§ 102 anticipation reference. Therefore Patent Owner argued that “[i]ndependent
claim 1 is not anticipated by 3GPP TS [23.401] at least because 3GPP TS [23.401]
fails to disclose steps of: receiving, by a mobility management entity (MME) of the
3GPP network, a delete bearer request sent by a serving gateway (GW) of the
3GPP network which carries a cause information element (IE) . . .” NSN677-1002,
pg. 298.
NSN677-1003, page 98
203. However Petitioners are not arguing that the HSS-initiated detach
procedure from TS 23.401 disclosed the PDN GW-initiated detach procedure
message flow and, therefore, are not arguing that TS 23.401 disclosed the network
entities that would be sending and receiving the messages. Petitioners are arguing
that Patent Owner copied and pasted the minor details of the handover procedure
from TS 23.401—for example, using an information element indicating 3GPP to
Wi-Fi handover and deleting the MM context—into the correct PDN GW-initiated
detach procedure message flow disclosed in the ’677 APA.
204. At the time of the alleged invention, the standards body assumed the
HSS-initiated detach procedure would be the procedure used for 3GPP to non-
3GPP handover but acknowledged that the issue was “FFS,” or for further studies.
The standards body had worked out some of the minor details of that handover
procedure and temporary placed the agreed-upon details in the HSS-initiated
detach procedure in TS 23.401. Patent Owner merely took the already-agreed-upon
minor details from TS 23.401 and ported them into the previously disclosed PDN
GW-initiated approach shown in the ’677 APA.
Limitation-by-Limitation Obviousness Analysis
205. The following table provides a summary of the disclosed elements by
each prior art reference for Count 2.
NSN677-1003, page 99
Claim Elements Claim Numbering Exemplary Disclosure in PriorArt
Method forDetaching DuringHandover
1preamble, 2preamble3preamble
’677 APA
MobilityManagementNetwork Element
8preamble, 9preamble10preamble
’677 APA
MME ReceivingDelete BearerRequest Sent byPDN GW via SGW
1a, 8a, 10a, 3b, 3c ’677 APA
Cause InformationElement IndicatingHandover
1b, 8b TS 23.401
Setting Cause IE to“UE’s accessingRAT. . .”
2a, 3a, 9a, 10b TS 23.401
Deleting BearerResources
1c, 8c ’677 APA
Detaching the UEby Deleting MMContext
1d, 8d TS 23.401
Method for Detaching During Handover
1preamble: “A method for detaching a user equipment (UE) when a handoverfrom a 3rd generation partnership project (3GPP) network to a non-3GPPnetwork occurs, comprising:”
2preamble: “The method according to claim 1,”
3preamble: “The method according to claim 2, further comprising:”
206. To the extent the preamble is limiting, the ’677 APA discloses a
method for detaching a mobile phone (UE) when a handover from a 3rd generation
partnership project (3GPP) network to a non-3GPP network occurs.
NSN677-1003, page 100
207. For example, the ’677 APA states that “FIG. 2 is a flow chart of a
process that the UE is handed over or switched from a 3GPP network to a non-
3GPP network in the prior art.” NSN677-1001, at 2:3–6.
208. Thus, the ’677 APA discloses claim limitations 1preamble and
3preamble.
Mobility Management Network Element
8preamble: “A mobility management entity, configured to:”
9preamble: “The mobility management entity according to claim 8,”
10preamble: “The mobility management entity according to claim 9,”
209. The ’677 APA discloses a mobility management entity. A person of
ordinary skill in the art would have understood that a mobility management entity
is abbreviated MME and that the ’677 APA discloses an MME. Further, the ’677
APA discloses, in describing prior art Figure 1, “a mobility management entity
(MME), for mobility management of a control plane, including management of a
user context and a mobility state and allocation of temporary user identities.”
NSN677-1001, at 1:35–38.
210. Thus, the ’677 APA discloses claim limitation 8preamble, 9preamble
and 10preamble.
MME Receiving Delete Bearer Request Sent by PDN via SGW
1a: “receiving, by a mobility management entity (MME) of the 3GPPnetwork, a delete bearer request sent by a serving gateway (GW) of the 3GPPnetwork which carries a cause information element (IE),”
NSN677-1003, page 101
8a: “receive a delete bearer request sent by a serving gateway (GW) of a3GPP network when a handover from the 3GPP network to a non-3GPPnetwork occurs,”
3b: “sending, by the PDN GW, the delete bearer request message carrying thecause IE to the serving GW; and”
3c: “sending, by the serving GW, the delete bearer request message carryingthe cause IE to the MME.”
10a: “wherein the delete bearer request is sent from a packet data networkgateway to the mobility management entity via the serving gateway,”
211. The ’677 APA discloses the step of receiving, by a mobility
management entity (MME) of the 3GPP network a delete bearer request sent by a
serving gateway (GW) of the 3GPP network. The ’677 APA also discloses
sending, by the PDN GW the delete bearer request message to the serving GW. In
addition, the ’677 APA discloses sending, by the serving GW, that delete bearer
request message to the MME.
212. The Figure 2 message flow diagram shows a delete bearer request (1)
sent by a PDN GW to the serving GW, (2) received by the serving GW, (3) sent by
the serving GW to the MME, and (3) received by the MME.
NSN677-1003, page 102
NSN677-1001, at fig. 2 (blue boxes added).
213. In the corresponding description of the message flow diagram above,
the ’677 APA discloses that “the PDN GW sends a delete bearer request message
to the serving GW, and the serving GW sends the delete bearer request message to
the MME.” NSN677-1001, at 2:45–47.
NSN677-1003, page 103
214. The ’677 APA does not explicitly disclose that the delete bearer
request message would carry a cause information element. However, a person of
ordinary skill in the art at the time of the alleged invention would have understood
that a “cause” information element is added in some messages to represent the
cause value of a certain operation, which is a common technical means employed
in the art. NSN677-1002, pg. 258–59 (Partial Translation of First Chinese Office
Action of Chinese Application No. 200710137568.8) (“However, in the mobile
communication field, a “cause” IE is added in some messages to represent the
cause value of a certain operation, which is a common technical means.”).
215. The need to inform the MME about the cause of the detach was
known, and the need to implement the cause information element in the delete
bearer request message was obviously the solution. Indeed, TS 23.401 disclosed
that an information element was needed because different events occur depending
on what the value of the information element:
If the Cancellation type [information element] is set to “implicit
detach because of UE ‘s accessing RAT changed from 3GPP to
Non-3GPP”, after the PDN deletes the EPS Bearer, the PDN GW
should not release the UE’s PDP address of the Bearer. If the
Cancellation type [information element] is set to “Subscription
Withdrawn”, after the PDN deletes the EPS Bearer, the PDN GW
should release the UE’s PDP address of the Bearer and assign the PDP
address to other UE.
NSN677-1003, page 104
NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
216. A person having ordinary skill in the art would have understood that
there is no fundamental technical difference between the information element
shown in TS 23.401 and a “cause” information element.
217. Thus, claim limitations 1a, 3b, 3c, 8a, and 10a are disclosed by the
’677 APA and TS 23.401.
Cause Information Element Indicating Handover
1b: “wherein the cause IE indicates the UE handovers from the 3GPPnetwork to the non-3GPP network”
8b: “wherein the delete bearer request carries a cause information element(IE) which indicates a user equipment handovers from the 3GPP network tothe non-3GPP network”
218. A person having ordinary skill in the art would have understood that
TS 23.401 contains a cause information element that indicates that the mobile
phone (UE) is handing over from the 3GPP (LTE) network to the non-3GPP (Wi-
Fi) network.
219. TS 23.401 discloses that an information element indicating handover
is needed when the mobile phone hands over from 3GPP to non-3GPP and also
states the reason why this information element would be necessary (i.e., to keep the
address unchanged):
It is FFS, If the Cancellation type [information element] is set to
“implicit detach because of UE[’s] accessing RAT changed from
NSN677-1003, page 105
3GPP to Non-3GPP”, after the PDN deletes the EPS Bearer, the PDN
GW should not release the UE’s PDP address of the Bearer.
NSN677-1007 § 5.3.9.3, pg. 46 (emphasis added). A person having ordinary skill
in the art would have understood that there is no fundamental technical difference
between the information element shown in TS 23.401 and a “cause” information
element.
220. Thus, claim limitations 1b and 8b are met by TS 23.401.
Setting Cause IE to “UE’s accessing RAT . . .”
2a: “wherein the cause IE is set to ‘UE’s accessing RAT changed from a3GPP network to a non-3GPP network’.”
3a: “setting, by a packet data network gateway (PDN GW), the cause IE to‘UE’s accessing RAT changed from a 3GPP network to a non-3GPPnetwork’”;
9a: “wherein the cause IE is set to ‘UE’s accessing RAT changed from a3GPP network to a non-3GPP network’.”
10b: “wherein the cause IE is set to ‘UE’s accessing RAT changed from a3GPP network to a non-3GPP network’ by the packet data network gateway.”
221. TS 23.401 discloses these claim limitations as discussed in Section
IX.E.v.
222. TS 23.401 discloses setting a cause IE to “UE’s accessing RAT
changed from a 3GPP network to a non-3GPP network.”
223. The CATT Submission discloses a “cause” information element as
described above. TS 23.401 discloses the contents of that information element:
“UE’s accessing RAT changed from 3GPP to Non-3GPP.” NSN677-1007,
NSN677-1003, page 106
§ 5.3.9.3, pg. 46. A PHOSITA would understand that the known information
element in the CATT Submission would contain the language used in TS 23.401.
TS 23.401 explicitly states that in the HSS-initiated detach procedure it was FFS
whether the information element could be set to “UE’s accessing RAT changed
from 3GPP to Non-3GPP.” NSN677-1007, § 5.3.9.3, pg. 46 (emphasis added).
The concept was specifically disclosed, and it was merely a matter of choosing
whether and where to use it in the 3GPP specification. Ultimately, the information
element was implemented in the PDN GW-initiated procedure (disclosed by the
CATT Submission), but merely porting the already-agreed-upon minor detail about
what the information element would say into a previously disclosed PDN GW-
initiated detach procedure is not inventive.
224. A person having ordinary skill in the art would have understood that
the network entity sending the message would also be the network entity setting
the values of the information element in the message. In the HSS-initiated
procedure, the HSS would set the value, but in a PDN GW-initiated procedure, it
would have been common sense to a person of ordinary skill in the art that the
PDN GW would set the value. Further, a person having ordinary skill in the art
would have understood that there is no fundamental technical difference between
the information element shown in TS 23.401 and a “cause” information element.
NSN677-1003, page 107
225. Thus, claim limitations 2a, 3a, 9a, and 10b are disclosed by TS
23.401.
Deleting Bearer Resources
1c: “deleting, by the MME, bearer resources of the UE;”
8c: “delete bearer resources of the user equipment; and”
226. The ’677 APA discloses deleting, by the MME, the bearer resources
of the UE.
227. Simply put, the ’677 APA states, “[T]he MME deletes bearer
resources related to the UE.” NSN677-1001, at 2:48–49. The plain language of the
Patent Owner’s admission meets this claim element.
228. Thus, the ’677 APA discloses claim limitation 1c and 8c.
Detaching the UE by Deleting MM Context
1d: “detaching, by the MME, the UE from the 3GPP network when all thebearer resources of the UE are deleted.”
8d: “detach the UE from the 3GPP network when all the bearer resources ofthe UE are deleted.”
229. TS 23.401 discloses these claim limitations as discussed in Section
IX.E.vii.
230. Although the ’677 APA discloses a detaching solution (i.e., deleting
the network bearers), the ’677 APA does not disclose the specific detaching
solution contemplated by the ’677 Patent as proposed by both parties in the co-
pending district court litigation (i.e., deleting an/the MM context stored in the
NSN677-1003, page 108
MME). However, TS 23.401 discloses detaching (by deleting an/the MM context
stored at the MME), by the MME, the UE from the 3GPP network when all the
bearer resources of the UE are deleted.
231. TS 23.401 discloses a detach procedure. Step 1 of the HSS-initiated
detach procedure states, “If the HSS wants to request the immediate deletion of a
subscriber’s MM contexts and EPS Bearers, the HSS shall send a Cancel
Location (IMSI, Cancellation Type) message to the MME . . .” NSN677-1007
§ 5.3.9.3, pg. 46 (emphasis added). In this, a person of ordinary skill in the art
would have understood that the HSS is requesting the MME to delete the MM
context stored in the MME and that the MME executes that request (i.e., deletes
the MM context). However, I understand that Patent Owner may argue TS 23.401
does not disclose the precise timing of the deletion process (i.e., whether the MM
context is deleted when all the EPS bearers are deleted). NSN677-1002, pg. 22.
But all that the claim requires is that the MME delete the MM context “when all
the bearer resources of the UE are deleted.” NSN677-1001, cl. 1. Nevertheless, a
person of ordinary skill in the art would have understood that the MM context of a
mobile phone holds information about the mobile phone. That information is still
being used by the network up and until all the bearer resources have been released.
Therefore a person of ordinary skill in the art would have understood that the MM
context must be deleted when all the EPS bearers are deleted, not before.
232. Thus, TS 23.401 discloses claim limitations ld and 8d.
XI. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS
233. I have found no evidence of secondary considerations of
nonobviousness that outweigh my conclusion that the claims of the '677 Patent are
obvious. For example, the addition of an information element and the specific
detach procedure (i.e., deleting an/the MM context) has received no praise by
others. In addition, I have found no teaching away by others or skepticism by
experts. In fact, as described above, I have found that TS 23.401 teaches this exact
idea in a very similar context. Further, I have found no copying of the alleged
invention by others, no failure of others, and no indications of commercial success.
All of these findings lead me to conclude that there are no secondary
considerations of nonobviousness that outweigh my conclusion that the challenged
claims of the '677 Patent are obvious.
XII. CONCLUSION
234. 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.
Executed: January 20, 2017
NSN677-1003, page 109
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