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UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
NOKIA SOLUTIONS AND NETWORKS US LLC; AND
NOKIA SOLUTIONS AND NETWORKS OY,
Petitioners
v.
HUAWEI TECHNOLOGIES CO. LTD.,
Patent Owner
____________
Case: IPR2017-00658
U.S. Patent No. 8,537,779
____________
PETITION FOR INTER PARTES REVIEW
UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
Mail Stop PATENT BOARD
Patent Trial and Appeal Board
US Patent and Trademark Office
PO Box 1450
Alexandria, Virginia 22313-1450
i
TABLE OF CONTENTS
LIST OF EXHIBITS ................................................................................................ v
ACRONYM GLOSSARY ....................................................................................... x
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................ 1
A. REAL PARTY IN INTEREST ........................................................................ 1
B. RELATED MATTERS ................................................................................. 1
C. DESIGNATION OF COUNSEL ...................................................................... 1
D. SERVICE INFORMATION............................................................................ 2
II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ................. 2
III. PAYMENT OF FEES ................................................................................... 2
IV. OVERVIEW OF CHALLENGES AND RELIEF REQUESTED ............ 2
V. INTRODUCTION ......................................................................................... 4
VI. BACKGROUND OF THE TECHNOLOGY .............................................. 6
A. 3GPP ORGANIZATION.............................................................................. 6
B. THE 3G 3GPP PACKET-SWITCHED NETWORK ......................................... 7
C. THE ATTACH PROCEDURE AT THE TIME OF THE INVENTION ..................12
VII. THE ’779 PATENT .....................................................................................23
A. OVERVIEW OF THE ’779 PATENT ............................................................23
B. PURPORTED PROBLEM AND ALLEGED NOVELTY ...................................23
C. PROSECUTION HISTORY OF THE ’779 PATENT ........................................26
VIII. CLAIM CONSTRUCTION ........................................................................31
A. “OBTAINING UNIT,” “IDENTIFYING UNIT,” AND “PROCESSING UNIT” IN
CLAIM 11 ...............................................................................................31
B. “CREATE BEARER REQUEST MESSAGE” IN CLAIM 4...............................33
IX. PRIOR ART REFERENCES .....................................................................35
A. THE ’779 APA (NSN779-1002, AT 1019-40) ........................................37
B. SODERBACKA (NSN779-1007)..............................................................38
C. THE NOKIA SUBMISSION (NSN779-1008) .............................................39
ii
D. THE MOTOROLA SUBMISSION (NSN779-1009) .....................................40
X. INVALIDITY OF CLAIMS 1, 4 AND 9-11 OF THE ’779 PATENT ....40
A. COUNT 1: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35
U.S.C. § 103(A) OVER THE ’779 APA IN LIGHT OF SODERBACKA .........41
B. COUNT 2: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35
U.S.C. § 103(A) OVER THE ’779 APA IN LIGHT OF THE NOKIA
SUBMISSION ...........................................................................................54
C. COUNT 3: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35
U.S.C. § 103(A) OVER THE MOTOROLA SUBMISSION IN LIGHT OF THE
NOKIA SUBMISSION ...............................................................................62
D. COUNT 4: CLAIMS 1, 4, AND 9-11 ARE UNPATENTABLE UNDER 35
U.S.C. § 103(A) OVER THE MOTOROLA SUBMISSION IN LIGHT OF
SODERBACKA ........................................................................................74
E. THE GROUNDS ARE NOT REDUNDANT ..................................................78
XI. CONCLUSION ............................................................................................79
iii
TABLE OF AUTHORITIES
Page(s)
CASES
Cassidian Commc’ns, Inc. v. MicroDATA GIS, Inc.,
No. 2:12-CV-162-JRG, D.I. 71 (E.D. Tex. June 20, 2013) ................................ 34
Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560 (Fed. Cir. 1988) .......................................................................... 38
Huawei Technologies Co., Ltd. v. T-Mobile US, Inc. and T-Mobile
USA, Inc.,
Case No. 2:16-cv-0056 (E.D. Tex. Jan. 15, 2016) ............................................... 1
In re NTP,
654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 38
Lextron Sys., Inc. v. Microsoft Corp.,
No. C-04-0588 VRW, D.I. 74 (N.D. Cal. June 1, 2005) .................................... 34
LG Elecs. v. Core Wireless Licensing S.A.R.L.,
IPR2015-01988, Paper 7 (PTAB Apr. 1, 2016) ................................................. 36
Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
CBM2012-00003, Paper 7 (PTAB Oct. 25, 2012) ....................................... 78, 79
PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 38
Tokyo Keiso Co., v. SMC Corp.,
307 F. App’x 446 (Fed. Cir. 2009) ..................................................................... 38
STATUTES
35 U.S.C. § 102 .................................................................................................. 35, 38
35 U.S.C. § 103(a) ............................................................................................passim
35 U.S.C. § 365(c) ................................................................................................... 35
iv
OTHER AUTHORITIES
37 C.F.R. § 42.8 ......................................................................................................... 1
37 C.F.R § 42.10(b) ................................................................................................... 1
37 C.F.R. § 42.15(a) ................................................................................................... 2
37 C.F.R. § 42.22(a)(1) .............................................................................................. 2
37 C.F.R. § 42.100(b) .............................................................................................. 31
37 C.F.R. § 42.104(a) ................................................................................................. 2
37 C.F.R. § 42.104(b)(1)-(2) ...................................................................................... 2
77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) ......................................................... 31
77 Fed. Reg. 48,766 (Aug. 14, 2012)....................................................................... 32
v
LIST OF EXHIBITS
Exhibit Short Name Description
NSN779-1001 ’779 Patent U.S. Patent No. 8,537,779
NSN779-1002
’779
Application File
History
File History of U.S. Patent No. 8,537,779
(Appl. No. 12/581,575)
NSN779-1003 Lanning
Declaration
Declaration of Mark R. Lanning under 37
C.F.R. § 1.68
NSN779-1004 Bertenyi
Declaration
Declaration of Balazs Bertenyi under 37
C.F.R. § 1.68
NSN779-1005 Newton’s
Dictionary
Newton’s Telecom Dictionary (18th ed.
2002)
NSN779-1006
Patent Owner’s
District Court
Complaint
Huawei Techs. Co. Ltd. v. T-Mobile US, Inc.,
2:16-cv-00052, D.I. 1 (E.D. Tex. Jan. 15,
2016)
NSN779-1007 Soderbacka
U.S. Printed Patent Application Number US
2003/0114158 to inventors Lauri Soderbacka,
Jarmo Virtanen, Kari Kauranen, Hannu
Hietalahti, Jari Liukkonen, and Antti
Pitkamaki, titled “Intersystem Handover of a
Mobile Terminal”
NSN779-1008 Nokia
Submission
3GPP TSG-SA2 Meeting #57, TDoc S2-
072255, GPRS functionality for IMS
emergency services support, submitted by
Nokia Siemens Networks and Nokia,
available as “S2-072255.zip” at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_57_Beijing/Docs/ (uploaded 4/27/2007
at 9:29 AM)
vi
Exhibit Short Name Description
NSN779-1009 Motorola
Submission
3GPP TSG SA WG2 Architecture – S2#57,
TDoc S2-072252, Handover from non-3GPP
Access to E-UTRAN (TS 23.402), submitted
by Motorola, available as “S2-072252.zip” at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_57_Beijing/Docs/ (uploaded 4/27/2007
at 9:28 AM)
NSN779-1010 S2#57 Meeting
Report
3GPP TSG SA WG2 Architecture—S2#57,
Report of SA WG2 meeting #57 (April 23-27,
2007), available as
“Approved_Report_v100_SA2_57.zip” at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_57_Beijing/Report/ (uploaded
6/23/2009)
NSN779-1011 S2#57 Attendee
List
List of Registered Attendees, Meeting
SA2#57, available at
http://webapp.etsi.org/3GPPRegistration/fVie
wPart.asp?mid=26044 (last accessed
1/9/2017)
NSN779-1012 Huawei
Submission
3GPP TSG SA WG2 Architecture – S2#58,
TDoc S2-072558, Attach Type in attach
procedure, submitted by Huawei, available as
“S2-072558.zip” at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_58_Orlando/Docs/ (uploaded
6/19/2007 at 12:59 PM)
vii
Exhibit Short Name Description
NSN779-1013 Nokia-Huawei
Submission
3GPP TSG SA WG2 Meeting #61, TDoc S2-
075847, Principle of differentiating Initial
Attach and Handover Attach to EPS via LTE
or non-3GPP IP Access, submitted by Nokia
Siemens Networks, Nokia, and Huawei,
available as “S2-075847.zip” at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_61_Ljubljana/Docs/ (uploaded
11/16/2007 at 4:17 PM)
NSN779-1014 Ericsson
Submission
3GPP TSG SA WG2 Architecture –S2#57,
TDoc S2-071738, GW selection for LTE and
non-3GPP accesses, submitted by Ericsson,
available as “S2-071738.zip” at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_57_Beijing/Docs/ (uploaded 4/18/2007
at 1:33 PM)
NSN779-1015 About 3GPP
About 3GPP Home, 3GPP: A Global
Initiative, available at
http://www.3gpp.org/about-3gpp/about-3gpp
(last accessed 1/10/2017)
NSN779-1016
3GPP
Delegates’
Corner
Delegates Corner, 3GPP: A Global Initiative,
available at
http://www.3gpp.org/specifications-
groups/delegates-corner (last accessed
1/10/2017)
NSN779-1017 3GPP FAQ
3GPP FAQs, 3GPP: A Global Initiative,
available at
http://www.3gpp.org/contact/3gpp-faqs (last
accessed 1/10/2017)
viii
Exhibit Short Name Description
NSN779-1018 S2#57
Document List
3GPP Public FTP File Server TSG S2#57
Document List, available at
http://www.3gpp.org/ftp/tsg_sa/WG2_Arch/T
SGS2_57_Beijing/Docs/ (last accessed
1/9/2017)
NSN779-1019 TS 23.060
3GPP TS 23.060 V4.6.0 (2002-09), 3rd
Generation Partnership Project; Technical
Specification Group Services and System
Aspects; GPRS Service description Stage 2
(Release 4), available at
https://portal.3gpp.org/desktopmodules/Speci
fications/SpecificationDetails.aspx?specificati
onId=758 (uploaded on 10/02/2002)
NSN779-1020 * * * European File History of International
Application Number PCT/CN2008/070909
NSN779-1021 TS 23.401
3GPP TS 23.401 V0.4.1 (2007-04), 3rd
Generation Partnership Project; Technical
Specification Group Services and System
Aspects; GPRS enhancements for E-UTRAN
access (Release 8), available at
https://portal.3gpp.org/desktopmodules/Speci
fications/SpecificationDetails.aspx?specificati
onId=849# (uploaded on 4/16/2007)
NSN779-1023
Joint Claim
Construction
Chart
Joint Claim Construction Chart, Huawei
Techs. Co. Ltd. v. T-Mobile US, Inc., 2:16-cv-
00056, D.I. 110 (E.D. Tex. Dec. 08, 2016)
NSN779-1024 Lanning CV Curriculum Vitae of Mark R. Lanning
ix
Exhibit Short Name Description
NSN779-1025
Cassidian Claim
Construction
Order
Cassidian Commc’ns, Inc. v. MicroDATA
GIS, Inc., No. 2:12-CV-162-JRG, Paper 71,
(E.D. Tex. June 20, 2013)
NSN779-1026
Lextron Claim
Construction
Order
Lextron Sys., Inc. v. Microsoft Corp., No. C-
04-0588 VRW, Paper 74, at 15 (N.D. Cal.
June 1, 2005)
NSN779-1027 TS 24.008
3GPP TS 24.008 V7.7.0 (2007-03), 3rd
Generation Partnership Project; Technical
Specification Group Core Network and
Terminals; Mobile radio interface Layer 3
specification; Core network protocols’ Stage
3 (Release 7), available at
https://portal.3gpp.org/desktopmodules/Speci
fications/SpecificationDetails.aspx?specificati
onId=1015 (uploaded 3/20/2007)
NSN779-1050 TR 21.900
3GPP TS 21.900 V6.0.0 (2003-09), 3rd
Generation Partnership Project; Technical
Specification Group Services and System
Aspects; Technical Specification Group
working methods (Release 5) available at
https://portal.3gpp.org/desktopmodules/Speci
fications/SpecificationDetails.aspx?specificati
onId=555 (uploaded 9/26/2003)
x
ACRONYM GLOSSARY
Acronym Term
3GPP 3rd Generation Partnership Project
2G Second Generation
3G Third Generation
4G Fourth Generation
AAA Authentication, Authorization, and Accounting
eNB Evolved NodeB
ePDG Evolved Packet Data Gateway
GGSN Gateway GPRS Support Node
GPRS General Packet Radio Service
HLR Home Location Register
HSS Home Subscriber Server
LTE Long Term Evolution
NB NodeB
PCRF Policy and Charging Rules Function
PDN Packet Data Network
PDN GW Packet Data Network Gateway
PDP Packet Data Protocol
POSITA Person of Ordinary Skill in the Art
PSTN Public Switched Telephone Network
RAB Radio Access Bearer
xi
Acronym Term
RAN Radio Access Network
RAT Radio Access Technology
RNC Radio Network Controller
S-GW Serving Gateway
SGSN Serving GPRS Support Node
UE User Equipment
UMTS Universal Mobile Telecommunications System
- 1 -
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
A. Real Party in Interest
The real party in interest for Petitioners are (1) Nokia Solutions and Networks
US LLC, (2) Nokia Solutions and Networks Oy (“NSN” or “Petitioners”), (3) T-
Mobile USA, Inc. and (4) T-Mobile US, Inc.
B. Related Matters
The ’779 Patent is at issue in Huawei Technologies Co., Ltd. v. T-Mobile US,
Inc. and T-Mobile USA, Inc., Case No. 2:16-cv-0056 (E.D. Tex. Jan. 15, 2016). On
June 10, 2016, NSN filed a motion to intervene, which was granted by the district
court on June 14, 2016.
In that matter, Patent Owner also asserts, inter alia, U.S. Patent Nos.
8,638,750 and 8,031,677. The ’779 Patent is not related to either of these two patents.
Petitioners are concurrently filing a petition for an inter partes review challenging
certain claims of U.S. Patent No. 8,031,677.
C. Designation of Counsel
Lead counsel is S. Benjamin Pleune (Reg. No. 52,421) and backup counsel
are John D. Haynes (Reg. No. 44,754) and Michael C. Deane (Reg. No. 70,389) each
of Alston & Bird LLP, 101 S. Tryon Street, Suite 4000, Charlotte, NC 28280, Tel:
704.444.1098, Fax: 704.444.1935. Pursuant to 37 C.F.R § 42.10(b), Powers of
Attorney are being submitted with this Petition.
- 2 -
D. Service Information
Petitioners consent to electronic service directed to [email protected]
and [email protected].
II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
Petitioners certify that U.S. Patent No. 8,537,779 (“the ’779 Patent”) is
available for inter partes review (“IPR”) and that Petitioners are not barred or
estopped from requesting an IPR challenging Claims 1, 4 and 9-11 (“the Challenged
Claims”) on the grounds identified herein.
III. PAYMENT OF FEES
Petitioners authorize the Patent Office to charge Deposit Account No. 16-
0605 for the Petition fee set forth in 37 C.F.R. § 42.15(a) and for any additional fees.
IV. OVERVIEW OF CHALLENGES AND RELIEF REQUESTED
Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioners request
cancellation of Claims 1, 4, and 9-11 in the ’779 Patent on the following grounds:
Count 1: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over the Admitted Prior Art (“the ’779 APA”) in view of U.S. Patent Application
US 2003/0114158 to Soderbacka et al. (“Soderbacka”).
Count 2: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over the Admitted Prior Art (“the ’779 APA”) in view of S2-072255 (“the Nokia
Submission”).
- 3 -
Count 3: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over S2-072252 (“the Motorola Submission”) in view of S2-072255 (“the Nokia
Submission”).
Count 4: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C. § 103(a)
over S2-072252 (“the Motorola Submission”) in view of U.S. Patent Application US
2003/0114158 to Soderbacka et al. (“Soderbacka”).
- 4 -
V. INTRODUCTION
The alleged invention of U.S. Patent No. 8,537,779 (“the ’779 Patent”) is
simply “a specific parameter sent within a known message, within a known system.
The parameter capitalizes on an obvious consequence of gradual changes being
made during the standardization process.” NSN779-1003, ¶92. Ultimately, the ’779
Patent claims functionality that “was taught in Computer Communications 101.”
NSN779-1003, ¶39.
The ’779 Patent is directed to a method of distinguishing an “Attach Request”
message during handover in a 3GPP LTE data network that uses a non-3GPP (e.g.,
Wi-Fi) access point. As explained in greater detail below (and in the admitted prior
art), the concept of handover from a non-3GPP access point (such as a Wi-Fi router)
to a 3GPP base station (such as a cell phone tower) was a known procedure. At the
time of the alleged invention, the 3GPP standards body had already defined the
foundational aspects of the procedure. Indeed, the 3GPP standards body had already
decided that the procedure would closely mirror an “initial” Attach procedure—that
is, the Attach procedure conducted when a mobile phone first joins the network.
However, the 3GPP standards body had not yet defined some of the minor, routine
details, for example, how the network would distinguish an Attach Request message
caused by an “initial” Attach from an Attach Request message caused by a
“handover” Attach.
- 5 -
The Patent Owner’s purported invention was to use a data field (i.e.,
information element (IE)) in the Attach Request message to distinguish the “initial”
Attach Request message from the “handover” Attach Request message. For
example, the ’779 Patent discloses that an “Attach Type” information element might
be set to “0” for an “initial” Attach and set to “1” for a “handover” Attach. NSN779-
1001, at 6:37-44. The admitted prior art shows that this information element was the
only purportedly novel part of the Patent Owner’s claims.
At the time of the ’779 Patent, the use of an information element to distinguish
the purpose of an Attach Request message was a long-existing principle. In fact, the
same Attach Type information element had long been a part of the prior generation
(3G) Attach Request message, where it was used to indicate which type of attach
should be performed. Foreseeing that the standards body might simply carry the
long-existing information element from the 3G Attach Request message into the next
generation (4G) Attach Request message, the Patent Owner filed Chinese
applications covering this obvious detail and, eventually, turned those applications
into the ’779 Patent.
Petitioners respectfully request institution of inter partes review of Claims 1,
4, and 9-11 of the ’779 Patent because the patent examiner never had the opportunity
to contemporaneously review the most relevant prior art (Soderbacka) in connection
with the prior art that Patent Owner admitted was in the existing protocol. During
- 6 -
prosecution of the ’779 Patent, Patent Owner did not submit the admitted prior art
(by way of a translation) until years after the patent examiner signed off on the most
relevant references. Therefore, the examiner could not have fully appreciated the
trivial and routine nature of the ’779 Patent’s purported novelty. The examiner also
did not have the benefit of either of the additional references relied on in this Petition
(the Nokia Submission and the Motorola Submission), or the testimony of Mark
Lanning.
VI. BACKGROUND OF THE TECHNOLOGY
The ’779 Patent is closely related to the Patent Owner’s work involving
modifications to 3GPP’s 4G LTE standard. NSN779-1003, ¶41. For example, the
face of the ’779 Patent cites various 3GPP 4G LTE specifications, and Patent
Owner’s complaint in the co-pending district court litigation references Patent
Owner’s involvement in the development of 3GPP standards in support of its
allegations. NSN779-1006, ¶¶7-9. Therefore a brief discussion about 3GPP is
warranted.
A. 3GPP Organization
The 3rd Generation Partnership Project (“3GPP”) is a standards-setting
organization NSN779-1003, ¶42. As cellular telecommunications technology
developed in the late 1980s, network operators began to realize that standardization
was necessary to ensure compatibility of equipment provided by multiple suppliers.
- 7 -
Id. 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 systems Id.
The development of specifications by 3GPP is an ongoing, collaborative effort
involving hundreds of engineers from many companies. NSN779-1003, ¶45.
Members of the various 3GPP working groups submit written contributions and
discussion documents. Id. 3GPP stores and controls all of these documents
electronically and retains them on the public 3GPP server indefinitely. Id.; see also
NSN779-1016, at 2-3; NSN779-1004, ¶21
B. The 3G 3GPP Packet-Switched Network
3GPP originally developed and maintained the Universal Mobile
Telecommunications System (“UMTS”) 3G cellular network. NSN779-1003, ¶50.
Starting in the mid-2000s, however, 3GPP began developing its Long Term
Evolution (“LTE”) 4G cellular network. Id. ¶58. The relevant technology for the
purported invention of the ’779 Patent relates to modifications to the 4G LTE cellular
network. Id. ¶41.
To appreciate the routine nature of the purported novelty of the ’779 Patent,
it is helpful to trace 3GPP’s network evolution to the 4G LTE architecture.
3GPP UMTS Network Architecture—Early releases of the 3GPP standards
created a network that could only offer voice calls to landline phones or other mobile
- 8 -
phones. NSN779-1003, ¶49. This network was commonly called the 2G network. Id.
Given that these early 2G networks only supported voice calls, the 2G network only
needed a circuit-switched core network. Id.
However, 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. Id. ¶50. These services required transferring data to and from
subscribers in small chunks called packets. Id. Therefore, 3GPP added a packet-
switched core network. Id.
The 3G packet-switched core network transferred data packets between User
Equipment (UE) (e.g., a mobile phone) and a Packet Data Network (PDN) (e.g., the
Internet). Id. ¶53.
A basic feature of any packet-switched network is the use of intermediate
nodes to route data packets from source to destination. NSN779-1003, ¶52-53. To
create a connection (i.e., a bearer) between the nodes, the 3G UMTS network used
a Packet Data Protocol (PDP) Context between the User Equipment (UE) (e.g., a
mobile phone) and the network nodes in order to transfer the data packets. Id. A
simplified diagram of the logical architecture for the 3G nodes contained within the
packet-switched core network appears below:
- 9 -
NSN779-1003, ¶52. In the 3G UMTS architecture, User Equipment (UE) (e.g., a
mobile phone) uses a wireless radio connection to connect to a mobile phone tower,
commonly referred to in the art as a NodeB (NB). Id. ¶53. The NB typically uses a
wired connection to connect to a Radio Network Controller (RNC). Id. Generally,
several NBs are connected to a given RNC. Id. The RNC is connected using a wired
connection to a nearby Serving GPRS Support Node (SGSN), which retrieves
subscriber information from the Home Location Register (HLR) database. Id. Based
on this information and the user’s desired packet data service (e.g., e-mail, Internet
connection, etc.), the SGSN selected a Gateway GPRS Support Node (GGSN). Id.
In a 3G packet-switched network, the bearer (i.e., connection) from mobile phone to
GGSN is referred to as a specific PDP context, and once the PDP context (i.e.,
connection) was established the mobile phone could send and receive data to and
from the service. Id.
- 10 -
To route packets between a mobile phone and the PDN, the 3G architecture
required the SGSN to perform both control-plane and user-plane functions. Id. ¶54.
The 3G Network Shortcomings—In a 3G network, the SGSN is the main
control element. NSN779-1003, ¶55. When initially establishing a PDP context (i.e.,
at “attach”), the SGSN is responsible for “control-plane functions,” such as selecting
a GGSN and performing mobility management (commonly called “handover”). Id.
However, once the PDP context is established, the SGSN is also responsible for
maintaining the connection from the mobile phone to the PDN (Internet). Id. These
are known as “user-plane functions.”
However, this dual-role configuration can create a bottleneck when many
mobile phones were connected to the same SGSN requiring data packet connections.
NSN779-1003, ¶57. Essentially, the SGSN can become too busy with user-plane
messaging and not have sufficient processing power or memory to devote to control-
plane messaging. Id. Stated differently, because the SGSN is tasked with performing
both control-plane and user-plane functions, the SGSN could not be optimized for
either. Id. So in Release 8, the 3GPP standards body decided to define a new
architecture for the packet-switched domain that separated the network equipment
that would be responsible for control- and user-plane messaging. Id. That new
architecture is commonly referred to today as a 4G Long Term Evolution (LTE)
network. Id.
- 11 -
At the time of the ’779 Patent, the 3GPP standards body was in the process of
evolving the 3G UMTS network into the 4G LTE network. Id. ¶58.
3GPP 4G LTE Architecture at the Time of the Invention—The 4G network
was, among other things, designed to improve efficiency and speed by separating
the user-plane and the control-plane functions into two new network elements: (1)
the Serving Gateway (S-GW), which handled the user-plane, and (2) the Mobility
Management Entity (MME), which handled the control-plane. NSN779-1003, ¶58.
A simplified representation of this new evolved 4G architecture appears below:
Id.
In addition, the new 4G LTE network also allowed a mobile phone to access
the packet-switched core network through a non-3GPP (e.g., Wi-Fi) access point,
such as a Wi-Fi router. Id. ¶59. A simplified version of the logical architecture for a
4G packet-switched core network where the mobile phone is connected through a
Wi-Fi (non-3GPP) access point appears below:
- 12 -
Id.
C. The Attach Procedure at the Time of the Invention
Before a mobile phone can use the data services of a 2G, 3G, or 4G cellular
network, it must first successfully establish a connection with the network. NSN779-
1003, ¶63. While the specific steps of this process differ for each generation of
network, the concepts and objectives are the same—to perform the necessary tasks
to get a connection between the mobile phone and the cellular network. Id. This
long-existing procedure is called the “Attach” procedure. Id. An explanation of the
3G and 4G Attach procedures will help show the trivial and routine nature of the
purported invention and show that the concepts had been used in prior generation
networks.
3G UMTS Initial Attach Procedure—The 3G UMTS “initial” Attach
procedure is used to connect the mobile phone to the 3G network. This procedure is
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contained in specification TS 23.060 § 6.5 (NSN779-1019). See also NSN779-1003,
¶¶66-72. In the first part of the 3G UMTS Attach procedure, the mobile phone sends
an Attach Request message to a NB, which routes the Attach Request to the SGSN
through the RNC (depicted with reference to the system architecture below).
NSN779-1003, ¶67.
In the 3G UMTS procedure, the Attach Request message contained an
information element called “Attach Type” that “indicates which type of attach is to
be performed.” Id.; NSN779-1019, at 48. The SGSN receives the Attach Request
message with the information element and identifies the contents of the information
element in that message. NSN779-1003, ¶67.
Id. 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. Id. ¶68;
NSN779-1005, at 4.
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In the second part of the procedure, the SGSN uses information provided by
the mobile phone to select a GGSN (similar to a PDN GW in the 4G network) that
the mobile phone will use to connect to the Internet (i.e., PDN). NSN779-1003, ¶69.
Id.
After the SGSN selects the GGSN, the SGSN sends an Activate PDP Context
Request message to the selected GGSN to create a PDP context (also known as a
“bearer”). Id. ¶70.
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Id.
Once the GGSN receives the message requesting that a bearer (i.e.,
connection) be created, the network, in turn, creates the bearer that will allow the
mobile phone to access the Internet and other services. Id. ¶71.
Id.
The bearer (connection) allows the mobile phone to communicate with the
network and, ultimately, the PDN to receive e-mail and Internet service. Id. ¶72.
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Id.
The Two 4G Attach Procedures at the Time of the Invention—At the time
of the alleged invention, the 3GPP standards body had defined the foundational
aspects for two different 4G LTE Attach procedures. The first Attach procedure,
similarly called “initial” Attach, was to be used when the mobile phone had no
presence in the network (for example, when the mobile phone was being turned on
for the first time). NSN779-1003, ¶73. The second Attach procedure, called
“handover” Attach, was to be used when the mobile phone had a connection to the
network through a Wi-Fi access point but wanted to handover the connection to a
3GPP base station (for example, when the phone was moving out of range of a Wi-
Fi router). Id. ¶79. The following aspects of the two procedures were all known
before the priority date of the ’779 Patent. See NSN779-1003, ¶¶73-79.
Both Attach procedures start with the same first step as the 3G Attach
procedure: The mobile phone sends an Attach Request message to the network
element in charge of the control-plane functions, which in the 4G LTE network is
the MME (see the two figures below). NSN779-1003, ¶¶74 & 83.
As can be seen in the simplified diagrams below, the only difference between
the 4G “initial” Attach procedure and the 4G “handover” procedure at this step is
that the mobile phone in the “handover” Attach procedure also has a pre-existing
connection through the Wi-Fi access point (which is what it seeks to handover):
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Given that the rest of the limitations of the claims of the ’779 Patent focus on
the “handover” Attach procedure, an explanation of those steps is below.
The “Handover” 4G Attach Procedures at the Time of the Invention—The
Patent Owner admitted in the Chinese priority application (and in Figure 2 of that
application) that the steps below were admitted prior art:
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First, as noted above, the MME receives an Attach Request message from the
mobile phone. NSN779-1003, ¶83.
Id.
Second, the MME selects a PDN GW. Id. ¶84. In the “handover” Attach
procedure, the MME needs to ensure that it re-selects the PDN GW that the mobile
phone is connected to using the Wi-Fi access point (see blue box below). Id. The
PDN GW in the blue box below acts as the anchor when the message flows are
switched during handover. Id.
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Id.
To re-select the PDN GW that the mobile phone (UE) is connected to through
the Wi-Fi access point, the MME contacts the Home Subscriber Server (HSS) to
obtain the PDN GW address that the mobile phone is connected to through the Wi-
Fi access point. Id. ¶85. The HSS stores this PDN GW address when the mobile
phone is connected through a Wi-Fi access point. Id. ¶84.
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Id.
Once the MME re-selects the PDN GW, the MME sends a message to the
PDN GW asking the network to create a bearer (i.e., connection). Id. ¶86. Given that
there is no direct interface between the MME and the PDN GW, the request is routed
through the Serving GW. Id.
Id.
Once the PDN GW receives the message requesting that a bearer (i.e.,
connection) be created, the PDN GW, in turn, creates the bearer that will allow the
mobile phone to access the Internet and other services. Id. ¶87.
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Id.
Using the re-selected PDN GW as the anchor and the newly created bearer
(connection) as the communication path, the network switches the message flow so
that the mobile phone can now communicate through the 3GPP base station (cell
phone tower) along the newly created bearer. Id. ¶88.
Id.
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Given that the “handover” Attach procedure closely mirrors the “initial”
Attach procedure and that both procedures use an Attach Request message with the
same structure (see figures showing both above), the network needs to distinguish
between situations (1) where the mobile phone is requesting an “initial” Attach, and
(2) where the mobile phone is requesting a “handover” Attach. Otherwise, the MME
might not select the correct PDN GW. Id. ¶89.
The minor detail implementing the mechanism that would be used to
distinguish the two Attach Request messages had not been implemented by the 3GPP
standards body when Patent Owner filed its Chinese priority application. The
Chinese priority application (and the ’779 Patent claims) cover the most basic and
obvious methods for doing so. Id.
However, the need for this minor detail was already recognized by other
participants in the 3GPP standards committee before the time of Patent Owner’s
patent application. Id. ¶90. Indeed, Ericsson stated: “There are two main cases for
selecting a GW (both PDN GW and Serving GW): [1] Initial GW selection, i.e.,
selecting a new GW for a UE. This typically happens when the UE attaches to the
system. [2] Maintain the selected GW during handovers between 3GPP access and
non-3GPP access.” NSN779-1014, at 1 (second emphasis added).
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VII. THE ’779 PATENT
A. Overview of the ’779 Patent
The ’779 Patent discloses the long-existing principle of placing an
information element in an Attach Request message to distinguish the reason for the
Attach Request message. Using the information element, the network could
distinguish (1) the Attach Request message caused by a “handover” Attach, from (2)
the Attach Request message cause by an “initial” Attach.
B. Purported Problem and Alleged Novelty
The earliest filed Chinese priority application succinctly states the problem
purportedly solved by the ’779 Patent. The application states, “[A]fter receiving the
Attach Request message . . . sent by the UE [i.e., mobile phone], the network side
needs to know whether the normal Attach . . . procedure or the Attach . . . procedure
caused by the handover is initiated. However, the existing mechanism cannot
distinguish them.” NSN779-1002, at 1027.
To actually make this purported distinction, the ’779 Patent ultimately claims
“an attach request message . . . wherein the attach request messages comprises an
information element (IE) indicating handover.” NSN779-1001, cl. 1. An
“information element” is nothing more than the name for a data field inside of a
message. NSN779-1005, at 4.
Moreover, the ’779 Patent specification gives more detail about this
“information element.” The ’779 Patent specification states that an “Attach Type IE
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[information element] is added in the Attach Request message.” NSN779-1001 6:37-
38. But further, as shown below and described above, this same “Attach Type”
information element was already being used in the 3G network, in the same message,
to “indicate[] which type of attach is to be performed.” NSN779-1016, at 48; see
also NSN779-1003, ¶94.
Id.
Essentially, the ’779 Patent claims the difference (highlighted in yellow) in
the “Before” and “After” procedures depicted below:
NSN779-1003, ¶93.
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This same purported novelty can be represented in “Before” and “After”
diagrams of the system architecture as well:
BEFORE THE ’779 PATENT
AFTER THE ’779 PATENT
NSN779-1003, ¶92.
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C. Prosecution History of the ’779 Patent
The ’779 Patent claims priority to four Chinese applications, the earliest one
filed May 11, 2007. NSN779-1001, at [30]. In addition, the ’779 Patent is a
continuation of Chinese PCT Application PCT/CN2008/070909, filed May 8, 2008.
Id. at [63]. The application for the ’779 Patent was filed on October 19, 2009. Id. at
[22].
During the prosecution of the original Chinese PCT Application, the
International Searching Authority concluded that certain claims lacked novelty and
an inventive step. NSN779-1002, at 349. A certified copy of the European file
history for PCT Application PCT/CN2008/070909—showing the original claims
that were rejected by the International Searching Authority—is attached to this
Petition as Exhibit NSN779-1020.
One of the references the International Searching Authority used to reach this
conclusion—CN1605222 A to Nokia Corp.—is a family member to U.S. Patent
Application US 2003/0114158 to Soderbacka et al. (hereinafter, “Soderbacka”). The
Written Opinion stated that numerous claims of PCT/CN2008/070909 were
explicitly disclosed by CN1605222. NSN779-1002, at 349-50. Of importance here,
the Written Opinion stated: “The appendant features of claim 34 and 35 are explicitly
disclosed” in CN1605222. Id. at 350. At the time, claim 34 recited a series of
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messages, including an Attach Request message, containing “processing type
information in a IE.” NSN779-1020, at 318.
In other words, the International Searching Authority believed that the
Chinese counterpart to the Soderbacka reference disclosed including “processing
type information in a IE” of various messages. NSN779-1003, ¶104. An IE is
shorthand for an “information element,” and processing type referred to “initial” or
“handover” type processing. Id. As is discussed in more detail below, the U.S.
version of Soderbacka contained the same disclosure.
USPTO Examination—On October 19, 2009, Patent Owner filed a
continuation of its Chinese PCT in the United States. Viewed as a whole, the
prosecution history demonstrates two key points: First, the U.S. examiner did not
contemporaneously review Soderbacka in connection with the ’779 Admitted Prior
Art. Second, Patent Owner continually distinguished the prior art using the claim
element that the International Searching Authority said was explicitly disclosed in
Soderbacka.
To the first point, when Patent Owner filed its U.S. Application, it omitted all
references to the prior art handover procedure described in the earliest filed Chinese
priority application. Indeed, it omitted prior art Figure 2 altogether. This is
significant. While the claims of the ’779 Patent are narrower than claim 34 described
above, the narrowing limitations were all admitted to be prior art in the earliest filed
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Chinese priority application. As a result, when Patent Owner first disclosed the
Soderbacka reference along with many other references in 2010, the examiner would
have been unaware that Patent Owner had already admitted that the majority of its
claims limitations were admitted prior art. The translation of the earliest filed
Chinese priority document would not be disclosed to the examiner until 2013, over
three years after Soderbacka was first disclosed. In any event, the examiner never
included Soderbacka as a basis for rejecting the pending claims in an office action.
Thus, the U.S. examiner never reviewed the admitted prior art
contemporaneously, or in combination, with Soderbacka. This Petition respectfully
seeks just that.
To the second point, despite the fact that a translation of the admitted prior art
was not disclosed to the U.S. examiner, the U.S. examiner nevertheless rejected the
original claims based on other references, and Patent Owner traversed those
rejections based on a similar claim limitation as that disclosed in Soderbacka. For
example, in response to a first office action rejecting certain claims, on February 14,
2011, Patent Owner argued that the prior cited by the examiner did not specifically
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disclose a method that identified “a registration processing type according to
registration processing type information.” NSN779-1002, at 701 (emphasis added).
However, this claim element is substantively similar to the claim element rejected
by the International Searching Authority in light of Soderbacka.
Similarly, on July 11, 2011, Patent Owner attempted to overcome another
rejection by arguing that new prior art cited by the examiner also did not disclose
“identifying, by the network element, a handover processing type of the registration
request according to the registration processing type information.” Id. at 748
(emphasis added). Again, this claim element is substantively similar to the claim
element rejected by the International Searching Authority using Soderbacka.
On March 2, 2012, in response to another rejection, Patent Owner narrowed
“registration processing type information” to, specifically, “an information element
(IE) indicating handover,” thus, showing the commonality between the claim
limitations used to overcome rejections and the limitation the International
Searching Authority believed was disclosed by Soderbacka. Id. at 797.
When the examiner finally did find a new prior art reference showing this
claim limitation, Patent Owner shifted tactics. On August 3, 2012, Patent Owner
attempted to overcome this new prior art reference by arguing that it “fails to disclose
‘identifying, by the MME, a Packet Data Network Gateway (PDN GW) whose
address is used by the UE in the non-3GPP network by communicating with a Home
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Subscriber Server (HSS).’” NSN779-1002, at 916. As evidenced by the discussion
above, this element was already present in the existing protocol (and constituted
admitted prior art). However, the examiner would be unaware of this fact because
the verified translation of the Chinese application showing the admitted prior art was
still not submitted. In this response, Patent Owner did not argue that the new prior
art failed to disclose “wherein the attach request message comprises an information
element (IE) indicating handover.”
On August 16, 2012, based on the same reference, the examiner filed an
Advisory Action Before the Filing of an Appeal Brief. NSN779-1002, at 925.
On September 4, 2012, Patent Owner filed a Pre-Appeal Brief Request for
Review. Patent Owner repeated its arguments about the missing limitation from this
new prior art—the same limitation that both the Board and the examiner would have
realized was in the admitted prior art had a translation of the Chinese priority
application been produced. NSN779-1002, at 928-30. On the same day, Patent
Owner also filed a Notice of Appeal.
In response, the examiner mailed another Non-Final Rejection. This time,
instead of traversing the rejection on substantive grounds, Patent Owner antedated
the prior art reference by filing a translation of the Chinese priority application. This
disclosure, on April 18, 2013, would have been the first time the examiner was
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presented with the admitted prior art. However, without further rejections from the
examiner, a Notice of Allowance issued on May 23, 2013.
VIII. CLAIM CONSTRUCTION
In an IPR, claim terms are interpreted according to their broadest reasonable
interpretation (“BRI”) in view of the specification in which they appear. 37 C.F.R.
§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug.
14, 2012). Thus, as required by the applicable rules, this Petition uses the BRI
standard, and all proposed constructions are under the BRI standard. Petitioners
reserve all rights to take a different position with respect to claim construction in any
other proceeding that does not rely on the BRI standard.
A. “obtaining unit,” “identifying unit,” and “processing unit” in
claim 11
Claim 11 of the ’779 Patent describes a “network element” that includes an
“obtaining unit,” “identifying unit,” and “processing unit.” Based on the functions
performed by the “network element,” claim 11 relates to an MME, and the claimed
“obtaining unit,” “identifying unit,” and “processing unit” are components within
the MME.
In the co-pending district court litigation, Petitioners have taken the position
that “obtaining unit,” “identifying unit,” and “processing unit” are means-plus-
function claim elements. The term “unit,” especially when coupled to functional
limitations such as “obtaining, identifying, and processing,” is a nonce word. The
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only purported “structure” identified in the specification that relates to the claimed
functions in any way is set forth in Figure 6 below and its description in the ’779
Patent specification.1 NSN779-1001, at 5:40-6:2.
NSN779-1001, at Fig. 6.
To the extent that the Board believes that these limitations should be construed
as means plus function terms, Petitioners believe that these terms should be afforded
a broad construction given that Figure 6 only discloses the nominal “units” capable
of performing the function recited in the claim. To the extent Patent Owner argues
sufficient structure is disclosed, it should be interpreted broadly. To the extent that
it is not determined to be a means plus function claim, Petitioners believe that such
a construction should be equally broad. In either case, for purposes of this Petition
and consistent with the BRI standard, Petitioners believe that the terms should be
1 Petitioners do not concede that this structure is sufficient and have taken the
position in the district court that it is insufficient.
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construed to mean “hardware or software obtaining unit,” “hardware or software
identifying unit,” and “hardware or software processing unit.”2
B. “Create Bearer Request message” in Claim 4
Claim 4 of the ’779 Patent includes the claim element of “sending, by the
MME, a Create Bearer Request message to the PDN GW.”
In the co-pending district court litigation, Petitioners have taken the position
that the italicized claim limitation—“Create Bearer Request message”—should be
construed as “a message titled Create Bearer Request.” Patent Owner has taken the
position that this limitation should be given its plain meaning. See NSN779-1023,
Ex. A, at 4.
To be clear, the prior art references discussed herein disclose this claim
limitation under either construction.
2 These structures are very similar to those advanced by Patent Owner in the
district court litigation. NSN779-1023, Ex. A, at 20-28;
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The ’779 Patent claims a specific message—a “Create Bearer Request”
message. The use of capital letters in the claim show an intent to refer to a specific
message having that title. “Generally, the capitalization of a term makes it a proper
name or otherwise attributes a particular meaning to the term.” See, e.g., Cassidian
Commc’ns, Inc. v. MicroDATA GIS, Inc., No. 2:12-CV-162-JRG, D.I. 71, at 10 (E.D.
Tex. June 20, 2013) (NSN779-1025, at 10). In other words, “Create Bearer Request”
must mean something more than a mere request to create a bearer. Id.; Lextron Sys.,
Inc. v. Microsoft Corp., No. C-04-0588 VRW, D.I. 74, at 15 (N.D. Cal. June 1, 2005)
(“‘Internet’ is capitalized in the claim language, suggesting the proper noun;
whatever ‘internet’ might mean, there is only one ‘Internet.’”) (NSN779-1026, at
15).
Indeed, a POSITA would have understood that a message having that title and
function existed in the standard specifications at the time of the ’779 Patent.
NSN779-1003, ¶133-34. In fact, the TAU procedure used this specific message. Id.;
NSN779-1021, § 5.3.3.1 & Fig. 5.3.3-1 (step 8). Moreover, the TAU procedure and
its associated messages are an integral part of the ’779 Patent specification. NSN-
1003, ¶134 (citing examples where the TAU procedure is discussed in the ’779
specification). The inventors clearly knew about the TAU procedure and its
messages, the ’779 Patent specification references these specific messages, and most
importantly, the ’779 Patent claims one of those specific messages: a “Create Bearer
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Request message.” Thus, Petitioners suggest that the term should be construed as
that specific message—“a message titled Create Bearer Request.”
Patent Owner, however, appears to take a position that is unreasonably broad
under the guise of “plain meaning.”
Thus, Patent Owner’s apparent construction advances a “plain”
meaning much broader than the actual plain meaning would suggest. Therefore
Petitioners do not believe Patent Owner’s apparent construction, guised as “plain
meaning,” is reasonable under the BRI standard.
However, again, the primary prior art references discussed below disclose a
message titled “Create Bearer Request,” meaning either construction renders this
limitation invalid.
IX. PRIOR ART REFERENCES
The ’779 Patent claims priority to a foreign patent application (described
above), filed on May 11, 2007, and a PCT application filed on May 8, 2008. Thus,
for the ’779 Patent, this Petition assumes that the earliest priority date is May 11,
2007, and the earliest effective U.S. filing date is May 8, 2008. 35 U.S.C. § 365(c).
As a result, any art published before May 11, 2007, is prior art under § 102(a), and
any art published before May 8, 2007, is prior art under § 102(b). 35 U.S.C. § 102
(pre-AIA).
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As described in the declaration of Balazs Bertenyi (NSN779-1004), each
3GPP reference cited by Petitioners was available on the 3GPP website as of the
date and (if available) time indicated in the table provided at the beginning of this
Petition. See NSN779-1004, ¶¶13-36; see also NSN779-1017, at 8 (“When the
secretary copies from the meeting server[,] . . . the files on the public server, . . . will
now get an upload date/time-stamp of the new upload.”); id. at 9 (“[T]he time stamp
of the Zip file can be relied upon to indicate when the upload occurred.”); NSN779-
1016, at 3 (“3GPP has always operated 100% electronic (0% paper) as far as
contribution documents are concerned. Documents are not deleted following the
meeting, but are retained on the public server indefinitely.”). Mr. Bertenyi’s
declaration establishes the public storage and availability of each 3GPP document,
and describes in detail how a member of the public would access such documents,
including through searches using readily available search engines like Google.
NSN779-1004, ¶¶13-24.
In particular, by navigating 3GPP’s public website and accessing the provided
hyperlinks (provided in the exhibit list at the beginning of this Petition), or by
executing a simple Google search, a member of the public could have downloaded
each of the references without restriction. See NSN779-1004, ¶¶13-36; see also LG
Elecs. v. Core Wireless Licensing S.A.R.L., IPR2015-01988, Paper 7, at 12-14
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(PTAB Apr. 1, 2016) (instituting IPR based on prior art that included 3GPP draft
specifications and proposals).
A. The ’779 APA (NSN779-1002, at 1019-40)
The ’779 Admitted Prior Art is contained within the translated version of the
earliest filed Chinese priority application (“the ’779 APA”). A certified copy of the
translated version of the earliest filed Chinese priority application was provided by
Patent Owner late in the prosecution of the ’779 Patent and is contained within the
file history of the ’779 Patent. NSN779-1002, at 1019-40. Specifically, the following
portion of the translated version of the earliest filed Chinese priority application is
alleged to be prior art: In the section titled “Specification,” page 1025, lines 11-30
(describing the prior art architecture), page 1026, lines 8-35, page 1027, lines 1-6
(describing the prior art process), and page 1028, lines 13-17 (describing the prior
art figures). Patent Owner expressly admits that Figures 1-4 (and corresponding text)
(pages 1035-37) are prior art.
As discussed above, the ’779 APA discloses the known prior art non-3GPP
(Wi-Fi) to 3GPP (LTE) handover procedure. NSN779-1002 at 1026, ll. 10-11.
The ’779 APA discloses every element of every claim except the element
requiring that the Attach Request message—a message that establishes an initial
connection between the mobile phone and the network—contain an information
element indicating handover. NSN779-1003, ¶¶169 & 170-203.
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The PTAB and Federal Circuit have used admissions by the Applicant in the
specification itself as APA in determining the validity of patent claims. See, e.g., In
re NTP, 654 F.3d 1279, 1289 (Fed. Cir. 2011); id. at 1298; (“Further, the []APA
clearly teaches the other limitations of the claim with the exception of the RF
network.”); PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362
(Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are binding
on the patentee for purposes of a later inquiry into obviousness.”); Tokyo Keiso Co.,
v. SMC Corp., 307 F. App'x 446, 452-53 (Fed. Cir. 2009) (“We also agree with SMC
that one of ordinary skill in the art would have been motivated to combine the
disclosure of Lynnworth with the admitted prior art described in the ’004 patent.”);
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569-70 (Fed. Cir. 1988)
(“A statement in a patent that something is in the prior art is binding on the applicant
and patentee for determinations of anticipation and obviousness.”).
B. Soderbacka (NSN779-1007)
U.S. Patent Application US 2003/0114158 to Soderbacka et al.
(“Soderbacka”) was published by the USPTO on June 19, 2003. NSN779-1007, at
[43]. Thus, Soderbacka is prior art to the ’779 Patent under 35 U.S.C. § 102(b).
While Soderbacka was disclosed to the USPTO, the examiner never
contemporaneously reviewed Soderbacka in combination with the other prior art
references, including the ’779 APA. In fact, the U.S. examiner did not discuss
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Soderbacka at all and did not possess the ’779 APA until years after Soderbacka was
disclosed in an IDS along with many other references.
C. The Nokia Submission (NSN779-1008)
The Nokia Submission was a contribution to 3GPP Working Group SA-2 for
a meeting in Beijing, China that took place April 23, 2007, to April 27, 2007.
NSN779-1008, at 1. The Nokia Submission was publicly available at least as early
as April 27, 2007, at 9:29 AM. NSN779-1004, ¶29.
The Nokia Submission discloses an Attach Request message containing an
information element called “Attach Type” that “indicates which type of attach
should be performed.” NSN779-1008, at 4. A POSITA would have been capable of
simply taking the information element disclosed in the Nokia Submission and
placing it in the known Attach Request message from the prior art handover
procedure. NSN779-1003, ¶228-34.
The Nokia Submission was neither disclosed nor cited during the original
prosecution of the ’779 Patent.
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D. The Motorola Submission (NSN779-1009)
The Motorola Submission was a contribution to 3GPP Working Group SA-2
for the same meeting that took place in Beijing, China from April 23, 2007, to April
27, 2007. NSN779-1009, at 1. The Motorola Submission was publicly available at
least as early as April 27, 2007, at 9:28 AM. NSN779-1004, ¶30.
The only element not explicitly disclosed by the Motorola Submission is an
information element indicating handover. NSN779-1003, ¶285. However, as noted
above, that idea had been in the art since at least 2002.
The Motorola Submission was neither disclosed nor discussed during the
prosecution of the ’779 Patent.
X. INVALIDITY OF CLAIMS 1, 4 AND 9-11 OF THE ’779 PATENT
As discussed above, during the prosecution of the ’779 Patent, Patent Owner
argued that the purported invention was distinguishable from the prior art because it
purported to introduce the novel concept of including an information element
specifying the type of attach message sent by the UE—normal or handover. As
described in the counts below, both the Patent Owner’s Chinese priority application
and the Motorola Submission described every limitation in the claims except the
information element. But an English translation of the Chinese priority application
was not provided until late in the prosecution, and the Motorola Submission was
neither cited nor considered by the examiner. The Soderbacka reference and the
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Nokia Submission describe an information element for this very purpose. The
Soderbacka reference was disclosed during prosecution but never discussed by the
examiner. Indeed, it is not a surprise that the examiner failed to appreciate the
significance of Soderbacka given that the examiner did not have the benefit of an
English translation of the Chinese priority document when the Soderbacka reference
was disclosed. In addition, like the Motorola Submission, the Nokia Submission was
not cited or discussed by the examiner, and the examiner did not have the benefit of
the testimony of Mr. Lanning.
Each of the arguments below is made from the standpoint of a person of
ordinary skill in the field of the ’779 Patent (a “POSITA”). Specifically, a POSITA
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. NSN779-1003, ¶18. Additional education might substitute for some
of the experience, and substantial experience might substitute for some of the
educational background. Id.
A. Count 1: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.
§ 103(a) over the ’779 APA in light of Soderbacka
Motivation to Combine
It would have been obvious to a POSITA to combine the ’779 APA and
Soderbacka. NSN779-1003, ¶162. Specifically, the ’779 APA shows that the non-
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3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well known in the prior art,
prior to the date of invention of the ’779 Patent. Id. With this knowledge, the person
having ordinary skill in the art would have found explicit motivation within
Soderbacka to include necessary information in the handover procedure so the
mobile phone can access “networks for which the mobile terminal is currently not
registered.” Id.; NSN779-1007, ¶0031. Indeed, not only does Soderbacka identify a
problem with current handover procedures, but it explicitly recites the inclusion of
an information element to allow the network to make decisions as to the type of
registration to perform. NSN779-1007, ¶0032. Given that Soderbacka explicitly
includes an information element, a POSITA would have had a reasonable
expectation of success when using it in conjunction with the handover procedure
outlined in the ’779 APA. NSN779-1003, ¶162.
As another example, a POSITA would have looked to references like
Soderbacka that described 3G handover procedures when designing the 4G handover
procedure like that described in the ’779 APA. NSN779-1003, ¶164. In other words,
POSITA would have been motivated to look to known methods (handover
information elements) from the 3G network to solve similar problems
(distinguishing the Attach Request message to the network) when designing the 4G
network. A person having ordinary skill in the art would have had a reasonable
expectation of success given the teachings of Soderbacka. Id. ¶164. Indeed, 3GPP
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standards and specifications are constantly evolving, and it is common in 3GPP for
previous solutions to be used in subsequent generations. Id. ¶163. Soderbacka
discloses the known technique of using an information element to aid in attachment
and/or handover, and the ’779 Patent merely ports this known technique into the
same type of message to achieve the same result. Again, a POSITA would have
expected reasonable success given the teachings of Soderbacka. Id. ¶164.
Finally, POSITA would have been motivated to distinguish different Attach
Request messages using an information element because doing so is one of a finite
number of identified, predictable solutions. NSN779-1003, ¶167. Soderbacka
discloses that a problem arises when the mobile terminal (e.g., mobile phone) seeks
to handover to a “radio access network[] for which the mobile terminal is currently
not registered.” NSN779-1007, ¶0031. Soderbacka discloses the limited set of
possibilities that might solve this problem: (1) “an information element [is] added to
the current connection establishment signaling;” or “[a]lternatively, new messages
could be added to the signaling sequence.” NSN779-1007, ¶¶0113-0114. The ’779
Patent also discloses the same finite solutions: (1) “an Attach Type IE is added in
the Attach Request message;” or (2) “A new message is defined.” NSN-1001, at
6:19-23. Given the limited number of solutions to distinguish two messages of the
same type, POSITA would have obviously tried one of these two solutions to solve
- 44 -
the problem and had a reasonable expectation of success in doing so. NSN779-1003,
¶167.
1preamble: A handover processing method, comprising:
To the extent the preamble is limiting, claim element 1preamble is admitted
to be in the prior art. The ’779 APA discloses a handover method. Specifically,
Patent Owner stated that “FIG. 2 is a flowchart of a handover from a non-3GPP
access system to a 3GPP access system for a UE in the prior art”:
NSN779-1002, at 1028 & 1036, Fig. 2 (emphasis added).
A POSITA would have understood that the above flowchart discloses a
handover processing method. NSN779-1003, ¶170-72.
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11preamble: A network element, comprising:
Claim limitation 11preamble is admitted to be prior art. As disclosed, “FIG. 1
shows system architecture of an evolved network in the prior art;”
NSN779-1002, at 1028 & 1036, Fig. 1 (blue box and emphasis added).
In the description of Figure 1, Patent Owner discloses that “[t]he architecture
includes: a Mobile Management Entity (MME), responsible for control plane
mobility management . . . .” NSN779-1002, at 1025 (emphasis added). A POSITA
would have understood the MME to be a network element. NSN779-1003, ¶174.
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1a: receiving, by a Mobility Management Entity (MME), an attach request
message sent by a User Equipment (UE) during a handover from a non 3rd
Generation Partnership Project (non-3GPP) network to a 3rd Generation
Partnership (3GPP) network;
11a: an obtaining unit, configured to receive an attach request message sent
by a User Equipment (UE) during a handover from a non 3rd Generation
Partnership Project (non-3GPP) network to a 3rd Generation Partnership
Project (3GPP) network;
Claim elements 1a and 11a are admitted prior art.
Specifically, step 3 of the admitted prior art message flow diagram discloses
this step:
NSN779-1002, at 1036, Fig. 2 (blue boxes added).
In the description of the message flow diagram above, Patent Owner discloses
that this step was squarely in the prior art at the time of the patent: “3. The UE sends
an Attach Request . . . message to the MME.” NSN779-1002, at 1026. If there is any
doubt, a POSITA would have understood that when the UE (e.g., mobile phone)
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sends an Attach Request message to the MME, the MME receives that Attach
Request message, as depicted in Figure 2 above. NSN779-1003, ¶178.
In addition, a POSITA would have understood that a network element that is
capable of receiving a message, like an MME, must have hardware or software
configured to receive those messages (i.e., an “obtaining unit”). Id. ¶179. Given that
the ’779 APA discloses an MME capable of receiving an Attach Request message
sent by a mobile phone (UE) during a handover from a non-3GPP network to a 3GPP
network, the ’779 APA discloses an obtaining unit configured to receive an Attach
Request message sent by a mobile phone (UE) during a handover from a non-3GPP
network to a 3GPP network. Id. As stated in the description of the Figure 2 flow
diagram, this process occurs during “a handover from a non-3GPP access system to
a 3GPP access system.” NSN779-1002, at 1026.
Thus, every element of limitation 1a and 11a was in the prior art before the
time of the ’779 Patent.
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1b: wherein the attach request message comprises an information element
(IE) indicating handover;
11b: wherein the attach request message comprises an information element
indicating handover;
11c: an identifying unit, configured to identify that the attach request
message is due to the handover according to the IE indicating handover; and
Claim elements 1b, 11b, and 11c are the supposed point of novelty for the
’779 Patent. However, using an information element to indicate handover had long
been a part of the art. Soderbacka discloses as much.
Soderbacka discloses “an information element added to the current connection
establishment signaling” sent by a mobile phone to an SGSN. NSN779-1007, ¶0113
& Fig. 4). The disclosure states that the information included in the information
element “indicat[es] that an intersystem handover . . . should be performed.” Id. at
[57]. For example, the “new information element” could be “added to the SETUP
message transmitted by the mobile terminal to the communication network.” Id.
¶0032. A POSITA would have understood that a setup message, like an Attach
Request message, is a part of the initial connection establishment signaling.
NSN779-1003, ¶187.
In addition, Soderbacka discloses that the handover could occur between a
non-3GPP (Wi-Fi) network and a 3GPP network. More specifically, Soderbacka
states “the intersystem handover of the invention [could be] . . . for a handover of a
mobile terminal from a WLAN (wireless local area network [i.e., Wi-Fi]) to GSM
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[i.e., 3GPP].” NSN779-1007, ¶0039; see also NSN779-1003, ¶182-83. A POSITA
would have understood that a WLAN (i.e., Wi-Fi) is a non-3GPP network, and GSM
is a 3GPP network. NSN779-1003, ¶183. Thus, Soderbacka discloses that the
information element could indicate that an intersystem handover from non-3GPP to
3GPP should be performed.
In addition, a POSITA would have understood that the network entity
receiving the message with the information element in Soderbacka would have
hardware or software configured to identify (i.e., an “identifying unit”) the contents
of that information element and, therefore, would be configured to identify that the
attach request message is due to the handover according to the IE indicating
handover. NSN779-1003, ¶188.
.
Soderbacka falls within the same field of endeavor as the ’779 Patent, and
Soderbacka discloses the exact same solution proposed by the ’779 Patent. This
claim limitation is explicitly disclosed in Soderbacka, and the combination of the
’779 APA in light of Soderbacka renders these claim elements obvious.
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1c: identifying, by the MME, a Packet Data Network Gateway (PDN GW)
whose address is used by the UE in the non-3GPP network by communicating
with a Home Subscriber Server (HSS).
11d: a processing unit, configured to identify a Packet Data Network Gateway
(PDN GW) whose address is used by the UE in the non-3GPP network by
communicating with a Home Subscriber Server (HSS),
9: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining an identity of the PDN GW from the HSS.
10: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining the PDN GW address from the HSS.
Claim elements 1c, 11d, 9, and 10 were admitted to be in the prior art. The
’779 APA confirms this understanding. In the message flow diagram admitted to be
prior art, this element is met by step 4:
NSN779-1002, at 1036, Fig. 2; see also NSN779-1003, ¶192.
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The description of step 4 confirms that the PDN GW address is exchanged
during the authentication step: “4. An authentication procedure is performed
between the UE, the MME, and the HSS to obtain the PDN GW address used by the
UE.” NSN779-1002, at 1026. Furthermore, at step 5, the ’779 APA confirms that
the “MME sends a Create Bearer Request message to the obtained PDN GW
address.” Id. In order for the MME to send a message to the obtained PDN GW
address, the MME identifies the PDN GW address. NSN779-1003, ¶193. Finally,
while step 4 implies that the PDN GW address could come from either the UE
(mobile phone) or the HSS, the possibility that the PDN GW address is obtained
from the HSS is nevertheless present and disclosed. Id. Thus, the ’779 APA discloses
claim limitation 1c.
Further, a POSITA would have understood that a network element configured
to receive messages in the network would also have a “processing unit” (e.g.,
hardware or software) configured to identify the contents of those messages because
both the PDN GW and the HSS are defined network equipment in the 3GPP
standards that have a processor, database, communication capability, etc. NSN779-
1003, ¶194.
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Finally, a POSITA would have understood that the “identity of the PDN GW”
is not meaningfully different than the address of the PDN GW. In fact, claim 9 is the
only time the word “identity” appears in the ’779 Patent. A POSITA would have
seen no meaningful difference between an “identity” and an “address,” and the ’779
Patent confirms this understanding. NSN779-1003, ¶195.
1d: requesting, by the MME, the PDN GW to initiate a bearer creation
procedure
11e: and request the PDN GW to initiate a bearer creation procedure
4preamble: The method of claim 1, wherein the requesting a the [sic] PDN
GW to initiate a bearer creation procedure comprises:
4b: initiating, by the PDN GW, the bearer creation procedure.
Claim elements 1d, 11e, 4preamble, and 4b were admitted to be in the prior
art. The ’779 APA confirms this understanding. In the message flow diagram
admitted to be prior art, this claim element is met by step 5 and confirmed by step 7.
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NSN779-1002, at 1036, Fig. 2 (blue boxes added).
The description of step 5 states that the “The MME sends a Create Bearer
Request message to the obtained PDN GW address, requesting the network side to
initiate bearer creation procedure.” NSN779-1002, at 1026 (emphasis added). If
there’s any doubt about what element on the “network side” initiates that bearer
creation procedure, step 7 confirms that it is the PDN GW: “7. The PDN GW initiates
a network-side bearer creation procedure to create the bearer of the user.” Id.
(emphasis added).
Thus, claim limitations 1d, 11e, 4preamble, and 4b were already present in
the prior art.
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4a: sending, by the MME, a Create Bearer Request message to the PDN GW.
Claim limitation 4a is admitted to be prior art. Specifically, the description
associated with step 5 of the ’779 APA message flow diagram discloses this
limitation. The description of step 5 states: “The MME sends a Create Bearer
Request message to the obtained PDN GW address, requesting the network side to
initiate bearer creation procedure.” NSN779-1002, at 1026 (emphasis added).
Thus, claim limitation 4a was already present in the prior art.
B. Count 2: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.
§ 103(a) over the ’779 APA in light of the Nokia Submission
Motivation to Combine
It would have been obvious to a POSITA to combine the ’779 APA and the
Nokia Submission. NSN779-1003, ¶229. Specifically, the ’779 APA shows that the
non-3GPP (Wi-Fi) to 3GPP (LTE) handover procedure was well known in the prior
art. With this knowledge, a POSITA would have found explicit motivation within
the Nokia Submission to include an information element in the handover procedure,
in order to “indicate[] which type of attach is to be performed.” NSN779-1008, at 4;
NSN779-1003, ¶229. In other words, when an Attach Request can be used for two
types of attach, the solution is to include an information element indicating which
one to execute. Id. Indeed, not only does the Nokia Submission highlight the problem
that occurs when Attach Request messages can indicate multiple types of attach, but
it explicitly recites the inclusion of an information element to indicate the type of
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attach as its solution. NSN779-1008, at 4. Given, that the Nokia Submission
explicitly includes an information element for this purpose, the a POSITA would
have had a reasonable expectation of success using it in conjunction with the
handover described in the ’779 APA. NSN779-1003, ¶229.
A POSITA would have been motivated to include an information element
indicating which type of attach is to be performed, as disclosed in the Nokia
Submission, to distinguish the Attach Request message disclosed in the ’779 APA.
NSN779-1003, ¶231. As evidenced, the Nokia Submission discloses placing the
information element in the 3G version of the Attach Request message. Both the ’779
APA and the Nokia Submission are directed to the same field of endeavor; namely
Attach Request messages. Therefore, a person of ordinary skill in the art would have
been motivated to look for solutions arising in the field (for example, solutions
already established for previous generations of 3GPP) to solve problems arising in
the same field (apply those established solutions to later generations of 3GPP). Id.
Indeed, 3GPP standards and specifications are constantly evolving, and it is common
in 3GPP for previous solutions to be used in subsequent generations. Id.
1preamble: A handover processing method, comprising:
Claim element 1preamble is admitted prior art. This section incorporates the
corresponding disclosure for the ’779 APA in Part X.A, Count 1, 1preamble.
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11preamble: A network element, comprising:
To the extent the preamble is limiting, claim element 11preamble is admitted
to be prior art. This section incorporates the corresponding disclosure for the ’779
APA in Part X.A, Count 1, 11preamble.
1a: receiving, by a Mobility Management Entity (MME), an attach request
message sent by a User Equipment (UE) during a handover from a non 3rd
Generation Partnership Project (non-3GPP) network to a 3rd Generation
Partnership (3GPP) network;
11a: an obtaining unit, configured to receive an attach request message sent
by a User Equipment (UE) during a handover from a non 3rd Generation
Partnership Project (non-3GPP) network to a 3rd Generation Partnership
Project (3GPP) network;
Claim elements 1a and 11a are admitted prior art. This section incorporates
the corresponding disclosure for the ’779 APA in Part X.A, Count 1, 1a & 11a.
1b: wherein the attach request message comprises an information element
(IE) indicating handover;
11b: wherein the attach request message comprises an information element
indicating handover;
11c: an identifying unit, configured to identify that the attach request
message is due to the handover according to the IE indicating handover; and,
Claim elements 1b, 11b, and 11c are the supposed point of novelty for the
’779 Patent. However, using an information element in the Attach Request message
to indicate which type of attach should be performed was well known in the art. The
Nokia Submission discloses an Attach Request message containing an information
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element of this type. NSN779-1008, at 4. The Nokia Submission discloses the
following message flow diagram:
NSN779-1008, at Fig. 22 (blue box added).
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Step 1 in the message flow diagram discloses a mobile phone (abbreviated
MS or “mobile station” in the diagram) sending an Attach Request message to an
SGSN. A POSITA would have understood that the “Attach Request” message above
is the 3G version of the Attach Request message described in the claims. NSN779-
1003, ¶251. Further, a POSITA would have understood that the SGSN was
responsible for control plane messaging in a 3G UMTS network, just as an MME is
responsible for control-plane messaging in a 4G LTE network. Id.
The corresponding description of the Attach Request message from the Nokia
Submission shows that it contains information elements: “1) In A/Gb mode, the MS
[i.e., mobile phone] initiates the attach procedure by the transmission of an Attach
Request (IMSI or P-TMSI and old RAI, Classmark, CKSN, Attach Type, DRX
Parameters, old P-TMSI Signature) message to the SGSN.” NSN779-1008, at 4. As
shown, one of these information elements is called “Attach Type.” Id. (emphasis
added). NSN779-1003, ¶¶224 & 252.
The Nokia Submission discloses that “Attach Type indicates which type of
attach is to be performed . . . .” Id. (emphasis added). Patent Owner set forth in the
translation of the Chinese priority application that the exact problem to be solved
was that “the network side needs to know whether the normal Attach/TAU procedure
or the Attach/TAU procedure caused by the handover is initiated. However, the
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existing mechanism cannot distinguish them.” NSN779-1002, at 1027 (emphasis
added).
A POSITA would have needed to look no further than the Nokia Submission
to find that the information element called “Attach Type” serves to distinguish
Attach Request messages. NSN779-1003, ¶¶252 & 255. In the Nokia Submission,
the Attach Type information element distinguishes between “GPRS only” or
“GPRS/IMSI combined attach.” However, it would have been trivial for a POSITA
could have easily added “handover or initial” attach into the pre-existing information
element field. NSN779-1003, ¶253. Thus, there was a pre-existing mechanism to
distinguish Attach Request messages of different types. Id. ¶255.
Indeed, approximately one month after the earliest Chinese priority document
was filed, Patent Owner copied and pasted this exact information element and exact
description into a separate TDoc that Patent Owner submitted to 3GPP. NSN779-
1012, at 3 (“Attach Type indicates which type of attach is to be performed, i.e. Initial
Attach, or Handover Attach.” (emphasis added)). Patent Owner also copied nearly
identical language into its own patent application:
The registration processing type may be reported in one of the
following ways:
(1) An Attach Type IE is added in the Attach Request message. For
example, the values of the Attach Type IE are 0 and 1. The value ‘0’
corresponds to Normal Attach (also known as initial Attach); and the
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value ‘1’ corresponds to Handover Attach, and indicates that the Attach
Request message is caused by handover.
NSN779-1001, at 6:35-44 (emphasis added).
Finally, a POSITA would have understood that the network entity receiving
that message—in the Nokia Submission, the SGSN—would have an identifying unit
(e.g., hardware or software) configured to identify the contents of that message and,
therefore, would be configured to identify that the Attach Request message indicates
which type of attach should be performed. NSN779-1003, ¶257. In the 4G LTE
network, a POSITA would have understood that the MME, as manager of the
control-plane functions, receives the Attach Request message and, therefore, would
have hardware or software (i.e., an identifying unit) to perform the same function.
Id.
Therefore, the Nokia Submission discloses elements 1b, 11b, and 11c.
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1c: identifying, by the MME, a Packet Data Network Gateway (PDN GW)
whose address is used by the UE in the non-3GPP network by communicating
with a Home Subscriber Server (HSS).
11d: a processing unit, configured to identify a Packet Data Network Gateway
(PDN GW) whose address is used by the UE in the non-3GPP network by
communicating with a Home Subscriber Server (HSS),
9: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining an identity of the PDN GW from the HSS.
10: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining the PDN GW address from the HSS.
Claim elements 1c, 11d, 9, and 10 are admitted prior art. This section
incorporates the corresponding disclosure for the ’779 APA in Part X.A, Count 1,
1c, 11d, 9 & 10.
1d: requesting, by the MME, the PDN GW to initiate a bearer creation
procedure
11e: and request the PDN GW to initiate a bearer creation procedure
4preamble: The method of claim 1, wherein the requesting a the [sic] PDN
GW to initiate a bearer creation procedure comprises:
4b: initiating, by the PDN GW, the bearer creation procedure.
Claim elements 1d, 11e, 4preamble, and 4b are admitted prior art. This section
incorporates the corresponding disclosure for the ’779 APA in Part X.A, Count 1,
1d, 11e, 4preamble & 4b.
4a: sending, by the MME, a Create Bearer Request message to the PDN GW.
Claim limitation 4a is admitted prior art. This section incorporates the
corresponding disclosure for the ’779 APA in Part XI.A, Count 1, 4a.
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C. Count 3: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.
§ 103(a) over the Motorola Submission in light of the Nokia
Submission
Motivation to Combine
A POSITA at the time of the purported invention would have been motivated
to use an information element (IE), like that described in the Nokia Submission, in
an Attach Request message described in the Motorola Submission. NSN779-1003,
¶306. In fact, as evidenced above, both the Nokia Submission and the Motorola
Submission describe the use of Attach Request messages, and both raise the same
problem: an Attach Request message can be used for multiple purposes. Id. A
POSITA looking to solve this problem would have seen that the Nokia Submission
uses an “Attach Type” information element to solve the problem and, therefore, have
expected a very similar result when implementing the same solution in the Motorola
Submission. Id. Indeed, a POSITA looking to solve the problem posed by S2-072252
(the Motorola Submission) would have only needed to look three TDocs later to S2-
072255 (the Nokia Submission) to find the solution. That is, because both documents
were directed to the solving the same problem, the person of ordinary skill in the art
would have looked to them together to achieve the recited result. Id.
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NSN779-1018, at 9 (red boxes added)
In fact, both the Motorola Submission and the Nokia Submission were
publicly disclosed to the same working group, at the same meeting, and uploaded to
the same 3GPP file server, on the same day, only one minute apart. In other words,
not only was the solution easy to locate, using the information element from the
Nokia Submission in the Motorola Submission would have achieved an expected
result. NSN779-1003, ¶307.
Further, a POSITA would have been motivated use an information element
(IE), like that described in the Nokia Submission, in an Attach Request message
described in the Motorola Submission because both documents relate to the same
field of endeavor and solve similar problems. NSN779-1003, ¶308. Specifically, as
discussed above, the Motorola Submission and the Nokia Submission disclose a
method of using an Attach Request message in a 3GPP network. Therefore, a
POSITA would have been motivated to look for solutions arising in the field (for
example, solutions already established for previous generations of 3GPP) to solve
problems arising in the same field (apply those established solutions to later
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generations of 3GPP). NSN779-1003, ¶308. Indeed, 3GPP standards and
specifications are constantly evolving, and it is common in 3GPP for previous
solutions to be used in subsequent generations. Id.
Finally, a POSITA would have been motivated to utilize an “Attach Type”
information element indicating which type of attach should be performed, as
disclosed in the Nokia Submission, with the Attach Request message from the
Motorola Submission. NSN779-1003, ¶311. Merely adding different parameters to
the information element—i.e., adding “Initial or Handover attach” to “GPRS only
or combined GPRS/IMSI attach”— obtains the very predictable result of indicating
which type of attach should be performed. Id. The Nokia Submission discloses the
known element of an Attach Request message with an Attach Type information
element, and a POSITA would have been motivated to combine this element with
the Attach Request message in the Motorola Submission. Id. The result achieved is
the exact same and laid out in the Nokia Submission.
Indeed, at the very next meeting, Patent Owner submitted a separate TDoc to
the same 3GPP working group making this trivial addition. NSN779-1012, at 3
(“Attach Type indicates which type of attach is to be performed, i.e. Initial Attach,
or Handover Attach.” (emphasis added)).
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1preamble: A handover processing method, comprising:
To the extent the preamble is limiting, claim element 1preamble is disclosed
in the Motorola Submission. For example, the introduction states, “This contribution
proposes a procedure for handover from non-3GPP access to LTE access based on
PMIPv6 for the scenario where the PMIP client is located at the serving GW.”
NSN779-1009, at 1 (emphasis added).
11preamble: A network element, comprising:
To the extent the preamble is considered limiting, the Motorola Submission
discloses a network element. For example, the Motorola Submission discloses that
the MME is a network element.
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NSN779-1009, at 3 & Fig. 5.x (blue box added).
Thus, the Motorola Submission discloses element 11preamble.
1a: receiving, by a Mobility Management Entity (MME), an attach request
message sent by a User Equipment (UE) during a handover from a non 3rd
Generation Partnership Project (non-3GPP) network to a 3rd Generation
Partnership (3GPP) network;
11a: an obtaining unit, configured to receive an attach request message sent
by a User Equipment (UE) during a handover from a non 3rd Generation
Partnership Project (non-3GPP) network to a 3rd Generation Partnership
Project (3GPP) network;
Claim elements 1a and 11a are disclosed in the Motorola Submission. As
stated above, the Motorola Submission discloses a “procedure for handover from
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non-3GPP access to LTE access.” NSN779-1009, at 1 (emphasis added). A
POSITA would have understood that LTE is a 3GPP network. NSN779-1003,
¶319. More specifically, step 3 of the message flow diagram (shown in the blue
boxes) from the Motorola Submission shows receiving, by an MME, an Attach
Request message sent by a UE during the handover procedure:
NSN779-1009, at 3 & Fig. 5.x (blue boxes added).
In the description of the message flow diagram, the Motorola Submission
describes Step 3 in the blue boxes above: “3. The UE sends an Attach Request
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which is routed by E-UTRAN to an MME instance in the EPSC as specified in TS
23.401.” NSN779-1009, at 3 (emphasis added). A POSITA would have understood
that when the mobile phone (UE) sends an Attach Request message routed through
E-UTRAN to the MME, the MME receives that Attach Request message.
NSN779-1003, ¶322.
Further, a POSITA would have also understood that a network element
capable of receiving a message, like an MME, must have an obtaining unit (e.g.,
hardware or software) configured to receive those messages. NSN779-1003, ¶323.
Given that the Motorola Submission discloses an MME capable of receiving an
Attach Request message sent by a mobile phone (UE) during a handover from a non-
3GPP network to a 3GPP network, the Motorola Submission discloses an obtaining
unit configured to receive an attach request message sent by a mobile phone (UE)
during a handover from a non-3GPP network to a 3GPP network. Id.
Thus, every limitation from 1a and 11a was in the prior art before the time of
the ’779 Patent.
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1b: wherein the attach request message comprises an information element
(IE) indicating handover;
11b: wherein the attach request message comprises an information element
indicating handover;
11c: an identifying unit, configured to identify that the attach request
message is due to the handover according to the IE indicating handover; and
Claim elements 1b, 11b, and 11c are disclosed by the Nokia Submission. This
section incorporates the corresponding disclosure for the Nokia Submission in Part
X.B, Count 2, 1b, 11b & 11c.
1c: identifying, by the MME, a Packet Data Network Gateway (PDN GW)
whose address is used by the UE in the non-3GPP network by communicating
with a Home Subscriber Server (HSS).
11d: a processing unit, configured to identify a Packet Data Network Gateway
(PDN GW) whose address is used by the UE in the non-3GPP network by
communicating with a Home Subscriber Server (HSS),
9: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining an identity of the PDN GW from the HSS.
10: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining the PDN GW address from the HSS.
Claim elements 1c, 11d, 9, and 10 are disclosed in the Motorola Submission.
Specifically, these claim elements are disclosed in step 4:
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NSN779-1009, at Fig. 5.x (blue boxes and emphasis added).
The description of step 4 confirms that the PDN GW address is exchanged
during the authentication step: “4. The MME contacts the HSS and authenticates the
UE. As part of the authentication procedure, the IP address of the PDN GW that
needs to be used is conveyed to the MME.” Id. at 4 (emphasis added).
Further, a POSITA would have understood that a network element configured
to identify a PDN GW would have a “processing unit” (e.g., hardware or software)
configured to do so because both the PDN GW and the HSS are defined network
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equipment in the 3GPP standards that have a processor, database, communication
capability, etc. NSN779-1003, ¶337.
Finally, the “identity of the PDN GW” is not meaningfully different than the
address of the PDN GW. In fact, claim 9 is the only time the word “identity” appears
in the ’779 Patent. A POSITA would have seen no meaningful difference between
an “identity” and an “address,” and the ’779 Patent confirms this understanding.
NSN779-1003, ¶338.
Thus, the Motorola Submission discloses claim elements 1c, 11d, 9, and 10.
1d: requesting, by the MME, the PDN GW to initiate a bearer creation
procedure
11e: and request the PDN GW to initiate a bearer creation procedure
4preamble: The method of claim 1, wherein the requesting a the [sic] PDN
GW to initiate a bearer creation procedure comprises:
4b: initiating, by the PDN GW, the bearer creation procedure.
Claim elements 1d, 11e, 4preamble, and 4b are disclosed in the Motorola
Submission. For example, Step 6 and Step 7 show the MME sending a message to
the PDN GW to create a bearer (connection) for the mobile phone in the network:
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NSN779-1009, at Fig. 5.x (blue boxes added).
The Motorola Submission discloses that the MME initiates a message
requesting that a bearer be created (steps 6 and 7) that ultimately terminates at the
PDN GW. Specifically, a POSITA would have understood that the MME sends a
“Create Default Bearer Request” message to the Serving GW, which in turn sends
the request as a Proxy Binding Update (BU) to the PDN GW. NSN779-1003, ¶342.
The Editor’s note contemplates that this Proxy Binding Update could provide
equivalent functionality of the “GTP Create Bearer Request message.” NSN779-
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1009, at 4 (emphasis added). Thus, the Motorola Submission discloses that the 3GPP
working group (and the authors of the Motorola Submission) contemplated that the
last network entity to receive the MME’s request to create bearers could be the PDN
GW. A POSITA would have understood that, when the MME’s request is finished,
the PDN GW responds to the Create Bearer Request message by creating bearers
(connections). NSN779-1003, ¶342. As a result, in the Motorola Submission, the
MME requests the PDN GW to initiate the bearer creation procedure.
In fact, given that (1) the PDN GW is the last entity to receive the messages
requesting a bearer creation procedure that originated at the MME, and (2) the PDN
GW is the first entity to send a message back into the network that results in the
bearer (connection) being established, a POSITA would have understood that the
PDN GW initiates the bearer creation procedure in the Motorola Submission because
bearer creation is done in the reverse direction of the request. NSN779-1003, ¶¶342.
Thus, elements 1d, 11e, 4preamble, and 4b are met by the Motorola
Submission.
4a: sending, by the MME, a Create Bearer Request message to the PDN GW.
The Motorola Submission discloses sending, by the MME, a Create Bearer
Request message to the PDN GW. For example, the Motorola Submission
contemplates the Create Default Bearer Request message and the Proxy Binding
Update Message “suffices to provide equivalent functionality to the GTP ‘Create
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Bearer Request’ message . . . .” NSN779-1009, at 4 (emphasis added). Although this
idea had not been implemented by the 3GPP standards body, the idea is nevertheless
disclosed.
Thus, element 4a is disclosed in the Motorola Submission.
D. Count 4: Claims 1, 4, and 9-11 are unpatentable under 35 U.S.C.
§ 103(a) over the Motorola Submission in light of Soderbacka
Motivation to Combine
It would have been obvious to combine the Motorola Submission and
Soderbacka at the time of the ’779 Patent. NSN779-1003, ¶377. Specifically, as
evidenced above, the Motorola Submission shows that the non-3GPP (Wi-Fi) to
3GPP (LTE) handover procedure was well known in the prior art before the date of
invention of the ’779 Patent. With this knowledge, the person having ordinary skill
in the art would have found explicit motivation within Soderbacka to include
necessary information in the handover procedure so the mobile phone can access
“networks for which the mobile terminal is currently not registered.” NSN779-1007,
¶0031; NSN779-1003, ¶377. Indeed, not only does Soderbacka identify a problem
with current handover procedures, but it explicitly recites the inclusion of an
information element to allow the network to make decisions as to the type of
registration to perform. Given that Soderbacka explicitly includes an information
element, a POSITA would have had a reasonable expectation of success when using
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it in conjunction with the handover procedure outlined in the Motorola Submission.
NSN779-1003, ¶377.
In addition, both the Motorola Submission and Soderbacka are directed to the
same field of endeavor; namely, handover procedures from a non-3GPP network to
a 3GPP network. Therefore, a person of ordinary skill in the art would have been
motivated to look for solutions arising in the field (for example, solutions already
established for previous generations of 3GPP) to solve problems arising in the same
field (apply those established solutions to later generations of 3GPP). NSN779-1003,
¶378. Indeed, 3GPP standards and specifications are constantly evolving, and it is
common in 3GPP for previous solutions to be used in subsequent generations. Id.
Finally, a POSITA would have been motivated to distinguish different Attach
Request messages using an information element because doing so is one of a finite
number of identified, predictable solutions. NSN779-1003, ¶382. Soderbacka
discloses that a problem arises when the mobile terminal (e.g., mobile phone) seeks
to handover to a “radio access network[] for which the mobile terminal is currently
not registered.” NSN779-1007, ¶0031; NSN779-1003, ¶378. Soderbacka discloses
the limited set of possibilities that might solve this problem: (1) “an information
element [is] added to the current connection establishment signaling;” or
“[a]lternatively, new messages could be added to the signaling sequence.” NSN779-
1007, ¶¶0113-0114. The ’779 Patent also discloses the same finite solutions: (1) “an
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Attach Type IE is added in the Attach Request message;” or (2) “A new message is
defined.” NSN779-1001, at 6:19-23. Given the limited number of solutions to
distinguish two messages of the same type, a POSITA would have obviously tried
one of these two solutions to solve the problem and had a reasonable expectation of
success in doing so. NSN779-1003, ¶378.
1preamble: A handover processing method, comprising:
Claim element 1preamble is disclosed by the Motorola Submission. This
section incorporates the corresponding disclosure for the Motorola Submission in
Part X.C, Count 3, 1preamble.
11preamble: A network element, comprising:
To the extent the preamble is limiting, claim element 11preamble is disclosed
by the Motorola Submission. This section incorporates the corresponding disclosure
for the Motorola Submission in Part X.C, Count 3, 11preamble.
1a: receiving, by a Mobility Management Entity (MME), an attach request
message sent by a User Equipment (UE) during a handover from a non 3rd
Generation Partnership Project (non-3GPP) network to a 3rd Generation
Partnership (3GPP) network;
11a: an obtaining unit, configured to receive an attach request message sent
by a User Equipment (UE) during a handover from a non 3rd Generation
Partnership Project (non-3GPP) network to a 3rd Generation Partnership
Project (3GPP) network;
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Claim elements 1a and 11a are disclosed by the Motorola Submission. This
section incorporates the corresponding disclosure for the Motorola Submission in
Part X.C, Count 3, 1a & 11a.
1b: wherein the attach request message comprises an information element
(IE) indicating handover;
11b: wherein the attach request message comprises an information element
indicating handover;
11c: an identifying unit, configured to identify that the attach request
message is due to the handover according to the IE indicating handover; and
Claim elements 1b, 11b, and 11c are disclosed by Soderbacka. This section
incorporates the corresponding disclosure for Soderbacka in Part X.A, Count 1, 1b,
11b & 11c.
1c: identifying, by the MME, a Packet Data Network Gateway (PDN GW)
whose address is used by the UE in the non-3GPP network by communicating
with a Home Subscriber Server (HSS).
11d: a processing unit, configured to identify a Packet Data Network Gateway
(PDN GW) whose address is used by the UE in the non-3GPP network by
communicating with a Home Subscriber Server (HSS),
9: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining an identity of the PDN GW from the HSS.
10: The method of claim 1, wherein the MME identifies the PDN GW by
obtaining the PDN GW address from the HSS.
Claim elements 1c, 11d, 9 and 10 are disclosed by the Motorola Submission.
This section incorporates the corresponding disclosure for the Motorola Submission
in Part X.C, Count 2, 1c, 11d, 9 & 10.
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1d: requesting, by the MME, the PDN GW to initiate a bearer creation
procedure
11e: and request the PDN GW to initiate a bearer creation procedure
4preamble: The method of claim 1, wherein the requesting a the [sic] PDN
GW to initiate a bearer creation procedure comprises:
4b: initiating, by the PDN GW, the bearer creation procedure.
Claim elements 1d, 11e, 4preamble, and 4b are disclosed by the Motorola
Submission. This section incorporates the corresponding disclosure for the Motorola
Submission in Part X.C, Count 3, 1d, 11e, 4preamble & 4b.
4a: sending, by the MME, a Create Bearer Request message to the PDN GW.
Claim element 4a is disclosed by the Motorola Submission. This section
incorporates the corresponding disclosure for the Motorola Submission in Part XI.C,
Count 3, 4a.
E. The Grounds Are Not Redundant
There is no redundancy in this Petition. It applies references in combination
to complement each other rather than as distinct and separate alternatives. See
Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 7, at
3 (PTAB Oct. 25, 2012).
Although both Counts 1 and 2 rely on the ’779 APA, the secondary references
in each Count are different publications that provide varying levels of disclosure
relevant to the claims of the ’779 Patent. For example, Soderbacka provides an
explicit information element indicating handover between non-3GPP and 3GPP
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networks, focused on an implementation scheme that straddles 2G and 3G network
architecture. The Nokia Submission, however, discloses an explicit information
element contained within an “Attach Request” message that was implemented in 3G
networks that shows the simple and obvious tool used to distinguish messages within
a network.
Similarly, although Counts 2 and 3 rely on Soderbacka and the Nokia
Submission as secondary references, the primary references provide additional
details about the known attach procedure that occurs during handover from non-
3GPP networks to 3GPP networks.
Should the Board find any redundancy in a ground, the Board should still
institute an IPR because the redundancy would neither “place a significant burden
on the Patent Owner and the Board” nor would it “cause unnecessary delays.” Id. at
2.
XI. CONCLUSION
For the foregoing reasons, Petitioners ask that inter partes review of the ’779
Patent be instituted and that the Challenged Claims be cancelled.
Date: January 20, 2017 By: / S. Benjamin Pleune /
S. Benjamin Pleune (52,421)
CERTIFICATION UNDER 37 C.F.R. § 42.24
Under the provisions of 37 CFR § 42.24, the undersigned hereby certifies that
the word count for the foregoing Petition for inter partes review totals 13,998 words,
which is less than the 14,000 allowed under 37 CFR § 42.24(a)(i).
Date: January 20, 2017 By: / S. Benjamin Pleune /
S. Benjamin Pleune (52,421)
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. §§ 42.6(e), 42.105, and the agreement of the parties,
the undersigned hereby certifies service on the Patent Owner of a copy of this
Petition and its respective exhibits via electronic means to counsel for Huawei at
FishServiceList-Huawei/[email protected].
Date: January 20, 2017 By: / S. Benjamin Pleune /
S. Benjamin Pleune (52,421)