[email protected]Paper No. 45 571-272-7822 Filed: December 10, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. HUAWEI TECHNOLOGIES CO., LTD. Patent Owner. ____________ Case IPR2017-01487 Patent 8,812,848 B2 ____________ Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
Transcript
[email protected] Paper No. 45 571-272-7822 Filed: December 10, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________
Before TREVOR M. JEFFERSON, MICHELLE N. WORMMEESTER, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge.
FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2017-01487 Patent 8,812,848 B2
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I. INTRODUCTION
A. Background
Samsung Electronics Co., Ltd.1 (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) to institute inter partes review of claims 1, 3–5, 7–9, 11–13, 15, and
16 (“the challenged claims”) of U.S. Patent No. 8,812,848 B2 (Ex. 1001,
“the ’848 patent”). Huawei Technologies Co., Ltd. (“Patent Owner”) filed a
Preliminary Response. Paper 11 (“Prelim. Resp.”). Upon consideration of
the Petition and Preliminary Response, we instituted review of all challenged
claims. Paper 17 (“Dec. Inst.”)
Patent Owner filed a Response to the Petition (Paper 26, “PO Resp.”),
and Petitioner filed a Reply to the Response (Paper 31, “Reply”). Patent
Owner filed a Sur-Reply to Petitioner’s Reply. Paper 38 (“PO Sur-Reply”).
We held an oral hearing on September 26, 2018, and the hearing transcript is
included in the record. Paper 44 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
set forth below, we find Petitioner has shown by a preponderance of the
evidence that claims 1, 3–5, 7–9, 11–13, 15, and 16 of the ’848 patent are
unpatentable.
B. Related Matters
Petitioner and Patent Owner identify the following as a matter that
could affect, or be affected by, a decision in this proceeding: Huawei Tech.
Co., Ltd. v. Samsung Elecs. Co., Ltd., Case No. 3:16-cv-02787 (N.D. Cal.).
1 Samsung identifies Samsung Electronics America, Inc. and Samsung Research America as real parties-in-interest. Pet. 3.
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102). Id. at 4:58–63, 5:10–16. The MME selects an NAS security algorithm
that is supported by both the UE and MME, derives a root key (Kasme) from
the authentication vector-related key, and derives an NAS protection key
from the root key (step 103). Id. at 5:25–31. The NAS protection key can
be an integrity protection key (Knas-int) or a confidentiality protection key
(Knas-enc). Id. at 5:31–33. The MME then sends a TAU accept message
identifying the selected NAS security algorithm to the UE (step 104). Id. at
5:34–44. The UE receives the TAU accept message, identifies the NAS
security algorithm selected by the MME, derives the same root key (Kasme)
from a UE key that is related to the authentication vector-related key (IK,
CK), and derives an NAS protection key (Knas-int or Knas-enc) from the
root key and the selected NAS security algorithm (step 105). Id. at 5:47–58.
Of the challenged claims, claims 1 and 9 of the ’848 patent are
independent. Other challenged claims depend directly or indirectly from
claims 1 or 9. Claim 9 is representative of the challenged claims, and is
reproduced below.
9. A method for security capability negotiation during idle state mobility of a user equipment (UE), in a situation where the UE moves from a non-long term evolution (non-LTE) network to a long term evolution (LTE) network, the method comprising:
sending, by the UE, UE security capabilities supported by the UE to the LTE network for a non-access stratum (NAS) security algorithm selection use;
receiving, by the UE, a selected NAS security algorithm from the LTE network;
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generating, by the UE, a root key from an authentication vector-related key available at the UE; and
deriving, by the UE, according to the NAS security algorithm, a NAS protection key according to the generated root key.
Ex. 1001, 12:30–45. Claim 1 is similar in scope to claim 9, but recites a user
equipment (UE) comprising a transmitter, receiver, and processor for
performing the method recited in claim 9. Compare id. at 11:52–65 with id.
at 12:30–45.
B. Claim Construction
The claim construction standard applicable to this inter partes review
proceeding is the broadest reasonable interpretation in light of the patent
manufacturers, and device manufacturers have all “been involved in the
development of 3GPP standards.” Id. ¶¶ 18–19. 3GPP members contribute
technical specifications, technical reports, and feasibility studies at both
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Working Group and Technical Specification Group levels. Id. ¶¶ 20–21.
Working Groups “meet regularly and also have quarterly plenary meetings
where member companies’ contributions, draft specification[s], and other
discussion documents are presented for approval.” Id. ¶ 20.
3GPP specification development “is an ongoing, collaborative effort
involving hundreds of engineers from many companies,” and 3GPP catalogs
that effort using “a very structured process.” Id. ¶¶ 24, 26. 3GPP names
member contributed documents using a naming procedure based on a
structured numbering system, whereby the numbers by which documents are
named indicate the subject matter of the documents. Id. ¶ 28–29 (citing
Ex. 1022 §§ 4, 5A). Once named, documents are compressed and uploaded
to the 3GPP FTP server as zipped files having the same name, and receive a
date and time stamp indicating when the upload occurred. Id. ¶¶ 30, 33, 37.
Once uploaded, documents are indexed on the 3GPP FTP server by subject
matter (e.g., Working Group number), meeting number, and type. Id. ¶ 35.
Documents are also effectively indexed by date due to the sequential
naming/numbering system. Id. Documents uploaded to the 3GPP FTP
server are available indefinitely and without restriction, and any interested
member of the public can freely access, download, print, reproduce, and
disseminate them. Id. ¶¶ 32–33. “Making documents publicly available
encourages discussion and promotes collaboration among Working Group
members toward the establishment of industry standards for cellular
telecommunications.” Id. ¶ 31.
Dr. Yaqub further testifies that the functionality of the 3GPP FTP
server, as described above, was present in October 1999, as evidenced by a
printout from the Internet Archive’s “Wayback Machine,” which shows the
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October 1999 landing page of the 3GPP TSG RAN group. Id. ¶ 41 (citing
Ex. 1024). Dr. Yaqub testifies that this printout “refreshes and confirms
[his] recollection as to how 3GPP’s website looked and could be navigated
in 1999,” and shows how “meeting information, such as Working Group
documents, could be accessed by the public” at the time. Id. The printout of
the 3GPP TSG RAN landing page shows links to the landing pages of other
3GPP groups (e.g., TSG CN, TSG SA, TSG T). Ex. 1024, 1. It also shows
a link to documents generally available on the 3GPP FTP server, a link to
documents from the TSG RAN group, and links to documents from various
TSG RAN Working Groups (e.g., TSG RAN WG1–WG4). Id. For
example, the printout shows a link to documents from TSG RAN WG1
directed toward the 3GPP Radio Layer 1 Specification. Id.
Dr. Yaqub further testifies that because the documents stored on the
3GPP FTP server were available without restriction and fully searchable,
they were available “to users via conventional search engines, such as the
Google search engine.” Ex. 1012 ¶ 48. Regarding the specific 3GPP
documents Petitioner relies on in this proceeding, Dr. Yaqub testifies that
TR 33.821 was uploaded to the 3GPP FTP server on July 13, 2007 and
TS 23.401 was uploaded on August 13, 2007. Ex. 1012 ¶¶ 54, 56.
Dr. Yaqub further testifies that each of these documents could have been
located using reasonable diligence by navigating to the 3GPP FTP site and
clicking on the links corresponding to the desired subject matter, meeting
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number, or document number, or by performing a Google search using the
terms “3GPP” and keywords within the document.3 Id. ¶ 49.
Patent Owner argues Petitioner has failed to establish the public
accessibility of TR 33.821 and TS 23.401 prior to the priority date of the
’848 patent. PO Resp. 37–40. In particular, Patent Owner argues Petitioner
has failed to demonstrate these 3GPP documents were sufficiently indexed
on the 3GPP FTP server to allow an interested party to locate them prior to
the priority date of the ’848 patent. Id. at 39. Patent Owner further argues
Petitioner has failed to provide any evidence that the documents were
presented at a 3GPP working group meeting, or were physically or
electronically disseminated in any manner. Id. at 39–40. Patent Owner also
argues that “Petitioner only provides present day evidence showing that the
public can download TR 33.821 and TS 23.401 from the [3GPP] FTP server
that putatively indicates TR 33.821 and TS 23.401 were uploaded on July
13, 2007 and August 13, 2007, respectively.” Id. at 40.
Public accessibility is “the touchstone in determining whether a
reference constitutes a ‘printed publication.’” In re Hall, 781 F.2d 897,
898–99 (Fed. Cir. 1986). A reference is publicly accessible if it “has been
disseminated or otherwise made available to the extent that persons
3 Dr. Yaqub further testifies that in addition to having access via the 3GPP FTP site, 3GPP members typically received an email whenever documents contributed for a Working Group meeting were uploaded to the FTP server. Id. ¶ 36. Moreover, each Working Group kept “minutes” of their meetings, and uploaded these to the 3GPP FTP server. Id. ¶ 38. These minutes were organized by subject matter or topic, as described above, and included a table of contents so that all TDocs relating to a particular subject or topic presented or discussed at the meeting could be easily located. Id. ¶ 39.
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interested and ordinarily skilled in the subject matter or art, exercising
reasonable diligence, can locate it.” In re Wyer, 655 F.2d 221, 226 (CCPA
1981) (citations omitted). Public accessibility “is determined on a case-by-
case basis, and based on the ‘facts and circumstances surrounding the
reference's disclosure to members of the public.’” In re Lister, 583 F.3d
1307, 1311 (Fed. Cir. 2009) (quoting In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004)). The determination “is a legal conclusion based on
underlying factual determinations.” Kyocera Wireless Corp. v. Int’l Trade
Comm'n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).
“[A] variety of factors may be useful in determining whether a
reference was publicly accessible.” Lister, 583 F.3d at 1312. Two such
factors are cataloging and indexing, although neither of these factors is “a
necessary condition for [a] reference to be publicly accessible.” Id.
Cataloging and indexing are most probative and relevant “in the context of
references stored in libraries.” Medtronic, Inc. v. Barry, 891 F.3d 1368,
1380 (Fed. Cir. 2018). However, such evidence is not needed to prove the
public accessibility of documents distributed at a meeting. Id. at 1381. To
prove the public accessibility of meeting-distributed documents, the most
relevant factors are “(1) ‘the length of time the [document] was exhibited,’
(2) ‘the expertise of the target audience’ (to determine how easily those who
viewed the material could retain the information), (3) ‘the existence (or lack
thereof) of reasonable expectations that the [document] would not be
copied,’ and (4) ‘the simplicity or ease with which the [document] could
have been copied.’” Id. at 1381–82 (quoting Klopfenstein, 380 F.3d at
1350).
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Upon consideration of Petitioner’s evidence and Patent Owner’s
arguments regarding the insufficiency of that evidence, we find Petitioner
has demonstrated by a preponderance of the evidence that TR 33.821 and
TS 23.401 were publicly available before the earliest effective priority date
of the ’848 patent, and are prior art under 35 U.S.C. § 102.
Dr. Yaqub has provided extensive unrebutted testimony regarding
3GPP’s routine business practices, including how (1) 3GPP’s technical
specifications, reports, and TDocs were created and uploaded to 3GPP’s
FTP server, (2) these documents were downloaded without restriction by
hundreds of engineers from many different member companies for
discussion at 3GPP working group and plenary meetings, (3) these engineers
(and other interested members of the public) had indefinite access to these
documents long after the meetings had ended, and (4) the 3GPP FTP server
indexed meeting documents based on meeting date and subject. See Ex.
1012 ¶¶ 20–21, 24, 30–33, 35.
Although Dr. Yaqub’s testimony is directed to 3GPP documents in
general, Dr. Yaqub’s description of 3GPP’s regular business practice
demonstrates the public accessibility of TR 33.821 and TS 23.401. See
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568–69
(“Evidence of routine business practice can be sufficient to prove that a
reference was made accessible.”). TR 33.821 and TS 23.401, like all 3GPP
documents, were generated with intent to distribute them to interested
members of the telecommunications industry. They were uploaded to
3GPP’s FTP server without restriction or expectation of confidentiality, and
were indefinitely maintained there. They have been available for
downloading (copying) from the FTP server since being uploaded, and can
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be shared with others without restriction. Under such circumstances, the
documents are publicly accessible. See Klopfenstein, 380 F.3d at 1351
(finding publicly accessible a document that was easily copied and displayed
for an extended period of time to persons having ordinary skill in the art
without restrictions on copying). Indeed, Specifications for the related GSM
(Global System for Mobile) telecommunications standard were publicly
accessible because:
GSM specifications, though drafted within smaller technical subcommittees, were widely distributed before the critical date of the ’983 Patent. Versions of the standard were “publicly available and released as consistent sets.” Several U.S. companies took part in the ETSI work and had access to the GSM specifications through their European subsidiaries. The specifications themselves were visible to any member of the interested public without requesting them from an ETSI member. Further, ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.
Kyocera, 545 F.3d at 1350–51 (internal citations omitted).
E. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude portions of TR 33.821
(Ex. 1004), TS 23.401 (Ex. 1005), and the Declaration of Raziq Yaqub,
Ph.D. (Ex. 1012), and the entirety of TS 23.401 (version 8.4.0) (Ex. 1028),
Patent Owner’s District Court Infringement Contentions (Ex. 1011), and the
Deposition Testimony of Johan Johansson (Ex. 1030). Paper 36, 2–6
(“Mot.”). Petitioner opposed the Motion (Paper 39, “Opp.”), and Patent
Owner replied (Paper 41, “Opp. Reply”). As the movant, Patent Owner
bears the burden of establishing it is entitled to the relief requested. See
37 C.F.R. § 42.20. The Board decides evidentiary issues based on the
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Federal Rules of Evidence. Id. § 42.62(a). For the reasons discussed below,
we deny Patent Owner’s motion to exclude.
1. Declaration of Raziq Yaqub, Ph.D.(Ex. 1012)
In paragraphs 54–56 of his declaration, Dr. Yaqub opines on the
authenticity, public availability, and publication dates of TR 33.821 and
TS 23.401. See Ex. 1012 (“Yaqub Decl.”) ¶¶ 54–56. Dr. Yaqub bases his
opinion, in part, on his ability to find these documents on the 3GPP FTP
server and listserv server, and the time stamps associated with these
documents on those servers. Id. His testimony includes screen shots of
portions of the 3GPP FTP server’s webpage listing these documents, and
URLs (universal resource locators) pointing to where these documents are
located on the 3GPP FTP server. Id.
On December 21, 2017, Patent Owner objected to Dr. Yaqub’s
declaration “to the extent it relies on documents that lack authentication or
contain hearsay.” Paper 19, 1. In particular, Patent Owner objected to
certain paragraphs of Dr. Yaqub’s declaration that “quote, discuss, or
otherwise rely on web pages that were not filed in this proceeding,” and that
“lack authentication and contain hearsay.” Id. On January 8, 2018,
Petitioner provided the webpages to Patent Owner in the form of
supplemental evidence. See Paper 20, 1; see also 37 C.F.R. § 42.64(b)(2).
On January 11, 2018, Patent Owner objected to the webpages as lacking
authentication and containing hearsay. Id. at 1.
Patent Owner moves to exclude paragraphs 54–56 of Dr. Yaqub’s
declaration “because they rely on unauthenticated webpages for the truth of
the matter asserted in those webpages.” Mot. 3–4. Patent Owner argues the
webpages lack authentication, and contain inadmissible hearsay that Dr.
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Yaqub relied on in determining when TR 33.821 and TS 23.401 (Exs. 1004–
1005) were publicly accessible on the 3GPP FTP server. Id. at 4–5.
Petitioner argues the objected to webpages are self-authenticating, and have
been authenticated by Dr. Yaqub’s testimony regarding their distinctive
characteristics. Opp. 3–5. Petitioner further argues the webpages “are
exempt from the rule against hearsay under Federal Rules of Evidence
803(6) and 807.” Id. at 6. Patent Owner responds that Dr. Yaqub is not
qualified to certify the authenticity of the webpages because his declaration
“is silent as to his role in the [3GPP] group’s recordkeeping or maintaining
the accuracy of the 3GPP webpages.” Opp. Reply 2.
Under Federal Rule of Evidence 803(6), records of a regularly
conducted activity are not hearsay provided the opposing party has not
established that the source of information or the method or circumstances of
their preparation indicate a lack of trustworthiness, and the party offering the
records establishes through the testimony of a qualified witness that the
records are (a) made at or near the time from information transmitted by
someone with knowledge, (b) kept in the course of a regularly conducted
business activity, and (c) made as a regular practice of that activity. Fed. R.
Evid. 803(6). Under Federal Rule of Evidence 902(11), such records are
self-authenticating provided (a) they are originals or copies that meet the
requirements of Rule 803(6)(a)–(c) as shown by certification of a qualified
person, (b) notice of intent to offer the records is given to the opposing party
before a hearing, and (c) the records and certifications are made available to
the opposing party so that the opposing party has a fair opportunity to
challenge them. Id. at 902(11).
We first note, “[b]ecause of the general trustworthiness of regularly
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kept records and the need for such evidence in many cases, the business
records exception [to the hearsay rule] has been construed generously in
favor of admissibility.” Conoco Inc. v. Dept. of Energy, 99 F.3d 387, 391
(Fed. Cir. 1996). Moreover, “the ‘custodian or other qualified witness’ who
must authenticate business records need not be the person who prepared or
maintained the records, or even an employee of the record-keeping entity, so
long as the witness understands the system used to prepare the records.” Id.
Finally, “documents that are standard records of the type regularly
maintained by firms in a particular industry may require less by way of
foundation testimony than less conventional documents proffered for
admission as business records.” Id. at 392; see also Gjokaj v. U.S. Steel
Corp., 700 F. App’x 494, 502 (6th Cir.) (finding a business record certified
by a qualified witness is self-authenticating under Federal Rule of Evidence
902(11)).
We find persuasive Dr. Yaqub’s testimony that the 3GPP webpages
he relied upon in his declaration are authentic, and their content, including
the publication dates of TR 33.821 and TS 23.401, are not hearsay. Dr.
Yaqub is a qualifying witness for the purposes of Rule 806(b) and 902(11).
See Conoco, 99 F.3d at 391; see also Gjokaj, 700 F. App’x at 502. From
1998 until 2010, Dr. Yaqub worked for various entities having an interest in
developing or understanding 3GPP technologies. Ex. 1012 ¶¶ 7–12. During
that time, he both participated in and contributed to 3GPP standards setting
organizations, was an active member in various 3GPP plenary level and
working group level meetings, and was Rapporteur of Technical Feasibility
Report TR 33.817. Id. ¶¶ 8, 11.
Dr. Yaqub testifies that 3GPP “produce[s] reports and specifications
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that define technologies covering cellular communications networks.” Id.
¶ 19. The specifications are “contribution-driven by 3GPP member
companies,” and produced via regularly and quarterly plenary meetings
“where member companies’ contributions, draft specification[s], and other
discussion documents are presented for approval.” Id. ¶ 20. Dr. Yaqub
further testifies that 3GPP follows “[a] well-established process . . . for
capturing accepted proposals and changes in Technical Specifications (TS)
and Technical Reports (TR).” Id. ¶ 24. This process includes a file naming
convention so that all of “the changes that are brought into the standard,
from the past, present, and in the future, are well documented and
controlled.” Id. ¶ 28 (quoting Ex. 1022, 5).
Dr. Yaqub further testifies that 3GPP documents are stored on 3GPP’s
FTP server in zip-compressed format, where the filename of the zip file is
the same as the name of the source document. Id. ¶ 29 (citing Ex. 1022
§ 5A). Member-contributed documents (“TDocs”) are assigned unique
document numbers, and “members upload these documents to 3GPP’s
public FTP server before, during, and after Working Group meetings.” Id.
¶ 30. The documents are uploaded “[s]oon after the end of the meeting—the
same day, or at worst within a few days.” Id. ¶ 37. The “TDocs are
publicly-available and unrestricted on the online FTP server,” and are
“openly published and no password is needed to access any information on
the 3GPP website.” Id. ¶ 30; see also Ex. 1022 § 7.6. Documents uploaded
to the 3GPP FTP server “receive a data and time stamp.” Ex. 1012 ¶ 33.
The documents are “retained on the public 3GPP server indefinitely, and the
date and time stamp can be relied upon to indicate when the upload
occurred.” Id. ¶¶ 33, 37.
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Based on the foregoing testimony, we find Dr. Yaqub “understands
the system used to prepare [3GPP] records,” and is a “qualified witness” or
“qualified person” as those terms are used in Federal Rules of Evidence
803(6) and 902(11). See Conoco, 99 F.3d at 391; see also Gjokaj, 700 F.
App’x at 502.
For the documents relevant to this proceeding (TR 33.821 and TS
23.401), Dr. Yaqub testifies that he “navigated to the relevant file” on the
3GPP FTP server, and “confirm[ed] that it had been correctly uploaded.”
Ex. 1012 ¶ 51. Dr. Yaqub provides the URLs he used to navigate to the
documents, and testifies that he recognizes the documents located by those
URLs as “true and correct” copies. Id. ¶¶ 54, 56. Dr. Yaqub provides
screen shots of the 3GPP FTP server’s directories that include the identically
named zip files containing the objected to documents. Id. As discussed
above, when Patent Owner objected to these screen shots, Petitioner served
complete printouts of the 3GPP FTP server’s directories from which Dr.
Yaqub took the screenshots. Opp. 5; see also Paper 19, 1; Paper 20, 1; Exs.
1031–1032.
Patent Owner provides no evidence that the 3GPP FTP server, the
webpages disclosing the contents of the FTP server’s directories, or the
methods or circumstances by which those webpages or their content were
prepared lack trustworthiness. See Mot. 3–5; Opp. Reply 1–4. By contrast,
Dr. Yaqub testifies that the contents of the 3GPP FTP server directories
(webpages) he relied upon were made and kept in the course of 3GPP’s
regularly conducted business activity, and were made at or near the times
indicated by their upload date and time stamps from information transmitted
by 3GPP contributing members. See Ex. 1012 ¶¶ 24, 28–30, 33, 37, 54–56.
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Dr. Yaqub’s declaration and the webpages (printouts of the 3GPP FTP
server directories) he relied upon were served on Patent Owner with notice
of intent to use them, and Patent Owner was provided with the opportunity
to challenge the webpages and their content, as well as Dr. Yaqub’s
testimony regarding how that content was created. See 37 C.F.R.
§ 42.51(b)(1)(ii).
Based on the evidence presented, as summarized above, we find Dr.
Yaqub’s testimony sufficient to authenticate the 3GPP FTP server’s
directories (webpages) and their content, such that they are admissible under
Federal Rule of Evidence 902(11) and not hearsay under Federal Rule of
Evidence 803(6). We, therefore, deny Patent Owner’s motion to exclude
paragraphs 54–56 of Dr. Yaqub’s declaration.
As discussed above, Petitioner also argues the 3GPP FTP server
directories (webpages) Dr. Yaqub relies upon can be authenticated under
Federal Rule of Evidence 901(b)(4), and their content is not hearsay under
Federal Rules of Evidence 807. Opp. 4–13. Patent Owner argues to the
contrary. Opp. Reply 2–3. Because we find Petitioner has shown the
webpages are self-authenticating business records and their contents are not
hearsay, we need not address these additional arguments. See Beloit Corp.
v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on a single
dispositive issue to “not only save the parties, the [agency], and [the
reviewing] court unnecessary cost and effort,” but to “greatly ease the
burden on [an agency] faced with a . . . proceeding involving numerous
complex issues and required by statute to reach its conclusion within rigid
time limits”).
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2. TR 33.821 and TS 23.401
Patent Owner moves to exclude as hearsay portions of TR 33.821
(Ex. 1004) and TS 23.401 (Ex. 1005) “[t]o the extent Petitioner relies on the
dates within [each of these Exhibits] for the purported truth of the matter
asserted to show the date of [their] public accessibility.” Mot. 2. Petitioner
argues the contents of these documents are “exempt from the rule against
hearsay under Federal Rules of Evidence 803(6) and 807.” Opp. 10–13.
Patent Owner argues “Dr. Yaqub’s role as a ‘participant in 3GPP’ is
insufficient to render him a qualified individual to support admission under
FRE 806(b),” and that “FRE 807 is an ‘exceptional’ remedy that Petitioner
has not justified in this case.” Opp. Reply 4.
For the reasons discussed in § II.E.1, supra, we find Dr. Yaqub is a
qualified witness who has authenticated the objected to documents, and
established their trustworthiness, so that their content is not hearsay under
Fed. R. Evid. 803(6). Patent Owner relies on Kolmes v. World Fibers Corp.,
107 F.3d 1354, 1542–43 (Fed. Cir. 1997), to argue that Dr. Yaqub is not a
qualified witness. We disagree. In Kolmes, a witness who “testified that he
had seen [certain] documents while attending a meeting,” but failed to
“testify concerning the record-keeping process related to them” was found
not to be a “qualified witness” under Federal Rule of Evidence 803(6). Id.
In the instant case, however, Dr. Yaqub has provided extensive testimony
regarding 3GPP’s record-development and record-keeping process,
including the fact that member-contributed documents uploaded to the 3GPP
FTP server are maintained indefinitely on that server as of their upload
dates. See Ex. 1012 ¶¶ 24, 28–30, 33, 37. Dr. Yaqub is, therefore, a
qualified witness. See Conoco, 99 F.3d at 391. Moreover, regarding the
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specifically objected to documents, Dr. Yaqub testifies that these documents
are “true and correct” copies of the documents uploaded to the 3GPP FTP
server as of their upload dates, and provides specific URLs to the 3GPP FTP
server by which they are downloadable. Id. ¶¶ 54, 56.
Accordingly, for the reasons discussed here and in § II.E.1 supra, we
find the objected to documents TR 33.821 (Ex. 1004) and TS 23.401
(Ex. 1005) are admissible business records under Federal Rule of Evidence
902(11), and their content is not hearsay under Federal Rule of Evidence
803(6). We, therefore, deny Patent Owner’s motion to exclude any portions
of Exhibits 1004 and 1005. Moreover, because we find these Exhibits are
admissible and not hearsay under Federal Rule of Evidence 803(6), we need
not address the parties’ additional arguments regarding whether these
documents are admissible and not hearsay under Federal Rule of Evidence
807. See Beloit, 742 F.2d at 1423.
3. Johansson Deposition Transcript (Ex. 1030)
Exhibit 1030 is a deposition transcript of Johan Johansson taken in the
related District Court proceeding. Mr. Johansson is a former Huawei
employee, and was Huawei’s 3GPP representative for Working Group 2.
Ex. 1030, 7:7–9, 54:18–55:7. Mr. Johansson testified that while he was
Huawei’s Working Group 2 representative, his practice was to download
TDocs for the Working Group 2 meetings he attended. Id. at 147, 9–13. He
further testified that he did not need to provide these TDocs to anyone else
because “[e]veryone that needed them would download them from the FTP
server at 3GPP,” and that because the FTP server was public, “the world had
access to these TDocs, everyone.” Id. at 147:19–22, 154:7–10.
Petitioner relies on Mr. Johansson’s testimony to corroborate Dr.
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23
Yaqub’s testimony that it was 3GPP’s regular business practice to make
3GPP documents available to and accessible by “at least members of the
3GPP working [groups] through the 3GPP FTP site.” Reply 21. Patent
Owner moves to exclude this testimony as irrelevant and causing unfair
prejudice. Mot. 6 (citing Fed. R. Evid 401–403). Patent Owner argues the
testimony is irrelevant because it “makes no mention of the 3GPP
specifications in this case—TR 33.821 and TS 23.401,” and does not
identify which documents were downloaded from the FTP server or when.
Id.; Opp. Reply 5. Petitioner argues the testimony is relevant because it
“directly contradicts Huawei’s arguments concerning the public availability”
of 3GPP documents. Opp. 14.
A document is relevant if it tends to make a fact of consequence in
determining an action more or less probable. Fed. R. Evid. 401. Relevant
evidence is generally admissible, but may be excluded if its probative value
is substantially outweighed by unfair prejudice. Id. at 402–403.
Mr. Johansson’s testimony is relevant because it makes more or less
probable Dr. Yaqub’s testimony regarding 3GPP’s business practice of
making TDocs available to Working Group members before Working Group
meetings. This is true, even though Mr. Johansson’s testimony does not
concern the specific TDocs at issue in this proceeding. As discussed in
§ II.D, supra, the public availability of documents can be established based
on evidence of regularly conducted business practices. See Constant, 848
F.2d at 1568–69 (“Evidence of routine business practice can be sufficient to
prove that a reference was made accessible.”). Patent Owner’s concerns
about unfair prejudice do not persuade us that we should exclude Mr.
Johansson’s testimony because, like a district court conducting a bench trial,
IPR2017-01487 Patent 8,812,848 B2
24
we can assess the probative value of the testimony as it applies to this
proceeding.
Accordingly, for the reasons discussed above, we deny Patent
Owner’s motion to exclude the testimony of Mr. Johansson.
4. TS 23.401 v. 8.4.0 (Ex. 1028)
Exhibit 1028 is a newer version of TS 23.401 (Ex. 1005), released
December 2008, which is after the priority date of the ’848 patent.
Ex. 1028, 1. It discloses the UE’s “network capabilities indicate . . . the
supported NAS and AS security algorithms.” Id. at 55. Petitioner relies on
Exhibit 1028 to rebut Patent Owner’s argument that the TAU request a UE
sends to an MME in idle mode mobility between non-LTE and LTE
networks, which includes the UE’s Network Capability, does not include the
UE’s security capabilities. See Reply 19, n.5; see also Ex. 1005, 31–32
(showing a UE sends its “UE Network Capability” to an MME in a TAU
request).
Patent Owner argues that because Exhibit 1028 was dated after the
priority date of the ’848 patent, it “is irrelevant to showing how a Skilled
Artisan would understand ‘UE Network Capabilities’ as of the time at
Ex. 1014 ¶¶ 107–110).4 Accordingly, Petitioner has demonstrated how the
combination of TR 33.821 and TS 23.401 teaches a UE having a processor
configured to generate a root key from an authentication vector-related key
available at the UE as required by claim 1.
Lastly, claim 1 requires the UE processor to derive an NAS protection
key for communicating with the LTE network from the root key and the
selected NAS security algorithm. Ex. 1001, 11:62–65. Petitioner argues the
combination of TR 33.821 and TS 23.401 teaches this limitation. See Pet.
45–50, 58–63. Patent Owner does not dispute Petitioner’s contentions. See
generally PO Resp.
Petitioner demonstrates how TR 33.821 discloses this limitation by
generating NAS protection key KNASenc from root key Kasme based on a
particular encryption algorithm, and by generating NAS protection key
KNASint from root key Kasme based on a particular integrity algorithm,
during an AKA run. Pet. 48–50 (citing Ex. 1004, 33, 47, 52–53, Figs. 10,
12; Ex. 1014 ¶¶ 111–113).5 Accordingly, Petitioner has demonstrated how
the combination of TR 33.821 and TS 23.401 teaches a UE having a
processor configured to generate an NAS protection key for communicating
4 The ’848 patent identifies Kasme as a root key, and CK and IK as authentication vector-related keys. See Ex. 1001, 5:11–16, 5:25–33. 5 The ’848 patent identifies Knas-enc and Knas-int as NAS protection keys and Kasme as a root key. See Ex. 1001, 5:25–33.
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with the LTE network from a generated root key according to the selected
NAS security algorithm as required by claim 1.
For the reasons discussed above, having considered the evidence and
arguments presented by Petitioner and Patent Owner, Petitioner has
demonstrated by a preponderance of the evidence that the combination of
TR 33.821 and TS 23.401 teaches or suggests all the limitations of claim 1.
Claim 9 is a method claim that recites a method for security capability
negotiation performed by a UE undergoing idle mode mobility from a non-
LTE to LTE network by performing the functions recited in claim 1.
Compare Ex. 1001, 12:30–45 with id. at 11:52–65. Petitioner maps the
limitations of claim 9 to the corresponding functional limitations of claim 1,
and provides the same analysis described above with respect to claim 1 to
demonstrate how the combination of TR 33.821 and TS 23.401 teaches all
the limitations of claim 9. See Pet. 55–56. Accordingly, for the reasons
discussed above with respect to claim 1, Petitioner has demonstrated how
the combination of TR 33.821 and TS 23.401 teaches all the limitations of
claim 9.
b. Claims 3 and 11
Claim 3 depends from claim 1, and requires the authentication vector-
related key for generating the root key to include an integrity key (IK) and
an encryption key (CK) when the UE moves from a 3G network to an LTE
network. Ex. 1001, 12:3–7, Cert. of Corr., 1. Claim 11 depends from claim
9, and requires the same limitation. Compare id. at 12:3–7, with id. at
12:50–53; see also id., Cert. of Corr., 1. Petitioner relies on the combination
of TR 33.821 and TS 23.401 to teach this limitation. See Pet. 50–51, 56–65.
Patent Owner does not dispute Petitioner’s contentions. See generally PO
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Resp.
Petitioner demonstrates how TS 23.401 teaches a UE undergoing idle
mode mobility between 3G and LTE networks sends a TAU request to an
MME, and the UE and MME subsequently perform an AKA run. Pet. 50
(citing Ex. 1005, 30–31); see also id. at 42–43 (citing Ex. 1005, 30–32, Fig.
5.3.3.2-1). Petitioner further demonstrates how TR 33.821 teaches the UE
and MME generate root key Kasme from authentication vector-related keys
CK and IK during an AKA run.6 Id. at 50 (quoting Ex. 1004, 33); see also
1014 ¶¶ 118–119). In particular, Petitioner demonstrates how steps 4 and 5
of Figure 17 of TR 33.821 teach “the MME provides the ‘UE caps’ to the
eNodeB in a NAS SMC,” and the “eNodeB provides the NAS SMC
(including the ‘UE caps’) to the UE. Id. at 53. Accordingly, Petitioner has
demonstrated the combination of TR 33.821 and TS 23.401 teaches this
limitation, similarly recited in claims 7 and 15.
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f. Claims 8 and 16
Claim 8 depends from claim 7, and requires the processor to compare
whether the UE security capability information received from the LTE
network is consistent with the security capability information stored in the
UE, and to determine the security capability negotiation fails if the two are
inconsistent. Ex. 1001, 12:20–27. Claim 16 depends from claim 9, and
requires the UE to perform the same function. Compare id. at 12:20–27 with
id. at 13:1–9. Petitioner argues the combination of TR 33.821 and
TS 23.401 teaches this limitation. See Pet. 54–55, 58–65. Patent Owner
does not dispute Petitioner’s contentions. See generally PO Resp.
As discussed above, Petitioner demonstrates how TR 33.821 teaches
an MME sends the UE’s security capabilities (UE caps) to the UE (via
eNodeB) in the same SMC message the MME sends to the UE to indicate
the MME’s NAS security algorithm selection. Pet. 54 –55 (citing Ex. 1004,
69–70, Fig. 17; Ex. 1014 ¶¶ 118–119). Petitioner further demonstrates,
through the unrebutted testimony of Dr. Williams, that the UE “compare[s]
the information maintained at the UE with the information received from the
network . . . [to] ensure that an attacker has not interfered with the security
algorithm selection process.” Id. at 55 (quoting Ex. 1014 ¶ 121); see also id.
(quoting Ex. 1004, 68 (“The capabilities the UE sends to the network shall
be repeated in an integrity protected message to UE such that ‘bidding down
attacks’ against the UE’s capabilities can be detected by UE.”)).
Accordingly, Petitioner has demonstrated the combination of TR 33.821 and
TS 23.401 teaches this limitation, similarly recited in claims 8 and 16.
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2. Secondary Considerations of Non-obviousness
Patent Owner argues that, notwithstanding Petitioner’s arguments and
evidence to the contrary, the challenged claims of the ’848 patent are
patentable due to secondary considerations of non-obviousness. PO Resp.
18–21. In particular, Patent Owner argues, “[w]hen the solution of the 848
Patent was presented to the Skilled Artisans at 3GPP, they did not respond
as if it was an obvious solution. Instead, they expressed considerable
skepticism.” Id. at 18.
Patent Owner argues that in October 2007, the inventor of the ’848
patent (Mr. He) presented two documents at a 3GPP working group
meeting—S3-070684 (Ex. 2006) and S3-070685 (Ex. 2007). Id. at 19.
Patent Owner characterizes these documents as presenting Mr. He’s “novel
solution for security negotiation between a UE and an MME when the UE is
in idle state and has moved from a non-LTE network to an LTE network.”
Id. Patent Owner argues the attendees of the working group meeting were
persons of ordinary skill in the art and “did not immediately see the benefits
of Mr. He’s proposals” because they “required Mr. He to submit ‘more
rationale on why this procedure is necessary.’” Id. at 19–20 (quoting Ex.
2008, 19).
Patent Owner argues Mr. He resubmitted his proposals7 at a 3GPP
working group meeting in December 2007, including S3a071040, which
Patent Owner characterizes as “an updated submission regarding security
negotiation between a UE and an MME when the UE is in idle state and has
7 Mr. He resubmitted S3-070684 (Ex. 2006) as S3a071039 (Ex. 2012). Compare Ex. 2006 with Ex. 2012. Mr. He resubmitted S3-07065 (Ex. 2007) as S3a071040 (Ex. 2013). Compare Ex. 2007 with Ex. 2013.
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moved from a non-LTE network to an LTE network.” Id. at 20 (citing Ex.
2013, 2). Patent Owner argues the working group “questioned whether the
UE capabilities should be transmitted in step 1 (the TAU request [from the
UE]) when they could be sent in step 3 (the context response from the old
network element).” 8 Id. at 20 (citing Ex. 2009, 11).
Patent Owner argues Mr. He “then submitted discussion document
S3-080123 (Ex. 2004) for consideration” to 3GPP at a working group
meeting in February 2008. Id. Patent Owner argues Mr. He explained in
S3-080123 that “his solution of carrying the UE’s security capabilities in the
TAU request is more efficient than carrying this information in the context
response,” which would “[i]ntroduce unnecessary roundtrips between the
Rel-8 SGSN and the UE during idle mode mobility from Rel-8
UTRAN/GERAN [non-LTE] to EUTRAN [LTE].” Id. at 20 (quoting Ex.
2004, 1). Moreover, including the UE’s security capabilities in the context
response would require updating “the Pre-rel-8 SGSNs during idle mode
mobility from Rel-8 UTRAN/GERAN [non-LTE] to EUTRAN [LTE],
which seems infeasible from [an] operator’s point of view.” Id. at 21
(quoting Ex. 2004, 1). Patent Owner argues “[w]ith this further explanation
of the previously unknown and unexpected efficiency advantages of Mr.
8 We note the working group directed its comments to Sa071039 rather than to S3a071040 as Patent Owner contends. See Ex. 1009, 11. Sa071039 is the resubmission of S3-070684. Compare Ex. 1012 with Ex. 2006. Sa071039 proposes modifying an LTE to LTE idle mode procedure rather than a non-LTE to LTE idle mode procedure. See Ex. 2012, 2 (showing modification of an idle mode procedure between old and new MMEs, i.e., an LTE to LTE idle mode procedure).
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He’s solution” the working group approved and adopted Mr. He’s proposals
into the TR 33.821 standard. Id. at 21 (citing Ex. 2010, 30).
Industry skepticism and unexpected results are objective indicia of
secondary considerations of non-obviousness. See In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998) (internal citations omitted). Such “objective
indicia of non-obviousness play an important role as a guard against the
statutorily proscribed hindsight reasoning in the obviousness analysis.”
objective [evidence of secondary considerations] to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention.”) (internal citation omitted).
As discussed above, Mr. He’s proposal in S3-070685 pertains to
modifying an LTE to LTE idle mode mobility procedure, rather than to a
non-LTE to LTE idle mode mobility procedure as claimed in the ’848 patent.
See Ex. 2006, 1–2 (showing the modified procedure is for mobility between
new and old MMEs, i.e., LTE to LTE mobility). It, therefore, lacks any
nexus to the invention claimed in the ’848 patent. Mr. He’s proposal in S3-
070685 pertains to adding a new section to TR 33.821 to document an
existing non-LTE to LTE idle mode mobility procedure described in
TS 23.401 v1.1.1. See Ex. 2007, 1. The record does not indicate that Mr. He
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proposed the non-LTE to LTE idle mode mobility procedure described in
TS 23.401 v1.1.1. At best, it indicates he proposed adding its description to
TR 33.821, which again, documents the reasons 3GPP adopted various
security mode procedures. See Ex. 2007, 1; see also Ex. 1004, 6. Given this
uncertainty and lack of evidence, the nexus of Mr. He’s S3-070685 proposal
to the invention claimed in the ’848 patent is weak at best.9 Moreover, the
3GPP working group’s request to explain the need for a procedure change is
weak evidence of skepticism that the procedure change would not work.
After receiving the 3GPP meeting group’s recommendation, Mr. He
submitted revised proposals S3a071039 (Ex. 2012) and S3a071040 (Ex.
2013). S3a071039 is a revised version of S3-070684 (Ex. 2006), and again
proposes modifying TR 33.801 § 7.4.11.3 to indicate an MME receives a
UE’s security capabilities from the UE in LTE to LTE idle mode mobility.
See Ex. 2012, 1, 2 (showing modification of an idle mode mobility
procedure between new and old MMEs, i.e., LTE to LTE mobility); see also
n.7, supra. Thus, S3a071039 lacks nexus to the invention claimed in the
’848 patent, which pertains to a non-LTE to LTE idle mode mobility
procedure. S3a071040 is a revised version of S3-070685 (Ex. 2007), and
again proposes adding a new section to TR 33.801 to document the non-LTE
to LTE idle mode mobility procedure already described in TS 23.401 (albeit
in even newer version v1.4.1). See Ex. 2013, 1–2; see also n.7, supra.
9 The invention claimed in the ’848 patent is to a non-LTE to LTE idle mode mobility procedure. Mr. He’s S3-070685 proposal is not to add a new non-LTE to LTE idle mode mobility procedure, but to add the description of a procedure already described in TS 23.401 v1.1.1 to TR 33.821 to document the reasons for 3GPP’s security decisions. See Ex. 2007, 1; see also Ex. 1004, 6.
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Thus, for the reasons discussed above with respect to S3-070685,
S3a071040 has weak nexus at best to the invention claimed in the ’848
patent.
The 3GPP working group considered Mr. He’s proposals in
S3a071039 and S3a071040, and commented only on the proposal in
S3a071039, which pertains to modifying an LTE to LTE idle mode mobility
procedure. See Ex. 2009, 11; see also Ex. 2012, 2 (showing the modified
procedure is for idle mode mobility between old and new MMEs, i.e., LTE
to LTE mobility). Specifically, the 3GPP working group suggested
modifying the Editor’s note in step 3 of the procedure described in
S3a071039 “to clarify that if the security capabilities are needed in step 3
then possibly they are not needed in step 1,” and to “extend the Editor’s note
to state that this procedure should be harmonised [sic] with the procedure in
S3a071040.” Ex. 2009, 11.
To whatever extent these suggestions show skepticism about Mr. He’s
proposals, they are weak evidence of skepticism. As noted above, the
suggestion to clarify editorial remarks in S3a071039 lacks any nexus to the
invention claimed in the ’848 patent because S3a071039 pertains to
modifying an LTE to LTE idle mode mobility procedure. See Ex. 2012, 1–2.
The suggestion to harmonize the editorial comments in S3a071039 and
S3a071040 is only weak evidence of skepticism for two reasons. First, it is
a suggestion to change an editor’s comment, not the proposed procedure.
Second, the editor’s comment does not question whether the non-LTE to
LTE idle mode mobility procedure described in TS 23.401 v.1.4.1 would
work. This can be seen from the description of step 3 of the TS 23.401
v1.4.1 non-LTE to LTE idle mode mobility procedure Mr. He proposes
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adding to TR 33.801, and the editor’s comment regarding step 3, which is as
follows:
3. The old SGSN sends back a context response to the new MME including at least the IMSI, IK, CK to the new MME. Editor’s Notes: It is FFS [for further study] whether the UE’s security capabilities should be carried in this step.
Ex. 2013, 2. Nothing in the editor’s comment indicates skepticism that
sending the UE’s security capabilities to the MME in step 1 would not work,
i.e., that it would fail to provide the MME with the UE security information
the MME needs to negotiate NAS security with the UE. Rather, the
skepticism is whether the SGSN should provide the UE’s security
capabilities to the MME in a context response message given that the MME
has already received the UE’s security information from the UE in step 1.
Id.
In response to the 3GPP working group’s suggestions, Mr. He
submitted new proposal S3-080123 to the working group at the February
2008 meeting. See Ex. 2004, 1. In S3-080123, Mr. He proposes modifying
TR 33.821 v0.6.0 by deleting the Editor’s note to steps 3 in TR 33.821
§§ 7.4.12.3 and 7.4.12.4. Id. The proposed modification to section 7.4.12.3
pertains to LTE to LTE idle mode mobility within EUTRAN, incorporates
Mr. He’s proposal S3a071039, and simply proposes deleting the Editor’s
notes for step 3. Id. at 2, n.1. The proposed modification to section 7.4.12.4
pertains to non-LTE to LTE idle mode mobility between UTRAN and E-
UTRAN, incorporates Mr. He’s proposal S3a071040, and simply proposes
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deleting the Editor’s notes for step 3. Id. at 4, n.2.10 Upon deleting the
editor’s notes as requested, the 3GPP working group accepted Mr. He’s
proposal without comment. See Ex. 2010, 30.
As discussed above, much of Patent Owner’s secondary
considerations evidence either lacks nexus to the invention claimed in the
’848 patent (e.g., Exs. 2006, 2012) or has weak nexus at best to the claimed
invention (e.g., Exs. 2004, 2007, 2013). Moreover, to the extent such
evidence does have nexus to the claimed invention, it is weak evidence of
industry skepticism because the 3GPP working group’s comments were
simply requests for more information for why changes were needed, or to
delete comments made by an editor of the proposed changes. None of the
3GPP working group’s comments expressed skepticism that the proposed
changes would not work to provide the MME with the UE security
capability information the MME needs to negotiate NAS security.
Moreover, the record shows that most proposals did not receive
approval when first submitted at 3GPP meetings. Rather, the norm was for
the proposals to be discussed and tabled for further discussion at future
meetings as happened with Mr. He’s proposals. For example, the record
shows that 234 proposals were made at the October 2007 3GPP working
group meeting, including Mr. He’s S3-070684 and S3-070685 proposals.
See Ex. 2008, 36–57 (showing a submitted document range of S3-070673 to
S3-070906). Of these, 98 (40%) were discussed and noted at the meeting
(including Mr. He’s two proposals); 75 (31%) were approved; 45 (18%)
10 Footnote 2 indicates the section is from S31071040, which appears to be a typo. Compare Ex. 2013, 2 with Ex. 2004, 4.
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were replaced with other proposals; 6 (3%) were withdrawn; 5 (2%) were
new versions of 3GPP standards documents; 2 (1%) were rejected, 1 was
postponed, 1 was taken offline, and 1 was not discussed. Id. Moreover, the
record shows that when proposals were approved, such as when Mr. He’s
S3-080123 proposal was approved, no information was provided to indicate
whether the approved proposals were new or re-submitted proposals. See
Ex. 2010, 30, 49 (showing approval of S3-080123 without comment on its
status as a re-submitted proposal). Thus, there is no evidence to indicate
what percentage of the 45 (18%) proposals approved at the October 2007
meeting, when Mr. He first submitted proposals S3-070684 and S3-070685,
were first proposals or re-submitted proposals that were approved after
receiving additional information requested by the 3GPP working group.
Accordingly, the evidence that Mr. He’s proposals were not approved
at the October 2007 3GPP meeting when they were first presented, but were
instead approved after Mr. He provided additional requested information, is
weak evidence that the 3GPP working group was skeptical of Mr. He’s
proposals. To the contrary, that appears to have been the normal way
submitted proposals were considered and treated by the 3GPP working
group.
In additional to arguing industry skepticism, Patent Owner argues that
Mr. He’s proposals produced the surprising result of “unknown and
unexpected efficienc[ies].” PO Resp. 21. This too is weak evidence of
secondary considerations of non-obviousness. Exhibit 2010 are the minutes
from the February 2008 working group meeting at which Mr. He’s S3-
080123 proposal was approved. See Ex. 2010, 30. As discussed above, the
working group provided no commentary regarding the merits of the proposal
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or its ability to achieve “unknown or unexpected efficiency advantages.”
Id. The working group simply indicated, without comment, that the
proposal was “Approved.” Ex. 2010, 30, 49.
Exhibit 2003 is Dr. Mandayam’s declaration. See Ex. 2003, i. Dr.
Mandayam summarizes the contents of S3-080123 in paragraph 93 of his
declaration, including Mr. He’s reasons for deleting the editor’s notes for
step 3 in the non-LTE to LTE idle mode mobility procedure described in
TR 33.821 v0.6.0 § 7.4.12.4. Id. ¶ 93. Dr. Mandayam then states in
paragraph 94 of his declaration that the 3GPP working group accepted Mr.
He’s proposal. Id. ¶ 94. We see no evidence here of unexpected results.
Unexpected results “must be established by factual evidence. ‘Mere
argument or conclusory statements . . . does not suffice.’” In re Geisler, 116
F.3d 1465, 1470, 43 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984)).
Finally, we note that in S3-080123, Mr. He indicates that section
7.4.12.4 had already been added to TR 33.821 v0.6.0 when he proposes
deleting the editor’s note to step 3. See Ex. 2004, 1 (“In TR 33.821 v060,
section 7.4.12.4 . . . there is an Editor’s notes in step 3 . . . .”). The record
does not show when section 7.4.12.4 was added to TR 33.821, which is the
proposal Mr. He made in S3-070685 and S3a071040. See Ex. 2007, 1;
Ex. 2013, 1. Moreover, as discussed above, the record does not show that
Mr. He proposed the non-LTE to LTE idle mode security procedure added to
TR 33.821 v0.6.0 §7.4.12.4. Rather, Mr. He proposed adding a description
of that procedure, which was already described in TS 23.401 v1.1.1 or in
TS 23.401 v1.4.1, to a new section of TR 33.821. Id. The record does not
indicate that the security solution described in TS 23.401 v1.1.1 (or v1.4.1)
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produced unexpected results, or that adding its description to a new section
of TR 33.821 produced unexpected results.
For all of the reasons discussed above, we find Patent Owner’s
evidence of industry skepticism or unexpected results lacks nexus to the
invention claimed in the ’848 patent (Exs. 2006 and 2012) or has a weak
nexus that provides weak evidence of industry skepticism or unexpected
results, such as unexpected efficiencies (Exs. 3004, 2007, and 2013).
3. Conclusions Regarding Obviousness
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply and Patent Owner Sur-Reply. We have considered all of the
arguments made by Petitioner and Patent Owner, as well as all of the
evidence for and against obviousness, including evidence of secondary
considerations of non-obviousness in the form of industry skepticism and
unexpected results. We have weighed and assessed the entirety of this
evidence as a whole.
For the reasons discussed in §§ II.G.1.a–f, supra, Petitioner has shown
by a preponderance of the evidence that the combination of TR 33.821 and
TS 23.401 teaches each of the limitations of claims 1, 3–5, 7–9, 11–13, 15
and 16. Further, Petitioner has persuasively explained why a person skilled
in the art would have modified the non-LTE to LTE security procedure
taught in TS 23.401 to send the UE security capabilities to an MME based
on the teachings of TR 33.821. See § II.G.1.a, supra. In particular, a person
of ordinary skill in the art would have found it obvious to modify the non-
LTE to LTE idle mode mobility procedure taught by TS 23.401 to include
the UE security capabilities taught by TR 33.821 because the UE needed to
authenticate itself to and establish security with the LTE network. See Pet.
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59–60 (citing Ex. 1014 ¶¶ 136–137). In short, Petitioner has made a strong
showing that claims 1, 3–5, 7–9, 11–13, 15 and 16 of the ’848 patent would
have been obvious over the combination of TR 33.821 and TS 23.401.
The only contravening evidence that claims 1, 3–5, 7–9, 11–13, 15
and 16 of the ’848 patent would not have been obvious is the evidence of
industry skepticism and unexpected results introduced by Patent Owner. For
the reasons discussed in § II.G.3, supra, this evidence has lacks or has only
weak nexus to the invention claimed in the ’848 patent, and does not
sufficiently demonstrate industry skepticism of or unexpected results arising
from the invention claimed in the ’848 patent. It is therefore insufficient to
overcome Petitioner’s “strong . . . case of obviousness.” Wyers, 616 F.3d at
1246.
Accordingly, for the reasons discussed in §§ II.G.1.a–f and II.G.2,
supra, Petitioner has demonstrated by a preponderance of the evidence that
claims 1, 3–5, 7–9, 11–13, 15 and 16 of the ’848 patent are unpatentable
over the combination of TR 33.821 and TS 23.401.
H. Obviousness of claims 1, 3–5, 7, and 8 over TR 33.821, TS 23.401, and Shaheen
Petitioner argues that to the extent the combination of TR 33.821 and
TS 23.401 does not disclose a UE comprising a transmitter, receiver, and
processor, “it would have been obvious to a person of ordinary skill in the
art to modify the UE to include these elements in light of Shaheen.” Pet.
63–64 (citing Ex. 1014 ¶¶ 142–146).
Petitioner argues Shaheen discloses a system and method for
implementing a Routing Area Update (RAU) procedure between a UE and
an LTE network in which the UE “includes a transceiver for sending and
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receiving data to and from the LTE network, and a processor for
implementing the disclosed procedure.” Id. at 64 (citing Ex. 1006 ¶¶ 9, 23,
40–42; Ex. 1014 ¶¶ 93–94). Relying on the testimony of Dr. Williams,
Petitioner argues, “[a] person of ordinary skill in the art would have
understood that the transceiver includes both a transmitter for sending data
to the LTE network, and a receiver for receiving data from the network.” Id.
(citing Ex. 1014 ¶¶ 93–94).
For the purposes of the analysis that includes Shaheen, Petitioner
argues the combination of TR 33.821 and TS 23.401 teaches each of the
elements of claims 1, 3–5, 7, and 8, except the transmitter, receiver and
processor elements needed to carry out the functions recited in these claims.
Id. at 63 (citing Pet. 36–63). Petitioner further argues that LTE
specifications “like TR 33.821 and TS 23.401 establish that the UE must
have a means for transmitting data to the network, means for receiving data
from the network, and means for processing the data in order to implement
specific procedures.” Id. at 64–65 (citing Ex. 1014 ¶¶ 93–94). Petitioner
argues the “transmitter, receiver, and processor as disclosed in Shaheen
would have been the most logical and commonsense elements for
performing these functions.” Id. at 65. Therefore, Petitioner argues,
“[m]odifying the UE disclosed in TR 33.821 to include the transmitter,
receiver, and processor disclosed in Shaheen would have been a
straightforward combination of known prior art elements that would yield
predicable results,” and the combination of TR 33.821, TS 23.401, and
Shaheen “would include each element of claims 1, 3–5, 7, and 8.” Id. at 64–
65.
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70
Patent Owner does not contest Petitioner’s rationale for modifying the
UE disclosed in TR 33.821 to include Shaheen’s transceiver and processor.
PO Resp. 37. Rather, Patent Owner argues that “[t]he combination set forth
by Petitioner in Ground 2 [obviousness over TR 33.821, TS 23.401, and
Shaheen] does not provide any further reasons to combine TR 33.821 and
TS 23.401, or any further reasons to modify them.” Id. Therefore, “all of
the deficiencies regarding Ground 1 [obviousness over TR 33.821 and TS
23.401] identified above apply equally to Ground 2.” Id.
As discussed in §§ II.G.1–3, supra, Petitioner has demonstrated how
the combination of TR 33.821 and TS 23.401 teaches all of the limitations of
claims 1, 3–5, 7, and 8, including the transmitter, receiver, and processor
limitations. Petitioner has further provided sufficient reason to combine the
teachings of TR 33.821 and TS 23.401. Here, Petitioner demonstrates that
Shaheen discloses a UE that includes a transmitter for sending information
to an LTE network, a receiver for receiving information from the LTE
network, and processor for processing the received information to perform
an RAU procedure. See Ex. 1006, ¶¶ 9, 33, 40–42, Fig. 9. Petitioner further
demonstrates why a person ordinarily skilled in the art would have modified
the UE disclosed in the combination of TR 33.821 and TS 23.401 to include
Shaheen’s transmitter, receiver, and processor to execute LTE procedures,
such as the non-LTE to LTE idle mode mobility procedure taught by the
combination of TR 33.821 and TS 23.401, in the event TR 33.821 and TS
23.401 lack these elements.
Accordingly, for the reasons discussed herein and in § II.G.1–3,
supra, Petitioner has demonstrated by a preponderance of the evidence that
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claims 1, 3–5, 7, and 8 are unpatentable as obvious over the combination of
TR 33.821, TS 23.401, and Shaheen.
III. CONCLUSION
We have reviewed the Petition, Patent Owner’s Response, Petitioner’s
Reply, and Patent Owner’s Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner, including
Patent Owner’s evidence of secondary considerations of non-obviousness,
and have weighed and assessed the entirety of this evidence as a whole. We
find, on this record, Petitioner has demonstrated by a preponderance of the
evidence that claims 1, 3–5, 7–9, 11–13, 15, and 16 are unpatentable over
TR 33.821 and TS 23.401, and that claims 1, 3–5, 7, and 8 are unpatentable
over TR 33.821, TS 23.401, and Shaheen.
IV. ORDER
It is hereby:
ORDERED that claims 1, 3–5, 7–9, 11–13, 15, and 16 of the ’848
patent are unpatentable under 35 U.S.C. § 103(a) as obvious over TR 33.821
and TS 23.401;
FURTHER ORDERED that claims 1, 3–5, 7, and 8 of the ’848 patent
are unpatentable under 35 U.S.C. § 103(a) as obvious over TR 33.821, TS
23.401, and Shaheen;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
granted with respect to Exhibit 1011, denied with respect to Exhibits 1004,
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72
1005, 1012, and 1030, and dismissed as moot with respect to Exhibit 1028;
and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.
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