BEFORE THE PATENT TRIAL AND APPEAL BOARD · PDF fileRRC Radio Resource Control eNB eNodeB...

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 IPR2017-1471

Patent No. 8,412,197

___________________

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT NO. 8,412,197

UNDER 35 U.S.C §312 AND 37 C.F.R. § 42.104

Mail Stop “PATENT BOARD”

Patent Trial and Appeal Board

U.S. Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

U.S. Patent No. 8,412,197

Petition for Inter Partes Review

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`

TABLE OF CONTENTS

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

II. MANDATORY NOTICES ............................................................................. 1

A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1)) ...................................... 1

B. Related Matters (37 C.F.R. §42.8(b)(2)) ............................................... 2

C. Related Pending Patent Applications in the USPTO ............................ 2

D. Lead and Backup Counsel and Service Information (37 C.F.R.

§42.8(b)(3)-(4)) ..................................................................................... 2

III. GROUNDS FOR STANDING ........................................................................ 3

IV. PAYMENT OF FEES ..................................................................................... 3

V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 4

VI. OVERVIEW OF THE TECHNOLOGY ......................................................... 5

A. Third Generation Partnership Project (“3GPP”) ................................... 5

B. Wireless Telephony ............................................................................... 7

C. Cell Reselection ..................................................................................... 8

VII. THE ’197 PATENT ......................................................................................... 9

A. Overview ............................................................................................... 9

B. Claims ..................................................................................................11

C. Prosecution History .............................................................................12

D. Level of Ordinary Skill in the Art .......................................................13

VIII. CONSTRUCTION OF THE CHALLENGED CLAIMS .............................13



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A. Terms for Construction .......................................................................14

IX. OVERVIEW OF THE PRIOR ART REFERENCES ...................................15

A. R2-075161 ...........................................................................................16

B. Eerolainen ...........................................................................................20

C. R2-080338 ...........................................................................................23

X. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY ..........24

A. Ground 1: R2-075161 and R2-080338 Render Claims 1-2, 5-9 and

13-15 Obvious .....................................................................................24

B. Ground 2: R2-075161 and R2-080338 in further view of Eerolainen

Render Claims 7-9 and 14-15 Obvious ...............................................52

XI. SECONDARY CONSIDERATIONS ...........................................................63

XII. CONCLUSION ..............................................................................................64



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EXHIBIT LIST

No. Short Name Exhibit

1001 ’197 Patent U.S. Patent No. 8,412,197 to Roberts et al.

1002 ’197 File History File History of U.S. Patent No. 8,412,197

1003 Williams Decl. Declaration of Tim Williams, PhD

1004 Williams CV Curriculum Vitae of Dr. Tim Williams

1005 R2-075161 3GPP TSG RAN WG2 #60, TDoc-R2-075161,

Inter-frequency / RAT Idle Mode Mobility Control

1006 Eerolainen U.S. Patent Application Publication 2008/0176565

A1 to Eerolainen et al.

1007 R2-080338

3GPP TSG RAN WG2 Meeting #60bis, TDoc-R2-

080338, Reselection Scenarios for multi-RAT

terminals in Rel-8

1008 Huawei District

Court Complaint

Huawei Techs. Co. Ltd. v. Samsung Elecs. Co.,

Ltd. et al., Case No. 3:16-cv-02787, Dkt. 1 (N.D.

Cal. May 24, 2016)

1009

Joint Claim

Construction

Statement

Huawei Techs. Co. Ltd. v. Samsung Elecs. Co.,

Ltd. et al., Case No. 3:16-cv-02787, Dkt. 124

(N.D. Cal. Apr. 7, 2017)

1010 TS 36.304

3GPP TS 36.304 v. 2.0.0 (2007-10), 3rd

Generation Partnership Project; Technical

Specification Group Radio Access Network;

Evolved Universal Terrestrial Radio Access (E-

UTRA); User-Equipment (UE) procedures in idle

mode (Release 8)

1011

’197

Infringement

Contentions

Huawei’s Infringement Contentions for the ’197

Patent

1012 Yaqub Decl. Declaration of Raziq Yaqub, Ph.D.

1013 Dahlman ERIK DAHLMAN ET AL., 3G EVOLUTION, HSPA AND

LTE FOR MOBILE BROADBAND (2nd Ed. 2008)



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1014 About 3GPP

About 3GPP Home, 3GPP: A Global Initiative,

available at http://www.3gpp.org/about-

3gpp/about-3gpp (last accessed 5/3/2017)

1015 Yaqub CV Curriculum Vitae of Dr. Raqiz Yaqub

1016 TR 21.900

3GPP TR 21.900 V8.0.0 (2007-09) 3rd

Generation Partnership Project; Technical

Specification Group Services and System Aspects;

Technical Specification Group working methods

(Release 8), available at

http://www.3gpp.org/ftp/Specs/archive/21_series/2

1.900/21900-800.zip (last accessed May 23, 2017)

1017 R1-081711

R1-081711, Final Report of 3GPP TSG RAN

WG1 #52bis, available at

http://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSG

R1_53/Docs/R1-081711.zip (last accessed May

23, 2017)

1018

Oct. 23, 1999

WayBack

Machine 3GPP

TSG RAN

Webpage

WayBack Machine records for 3GPP’s TSG RAN

landing page on October 23, 1999

1019 Ericsson LTE

Test Bed

BERNT JOHANSSON AND TOMAS SUNDIN, LTE TEST

BED (Ericsson Review No. 1) (2007)



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ACRONYM GLOSSARY

Acronym Term

2G/3G/4G Second/Third/Fourth Generation

3GPP 3rd Generation Partnership Project

LTE Long Term Evolution

UE User Equipment

’197 Patent U.S. Patent No. 8,412,197

RAT Radio-Access Technology

E-UTRAN Evolved Universal Terrestrial Radio Access Network

UTRAN Universal Terrestrial Radio Access Network

GERAN GSM EDGE Radio Access Network

GSM Global System for Mobile Communications

EDGE Enhanced Data Rates for GSM Evolution

TA Tracking Area

RRC Radio Resource Control

eNB eNodeB (Base Station)

MME Mobile Management Entity

NCL Neighbor Cell List

BCCH Broadcast Channel

IE Information Element

WCDMA Wideband Code Division Multiple Access

CDMA Code Division Multiple Access

CDMA2000 Code Division Multiple Access 2000

TD-SCDMA Time Division-Synchronous CDMA

WIMAX World Interoperability for Microwave Access



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UMTS Universal Mobile Telecommunications System



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I. INTRODUCTION

The ’197 Patent is directed toward a basic and known method, terminal, and

system for cell reselection (i.e., selecting a suitable cell for communications during

movement by a mobile device). Cell reselection has admittedly been known for

years in both 3G and 4G/LTE technologies, as it is a necessary and obvious part of

mobile communications. As a UE travels between the cells of a cellular network,

leaving cells, it necessarily must choose the next best cell on which to

communicate as it leaves a cell. The ’197 Patent allegedly improves on the cell

reselection process by merely directing the UE to choose the cell with the highest

priority from a “priority list” (i.e., a list of cells in order of priority based on

selection criteria). Essentially, the ’197 Patent promotes choosing the best cell

from a list of cells. This was both known in prior cellular applications and in LTE

before the filing date of the ’197 Patent. One skilled in the art would have

therefore known all aspects of the claimed invention before the priority date of the

’197 Patent.

II. MANDATORY NOTICES

A. Real Party-in-Interest (37 C.F.R. §42.8(b)(1))

The real parties in interest for Petitioner are (1) Samsung Electronics Co.,

Ltd., (2) Samsung Electronics America, Inc., and (3) Samsung Research America

(collectively “Samsung”).



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B. Related Matters (37 C.F.R. §42.8(b)(2))

1. District Court Litigation

U.S. Patent No. 8,412,197 (“the ’197 Patent”) is at issue in Huawei Techs.

Co., Ltd. v. Samsung Elecs. Co., Ltd. et al., Case No 3:16-cv-02787 (N.D. Cal.).

On May 24, 2016, Huawei sued Samsung in the U.S. District Court for the

Northern District of California, claiming that Samsung products compliant with the

3GPP standards infringe the ’197 patent (and ten other patents).

2. Patent Trial and Appeal Board

In addition to the ’197 Patent, related U.S. Patent Nos. 8,996,003 (’003

Patent); and 8,639,246 (’246 Patent) have also been asserted in the above litigation.

The ’197 patent shares a common specification with the ’003 and ’246 Patents.

Petitioner has filed or intends to file inter partes review petitions on the ’003 and

’246 Patents as well.

C. Related Pending Patent Applications in the USPTO

The ’003, ’246, and ’197 Patents are related to pending patent application

15/005,852.

D. Lead and Backup Counsel and Service Information (37 C.F.R.

§42.8(b)(3)-(4))

The designations of counsel and address for service1 are:

1 Petitioner consents to service electronically.



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LEAD COUNSEL BACKUP COUNSEL

Kevin P.B. Johnson

Reg. No. 38927

[email protected]

Postal and Hand Delivery Address:

Quinn Emanual Urquhart & Sullivan

555 Twin Dolphin Drive, 5th Floor

Redwood City, CA 94065

Tel: (650) 801-5000

Fax: (650) 801-5100

Marissa Ducca

Reg. No. 59807

[email protected]

Deepa Acharya

Reg. No. 64648

[email protected]

Jared Newton

Reg. No. 65818

[email protected]


777 6th Street NW, 11th Floor

Washington, DC 20001

Tel: (202) 538-8000

Fax: (202) 538-8100

Brian Mack

Reg. No. 57189

[email protected]


Quinn Emanuel Urquhart & Sullivan

50 California St, 22nd Floor

San Francisco, CA 94111

Tel: 415.875.6300

Fax: 415.875.6700

III. GROUNDS FOR STANDING

Petitioner certifies that the ’197 Patent is available for inter partes review,

and that Petitioner is not barred or estopped from requesting an IPR challenging

claims 1-2, 5-9, and 13-15 on the grounds identified in this Petition.

IV. PAYMENT OF FEES

The required fees are submitted herewith. Petitioner authorizes the Patent

Office to charge Deposit Account No. 000505708 for the Petition fee set forth in

37 C.F.R. §42.15(a), and for any additional fees.



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V. IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED

Petitioner challenges claims 1, 2, 5-9, and 13-15 of the ’197 Patent and

request that these claims be found unpatentable in view of the following

references:

1. 3GPP TSG RAN WG2 Meeting #60 (November 5-9, 2007) , R2-

075161, Inter-frequency/RAT idle mode mobility control (“R2-

075161”, Ex. 1005).

2. U.S. Patent Application Publication 2008/0176565 to Eerolainen et al.

(“Eerolainen”; Ex. 1006), filed on January 23, 2007, and was

published on July 24, 2008.

Pursuant to §§ 42.22(a)(1) and 42.22(b)(1)-(2), Petitioner requests

cancellation of claims 1-2, 5-9, and 13-15 of the ’197 Patent on the following

grounds:

Ground 1: Claims 1-2, 5-9, and 13-15 are unpatentable under 35 U.S.C. §

103(a) over R2-075161 in view of R2-080338.

Ground 2: Claims 7-9, and 14-15 are unpatentable under 35 U.S.C. §

103(a) over R2-075161 in view of R2-080338, and in further view of

Eerolainen.

Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), an explanation of how the

challenged claims of the ’197 Patent are unpatentable under the above grounds and

the supporting evidence relied upon to support those challenges are set forth in

detail below in Section X, infra.



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VI. OVERVIEW OF THE TECHNOLOGY

A. Third Generation Partnership Project (“3GPP”)

As cellular telecommunications technology developed in the late eighties

and nineties, network operators realized that standardization was necessary to

ensure subscriber mobility: cell phone subscribers wanted to be able to connect to

their home mobile networks and roam on a third-party network. Ex. 1012 at ¶17.

3GPP was formed to coordinate and facilitate the development of standards for

GSM (“2G”) and its later variations, such as Universal Mobile

Telecommunications Systems (“UMTS” or “3G”), Long Term Evolution (“LTE”),

and Long Term Evolution Advanced (“LTE-A”). Id. at ¶18; Ex. 1013 at 21-23.

3GPP develops a set of rules, in the form of technical specifications, that govern

communication between a network base station and a user’s mobile device,

including how the base station must transmit data to, and receive data from, the

mobile device.

The development of specifications by 3GPP is an ongoing, collaborative

effort involving hundreds of engineers from many companies. Ex. 1013 at 19.

Members of the various 3GPP working groups submit written contributions and

discussion documents, ultimately capturing accepted proposals and changes in

Technical Reports and Technical Specifications (“TS” documents). Ex. 1013 at

19-21. 3GPP captures updates to the various TS documents in different releases,



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each building on each other. For example, TS 36.304 Release 8 is an earlier

version of the standard than TS 36.304 Release 10. 3GPP stores and controls these

documents electronically and retains them on the public 3GPP server. Ex. 1012 at

¶28.

With each iteration of the 3GPP standard, the standard adds and reuses the

framework already in place. The reason for this is simple—infrastructure. For

example, infrastructure (i.e., base stations, mobile devices, and other network

components) serving millions of terminals with different characteristics all need to

communicate together. Ex. 1013 at 35-36; Ex. 1012 at ¶25. If a newer standard

completely overhauls the required technology, the infrastructure currently in the

market would become obsolete—people and companies would have to purchase

and develop new technology with each new version of the standard. Accordingly,

each new version of the standard uses the existing framework and adds to that

framework, ensuring backwards compatibility with newer standards. Ex. 1013 at

36-37. This backward compatibility requirement puts constraints on the

technology that the 3GPP members can and cannot consider in new standard

releases. Ex. 1013 at 36. For example, the physical layer fundamentals need to be

the same in LTE and future standards as it is for earlier releases, such as UMTS.

Ex. 1013 at 36.



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It is common for the 3GPP participants involved in developing the standard

to reuse technology that was previously used in one area of the standard for

another area of the standard. For example, methods for transmitting information in

3G systems are commonly extended to methods for transmitting information in

LTE systems, because the underlying framework and communication layers

remain the same between versions. Ex. 1013 at 36-37. In fact, one of the key

directives for 3GPP was to ensure that the core system architecture would evolve

over the decades, as opposed to being replaced with each new standard. Ex. 1013

at 36. While the specifics of utilizing these building blocks in the newer versions

of the standard need to be identified and developed to achieve the goals of the

newer standards, the basic concepts remain the same and are available for use in

these new standards. See Ex. 1013 at 38-55.

B. Wireless Telephony

Wireless telephones, more commonly known as cell phones or mobile

phones, are the most ubiquitous form of mobile communication system today. We

use mobile phones that communicate with cell towers by transmitting and

receiving signals at a radio frequency.

Wireless networks are composed of base stations, more commonly known as

a cell tower, which communicate with mobile devices wirelessly by transmitting

and receiving RF signals. The base station is commonly referred to as the Node B



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or eNode B and the mobile device is commonly referred to as the user equipment

or UE in the context of 3GPP standards. A single base station is connected to

multiple mobile devices in a region known as a “cell.”

C. Cell Reselection

In order for a UE to communicate with an eNode B, the UE must first

register with a cell. Ex. 1003 at ¶51. The process of registering with an eNode B

or cell is called "camping." Id. After the UE has registered with a cell, the UE

"camps" on a cell. Id. This first registration in idle mode is called "cell selection."

When the UE is switched on but not on an active call, it is in what is known as

"idle mode." While in idle mode, the UE will take measurements of the

surrounding base stations in order to choose which cell to camp on (i.e., register

with) as the UE moves away from its currently camped eNode B. Once camped

on a cell, the UE will continue to monitor surrounding base stations and may

choose to camp on a different cell as it moves; this process is called "cell

reselection." Id.

In idle mode and for the purpose of cell reselection, the UE will monitor

cells which are of the same radio access technology (RAT)—such as LTE (Long

Term Evolution or “4G”)—as the cell it is currently camped on and usually it will

also monitor cells in a different RAT—such as UMTS and/or GSM. Id. at ¶52. As

the UE moves, the UE must decide which cell it should move to. In making this



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decision, the UE will take into account the priorities associated with the cells it has

measured (both in terms of the output of algorithms evaluating the measurements

taken as well as the priorities assigned to different RATs and/or frequencies

contained in priority lists provided by the network). Id. Based on these priorities,

the UE will endeavor to choose the cell with the strongest signal with which to

communicate. This cell reselection criteria to determine which eNode B the UE

will communication with is similar in all 3GPP networks—both legacy (including

GSM and UMTS) and current (LTE). Id.

Some UEs are capable of communicating on multiple RATs—such as on

2G, 3G, and LTE. These UEs are called “multi-RAT UEs.” Id. at ¶53. Such

multi-RAT UEs may consume additional power performing measurements on

multiple cells. For that reason, cell reselection on a multi-RAT UE is based on a

priority list sent to the UE from the eNode B, based on the measurements the

eNode B receives from neighboring UEs. The UE can then choose the best cell

based on that priority list. Id.

VII. THE ’197 PATENT

A. Overview

The ’197 Patent, titled “Method, Terminal, and System for Cell Reselection”

was filed on October 12, 2010, and issued on April 2, 2013. See Ex. 1001. The

’197 Patent claims priority to a PCT application no. PCT/CN2009/071194, filed



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April 8, 2009, which in turn claims priority to a foreign application number CN

2008 1 0091957, filed April 9, 2008. Thus, April 8, 2008 is the earliest effective

filing date applied herein. The ’197 Patent also claims priority to foreign

application CN 2008 1 0091957, filed on April 9, 2008.

The ’197 Patent states that it relates to cell reselection. Ex. 1001 at 1:15-17.

According to the ’197 patent, developments in mobile communications have

resulted in the emergence of different mobile communication systems, including

GSM, EDGE, GSM/EDGE (GERAN), WCDMA (UMTS), CDMA, CDMA2000,

TD-SCDMA, LTE, and WIMAX. Id. at 1:21-35. Because there are so many

different systems, when a mobile terminal moves, there may be several frequencies

(communication systems) that it can choose for cell reselection. Id. at 1:35-38.

The ’197 Patent purports to offer a method for cell reselection that reduces

measurements in order to save power. Id. at 1:39-41.

According to the ’197 Patent, in the current (prior art) LTE system, a

terminal decides what cell to camp on according to the priority. Id. at 1:42-45.

The terminal will measure a frequency/system having a higher priority. Id. at 1:46-

47. If that measurement meets the terminal’s cell reselection criteria, it will

reselect that cell. Id. at 1:47-48. Else, the terminal will measure a cell having a

lower priority. Id.



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The ’197 Patent admits that in a prior art system, the terminal performs cell-

reselection using a dedicated priority list provided by a non-LTE communication

system. Id. at 1:56-58. According to the ’197 Patent, this leads to higher costs to

upgrade the network, since more signaling has to be added for dedicated priorities

for newer networks. Id. at 1:64-2:2. The ’197 Patent allegedly solves this problem

by having the UE perform cell reselection based on a dedicated priority list and

valid time obtained from an LTE system--as opposed to the non-LTE system like

in the prior art. Id. at 2:5-10. Therefore, the alleged inventive solution is that as

the UE moves to a non-LTE cell, the UE receives apriority list by the LTE network

instead of the non-LTE network before a valid time associated with the list expires.

As shown below, even these obvious differences from the prior art were known in

the art before the '197 priority date.

B. Claims

The independent claims of the ’197 Patent are directed to obtaining a

dedicated priority list and a valid time of the dedicated priority list from an LTE

network, and then using the dedicated priority list and valid time to perform cell

reselection when camped on a cell of a non-LTE network. Certain dependent

claims specify that the dedicated priority list includes one or more of (1) priority

level of a frequency of a RAT, (2) priority levels of the frequency of the serving

cell, adjacent frequencies of the serving cell, and frequencies of the neighboring



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systems; and (3) priority levels assigned for each frequency or Frequency Band of

a neighboring system. Other claims include obtaining the dedicated priority list

and valid time through a dedicated signal, or performing cell reselection based on a

public priority list. These limitations were well known in the prior art at the time

of the invention. See Ex. 1003 at ¶55-58.

C. Prosecution History

The original independent claims of the ’197 Patent were directed to a

terminal receiving a priority list from a first (any) network, and performing cell

reselection on a second (any) network. Ex. 1002 at 26-29. The Examiner rejected

the claims as unpatentable over Ore (US 2008/0268843) in view of Carpenter (US

2007/0191006). Id. at 324-333. The Applicant responded by narrowing the claims

to the terminal receiving the priority list from an LTE network, and performing cell

reselection when camped on a non-LTE network. Id. at 339-342. The Applicant

argued that “nevertheless, Ore fails to disclose the priority list is obtained from an

LTE system.” Id. at 344. The Applicant further argued that “Ore does not teach

that the UE can obtain a dedicated priority list from an LTE system and use the

dedicated priority list to perform reselection when the UE camps on a cell of a

non-LTE system, as disclosed in Claim 1.” Id. (emphasis in original).



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D. Level of Ordinary Skill in the Art

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

the ’197 Patent would have at least (1) a Master’s degree in electrical engineering,

computer science, or a related field and (2) at least two years experience working

with cellular telephony systems. Ex. 1003 at ¶16. Each of the arguments below is

made from the standpoint of a person of ordinary skill in the art in the field of the

’197 Patent (“POSITA”).

VIII. CONSTRUCTION OF THE CHALLENGED CLAIMS2

In an inter partes review, claim terms in an unexpired patent 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). The USPTO uses

BRI because, among other reasons, the patentee has the opportunity to amend its

claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed.

Reg. 48,756, 48,764 (Aug. 14, 2012) (“Since patent owners have the opportunity to

amend their claims during IPR, PGR, and CBM trials, unlike in district court

proceedings, they are able to resolve ambiguities and overbreadth through this

interpretive approach, producing clear and defensible patents at the lowest cost

2 Petitioner reserves the right to pursue different claim constructions, including that

certain claim terms are indefinite and/or subject to §112 ¶6, during this and related

proceedings and in litigation, at least because of the different standards of claim

interpretation used by the Patent Trial and Appeal Board and district courts.



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point in the system.”). As required by the applicable rules, this Petition uses the

BRI standard. Petitioner reserves all rights to take a different position with respect

to claim construction in any other proceeding that does not rely on the BRI

standard.

For example, in a joint submission to the Court, Patent Owner has taken the

position that several terms in the ’197 Patent that are not identified below, should

be given their plain and ordinary meaning (“No construction necessary”). Ex.

1009 at 78-88. For purposes of this Petition only, Petitioner adopts Patent Owner’s

proposed constructions, which fall within the BRI standard as set forth above.

A. Terms for Construction

1. “Camps/Camping” (Claims 1-2, 7, 14)

In a joint submission to the Court in the district court action, Patent owner

contended that “camps/camping on a cell of a non-LTE system” means “is in a

selected non-LTE cell.” Ex. 1009 at 79. For purposes of this petition only,

Petitioner adopts Patent Owner’s proposed construction.

2. “obtaining unit,” (claims 7, 15)

Claims 7 and 15 includes the terms “obtaining unit, configured to obtain a

dedicated priority list and a valid time of the dedicated priority list from a Long

Term Evolution (LTE) system” (claim 7) and “obtaining unit configured to obtain

a public priority list from one of the LTE system and the non-LTE system” that

Petitioner contends should be construed as means-plus-function limitations. In the



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district court action, it is the Petitioner’s position is that there is no structure recited

in the specification, and the therefore, the claims are invalid as indefinite. In a

joint submission to the Court, Patent Owner did not identify any proposed structure

for this term, contended that it should not be construed as means-plus-function,

and took the position that no construction was necessary. Ex. 1009 at 86. For

purposes of this petition only, Petitioner adopts Patent Owner’s proposed

construction.

IX. OVERVIEW OF THE PRIOR ART REFERENCES

The earliest effective filing date for the ’197 Patent is April 8, 2009. Any art

published before April 8, 2008 is prior art under §102(b). See 35 U.S.C. § 102

(pre-AIA). In the underlying litigation, Patent Owner identified earlier conception

dates in a mandatory patent rule disclosure that Patent Owner marked confidential.

Although Petitioner does not concede that Patent Owner is entitled to these

conception dates, all of the prior art cited herein predates the conception dates

identified in the confidential document and is prior art under either §102(b) or

§102(e).

As described in the declaration of Dr. Raziq Yaqub (Ex. 1012), each 3GPP

reference cited by Petitioner was available on the 3GPP website as of the date and

(if available) time indicated below with respect to each reference. See Ex. 1012 at

¶35 (“In my experience, the FTP time stamp . . . can be relied upon to show when



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the TDocs. Were publically available without restriction to anyone with Internet

access.”); see also, id., ¶¶37, 51, 53. The Yaqub Decl. establishes the public

storage and availability of TS 36.213, and describes in detail how a member of the

public would access such documents, including through searches using readily

available search engines like Google. See Ex. 1012 at ¶¶26-48.

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 Ex. 1012 at ¶¶ 26-48;

see also LG Elecs. v. Core Wireless Licensing S.A.R.L., IPR2015-01988, Paper 7,

at 12-14 (PTAB Apr. 1, 2016) (instituting IPR based on prior art that included

3GPP draft specifications and proposals).

A. R2-075161

R2-072161 is a 3GPP working group document entitled, “Inter-

frequency/RAT idle mode mobility control” by NTT DoCoMo, Inc. It was

publicly available at least as early as October 31, 2007 at 11:07 AM when it was

mailed to the 3GPP public email reflector and November 12, 2007 at 1:30 PM,

when it was publicly posted on 3GPP’s FTP server. Ex. 1012 at ¶¶54-56. R2-

075161 was prepared for 3GPP TSG RAN WG2 meeting #60 in Jeju, Korea from

November 5-9, 2007. Id. R2-075161 therefore qualifies as prior art to the ’197



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Patent under at least 35 U.S.C. § 102(a) and § 102(b). R2-075161 was not cited

during the prosecution of the ’197 Patent.

R2-075161 is related to “UE specific priority control” and whether “UE

specific control for inter-frequency” should be “based on absolute priorities or

offsets.” Ex. 1005 at 1. It states that the “paper discusses this issue and also

attempts to clarify some of the open issues for inter-frequency/RAT mobility

control in idle mode.” Id. By “inter-frequency/RAT mobility control in idle

mode,” R2-075161 is referring to cell-reselection between different RATs. Ex.

1003 at ¶67. Because the proposal relates to 3GPP TSG RAN WG2, the proposal

relates to the operation of the LTE network. Id. Therefore, when the document

references the “eNB” or “MME” it is referring to LTE network equipment. When

the document is referring to the UE, it is referring to a UE that can communicate

on an LTE network. Because the document is referring to inter-RAT mobility

control, it is referring to a UE that has multi-RAT functionality, and can

communicate on LTE and other networks, such as GSM and UMTS. Id.

R2-075161 proposes adopting a “priority based approach,” as opposed to an

offset approach and discloses reasons for why the "priority based approach" is

better. Ex. 1005 at 1. Among the reasons cited was that a priority based approach

had already been adopted at RAN2 meeting #59bis for inter-RAT. Adopting a



- 18 -

priority approach for inter-frequency cell reselection would simplify the

specification. Id. at 1-2.

The paper discloses several proposals for the priority based approach. All of

the proposals are cumulative, and relate to each other. Ex. 1003 at ¶69. Indeed, all

of them disclose different aspects of the same priority based approach based on UE

specific control information received from an LTE network. Ex. 1005; Ex. 1003 at

¶69. Proposal 1 describes why the cell reselection should be based on absolute

priorities and that the eNB or Mobility Management Entity ("MME") create the UE

specific control information (i.e., priority list) and transmit it to the UE. Ex. 1005

at 2. Both the eNB and the MME are LTE network components. Ex. 1003 at ¶70.

Therefore, R2-075161 discloses that the LTE network communicate the priority list

to the UE. Id.

Proposals 3 and 4 describe a process of discarding the priority list after

expiration. Ex. 1005 at 2. Under Proposal 4, the paper explains that the “UE

specific control information would include a list of frequency layers/RATs that the

UE should handle with specific priorities.” Id. This is a priority list of different

RATs that the UE should use for cell reselection. Ex. 1003 at ¶71. These

proposals disclose that the LTE network provide the UE with a priority list of

RATs for cell reselection. Id.



- 19 -

R1-075161 also suggests that upon “expiry of the timer, the UE shall discard

the UE specific control information and continue with the normal cell reselection

procedure.” Ex. 1005 at 2. This means that the UE should perform cell reselection

according to the priority list until the expiration of the timer. Ex. 1003 at ¶72.

Proposal 4 also specifically identifies the GSM and UMTS networks as

possible RATs in the priority list. It states “the UE should measure only the

frequency layers/RATs that are indicated in system information of the current

serving cell. For UTRAN and GERAN measurements, an NCL is needed for UE

measurements as have been agreed in stage 2.” Ex. 1005 at 2. UTRAN refers to a

UMTS node, and GERAN refers to a GSM node. Ex. 1003 at ¶73.

Proposals 5 and 6 describe using a public priority list. Ex. 1003 at ¶74. R2-

075161 states that the “UE has to measure only the frequency layers/RATs that are

indicated by BCCH from the serving cell, even when UE specific control

information indicates other frequencies/RATs.” Ex. 1005 at 2. The BCCH refers

to the Broadcast Channel, which distributes information publicly to all UEs

camping on the cell. Ex. 1003 at ¶74. Proposal 5 indicates that in “certain

deployments, it may be useful that all the UEs are set with common priorities.”

Ex. 1005 at 2. Proposal 6 also indicates that it “should be possible to set priorities

that apply commonly to all the UEs by BCCH.” Id. Therefore, R2-075161

contemplates the use of a public priority list.



- 20 -

B. Eerolainen

Eerolainen was filed on January 23, 2007, and was published July 24, 2008

under 35 U.S.C. §122(b) in the United States by Nokia Corporation. Therefore,

Eerolainen qualifies as prior art under at least 35 U.S.C. §102(e) as a printed

publication before the ’197 Patent invention. Eerolainen was not cited during

prosecution of the ’197 Patent.

Eerolainen describes an apparatus, method, and computer program product

providing a RAT priority list for multi-RAT mobile devices. See Ex. 1006. The

patent anticipates devices that support several RATs, including 2G, 3G, 3.9G, and

beyond. Id at ¶34. Eerolainen goes on to describe a situation where that device

moves outside of the coverage of a current “camped on” RAT, and must select a

new cell. Id. In other words, Eerolainen relates to cell reselection in idle mode

using a priority list. Ex. 1003 at ¶78; See also Ex. 1006 at ¶78.

Eerolainen defines a RAT as a “radio access technology for a wireless

communication system.” Ex. 1006 at ¶35. It describes a “multi-RAT” device as a

device that supports at least three different RATs. Id. At ¶36. Like the ’197

Patent, Eerolainen explains that for a multi-RAT UE, when it moves away from a

camped on RAT, it must measure several RATs, which increases power

consumption. Id. at ¶39.



- 21 -

Eerolainen indicates that it relates to LTE, for which “standardization efforts

are on-going” as of the filing date of January 23, 2007. Id. at ¶61. Eerolainen

explains that different RATs, including 2G, GSM, PDC, GPRS/EDGE, UMTS,

WCDMA, and CDMA2000 may be compatible with each other. Id.

Figure 1 of Eerolainen describes the electronic devices for use in the

Eerolainen system:

The Eerolainen eNodeB, or base station, is identified as 12, and the UE is

identified as 10. Id. at ¶ 63, Fig. 1. The LTE network components include the

eNodeB 12, and the Network Control Element 14. Id., Ex. 1003 at ¶82. The UE

includes a data processor 10A that runs a program 10C that is stored on memory



- 22 -

10B, and an RF transceiver 10D for communications with the Node B. Ex. 1006 at

¶63, Fig. 1. Figure 1 also shows a second base station, 12’, which may be of a

different RAT type, e.g., 2G, 3G, WiMax, or Bluetooth. Id. at ¶ 65, Fig. 1. There

will typically be several additional RATs. Id. Eerolainen discloses that the

network constructs a multi-RAT priority list that is sent to the UE. Id. at ¶69-70.

Eerolainen envisions the priority list coming from an LTE network. See, id. at

¶116. The UE stores this priority list in memory 10B. Id. The “multi-RAT

priority list 10E may contain identifying information for all RATs that the

[network] supports and/or that the [network] wants the UE 10 to prefer in a

particular geographical area.” Id. at ¶70. With the multi-RAT priority list, the UE

only has to perform measurements on one or two RATs and may ignore the rest.

Id.

Eerolainen also describes a timer for the multi-RAT priority list. “The entry

for the highest priority RAT in the multi-RAT priority list 10E also preferably

includes an indication of a maximum value for a timer 10F (shown as TIMER in

Fig. 1, and which may be referred to as a search delay timer). The timer is used to

make sure the UE does not stay in communication with a lower priority RAT when

a higher priority RAT is available. Id.



- 23 -

C. R2-080338

R2-080338 is a 3GPP working group document entitled, “Reselection

scenarios for multi-RAT terminals in Rel-8” by Nokia Corporation and Nokia

Siemens Networks. It was publicly available at least as January 7, 2008 at 9:38

PM, when it was publicly posted on 3GPP’s FTP server and January 8, 2008 when

it was circulated to the 3GPP listserv. Ex. 1012 at ¶¶57-59. R2-080338 was

prepared for 3GPP TSG-RAN WG2 Meeting #60bis in Seville, Spain from January

14-18, 2008. Id. R2-080338 therefore qualifies as prior art to the '197 Patent

under at least 35 U.S.C. § 102(a) and § 102(b). R2-080338 was not cited during

the prosecution of the ’197 Patent.

R2-080338 relates to the use of a priorities algorithm for “inter-frequency

and inter-RAT cell reselection in E-UTRAN.” Ex. 1007 at 1. E-UTRAN is LTE.

Ex. 1003 at ¶85. The paper indicates that the UE will use a priorities algorithm to

determine what RAT to camp on when it is in an area with a E-UTRAN (LTE), a

UTRAN (UMTS), and a GERAN (GSM) network. Ex. 1007 at 1; Ex. 1003 at ¶85.

The paper relates to the use of a priority algorithm by multi-RAT UE that supports

LTE, UMTS, and GSM, as well as one that supports just UMTS and GSM. Ex.

1007 at 1.

R2-080338 discloses scenarios where the UE receives priorities when it is

camped on an LTE network, but uses those priorities when camped on a non-LTE



- 24 -

system. Id. at 3. R2-080338 states “if the thresholds are broadcast, the priorities

are not but the UE has received priorities via dedicated signaling (e.g., camping in

UTRAN [UMTS] but received prioritization whilst in E-UTRAN [LTE] then the

priorities received via dedicated signaling always apply – i.e., the UE remembers

them.” Id. In other words, if the UE received a priority list from the LTE network,

but is camping on a non-LTE network, it will use the priority list from the LTE

network for cell reselection. Ex. 1003 at ¶86.

X. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY

As explained below pursuant to 37 C.F.R. § 42.104(b), the cited prior art

renders obvious the challenged claims of the ’197 Patent. The references disclose

the use of the claimed technology in the context of the 3GPP LTE standard prior to

the earliest effective filing date for the ’197 Patent. Pursuant to Rule 42.104(b)(4)-

(5), specific grounds for finding the claims invalid are identified below and

discussed in the Williams Declaration (Ex. 1003).

A. Ground 1: R2-075161 and R2-080338 Render Claims 1-2, 5-9 and

13-15 Obvious

1. Motivation to Combine R2-075161 and R2-080338

The concept of an LTE network providing a dedicated priority list and valid

time to a mobile terminal was discussed as part of the LTE standard development

process well before the alleged priority date of the ’197 Patent. For example,

Section 5.2.4.1 in TS 36.304 v2.0.0, published in October 2007, discloses the LTE



- 25 -

network providing absolute priorities and an associated validity timer to the UE in

an RRC message releasing an RRC connection. See Ex. 1010 at Section 5.2.4.1;

see also Ex. 1003 at ¶223-227.

Both R2-075161 and R2-080338 were contributions made during the RAN2

3GPP meetings where cell reselection in an inter-RAT system in an LTE network

was being discussed and determined for inclusion into the standard. These

contributions provide evidence from the standard development process that shows

that it was known and expected that the UE would continue to use the dedicated

priority list, as previously disclosed in TS 36.304, provided by the LTE network

when the UE subsequently camped on a cell of a non-LTE network. Both R2-

075161 and R2-080338 were contributions made in subsequent 3GPP working

group meetings where this technology was discussed. Ex. 1003 at ¶226-227.

R2-075161 was first proposed during 3GPP TSG-RAN WG2 Meeting #60,

held in Jeju, Korea on November 5-6 2007. Ex. 1005 at 1; Ex. 1003 at ¶226. R2-

075161 discloses that the discussion on using a UE specific priority control for

inter-RAT mobility in idle mode had already been in discussion and decided in the

previous meeting—RAN2 #59bis—but that specifics regarding the

implementation, such as whether the UE specific control for inter-frequency is

based on absolute priorities or offsets—was still being discussed. Ex. 1005 at 1.



- 26 -

R2-075161 discloses these issues and sets forth possible solutions, as explained in

detail herein supra.

R2-080338 was proposed in the very next meeting after R2-075161 was

proposed during 3GPP TSG-RAN WG2 Meeting #60bis, held in Seville, Spain on

January 14-18, 2008—two months after Meeting #60 where the 3GPP working

group members discussed R2-075161. Ex. 1007 at 1; Ex. 1003 at ¶227. R2-

080338 discusses and references documents that were presented at Meeting #60,

further evidencing that the 3GPP working group members referenced and

combined documents from Meeting #60 in presenting further proposals for cell

reselection in an inter-RAT system in an LTE network. Ex. 1007 at 4-5; Ex. 1003

at ¶227.

As explained in the Yaqub Decl., working group members attend these

meetings and continue to refine and develop the standard on an on-going basis.

Ex. 1012 at ¶¶24-25. Technology is discussed in a number of meetings before it is

decided on by the group for inclusion into the standard. It would have been

obvious for one of skill in the art to combine the teachings in R2-075161 with R2-

080338, because these proposals were discussed in subsequent meetings related to

the same technology at issue in the ’197 Patent—combining these types of

references to further develop technology for the standard was exactly what was

done during the standardization process. Ex. 1012 at ¶¶24-25; Ex. 1003 at ¶227.



- 27 -

As shown below, one of ordinary skill in the art would have been motivated to

apply the teachings of a list of frequencies/RATs and timers as disclosed in R2-

075161 with the teaching in R2-080338 that priority information obtained from the

LTE network should be used in cell reselection when only non-LTE networks are

available. Ex. 1003 at ¶223-227. As R2-080338 already discloses this procedure

using certain priority information, it would be obvious and natural for one of

ordinary skill to use the dedicated list, public list, and expiry timer provided in R2-

075161 as the priority information provided by the LTE network. Id.

2. Claim 1

a) Preamble: “a method for cell reselection,

comprising:”

R2-075161 teaches the preamble.3 R2-075161 discloses a priority-list based

approach to inter-system cell reselection for a User Equipment:

Regarding the UE specific control for inter-frequency,

there has been much debate about priority vs. offset.

Although the offset based approach would provide finer

granularity of control in principle, for the reasons listed

below, it is suggested that RAN2 adopts the priority

based approach.

Ex. 1005 at 1 (emphasis added); Ex. 1003 at ¶92. R2-075161 discloses that the

committees were contemplating using either a “priority” approach or an “offset”

3 Petitioner retains the right to establish that the preambles of the claims are not

limiting, but nonetheless shows herein how the prior art teaches the preambles.



- 28 -

approach to inter-system cell reselection. The rest of the proposal goes on to

recommend a priority approach. Ex. 1005; Ex. 1003. at ¶92.

The Introduction of R2-075161 further indicates that R2-075161 is

discussing inter-RAT mobility control in idle mode:

In RAN2#59bis, it was decided that UE specific priority

control should be supported for inter-RAT mobility

control in idle mode. However, it is yet undecided

whether UE specific control for inter-frequency is based

on absolute priorities or offsets. This paper discusses this

issue and also attempts to clarify some of the open issues

for inter-frequency/RAT mobility control in idle mode.

Ex. 1005 at 1. The mobility control referred to in R2-075161 refers to a UE

(terminal) moving within different cellular systems. Ex. 1003. at ¶93. Therefore,

the proposal relates to inter-system cell reselection. Ex. 1003. at ¶93.

R2-0803338 also teaches a method for inter-system cell reselection. R2-

080338 is titled “reselection scenarios for multi-RAT terminals in Rel-8.” Ex.

1007 at 1. A “multi-RAT” terminal is a UE that can operate on more than one

RAT, or, a terminal that can operate on, for example, LTE, UMTS, and GSM. Ex.

1003 at ¶94.

The Introduction further describes the background of the proposal for the

inter-system cell reselection:

The use of the priorities algorithm for inter-frequency

and inter-RAT cell reselection in E-UTRAN has been

agreed at RAN2#60, and has been included in the latest

version of TS36.304. This opens some questions. For



- 29 -

example, a UE located in an area where a E-UTRAN, a

UTRAN and a GERAN network coexist will use the

priorities algorithm to determine which RAT it should be

camping on; what would then be the behavior of the

same UE when located in an area where only UTRAN

and GERAN coexist?

Ex. 1007 at 1. TS 36.304 is a section of the LTE standard. Ex. 1003 at ¶95. In

fact, Huawei has asserted a version of TS 36.304 against Samsung in its

infringement contentions when it asserted the ’197 patent against Samsung in the

Huawei District Court Complaint. See Ex. 1011, generally. This passage,

therefore, is referring to a inter-RAT (or inter-system) method for cell reselection

by a UE on an LTE network. Ex. 1003 at ¶95. This proposal relates to what the

UE will do when it has to perform cell reselection, but is in a non-LTE area, such

as a UTRAN and/or GERAN network. Ex. 1003 at ¶95.

b) [1A]: “obtaining, by a terminal, a dedicated priority

list and a valid time of the dedicated priority list from a

Long Term Evolution (LTE) system, and

R2-075161 discloses obtaining, by a terminal, a dedicated priority list (UE

specific control information) from the LTE system:

Whether the UE specific control information is created

by the eNB or the MME has not been decided. For

this control, it is thought that information about UE

capability, subscription, and cell loading are necessary.

. . .

Consequently, it is thought that the eNB has sufficient

knowledge as to which frequency/RAT layer the UE is

best served with.



- 30 -

Ex. 1005 at 2; Ex. 1003 at ¶97. R2-075161 explains that the UE specific control

information is a dedicated priority list:

The UE specific control information would include a

list of frequency layers/RATs that the UE should handle

with specific priorities.

Ex. 1005 at 2; Ex. 1003 at ¶97. As explained in this passage, the UE specific

control information is actually a “list of frequency layers/RAT’s that the UE

should handle with specific priorities.” Id. Therefore, the UE specific control

information is a priority list of networks or network frequencies. Id. Moreover,

this passage is referring to a “dedicated priority list.” The priority list is referred to

as UE specific control information. Therefore, the priority list is specific or

dedicated to the UE to which the network is communicating the list. Id.

The UE disclosed in R2-075161 is a “terminal,” such as a mobile phone or

tablet. Ex. 1003 at ¶98. R2-075161 describes the terminal obtaining the UE

specific priority list from the LTE network. An eNB refers to the “eNodeB” or

base station on the LTE system. Id. The MME is a “Mobility Management

Entity,” which is also an LTE network architecture element. Id. Therefore, R2-

075161 is describing the LTE network communicating the dedicated priority list to

the terminal. Id.

R2-075161 also describes the terminal obtaining a valid time of the

dedicated priority list from the LTE network. R2-075161 teaches:



- 31 -

An expiry timer can be signaled optionally as part of

the UE specific control information. Upon expiry of

the timer, the UE shall discard the UE specific control

information and continue with the normal cell reselection

procedure.”

Ex. 1005 at 2 (emphasis added). As shown in this statement, the expiry timer is

signaled as part of the UE specific control information. Therefore, R2-075161

describes the UE obtaining specific control information and the timer together

from the LTE network (as described in the previous paragraphs). Ex. 1003 at ¶99.

The expiry timer is a “valid time of the dedicated priority list.” Id. The next

sentence in the passage from R2-075161 indicates that after the timer expires, the

UE specific control information is discard. Ex. 1005 at 2. Therefore, after the

timer expires, the priority list is no longer valid.

R2-080338 also teaches performing cell reselection in accordance with cell

reselection priorities received from the LTE network. In the context of Scenarios 7

and 8, R2-080338 teaches:

In this case, the terminals support the priorities

algorithm; however, the necessary parameters for the

algorithm (i.e., priorities and thresholds) are not

transmitted by the (UTRAN or GERAN) network.

Hence there are three options:

…

• Option 3: The mobile stores the parameters

received from an E-UTRAN network of the

current PLMN or of an equivalent PLMN and

uses these parameters for the priority algorithm



- 32 -

…

Option 3 would allow some predictability in UE

behavior, once the UE has camped in E-UTRAN. In this

case, the UE would remember the thresholds and

priorities received whilst in E-UTRAN. However, it

would still introduce some unreliability once the UE

reselects within UTRA, as the thresholds maybe totally

different and non-applicable. Example: UE camps in E-

UTRA macro-cell, reselects to neighboring UTRA

macro-cell, and then reselects to UTRA indoor micro-

cell.

Ex. 1007 at 3 (emphasis added). Here, R2-080338 explains that the terminal needs

to receive priority parameters, but they are not communicated by the UTRAN

(UMTS) or GERAN (GSM) networks (i.e., non-LTE networks). Id. Instead, R2-

080338 describes the terminal receiving and storing the information from the E-

UTRAN network (i.e., an LTE network). Id.; Ex. 1003 at ¶100. Therefore, these

scenarios disclose a UE obtaining priorities from the LTE network, and then using

them for cell reselection while on a non-LTE network, such as UTRAN (UMTS)

and GERAN (GSM). Ex. 1003 at ¶100.

c) [1B]: “performing, by the terminal, cell reselection

according to the dedicated priority list and the valid

time of the dedicated priority list, when the terminal

camps on a cell of a non-LTE system;”

R2-075161 teaches a terminal performing cell reselection while camping on

a cell of a non-LTE system according to the dedicated priority list:

The UE specific control information would include a

list of frequency layers/RATs that the UE should

handle with specific priorities. However, the indicated



- 33 -

frequency layers/RATs may not be necessarily available

throughout the TA that the UE is now registered to, but

only in certain parts of the TA. Then, it would be

desirable if the UE stops the layer measurements if the

given layers are not available in the vicinity. Hence, the

UE should measure only the frequency layers/RATs that

are indicated in system information of the current serving

cell. For UTRAN and GERAN measurements, an

NCL is needed for UE measurements as have been

agreed in stage 2. The NCL cannot be sent by the UE

specific control information, as the area scope of this

information is the TA (or multiple TAs if the UE is

measured to multiple TAs). Hence, the UE will have to

obtain the NCL from the BCCH in each cell, while

keeping to use the UE specific control information

(priorities).

Ex. 1005 at 2 (emphasis added). The highlighted phrases refer to some of the

operations that occur during the cell reselection process when the UE is camped on

a UMTS (UTRAN) or GSM (GERAN) cell. Ex. 1003 at ¶102.

R2-075161 also discloses performing the reselection before a valid time that

the dedicated priority list expires:

An expiry timer can be signaled optionally as part of the

UE specific control information. Upon expiry of the

timer, the UE shall discard the UE specific control

information and continue with the normal cell

reselection procedure.

Ex. 1005 at 2 (emphasis added). This statement explains that cell reselection

should be performed according to the dedicated priority list (UE specific control

information) until the timer expires, at which point the UE shall discard the priority

list and continue with a different cell reselection procedure. Ex. 1003 at ¶103. As



- 34 -

explained above, the expiry timer (valid time) comes from the LTE network. See

§X.A.2.b, supra. R2-075161 teaches that the expiry timer is used when cell

reselection is performed in an area where there is no LTE cell. Ex. 1005 at 2. For

example, Proposal 5 explains that there may be a policy to “camp all UEs in

UTRAN [UMTS],” and proceeds to say if “both common and UE specific

priorities are present, the UE specific priorities should be respected.” Id. at 2.

R2-080338 also teaches performing cell reselection in accordance with cell

reselection priorities received from the LTE network when camping on a cell of a

non-LTE system. In the context of Scenarios 7 and 8, R2-080338 teaches:

In this case, the terminals support the priorities

algorithm; however, the necessary parameters for the

algorithm (i.e., priorities and thresholds) are not

transmitted by the (UTRAN or GERAN) network.

Hence there are three options:

* * *

• Option 3: The mobile stores the parameters

received from an E-UTRAN network of the

current PLMN or of an equivalent PLMN and

uses these parameters for the priority algorithm

* * *

Option 3 would allow some predictability in UE

behavior, once the UE has camped in E-UTRAN. In this

case, the UE would remember the thresholds and

priorities received whilst in E-UTRAN. However, it

would still introduce some unreliability once the UE

reselects within UTRA, as the thresholds maybe totally

different and non-applicable. Example: UE camps in E-

UTRA macro-cell, reselects to neighboring UTRA



- 35 -

macro-cell, and then reselects to UTRA indoor micro-

cell.

Ex. 1007 at 3 (emphasis added). As described in these scenarios, A UTRAN

(UMTS) and GERAN (GSM) network may not communicate the information a

terminal needs to perform cell reselection. Therefore, it must take a different step

when it is in an area with only UMTS and GSM networks. Id.; Ex. 1003 at ¶104.

The proposal teaches that the UE should receive and store the priorities when it is

on the E-UTRAN (or LTE) network. Ex. 1007 at 3; Ex. 1003 at ¶104. Then, when

the terminal is in an area where there is no LTE network (for example, an area

where there is only UMTS or GSM networks), the terminal should use the

priorities from the LTE network to perform cell reselection. Ex. 1007 at 3; Ex.

1003 at ¶104.

d) [1C]: “wherein, when the terminal camps on a cell of

the non-LTE system, the performing cell reselection


time comprises: performing, by the terminal camping

on the cell of the non-LTE system, cell reselection

according to the dedicated priority list before the valid

time expires, wherein when the terminal camps on the

cell of the non-LTE system, the dedicated priority list is

invalid after the valid time expires.”

For the same reasons set forth above for claim element [1B], R2-075161 and

R2-080338 disclose or render obvious claim element [1C]. See §X.A.2.c, supra.

The only additional limitation set forth in claim element [1C] that is not already set

forth in claim element [1C] is the requirement that the cell reselection according to



- 36 -

the dedicated priority list be done before the valid time expires and that the

dedicated priority list is invalid after the valid time expires. Ex. 1003 at ¶106.

R2-075161 discloses this additional limitation in claim element [1C]. R2-

075161 discloses performing the reselection before a valid time that the dedicated

priority list expires:





reselection procedure.

Ex. 1005 at 2 (emphasis added). This statement explains that cell reselection

should be performed according to the dedicated priority list (UE specific control

information) until the timer expires, at which point the UE shall discard the priority

list and continue with a different cell reselection procedure. Id; Ex. 1003 at ¶107.

Because the UE is directed to no longer use the UE specific control information

and to discard it upon expiry of the timer, that UE specific control information is

no longer valid after the valid time expires. Ex. 1003 at ¶107.

Accordingly, R2-075161 and R2-080338 render obvious in combination all

the limitations of claim 1 of the ’197 Patent. Ex. 1003 at ¶91.



- 37 -

3. Claim 2

a) “The method according to claim 1, wherein when the

terminal camps on the cell of the non-LTE system, the

dedicated priority list is invalid after the valid time

expires, the method further comprises: performing cell

reselection according to a public priority list, or

performing cell reselection according to a result

measured in accordance with a cell signal quality

criterion, or searching for a cell of the LTE system.

Claim 2 depends from claim 1 and further requires that after the valid time

expires, the UE should no longer use the dedicated priority list, and should instead

perform cell reselection according to one of three different options. Ex. 1003 at

¶109. Since these options are connected with the disjunctive “or,” only one of the

three options needs to be shown for the claim to be rendered invalid. Huawei

agrees with this interpretation. In the infringement contentions Huawei served in

the underlying litigation, Huawei only alleges infringement of the first two

limitations set forth in this claim: “performing cell reselection according to a

public priority list” and “performing cell reselection according to a result measured

in accordance with a cell signal quality criterion.” See Ex. 1011 at 20-29.

R2-075161 teaches the first option—wherein when the terminal camps on

the cell of the non-LTE system, the dedicated priority list is invalid after the valid

time expires, the method further comprises: performing cell reselection according

to a public priority list.” The discussion above for claim elements [1B] and [1C]

explain how R2-075161 and R2-080338 disclose cell reselection before a valid



- 38 -

time the dedicated priority list expires when camping on the cell of the non-LTE

system. §X.A.2.c-d, supra.

R2-075161 discloses cell reselection in accordance with a public priority list

after the valid time of the dedicated priority list expires:

The UE has to measure only the frequency layers/RATs

that are indicated by BCCH from the serving cell, even

when UE specific control information indicates other

frequencies/RATs. The priority for cell reselection is

still based on priority indicated in UE specific control

information.

In certain deployments, it may be useful that all of the

UEs are set with common priorities. For example, the

operator may set a policy to camp all of the UEs in

UTRAN (or LTE), due to differences in the provided

services or coverage. In such cases, it would be useful if

priorities can be set by system information, so that UE

specific signaling can be avoided. If both common and

UE specific priorities are present, the UE specific

priorities should be respected.

Ex. 1005 at 2; Ex. 1003 at ¶110; also see Ex. 1005 at 2-3 (“It should be possible to

set priorities that apply commonly to all the UEs by BCCH. If both common and

UE specific priorities are present, the UE specific priorities should be respected”).

BCCH stands for “Broadcast Control Channel.” The signal transmitted on the

broadcast control channel is meant not for a specific UE, but for any UE that is

communicating on the network. Ex. 1003 at ¶110. Therefore, the priorities sent

via the BCCH are public and the common priorities received on the BCCH is a

public priority list. Id.



- 39 -

R2-075161 also describes what such a public priority list may look like. R2-

075161 teaches that a common priority may be that all UEs should camp on

UTRAN (UMTS) because of differences in services or coverage. Ex. 1005 at 2.

In this situation, UMTS has the highest priority in the list. Ex. 1003 at ¶111.

R2-75161 explains exactly when the public and dedicated priority lists

should be used. When both common and UE specific priority lists are present, the

UE is to use the specific priority list. Ex. 1005 at 2-3; Ex. 1003 at ¶112. However,

when the timer expires and the UE must discard the UE specific control

information (i.e., dedicated priority list), Proposal 4 states that the UE will

continue with the normal reselection procedure using the common (public) priority

list:





reselection procedure.”

Ex. 1005 at 2. Once the UE specific control information is discarded after the

timer expires, if the normal cell reselection is to proceed with a priority list, the

only remaining list is the common (public) priority list. Therefore, after the valid

time of the dedicated (“specific”) priority list expires, the UE will use the public

priority list. Ex. 1003 at ¶112.



- 40 -

R2-075161 discloses using the public priority list when camping on a non-

LTE network. Ex. 1003 at ¶113. As explained above, Proposal 5 envisions both

camping on a UMTS network and using the public priority list when the time

expires and the dedicated list is deleted. See §X.A.2.c, supra. In addition, one of

ordinary skill in the art would be motivated to combine these teachings from R2-

075161, including the use of a public priority list after the valid time expires, with

the procedures explained in R2-080338 for the reasons explained above. See

§X.A.1, supra.

R2-075161 also discloses “searching for a cell of the LTE system.” It states

that “[i]n certain deployments, it may be useful that all of the UEs are set with

common priorities. For example, the operator may set a policy to camp all of

the UEs in UTRAN (or LTE), due to differences in the provided services or

coverage.” Ex. 1005 at 2 (emphasis added). Here, it explains that the operator may

set the “normal” cell reselection procedure to “camp all of the UEs in . . . LTE.” If

that is set as the normal cell reselection procedure, then, when the priority list

expires, the UE would search for a cell of the LTE system. Ex. 1003 at ¶114.

Accordingly, R2-075161 and R2-080338 render obvious in combination all

the limitations of claim 2 of the ’197 Patent. Ex. 1003 at ¶108.



- 41 -

4. Claim 5

a) “The method according to claim 1, wherein the

dedicated priority list and the valid time of the

dedicated priority list are carried in a dedicated

signal.”

Claim 5 depends from claim 1, and adds the further requirement that the

dedicated priority list and the valid time of the dedicated priority list be carried in a

dedicated signal. As explained above, the dedicated priority list is the “UE specific

control information” in R2-075161. See §X.A.2.b, supra. R2-075161 discloses

that this priority list is sent to the UE from the LTE network on dedicated

signaling:

The UE specific control information is created by the

eNB, and signaled as an optional IE in the RRC release

message (which is also used at TA updates)

Ex. 1005 at 2; Ex. 1003 at ¶116. There are two different types of signals that can

be communicated between the network and the UE on an LTE network. One type

of signal is a signal that is meant to be received and potentially used by any UE

that is communicating with a particular base station—this type of signal is a public

signal, known as a broadcast or multicast signal. Ex. 1003 at ¶116.

The other type of signal that can be communicated between the network and

the UE on an LTE network is a signal that is meant for only a certain UE. This is a

dedicated signal. Ex. 1003 at ¶117. The passage above from R2-075161 indicates

that the UE specific control information is communicated from the LTE network to



- 42 -

the UE as part of the “RRC release message.” Ex. 1005 at 2. “RRC” stands for

“Radio Resource Control.” Ex. 1003 at ¶117. RRC refers to signaling in a

connection between a base station and a UE. Ex. 1003 at ¶117. The “RRC

Release” message referred to in R2-075161 refers to a message releasing a

connection between the base station and the UE. Ex. 1003 at ¶117. The RRC

release message is part of a dedicated signal for the specific UE because it is meant

only for a certain UE. Ex. 1003 at ¶117. In the underlying litigation, Huawei

accused the RRC connection release message, as disclosed in this section of R2-

075161, as allegedly infringing this limitation. Ex. 1011 at 30.

The valid time is included in the same dedicated signal as the dedicated

priority list. R2-075161 teaches:

An expiry timer can be signaled optionally as part of

the UE specific control information. Upon expiry of

the timer, the UE shall discard the UE specific control


procedure.

Ex. 1005 at 2 (emphasis added). Here, the expiry timer is the valid time, since the

timer will indicate when the UE specific control information expires. Ex. 1003 at

¶118. This passage indicates that the expiry timer is signaled as part of the UE

specific control information, which is the dedicated priority list. Ex. 1003 at ¶118.

Therefore, R2-075161 discloses both the valid time and dedicated priority list in

the dedicated signal. Ex. 1003 at ¶118.



- 43 -

Accordingly, R2-075161 and R2-080338 disclose or render obvious in

combination all the limitations of claim 5 of the ’197 Patent. Ex. 1003 at ¶115.

5. Claim 6

a) “The method according to claim 1, wherein the

dedicated priority list comprises one of the following:

priority level of a frequency or a Radio Access

Technology, RAT; priority levels of the frequency of the

serving cell, adjacent frequencies of the serving cell,

and frequencies of the neighboring systems; and

priority levels assigned for each frequency or

Frequency Band of a neighboring system”

Claim 6 depends from claim 1 and adds the further requirement that the

dedicated priority list comprise one of the following three options: priority level of

a frequency or a Radio Access Technology, RAT; priority levels of the frequency

of the serving cell, adjacent frequencies of the serving cell, and frequencies of the

neighboring systems; and priority levels assigned for each frequency of Frequency

Band of a neighboring system. Since claim 6 states that the dedicated priority list

“comprises one of the following,” only one of the three options needs to be shown

for the claim to be rendered obvious. Huawei agrees with this interpretation. In

the underlying litigation, Huawei only alleges that infringement of the first

limitation: “priority level of a frequency or Radio Access Technology, RAT.” Ex.

1011 at 35-41.

R2-075161 discloses: “wherein the dedicated priority list comprises one of

the following: priority level of a frequency or a Radio Access Technology, RAT.”



- 44 -

The content of the UE specific control information is described above in for claim

1. §X.A.2, supra. R2-075161 states:

The UE specific control information would include a list

of frequency layers/RATs that the UE should handle with

specific priorities.

Ex. 1005 at 2. The RATs refer to the radio access technologies. Ex. 1003 at ¶121.

Specifically, R2-075161 is describing a priority list that identifies the frequencies

of the different RATs, in order of the priority the UE should choose when it is

reselecting a cell. Ex. 1005 at 2; Ex. 1003 at ¶121.


combination all the limitations of claim 6 of the ’197 Patent. Ex. 1003 at ¶119.

6. Claim 13

a) “The method according to claim 2, wherein the public

priority list is obtained by the terminal from one of the

LTE system and the non-LTE system.”

Claim 13 depends from claim 2 and adds the further requirement that the

public priority list be obtained from one of the LTE system or the non-LTE system.

The public priority list received by the UEs as described above with respect to

claim 2 must come from the system with which the UE is communicating at the

time it receives the list. Ex. 1003 at ¶141. As explained above with the other

claim limitations, R2-075161 describes the UE communicating on an LTE network

and a non-LTE network (such as UMTS or GSM). Therefore, there are only two

options from which the UE may receive the public priority list: it must be either an



- 45 -

LTE system or a non-LTE system. Ex. 1003 at ¶141. Therefore, this claim is

taught by R2-075161.

That said, R2-075161 teaches the public priority list coming from the LTE

system. Ex. 1003 at ¶110. As explained above, the proposal is for a UE on an

LTE system. Ex. 1003 at ¶65-75. Moreover, R2-075161 discloses that the

operator may set a policy for a UE to camp on either UMTS or LTE. Ex. 1005 2.

Ex. 1003 at ¶111.


combination all the limitations claim 13 of the ’197 Patent. Ex. 1003 at ¶140.

7. Claim 7

a) Preamble: “A terminal comprising”

Both R2-075161 and R2-080338 disclose a “terminal.” Ex. 1003 at 98.

Both references disclose a “UE.” See, e.g.,, Ex. 1005 at 2; Ex. 1007 at 3. A “UE”

refers to a “user equipment” which is a terminal such as a mobile phone or tablet.

Ex. 1003 at 45, 47.

b) [7A] “a first obtaining unit, configured to obtain a

dedicated priority list and a valid time of the dedicated

priority list from a Long Term Evolution (LTE)

system;”

R2-075161 and R2-080338 disclose or render obvious in combination claim

element [7A] as described above for claim element [1A]. §X.A.2.b, supra. Both

R2-075161 and R2-080338 inherently disclose a first obtaining unit, which is a



- 46 -

piece of hardware or software that obtains, such as a receiver. As explained above,

both references disclose a UE. It is inherent that a UE that obtains a dedicated

priority list must include a first obtaining unit (i.e., a receiver). Ex. 1003 at ¶125-

126, 129. In addition, both references refer to the UE’s communication on a

cellular network. In order to communicate on a cellular network, it must include a

receiver to receive signals from the eNodeB. Id.

Furthermore, this inherency position is consistent with the position Huawei

has taken in the underlying litigation. In its infringement contentions to Samsung,

Huawei merely states that the accused products include a first obtaining unit

because they contain “baseband processors, RF front end, antennas, internal and

external RAM, software and firmware,” without setting forth any specific evidence

for what constitutes the first obtaining unit in the accused product, citing only to

the 3GPP standards documents. Ex. 1011 at 41.

c) [7B] “a storage unit, configured to store the dedicated

priority list and the valid time of the dedicated priority

list.”


element [7B] as described above for claim element [1A]. §X.A.2.b, supra. Once

received, the information must be stored in the UE for use in the cell reselection

process. R2-075161 teaches storing the dedicated priority list and valid time:





- 47 -



procedure.

Ex. 1005 at 2. If the UE specific control information is discarded after expiration

of the valid time, that means it must have been stored in a memory. Ex. 1003 at

¶130. R2-075161 also teaches that if “both common and UE specific priorities are

present, the UE specific priorities should be respected.” Ex. 1005 at 2. If

something is “present,” then it is stored in memory. Ex. 1003 at ¶125-126, 130.

This limitation is also inherently disclosed in R2-080338. As explained

above, a UE necessarily must store the dedicated priorities list in storage to use in

the cell reselection process. Accordingly, the UE in R2-080338 inherently

disclosing a storage unit. Ex. 1003 at ¶131.



Huawei merely states that the accused products include a storage unit because they

contain “baseband processors, RF front end, antennas, internal and external RAM,

software and firmware,” without setting forth any specific evidence for what

constitutes the storage unit in the accused product, citing only to the 3GPP

standards documents. Ex. 1011 at 41.



- 48 -

d) [7C] “a processing unit, configured to perform cell

reselection according to the dedicated priority list and

the valid time of the dedicated priority list stored in the

first storage unit when the terminal camps on a non-

LTE system”


element [7C] as described above for claim element [1B]. §X.A.2.c, supra. It is

inherent that the procedures described in R2-075161 and R2-080338 would be

stored in computer code with executable instructions which must be executed on a

processor. Ex. 1003 at ¶125-126, 134. Indeed, in order to perform the described

functionality, that functionality must be written into computer code, which is then

compiled, and run on a processor. Id. All UEs include processors. Id.



Huawei merely states that the accused products include a processing unit because

they contain “baseband processors, RF front end, antennas, internal and external

RAM, software and firmware,” without setting forth any specific evidence for what

constitutes the storage unit in the accused product, citing only to the 3GPP

standards documents. Ex. 1011 at 49.



- 49 -

e) [7D] “wherein, when the terminal camps on a cell of










element [7D] as described above for claim element [1C]. §X.A.2.d, supra.

Therefore, R2-075161 and R2-080338 disclose or render obvious in combination

all elements of claim 7 of the ’197 Patent. Ex. 1003 at ¶123.

8. Claim 8

a) “The terminal according to claim 7, wherein the


dedicated priority list are carried in a dedicated signal.

See Claim 5. §X.A.4.a, supra.

9. Claim 9




Technology, RAT; or priority levels of the frequency of

the serving cell, adjacent frequencies of the serving

cell, and frequencies of the neighboring systems; or


Frequency Band of a neighboring system.”

See Claim 6. §X.A.5.a, supra.



- 50 -

10. Claim 14

a) “The terminal according to claim 7, wherein when the


processing unit is further configured to perform cell

reselection according to the dedicated priority list

before the valid time expires.”

Claim 14 depends from claim 7 and further adds the requirement that the

terminal camps on the cell of the non-LTE system, the processing unit is further

configured to perform cell reselection according to the dedicated priority list before

the valid time expires. R2-075161 and R2-080338 disclose or render obvious in

combination claim 14 as described above for claim elements [1B], [1C], and [7C].

See X.A.2.c-d; X.A.7.d, supra. Therefore, R2-075161 and R2-080338 disclose or

render obvious in combination claim 14. Ex. 1003 at ¶142.

11. Claim 15

a) [15A]: “The terminal according to claim 14, further

comprising: a second obtaining unit, configured to

obtain a public priority list from one of the LTE system

and the non-LTE system;”

Claim 15 depends from claim 14. In its infringement contentions in the

underlying litigation, Huawei does not identify a separate component as the

“second obtaining unit” from the “obtaining unit” it points to for claim element

7A. Ex. 1011 at 88. Therefore, the first obtaining unit (i.e., receiver) inherently

disclosed in R1-075161 and R2-080338 discussed in accordance with claim

element [7A] above illustrates that these references inherently discloses claim



- 51 -

element [15A]. R2-075161 and R2-080338 disclose or render obvious in

combination claim element [15B] as described above for claim elements [7A] and

[13]. See X.A.6; X.A.7.b, supra. Ex. 1003 at ¶144.

b) [15B]: “a second storage unit, configured to store the

public priority list; and”

In its infringement contentions in the underlying litigation, Huawei does not

identify a separate component as the “second storage unit” from the “storage unit”

it points to for claim element [7B]. Ex. 1011 at 88. Therefore, the storage unit

disclosed in R1-075161 and inherently disclosed in R2-080338 discussed in

accordance with claim element [7B] above illustrates that these references disclose

claim element [15B]. R2-075161 and R2-080338 disclose or render obvious in

combination claim element [15B] as described above for claim elements [7B] and

[13]. See X.A.6; X.A.7.c, supra. Ex. 1003 at ¶148.

c) [15C]: “a second processing unit, configured to

perform cell reselection according to a public priority

list, when the terminal camps on the cell of the non-LTE

system and the dedicated priority list is invalid after the

valid time expires.”

In its infringement contentions in the underlying litigation, Huawei does not

identify a separate component as the “second processing unit” from the

“processing unit” it points to for claim element [7C]. Ex. 1011 at 88. R2-075161

and R2-080338 disclose or render obvious in combination claim element [15C] as



- 52 -

described above for claim elements[1D], [7C] and [13]. See §X.A.2.e, X.A.6;

X.A.7.d, supra. Ex. 1003 at ¶¶149-150.

B. Ground 2: R2-075161 and R2-080338 in further view of

Eerolainen Render Claims 7-9 and 14-15 Obvious

1. Motivation to Combine R2-075161, R2-080338, and

Eerolainen

The reasons why a person of ordinary skill in the art would be motivated to

combine R2-075161 and R2-080338 are set forth above. See §X.A.1, supra. Like

R2-075161, and R2-080338, Eerolainen relates to cell reselection in an inter-RAT

system. Ex. 1003 at ¶272. Moreover, Eerolainen also relates to cell reselection in

an inter-RAT system, in the context of a UE that operates on the LTE

network. Id. Eerolainen relates to inter-RAT cell reselection for LTE. Ex. 1006

at ¶¶34-37 (“It may be anticipated that future mobile devices . . . will support

several RATs (e.g. 2G/3G/3.9G and beyond). In order to provide seamless service

to the UE in a case where it moves outside of the coverage of a current “camped

on”/active RAT, measurement reports need to be sent to the NW…”). Ex. 1003 at

¶272.

Like R2-075161 and R2-080338, Eerolainen was also specifically proposed

for the LTE standardization process:

As employed herein a 3.9G RAT is assumed to be on

compatible with EUTRAN, also referred to as UTRAN-

LTE, for which specification and standardization efforts

are on-going. A 2G RAT may be compatible with, as



- 53 -

non-limiting examples, GPRS/EDGE, GSM or PDF,

while a 3G RAT may be one compatible with, as non-

limiting examples, UMTS, WCDMA and CDMA2000.

Ex. 1006 at ¶61; Ex. 1003 at ¶273. Because all three references relate to the

standardization process for LTE, and specifically, cell reselection, a person of

ordinary skill in the art would be motivated to apply the teachings of Eerolainen to

the teachings of R2-075161 and R2-080338. Ex. 1003 at ¶273.

The assignee of Eerolainen is Nokia Corporation. Nokia is also the author

and source for R2-080338. Nokia, as a 3GPP member, was clearly involved in

developing the standard for cell reselection in an inter-RAT system in an LTE

network. Accordingly, one of skill in the art would have combined Nokia’s

references related to this technology to disclose the ’197 invention.

Because R2-075161, R2-080338, and Eerolainen all relate to inter-RAT cell

reselection during LTE network development, and each provides explicit

motivation to combine the teachings with each other, it would have been natural

for a person of ordinary skill in the art to read the two documents together and

combine the references in the manner shown below. Ex. 1003 at ¶274. In

particular, one of ordinary skill in the art would be motivated to implement the

teachings shown in R2-075161 and R2-080338 in the hardware described in

Eerolainen, because Eerolainen describes the precise type of hardware that one of

ordinary skill in the art knows is used in LTE and non-LTE cellular systems. Id.



- 54 -

2. Claim 7

a) Preamble: “A terminal comprising”

As explained above, R2-075161 and R2-080338 disclose a “terminal.” See

§X.A.7.a, supra.

Eerolainen also discloses a terminal. In Eerolainen, Figure 1 shows a data

processor 10A that executes the program 10C stored on memory 10B, all on the

user equipment 10, which is a terminal device:

Ex. 1006 at Figure 1. Ex. 1003 at ¶233.



- 55 -

b) [7A] “a first obtaining unit, configured to obtain a

dedicated priority list and a valid time of the dedicated

priority list from a Long Term Evolution (LTE)

system;”

As disclosed above, R2-075161 and R2-080338 disclose or render obvious in

combination claim element [7A]. See §X.A.7.b, supra.

To the extent R2-075161 and R2-080338 do not inherently disclose a first

obtaining unit, one of skill in the art would combine the disclosure of R2-075161

and R2-080338 with Eerolainen. Eerolainen explicitly discloses a first obtaining

unit (i.e., receiver) in the terminal. In the context of Figure 1, Eerolainen explains:

Further, while described generally in the context of a UE

10 having a single receiver (single transceiver), the

exemplary embodiments of this invention may be used as

well with those UEs that include a plurality of receivers,

such as those adapted for use in different frequency

bands possibly using different modulation and coding

schemes and different access technologies.”

Ex. 1006 at ¶144 (emphasis added). As explained in this paragraph, Eerolainen

describes UEs including both a single receiver, and more than one receiver. It

should be noted as well, that one of ordinary skill in the art reading Eerolainen

would have known that all UEs that operate on a cellular network included a

receiver. Ex. 1003 at ¶235.



- 56 -

c) [7B] “a storage unit, configured to store the dedicated

priority list and the valid time of the dedicated priority

list.”


combination claim element [7B]. See §X.A.7.c, supra. Eerolainen explicitly

discloses a storage unit, or memory. The memory is shown as element 10B in UE

10 in Figure 1:

Eerolainen provides an explanation about memory 10B:

The MEMs 10B, 12B and 14B may be of any type

suitable to the local technical environment and may be

implemented using any suitable data storage technology,

such as semiconductor-based memory devices, magnetic

memory devices and systems, optical memory devices

and systems, fixed memory and removable memory.



- 57 -

Ex. 1006 at ¶68. Eerolainen also explains that the memory stores a priority list:

In accordance with the exemplary embodiments of this

invention the NW (e.g., the PS 12E in cooperation with

the MRHC function 12F) includes logic to construct a

multi-RAT priority list as discussed below, to signal the

constructed multi-RAT priority list to the UE 10, and the

UE 10 includes memory (e.g., the memory 10B) for

storing the multi-RAT priority list, shown in Fig. 1 as the

MRPL 10E. The use of the multi-RAT priority list 10E

provides a simple way to manage the complexity

involved when the UE 10 operates with multi-RATs, as

described in further detail below.

Id. at ¶69. One of ordinary skill in the art would therefore be motivated to

combine the teachings of R2-075161, R2-080338, and Eerolainen, to store the

received priority list and valid time from R2-075161 and R2-080338 from the LTE

network in the UE memory described in Eerolainen. Ex. 1003 at ¶¶236-239.

d) [7C] “a processing unit, configured to perform cell

reselection according to the dedicated priority list and

the valid time of the dedicated priority list stored in the

first storage unit when the terminal camps on a non-

LTE system”

As disclosed above, R2-075161 and R2-080338 disclose or render obvious

in combination claim element [7C]. See §X.A.7.d, supra. Eerolainen explicitly

discloses the claimed processor in a UE. Ex. 1003 at ¶241. Eerolainen teaches

computer program code including executable instructions. Id. Figure 1 shows a

data processor 10A that executes the program 10C stored on memory 10B, all on

the user equipment 10, which is a terminal device:



- 58 -

Ex. 1006 at Figure 1. The data processor 10A is the claimed processing unit in

claim element [7C]. Ex. 1003 at ¶241. Eerolainen explains that the program 10C

includes instructions that “when executed by [data processor 10A], enable[s] the

electronic device to operate in accordance with the exemplary embodiments of the

invention.” Id. at ¶63. The data processor 10 may include “general purpose

computers, special purpose computers, microprocessors, digital signal processors

(DSPs) and processors based on a multi-core processor architecture, as non-

limiting examples.” Id. at ¶68.

Eerolainen teaches the processor 10A executing computer instructions to

perform a method of cell reselection. Ex. 1003 at ¶242. It discloses a multi-RAT



- 59 -

priority list that is sent to the UE. Ex. 1006 at ¶¶69-70. The “multi-RAT priority

list 10E may contain identifying information for all RATs that the [network]

supports and/or that the [network] wants the UE 10 to prefer in a particular

geographical area.” Id. at ¶70.

e) [7D] “wherein, when the terminal camps on a cell of










element [7D] as described above for claim element [1C]. See X.A.2.d, supra.

Therefore, R2-075161, R2-080338, and Eerolainen disclose or render obvious in

combination all elements of claim 7 of the ’197 Patent. Ex. 1003 at ¶231.

3. Claim 8



dedicated priority list are carried in a dedicated signal.

Claim 8 depends from claim 7 and further requires that the dedicated priority

list and the valid time of the dedicated priority list are carried in a dedicated signal.

R2-075161 and R2-080338 disclose or render obvious in combination claim 8 as

described above for claim 5. See X.A.4.a, supra. Therefore, R2-075161, R2-

080338, and Eerolainen disclose or render obvious in combination claim 8.



- 60 -

4. Claim 9




Technology, RAT; or priority levels of the frequency of

the serving cell, adjacent frequencies of the serving

cell, and frequencies of the neighboring systems; or


Frequency Band of a neighboring system.”


dedicated priority list comprise one of the following three options: priority level of

a frequency or a Radio Access Technology, RAT; priority levels of the frequency

of the serving cell, adjacent frequencies of the serving cell, and frequencies of the

neighboring systems; and priority levels assigned for each frequency of Frequency

Band of a neighboring system. R2-075161 and R2-080338 disclose or render

obvious in combination claim 9 as described above for claim 6. See §X.A.5.a,

supra. Therefore, R2-075161, R2-080338, and Eerolainen disclose or render

obvious in combination claim 9.

5. Claim 14

a) “The terminal according to claim 7, wherein when the


processing unit is further configured to perform cell

reselection according to the dedicated priority list

before the valid time expires.”


terminal camps on the cell of the non-LTE system, the processing unit is further



- 61 -

configured to perform cell reselection according to the dedicated priority list before

the valid time expires. R2-075161 and R2-080338 disclose or render obvious in

combination claim 14 as described above for claim elements [1B], [1C], and [7C].

See X.A.2c-d, X.A.7.d, supra. Therefore, R2-075161, R2-080338, and Eerolainen

disclose or render obvious in combination claim 14.

6. Claim 15

a) [15A]: “The terminal according to claim 14, further

comprising: a second obtaining unit, configured to

obtain a public priority list from one of the LTE system

and the non-LTE system.”

Claim 15 depends from claim 14. As disclosed above, R2-075161 and R2-

080338 disclose or render obvious in combination claim element [15A]. See

§X.A.11, supra. Eerolainen discloses a second obtaining unit (receiver):

Further, while described generally in the context of a UE

10 having a single receiver (single transceiver), the

exemplary embodiments of this invention may be used as

well with those UEs that include a plurality if receivers,

such as those adapted for use in different frequency

bands, possibly using different modulation and coding

schemes and different access technologies.”

Ex. 1006 at ¶144. One of ordinary skill in the art would be motivated to combine

the teachings of Eerolainen with those of R2-075161 and R2-080338 to use either

one or two different obtaining units to obtain priority information for use in cell

reselection. Ex. 1003 at ¶246.



- 62 -

b) [15B]: “a second storage unit, configured to store the

public priority list; and”


combination claim element [15B]. See §X.A.11, supra. Eerolainen further

explicitly discloses a storage unit, or memory. The memory is shown as element

10B in UE 10 in Figure 1:

Eerolainen provides an explanation about memory 10B:

The MEMs 10B, 12B and 14B may be of any type

suitable to the local technical environment and may be

implemented using any suitable data storage technology,

such as semiconductor-based memory devices, magnetic

memory devices and systems, optical memory devices

and systems, fixed memory and removable memory.



- 63 -

Ex. 1006 at ¶68. Eerolainen also explains that the memory stores a priority list:

In accordance with the exemplary embodiments of this

invention the NW (e.g., the PS 12E in cooperation with

the MRHC function 12F) includes logic to construct a

multi-RAT priority list as discussed below, to signal the

constructed multi-RAT priority list to the UE 10, and the

UE 10 includes memory (e.g., the memory 10B) for

storing the multi-RAT priority list, shown in Fig. 1 as the

MRPL 10E. The use of the multi-RAT priority list 10E

provides a simple way to manage the complexity

involved when the UE 10 operates with multi-RATs, as

described in further detail below.

Id. at ¶69. One of ordinary skill in the art would therefore be motivated to

combine the teachings of R2-075161, R2-080338, and Eerolainen, to store the

received priority list and valid time from R2-075161 and R2-080338 from the LTE

network in the UE memory described in Eerolainen. Ex. 1003 at ¶246.

c) [15C]: “a second processing unit, configured to

perform cell reselection according to a public priority

list, when the terminal camps on the cell of the non-LTE

system and the dedicated priority list is invalid after the

valid time expires.”


combination claim element [15C]. See §X.A.11, supra. Accordingly, R2-075161,

R2-080338, and Eerolainen disclose or render obvious in combination all the

limitations of claim 15 of the ’197 Patent. Ex. 1003 at ¶246.

XI. SECONDARY CONSIDERATIONS

Huawei has not identified any evidence of secondary considerations, either

in the prosecution history or in the related district court litigation. Petitioner is not



- 64 -

aware of any evidence of secondary considerations supporting a finding of non-

obviousness and reserves the right to present rebuttal evidence if and when the

Patent Owner presents such evidence.

XII. CONCLUSION

Petitioner has established a reasonable likelihood that the challenged claims

of the ’197 Patent will be found unpatentable. Petitioner therefore respectfully

requests that inter partes review of the ’197 Patent be granted, and that claims 1-2,

5-9, and 13-15 be held unpatentable on Grounds 1 and 2.



- 65 -

Respectfully submitted,

Date: May 24, 2017

/s/ Marissa R. Ducca

Kevin P.B. Johnson

(Reg. No. 38927)

[email protected]

QUINN EMANUEL URQUHART &

SULLIVAN LLP

555 Twin Dolphin Drive, 5th Floor

Redwood City, CA 94065

Tel: (650) 801-5000

Fax: (650) 801-5100

Marissa Ducca

(Reg. No. 59807)

[email protected]

QUINN EMANUEL URQUHART &

SULLIVAN LLP

777 6th Street NW, 11th Floor

Washington, DC 20001

Tel: (202) 538-8000

Fax: (202) 538-8100

Attorneys for Petitioner Samsung Elecs.

Co., Ltd.,



- 1 -

`

CERTIFICATION UNDER 37 C.F.R. §42.24

Under the provisions of 37 C.F.R. §42.24, the undersigned hereby certifies

that the word count for the foregoing Petition for inter partes review totals 13,915

words, not including the able of contents, a table of authorities, mandatory notices

under §42.8, a certificate of service or word count, or appendix of exhibits or claim

listing words, which is less than the 14,000 allowed under 37 C.F.R. §42.24(a)(i).

Date: May 24, 2017


Marissa R. Ducca (Reg. No. 59807)



- 2 -

CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e), 42.105(a), the undersigned hereby certifies

service on the Patent Owner of a copy of this Petition and its respective exhibits at

the official correspondence address for the attorney of record for the ’197 Patent as

shown in USPTO PAIR via EXPRESS MAIL:

LEYDIG, VOIT & MAYER, LTD.

TWO PRUDENTIAL PLAZA SUITE 4900

180 NORTH STETSON AVENUE

CHICAGO, IL 60601

and

MICHAEL J. BETTINGER

SIDLEY AUSTIN LLP

555 CALIFORNIA STREET, #2000

SAN FRANCISCO, CA 94104

Date: May 24, 2017


Marissa R. Ducca (Reg. No. 59807)

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