Petition for Inter Partes Review of U.S. Patent No...
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Petition for Inter Partes Review of U.S. Patent No. 6,819,923
Paper No. 1
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
APPLE INC. Petitioner,
v.
CELLULAR COMMUNICATIONS EQUIPMENT LLC, Patent Owner
Patent No. 6,819,923
Issued: November 16, 2004 Filed: December 16, 1999
Inventor: Leif Friman Title: METHOD FOR COMMUNICATION OF NEIGHBOR CELL
INFORMATION ____________________
Inter Partes Review No. IPR2015-00577
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,819,923 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1-.80 & 42.100-.123
________________________
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
i
TABLE OF CONTENTS
I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW ................................................................. 1
A. Certification the 923 Patent May Be Contested by Petitioner .............. 1
B. Fee for Inter Partes Review (§ 42.15(a)) ............................................... 2
C. Mandatory Notices (37 CFR § 42.8(b)) ................................................ 2
D. Proof of Service (§§ 42.6(e) and 42.105(a)) ......................................... 3
II. Identification of Claims Being Challenged (§ 42.104(b)) ........................... 4
III. Relevant Information Concerning the Contested Patent .......................... 4
A. Effective Filing Date of the 923 Patent ................................................. 4
B. Person of Ordinary Skill in the Art ....................................................... 5
C. The 923 Patent ....................................................................................... 5
1. Technical Overview ........................................................................ 5
2. Prosecution History ......................................................................... 6
D. Construction of Terms Used in the Claims ........................................... 8
1. “mobile communication means for communication with a cellular telecommunication network” (Claims 11, 13 and 14) .................................................................................................... 8
2. “means for receiving a neighbor cell information message” (Claims 11, 13 and 14) .................................................................... 9
3. “cell information” (Claims 11, 13 and 14) ....................................10
4. “neighbor cell information message” (Claims 11, 13 and 14) ..................................................................................................11
5. “specific parameter value” (Claims 11, 13 and 14) ......................12
6. “index” (Claims 11, 13 and 14) .....................................................13
7. “wherein, for each cell of a plurality of neighbor cells, said cell information comprises:” (Claims 11, 13 and 14) ...................14
8. “means for associating a specific value of said set of specific parameter values indicated by one of said index
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
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with the corresponding second parameter of a neighbor cell” (Claims 11, 13 and 14) .........................................................15
9. “abase station identity code (BSIC)” (Claim 14) ..........................16
IV. Precise Reasons for Relief Requested ........................................................ 17
A. Claims 11, 13 and 14 Are Unpatentable Over Korpela ...................... 17
1. U.S. Patent No. 6,510,146 to Korpela et al., (“Korpela”) (Ex. 1005) ......................................................................................17
2. Claim 11 Is Anticipated By Korpela .............................................23
a) Mobile Communication Means ..............................................23
b) Means for Receiving ..............................................................23
c) Wherein Clause ......................................................................26
(1) A Set of Specific Parameter Values .......................................26
(2) At Least One Specific Parameter Value .................................27
(3) Index .......................................................................................28
d) Means for Associating ............................................................29
3. Claim 13 Is Anticipated By Korpela .............................................32
4. Claim 14 Is Anticipated By Korpela .............................................33
5. Claim 11, 13 and 14 Are Obvious Over Korpela .........................33
a. Means for Receiving ..............................................................33
b. Wherein Clause ......................................................................34
c. Means for Associating ............................................................39
d. Claim 14 .................................................................................42
B. Claims 11, 13 and 14 Are Unpatentable Over Shah ........................... 43
1. U.S. Patent No. 6,047,071 to Shah, (“Shah”) (Ex. 1007) .............43
2. Claim 11 Is Anticipated By Shah ..................................................45
a) Mobile Communication Means ..............................................45
b) Means for Receiving ..............................................................46
c) Wherein Clause ......................................................................48
d) Means for Associating ............................................................50
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3. Claim 13 Is Anticipated By Shah ..................................................53
4. Claim 14 Is Anticipated By Shah ..................................................53
5. Claim 11, 13 and 14 Are Obvious Over Shah ..............................53
a) Means for Receiving ..............................................................53
b) Neighbor Cell Information Message ......................................54
c) Means for Associating ............................................................54
d) BSIC .......................................................................................55
C. Claim 11, 13 and 14 Are Obvious Korpela in view of Shah .............. 56
V. CONCLUSION ............................................................................................ 57
Attachment A. Proof of Service of the Petition
Attachment B. List of Evidence and Exhibits Relied Upon in Petition
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW
A. Certification the 923 Patent May Be Contested by Petitioner
Petitioner certifies it is not barred or estopped from requesting inter partes
review of U.S. Patent No. 6,819,923 (“the 923 Patent”) (Ex. 1001). Neither
Petitioner, nor any party in privity with Petitioner, has filed a civil action
challenging the validity of any claim of the 923 Patent. The 923 Patent has not
been the subject of a prior inter partes review by Petitioner or a privy of Petitioner.
Petitioner also certifies this petition is filed within one year of the date of
service of a complaint alleging infringement of a patent. A complaint alleging
infringement of the ’923 Patent by Petitioner was filed on January 17, 2014, and
led to Civil Action No. 6-14-cv-31 in the United States District Court for Eastern
District of Texas, but based on a review of Petitioner’s records that complaint was
apparently not served on Petitioner. That case was dismissed without prejudice on
February 12, 2014. See Ex. 1021. Petitioner was next served with a complaint
alleging infringement of the ’174 Patent on April 14, 2014, which led to Civil
Action No. 6-14-cv-251 in the United States District Court for Eastern District of
Texas. Because the date of this petition is less than one year from the service of
this complaint, this petition complies with 35 U.S.C. § 315(b). Petitioner therefore
certifies this patent is available for inter partes review.
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
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B. Fee for Inter Partes Review (§ 42.15(a))
The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
to Deposit Account No. 50-1597.
C. Mandatory Notices (37 CFR § 42.8(b))
The real party of interest of this petition is Apple Inc. (“Apple”) located at
One Infinite Loop, Cupertino, CA 95014. Lead and backup lead counsel are:
Lead Counsel
Joseph A. Micallef
Reg. No. 39,772
(202) 736-8492
Backup Lead Counsel
Jeffrey P. Kushan
Reg. No. 43,401
(202) 736-8914
Service on Petitioner may be made by mail or hand delivery to: Sidley
Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for
lead and backup counsel is (202) 736-8711.
The 923 Patent is the subject of the following patent infringement lawsuits
brought by Cellular Communications Equipment LLC in the U.S. District Court for
the Eastern District of Texas, Tyler Division: Cellular Communications Equipment
LLC v. HTC Corporation et al, Civil Action No. 6:13-cv-00507-LED; Cellular
Communications Equipment LLC v. LG Electronics, Inc. et al, Civil Action No.
6:13-cv-00508-LED; Cellular Communications Equipment LLC v. Pantech Co.,
Ltd. et al, Civil Action No. 6:13-cv-00509-LED; Cellular Communications
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Equipment LLC v. Blackberry Limited et al, Civil Action No. 6:13-cv-00510-LED;
Cellular Communications Equipment LLC v. ZTE Corporation et al, Civil Action
No. 6:13-cv-00511-LED; Cellular Communications Equipment LLC v.
Amazon.com, Inc. et al, Civil Action No. 6:13-cv-00568-LED; Cellular
Communications Equipment LLC v. Dell Inc., Civil Action No. 6:13-cv-00569-
LED; Cellular Communications Equipment LLC v. NEC Casio Mobile
Communications Ltd. et al, Civil Action No. 6:13-cv-00584-LED; Cellular
Communications Equipment LLC v. Microsoft Corporation et al, 6:13-cv-00738-
LED; Cellular Communications Equipment LLC v. Apple Inc. et al, Civil Action
No. 6:14-cv-00251-LED; and Cellular Communications Equipment LLC v.
Samsung Electronics Co., Ltd. et al, Civil Action No. 6:14-cv-00759-LED.
The 923 Patent is also the subject of inter partes review in NEC Corporation
of America et al. v. Cellular Communications Equipment LLC, IPR2014-01131.
The 923 Patent was previously asserted in the following patent infringement
lawsuits, each dismissed without prejudice: Cellular Communications Equipment
LLC v. Apple Inc. et al, Civil Action No. 6:14-cv-00031-LED; and Cellular
Communications Equipment LLC v. Motorola Mobility LLC et al, Civil Action No.
6:13-00572-LED.
D. Proof of Service (§§ 42.6(e) and 42.105(a))
Proof of service of this petition is provided in Attachment A.
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II. Identification of Claims Being Challenged (§ 42.104(b))
Claims 11, 13 and 14 of the 923 Patent are unpatentable as being invalid
over the prior art. Specifically:
(i) Claims 11, 13 and 14 of the 923 Patent are anticipated, pursuant to 35
U.S.C. § 102, by U.S. Patent No. 6,510,146 to Korpela et al.,
(“Korpela”) (Ex. 1005).
(ii) Claims 11, 13 and 14 of the 923 Patent are obvious, pursuant to 35
U.S.C. § 103, over Korpela.
(iii) Claims 11, 13 and 14 of the 923 Patent are anticipated, pursuant to 35
U.S.C. § 102, by U.S. Patent No. 6,047,071 to Shah, (“Shah”) (Ex.
1007).
(iv) Claims 11, 13 and 14 of the 923 Patent are obvious, pursuant to 35
U.S.C. § 103, over Shah.
(iv) Claims 11, 13 and 14 of the 923 Patent are obvious, pursuant to 35
U.S.C. § 102, over Korpela in view of Shah.
Petitioner’s proposed construction of the contested claims, the evidence relied
upon, and the precise reasons why the claims are unpatentable are provided in
§ IV, below. The evidence relied upon in this petition is listed in Attachment B.
III. Relevant Information Concerning the Contested Patent
A. Effective Filing Date of the 923 Patent
The 923 Patent issued from an application filed as a PCT application on
December 16, 1999 and claims priority to a foreign application filed December 16,
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1998. Ex. 1001 at Face. The earliest priority date for the 923 Patent would be
December 16, 1998, and Petitioner assumes that date for purposes of this petition.
B. Person of Ordinary Skill in the Art
A person of ordinary skill in the art in the field of the 923 Patent would have
been familiar with cellular communications systems (e.g., mobile stations and base
stations), standards documents describing the schemes for communicating over
wireless radio networks, such as standards documents describing GSM,
3GSM/UMTS, and CDMA, and techniques for communicating neighbor cell
information in such communications systems. That familiarity would have come
through at least an undergraduate degree in electrical engineering (or equivalent
degree) and at least three years of relevant work experience in the field of cellular
communications systems. See Ex. 1003 at ¶ 112.
C. The 923 Patent
1. Technical Overview
In a typical cellular system, a base station will broadcast information about
neighboring cells to mobile stations within its cell, Ex. 1001 at 1:16-25, including
information used by a mobile station to communicate with the base stations of
those neighboring cells, such as frequency information and other parameters. See
id; Ex. 1003 at ¶ 52. The 923 Patent relates to the transmission of a “neighbor cell
information message” in a cellular network such as a GSM network. Ex. 1001 at
1: 17-25; 2: 1-14. The claimed advance of the 923 Patent is “shortening the time
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required for the communication of a neighbor cell information message”. Ex. 1001
at 2:2-4. The patent states this is accomplished by communicating neighbor cell
information in “compressed form,” in particular by sending a list of potential
parameters for use in communicating with neighboring cells and an index, pointer
or other indication of which such potential parameters are to be used for each
neighboring cell. Ex. 1001 at 2:1-48. Thus, in the example described in the 923
Patent, the message could include a list of potential frequencies for communicating
with neighboring cells and, for each neighboring cell, an identification of the cell
(e.g., by a base station identity code (“BSIC”)) and an associated index into the list
of potential frequencies. See, e.g., Ex. 1001 at 2:15-29; 4:31-5:17; Ex. 1003 at ¶
53. The 923 Patent states, however, that the invention is not limited to these
specific parameters:
The parameters, whose values are specified in a neighbor cell
information message, can be any cell parameters which the mobile
station needs to know when communicating with a particular cell. ….
The invention is not limited to any particular selection of parameters
to be recited in a neighbor cell information message.
Ex. 1001 at 7:39-49 (emphasis added); Ex. 1003 at ¶ 54.
2. Prosecution History
The original claims of the application from which the 923 Patent issued were
initially rejected as obvious over U.S. Patent No. 6,192,244 to Abbadessa
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(“Abbadessa”) (Ex. 1009) in view of U.S. Patent No. 6,434,389 to Meskanen et al.
(“Meskanen”) (Ex. 1010). Ex. 1002 at 157-62; Ex. 1003 at ¶ 55. The applicant
responded by amending the claims to require the recited “parameter value” of the
neighbor cell information message be a “specific parameter value” and also to
require that the neighbor cell information message include an “index” indicating
the specific value for a second parameter. Ex. 1002 at 171. The applicant argued
that the cited combination did not teach the amended claims. Ex. 1002 at 174-77.
In making these arguments, the applicant equated neighbor cells with “nearby
cells”. See Ex. 1002 at 176-77 (“This information includes specific values for
certain parameters of the nearby cells, i.e., neighbor cells.”); Ex. 1003 at ¶ 56.
In response, the claims were rejected again as obvious over the prior art, this
time over Abbadessa in view of U.S. Patent No. 6,188,911 to Wallentin et al.
(“Wallentin”) (Ex. 1011). Ex. 1002 at 182-91; Ex. 1003 at ¶ 57. The applicants
responded by arguing that the cited prior art combination did not render the claims
unpatentable because Wallentin did not disclose a neighbor cell message and also
because Wallentin did not disclose a specific parameter value indicated (i.e., by an
index) to be a member of a set of common parameter values. Ex. 1002 at 204-27.
The applicants stressed that their invention was not limited to that particular
embodiment: “An example of such a generated neighbor cell information message
is shown in FIGS. 2-5 of the present application. Please note again that the
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invention claimed in the present application is in no way limited to this exemplary
embodiment.” Ex. 1002 at 205 (emphasis added); Ex. 1003 at ¶ 58. A Notice
Allowability was issued on July 9, 2004. Ex. 1002 at 209; Ex. 1003 at ¶ 59.
D. Construction of Terms Used in the Claims
In this proceeding, claims must be given their broadest reasonable
construction in light of the specification. 37 CFR § 42.100(b). If Patent Owner
contends terms in the claims should be read to have a special meaning, those
contentions should be disregarded unless Patent Owner also amends the claims
compliant with 35 U.S.C. § 112 to make them expressly correspond to those
contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman,
679 F.3d 1335, 1343 (Fed. Cir. 2012).
1. “mobile communication means for communication with a cellular telecommunication network” (Claims 11, 13 and 14)
Claim 11 is directed to a “mobile communication means for communication
with a cellular telecommunication network”. The patent explicitly links certain
structure with the claimed function:
A mobile communication means can be any mobile unit or a mobile
station capable of communicating through the radio interface of a
cellular telecommunications network such as a GPRS or a UMTS
network. Examples of such mobile communication means are a
cellular telephone, a video telephone, and a GPRS data terminal.
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Ex. 1001 at 6:62-67 (emphasis added); Ex. 1003 at ¶ 70. Accordingly, the broadest
reasonable construction of “mobile communication means for communication with
a cellular telecommunication network” is the corresponding structure of any
mobile unit or mobile station capable of communication through the radio interface
of a cellular telecommunications network such as a GPRS or a UMTS network,
including a cellular telephone, a video telephone, and a GPRS data terminal,
performing the function of “communication with a cellular telecommunication
network”. Ex. 1003 at ¶ 68-71.
2. “means for receiving a neighbor cell information message” (Claims 11, 13 and 14)
Claim 11 also requires “means for receiving a neighbor cell information
message”. The 923 Patent states that “means 410 for receiving” are “realized
using software programs stored in a memory element of a control block 490 of the
mobile communication means 10, the programs being executed by a
microprocessor of the control block 490.” Ex. 1003 at ¶ 74; Ex. 1001 at 6:40-61.
Thus, the 923 Patent specification links the function of this means element with
software programs stored in a memory element and executed by a microprocessor.
Ex. 1003 at ¶ 74. The patent further discloses a mobile station which includes an
antenna and a receiver. Ex. 1003 at ¶ 75; Ex. 1001 at Fig. 7; 1:43-47; 2:4-7.
Patent Owner has asserted in parallel litigation that the antenna, receiver,
and microprocessor are the corresponding structure for this means-plus-function
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claim element and that the claimed function of “receiving a neighbor cell message”
does not require the disclosure of a specific algorithm with which the
microprocessor is programmed, citing In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). Ex. 1015 at 5-8. While
Petitioner has argued otherwise, in view of the broadest reasonable interpretation
standard, Petitioner assumes this claim element encompasses Patent Owner’s
structure under that standard. Ex. 1003 at ¶ 77. Accordingly, the broadest
reasonable construction of “means for receiving a neighbor cell information
message” is the corresponding structure of an antenna, a receiver, and a
microprocessor performing the function of “receiving a neighbor cell information
message”. Ex. 1003 at ¶¶ 72-78.
3. “cell information” (Claims 11, 13 and 14)
The broadest reasonable interpretation of “cell information” is information
concerning a cell. Ex. 1003 at ¶¶ 92-94. The 923 Patent states that Figure 5 shows
“the cell information of the particular cell,” Ex. 1001 at 4:56-61, and that the data
structure of Figure 5 “specifies the information concerning a single neighbor cell,”
Id. at 5:6-8. Ex. 1003 at ¶ 93. The patent further states that “[t]he parameters,
whose values are specified in a neighbor cell information message, can be any cell
parameters which the mobile station needs to know when communicating with a
particular cell.” Id. at 7:39-42; Ex. 1003 at ¶ 93. Accordingly, under the broadest
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reasonable interpretation, the phrase “cell information” should be interpreted to
mean information concerning a cell. Ex. 1003 at ¶¶ 92-94.
4. “neighbor cell information message” (Claims 11, 13 and 14)
The broadest reasonable interpretation of “neighbor cell information
message” is a message that contains information concerning a nearby cell. Ex.
1003 at ¶¶ 79-87. The 923 Patent states that in GSM systems of the day the
network communicates to the mobile station “the basic parameters of the
neighboring cells, such as the base station identity code (BSIC) of the base stations
of the cells, the BCCH (Broadcast Control Channel) frequency, and several other
parameters.” Ex. 1001 at 1:15-25 (emphasis added); Ex. 1003 at ¶ 80. The 923
Patent states that the parameters that “can be” included in the neighbor cell
information message consistent with the putative invention could be “any cell
parameters which the mobile station needs to know when communicating with a
particular cell” and that “[t]he invention is not limited to any particular selection of
parameters to be recited in a neighbor cell information message”. Ex. 1001 at
7:39-49; Ex. 1003 at ¶ 83. The 923 Patent equates nearby cells with neighbor
cells, Ex. 1001 at 1:17-25; Ex. 1003 at ¶ 93, as does the prosecution history, Ex.
1003 at ¶ 81; Ex. 1002 at 176-77.
The 923 Patent also states that the neighbor cell information message need
not be limited to any particular data structure. Ex. 1001 at 7:50-54; Ex. 1003 at ¶
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84. During the prosecution of the underlying patent application, the applicant
stressed that the claimed “neighbor cell information message” was not limited to
the particular embodiment described in the specification. Ex. 1003 at ¶ 86; Ex.
1002 at 205. Accordingly, the broadest reasonable interpretation of “neighbor cell
information message” is a message that contains information concerning a nearby
cell. Ex. 1003 at ¶¶ 79-87.
5. “specific parameter value” (Claims 11, 13 and 14)
The broadest reasonable interpretation of “specific parameter value” is a
numerical value, as opposed to an index or other indication into a list of values. Ex.
1003 at ¶¶ 88-91. The 923 Patent consistently distinguishes the specific numerical
value of the neighbor cell information message from an index or pointer into a
table. For example, the patent describes a list of base station frequencies as an
example of “specific parameter values”. Ex. 1001 at 7:39-49 (emphasis added);
Ex. 1003 at ¶ 89.
Moreover, during prosecution of the underlying application, after a non-final
rejection of the claims, this claim was amended to add the word “specific” to the
phrase “specific parameter values”. Applicant then explicitly distinguished an
index into a table with the “numerical value” of each specific value in the message.
Ex. 1002 at 177 (Amendment of December 15, 2003) (“Because these specific
parameter values are common, a pointer or an index or some other shortened form
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of indication may be used to indicate one of the specific values, without having to
reproduce the entire numerical value of the specific value.”) (emphasis added); Ex.
1003 at ¶¶ 90. Accordingly, the broadest reasonable interpretation of “specific
parameter value” is a numerical value, as opposed to an index or other indication
into a list of values. Ex. 1003 at ¶¶ 88-91.
6. “index” (Claims 11, 13 and 14)
The broadest reasonable interpretation of “index” is a form of indication, or
indicator. Ex. 1003 at ¶¶ 95-97.
The 923 Patent describes an “index” as a type of pointer, Ex. 1001 at 2:19-
20, and describes the role of the claimed “index” / pointer as “indicating the value
of a single parameter” or “indicating an element of a set.” Ex. 1001 at 5:35-41; Ex.
1003 at ¶ 96. Patent Owner asserted this same distinction during prosecution,
equating an index with a “form of indication.” Ex. 1002 at 177 (Amendment of
December 15, 2003) (“Because these specific parameter values are common, a
pointer or an index or some other shortened form of indication may be used to
indicate one of the specific values, without having to reproduce the entire
numerical value of the specific value.”) (emphasis added). This comports with the
ordinary meaning of pointer as a “data element that indicates the location of
another data element.” IBM Dictionary of Computing 514 (George McDaniel ed.,
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Aug. 1993) (Ex. 1019 at 4); Ex. 1003 at ¶ 96. Accordingly, the broadest reasonable
interpretation of “index” is a form of indication, or indicator. Ex. 1003 at ¶¶ 95-97.
7. “wherein, for each cell of a plurality of neighbor cells, said cell information comprises:” (Claims 11, 13 and 14)
The broadest reasonable interpretation of “wherein, for each cell of a
plurality of neighbor cells, said cell information comprises:” is that this phrase
covers cell information applicable to each of a plurality of cells, even if not
separately itemized for each cell. Ex. 1003 at ¶¶ 98-101.
The ordinary meaning of this phrase encompasses cell information that is
associated with or describes each of a plurality of cells, whether or not it is set
forth separately for each cell. For example, hypothetical neighbor cell information
that states “each neighbor cell is red” is cell information “for each cell of a
plurality of neighbor cells” to the same extent that “cell 1 is red; cell 2 is red
etc…” would be. Ex. 1003 at ¶ 99. Moreover, the 923 Patent states that the
neighbor cell information message need not be limited to any particular data
structure. Ex. 1001 at 7:50-54 (emphasis added); Ex. 1003 at ¶ 100. Thus, it
would be inconsistent with the specification to construe the claim to require “cell
information” of any particular structure. Ex. 1003 at ¶ 100. Accordingly, the
broadest reasonable interpretation of “wherein, for each cell of a plurality of
neighbor cells, said cell information comprises:” is that this phrase covers cell
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information applicable to each of a plurality of cells, even if not separately
itemized for each cell. Ex. 1003 at ¶¶ 98-101.
8. “means for associating a specific value of said set of specific parameter values indicated by one of said index with the corresponding second parameter of a neighbor cell” (Claims 11, 13 and 14)
Claim 11 requires “means for associating a specific value of said set of
specific parameter values indicated by one of said index with the corresponding
second parameter of a neighbor cell”. The 923 Patent states that “means 420 for
associating a value of said set of parameter values indicated by one of said second
values with the corresponding parameter of a neighbor cell” are “realized using
software programs stored in a memory element of a control block 490 of the
mobile communication means 10, the programs being executed by a
microprocessor of the control block 490.” Ex. 1001 at 6:40-61. Thus, the 923
Patent specification links the function of this means element with software
programs stored in a memory element and executed by a microprocessor. Ex. 1003
at ¶ 103. The 923 Patent also indicates that specific parameter values on the list of
values are associated with a cell through the use of a pointer such as an index. Ex.
1001 at 3:7-22; Ex. 1003 at ¶ 104.
Moreover, Patent Owner has identified in parallel litigation the following
corresponding structure for this claim element: a microprocessor (6:57-61; Fig. 7)
configured to use a parameter (or set of parameters) specified by an index (or
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pointer) for a parameter of a neighbor cell (2:15-28; 2:35-43; 3:4-26; 4:11-5:17;
5:35-46; 7:39-49). Ex. 1015 at 8-13; Ex. 1003 at ¶ 105. Patent Owner has also
asserted that the corresponding “algorithm disclosed for performing [the claimed]
function is simple: using the parameter value specified by the index for the second
parameter.” Ex. 1015 at 10. While Petitioner has argued otherwise, in view of the
broadest reasonable interpretation standard, Petitioner assumes for the purposes of
this petition that this claim element encompasses Patent Owner’s structure under
that standard.
Accordingly, the broadest reasonable interpretation of “means for
associating a specific value of said set of specific parameter values indicated by
one of said index with the corresponding second parameter of a neighbor cell” is
the corresponding structure of a microprocessor configured to use a parameter
(or set of parameters) specified by an index (or pointer) for a parameter of a
neighbor cell, performing the function of “associating a specific value of said set
of specific parameter values indicated by one of said index with the corresponding
second parameter of a neighbor cell”. Ex. 1003 at ¶¶ 102-106.
9. “abase station identity code (BSIC)” (Claim 14)
The broadest reasonable interpretation of “the fast [sic] parameter
comprises abase [sic] station identity code (BSIC)” is that the first parameter
comprises a code used to identify a base station. Ex. 1003 at ¶¶ 107-110. The
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word “abase” is clearly a typo that should read “a base,” Ex. 1003 at ¶ 108, and the
specification makes clear that a BSIC is a code that identifies a base station. Ex.
1001 at 1:15-25; 6:41-61; Ex. 1003 at ¶ 109-0. Accordingly, the broadest
reasonable construction of “abase station identity code (BSIC)” is a code that
identifies a base station. Ex. 1003 at ¶¶ 107-110.
IV. Precise Reasons for Relief Requested
A. Claims 11, 13 and 14 Are Unpatentable Over Korpela
1. U.S. Patent No. 6,510,146 to Korpela et al., (“Korpela”) (Ex. 1005)
Korpela issued on January 21, 2003 from Application No. 09/103,273, filed
June 23, 1998. Ex. 1005 at Face. Korpela is therefore prior art to the 923 Patent at
least under Section 102(e). Ex. 1003 at ¶ 113.
Korpela discloses a scheme for transmitting neighbor cell information to
mobile stations in a “system information message.” Ex. 1005 at ABSTRACT,
4:61-5:10. Ex. 1003 at ¶ 114. Korpela explains that in prior art cellular systems,
such as Global System for Mobile Telecommunications, or GSM, systems, “each
base station transmits a signal in a certain so-called BCCH channel (Broadcast
Control Channel), the frequency of which is different at neighbouring base
stations.” Ex. 1003 at ¶ 115; Ex. 1005 at 1:19-26. Korpela states that the base
stations of such a system “also transmit information about the BCCH frequencies
used in neighbouring cells to the mobile stations so that they know which
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frequencies they must listen to in order to find the BCCH transmissions of
neighbouring cells. “In each cell, the transmission of the BCCH channel also
contains information of how the mobile stations can make so-called random access
requests in the cell for establishing a telephone connection.” Ex. 1005 at 1:25-34
(emphasis added); Ex. 1003 at ¶ 115.
Korpela discloses examples of system information messages that contain the
kind of neighbor cell information used in his scheme. E.g., Ex. 1005 at 5:11-7:45;
Ex. 1003 at ¶ 116. For example, Korpela notes that such messages necessarily
contain certain “L3 message information elements in the GSM system.” Ex. 1005
at 4:65-5:10; Ex. 1003 at ¶ 116. A person of ordinary skill in the art would
understand that the phrase “L3 message information elements in the GSM system”
refers to the Layer 3 specification for GSM of that time period, more formally
known as the GSM 04.08 v. 6.1.1 MS-BSS Interface; Mobile Radio Interface
Layer 3 Specification ("GSM 04.08") (attached hereto as Ex. 1006). Ex. 1003 at ¶
117. GSM 04.08 discloses several layer 3 system information messages. See, e.g.,
Ex. 1006 at 267-81; Ex. 1003 at ¶ 117.
For example, GSM 04.08 describes System Information Message Type 5,
which is sent “by the network to mobile stations within the cell giving information
on the BCCH allocation in the neighbour cells. … When received this
information shall be used as the list of BCCH frequencies of the neighbouring cells
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to be reported on.” Ex. 1006 at 273; Ex. 1003 at ¶ 118. GSM 04.08 also describes
System Information Message Type 10, which “defines a list of cells and may
contain further information for cells of that list, a cell being identified by the pair
of ARFCN and BSIC of the BCCH.” Ex. 1006 at 281; Ex. 1003 at ¶ 119. An
ARFCN is a well known acronym, standing for “Absolute Radio Frequency
Channel Number”. See GSM 1.04 Technical Specification, V. 5.0.0 March 1996 at
7 (Ex. 1014). A BSIC is also a well known acronym, standing for base station
identification code. See id. at 8; Ex. 1003 at ¶ 119.
Korpela explains that in so-called “third generation” cellular systems “the
quality of service offered by the cells to the mobile stations varies substantially
from cell to cell.” Ex. 1005 at 1:41-42; Ex. 1003 at ¶ 120. One example of
“quality of service” information cited by Korpela is data transfer speed. See Ex.
1003 at ¶ 120; Ex. 1005 at 1:47-50; 10:50-54. Korpela explains that, due to
differences in quality of service (such as data transfer speeds) among cells, a
mobile station may not be able to operate in some of the neighboring cells. See Ex.
1003 at ¶ 120; Ex. 1005 at 2:51-60.
Korpela notes that, in order to communicate information concerning the
quality of service information of neighboring cells to the mobile station, each base
station could include such information in its own BCCH transmission. Ex. 1003 at
¶ 121; Ex. 1005 at 2:37-43. However, “an arrangement like this loads the mobile
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stations” causing them to “read from the BCCH signal transmitted by the base
station of its cell a list of other BCCH frequencies, and thereafter receive,
demodulate and decode a short period of each BCCH transmission coming at a
frequency included in the list in order to find out if the mobile station can operate
in the neighbouring cells in question.” Ex. 1005 at 2:44-51. As Korpela explains,
“[i]f the quality of service of most of the neighbouring cells is too low for this, the
reception, demodulation and decoding of their BCCH transmissions in order to
find a new cell is wasted.” Ex. 1005 at 2:64-67; Ex. 1003 at ¶ 121.
Korpela proposes to solve this problem by having a base station “create[] a
message containing information about the neighbouring cells and transmit[] it to
the mobile station,” the message including “in addition to the transmission
frequencies used in the neighbouring cells … other information characterizing the
neighbouring cells,” such as quality of service information. Ex. 1005 at 3:5-14
(emphasis added); Ex. 1003 at ¶ 122. Figure 3a of Korpela describes the portion of
a modified system information message including such “other information” in one
example of his scheme, and the information content of that example is shown in
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Table I of Korpela (right), Ex. 1003 at
¶ 123; Ex. 1005 at 5:11-6:32. Korpela
explains that, in this example, there
can be eight different classes of cells,
each for a different category of quality
of service. Ex. 1003 at ¶ 124. In the
specific example shown in Table I
there are cells in three of the classes: class 0 (GSM), class 1 (GPRS) and class 7
(UMTS TDD). Korpela sometimes calls these classes “capacity classes”. See Ex.
1005 at 5:13-15; Ex. 1003 at ¶ 125.
Part 32 of Korpela’s modified system information message “presents the
neighbouring cells by capacity classes.” Ex. 1005 at 5:23-25. This part consists of
various fields denoted “32a,” various fields denoted “32b” (each of which
corresponds to one of the 32a fields), and also various fields denoted “32c” (each
of which similarly corresponds to one of the 32a fields). Ex. 1005 at 5:11-33. For
example, Korpela explains that “the variable length part 32 has a first field 32a,
which indicates which capacity class (0-7) is concerned, and a second field 32b,
which indicates the length of the third field 32c describing the capacity class.” Ex.
1005 at 5:23-34; Ex. 1003 at ¶ 126.
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Korpela explains that field 32c describes a class of neighboring cells, and
therefore has the length and information content of the information required to
describe the cells of a particular type, e.g., GSM, GPRS, UMTS. Ex. 1003 at ¶
127; Ex. 1005 at 5:34-51. Korpela states that “[t]he third fields are in sequence by
capacity class at the end of the variable length part 32”. Ex. 1005 at 5:30-33; Ex.
1003 at ¶ 127.
Thus, in the example of Table I of Korpela, a particular field 32a is a
parameter explicitly identifying a class of service associated with certain
neighboring cells. The corresponding field 32b identifies the corresponding
information in field 32c which describes the particular class of the neighboring
cells referred to by that field 32a. Ex. 1003 at ¶ 128; Ex. 1005 at 5:11-33. More
specifically, because the fields 32c “are in sequence by capacity class at the end of
the variable length part 32,” each field 32b points to a particular one of the set of
fields 32c. Ex. 1003 at ¶ 128. Thus, in Table I, field 32b for the GSM cells (= 16)
identifies the first 16 octets of the set of fields 32c. Field 32b for the GPRS cells
(= 6) identifies the 6 octets of the set of fields 32c after the first 16 octets. Field
32b for the UMTS cells (= 40) identifies the 40 octets of the set of fields 32c after
the first 22 octets. Each field 32b is therefore an index or pointer into the set of
fields 32c. Ex. 1003 at ¶ 128.
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Korpela also discloses a mobile phone that can be used in his scheme. See
Ex. 1005 at Fig. 5b. The mobile phone of Korpela includes an antenna, a reception
block 53 “through which the mobile station receives, demodulates and decodes the
messages sent by the base stations” and a processor “which processes the
information contained by the messages and controls the operation of the mobile
station”. Ex. 1005 at Fig. 5b; 10:64-11:4; Ex. 1003 at ¶¶ 129-130.
2. Claim 11 Is Anticipated By Korpela
a) Mobile Communication Means
The preamble of claim 11 recites “[a] mobile communication means for
communication with a cellular telecommunication network, comprising”. Korpela
discloses a mobile station that is capable of communication through the radio
interface of a cellular telecommunications network, such as a GSM, GPRS or
UMTS network. Ex. 1003 at ¶ 132; Ex. 1005, Fig. 5b; 4:40-41; 5:10-6:32; 10:64-
11:14. Accordingly, Korpela discloses “[a] mobile communication means for
communication with a cellular telecommunication network, comprising”. Ex. 1003
at ¶¶ 131-133.
b) Means for Receiving
Claim 11 also requires a “means for receiving a neighbor cell information
message”. Korpela explains that the mobile station receives system information
messages that contain “some mandatory data elements, which are called L3
message information elements in the GSM system,” Ex. 1003 at ¶ 135; Ex. 1005 at
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4:61-5, and “the transmission frequencies used in the neighbouring cells,” Ex.
1005 at 3:6-12; 3:34-42; Ex. 1003 at ¶ 137, all of which are parameters a mobile
station needs to know when communicating with a particular cell. Ex. 1003 at ¶¶
135-136, 138 Ex. 1006 at 27; 267-81. Korpela also discloses that the base station
transmits “information of how the mobile stations can make so-called random
access requests in the cell for establishing a telephone connection.” Ex. 1005 at
1:25-34; Ex. 1003 at ¶ 139. Such information also includes parameters a mobile
station needs to know to communicate with a particular cell. Ex. 1003 at ¶ 141;
Ex. 1006 at 438-39. Korpela also discloses that the message may contain “other
information characterizing the neighbouring cell.” Ex. 1003 at ¶ 141; Ex. 1005 at
ABSTRACT; see also id. 3:6-12; 3:34-42. This includes information relating to
quality of service information, such as data transfer speed. Ex. 1003 at ¶ 141; Ex.
1005 at 1:47-55; 10:50-54; 3:34-42. Korpela explains that mobile phones in the
network of his scheme need to know quality of service information, such as data
transfer speeds of the neighboring cells, because not all cells can provide the data
transfer speed required by the mobile station. Ex. 1005 at 2:51-60; Ex. 1003 at ¶
142. The system information messages of Korpela are therefore “neighbor cell
information messages” and Korpela discloses the function of “receiving a neighbor
cell information message”. Ex. 1003 at ¶ 143.
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Korpela also discloses a mobile phone for performing that function and
which includes an antenna (see Ex. 1005 at Fig. 5b), a receiver (see id. at reception
block 53 of Fig. 5b), and a processor (see id. at control block 54 of Fig. 5b “which
processes the information contained by the messages and controls the operation of
the mobile station”; 10:64-11:4). Ex. 1003 at ¶ 144. A person of ordinary skill in
the art would understand “control block 54” to include a microprocessor, since it is
described as processing information and also because of the necessity to include a
small processing device in a mobile phone. Ex. 1003 at ¶ 144.
This structure of Korpela is at least equivalent to the corresponding structure
for this claim element because nothing in the 923 Patent indicates that the
disclosed structure anything but conventional, Ex. 1003 at ¶ 145; Ex. 1001 at 6:62-
64, such hardware was known to those of ordinary skill in the art by 1998, Ex.
1003 at ¶ 145, and the structures disclosed by Korpela perform the function of
receiving a neighbor cell information message in substantially the same way (by
receiving, demodulating and decoding the message, see Ex. 1005 at 8:31-36) to
achieve the same result (reception of the included neighbor cell information) as the
generic structures of the 923 Patent. Ex. 1003 at ¶¶ 145, 146. Indeed, mobile
phones of differing hardware designs were common even before 1998, and a
person of ordinary skill in the art would have considered the structures disclosed in
the 923 Patent and those in Korpela to be interchangeable. Ex. 1003 at ¶ 145; Ex.
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1005 at 10:64-11:4. Korpela therefore discloses structures that are at least
equivalent to the disclosed corresponding structure for this claim element. Ex.
1003 at ¶ 145. Accordingly, Korpela discloses “means for receiving a neighbor
cell information message”. Ex. 1003 at ¶¶ 135-149.
c) Wherein Clause
Claim 11 also requires “wherein said neighbor cell information message
comprises: a set of specific parameter values; and cell information, wherein, for
each cell of a plurality of neighbor cells, said cell information comprises: at least
one specific parameter value for a first parameter, and an index for a second
parameter, said index indicating which value of said set of specific parameter
values is used for said second parameter”.
(1) A Set of Specific Parameter Values
Korpela states that “[t]he third fields are in sequence by capacity class at the
end of the variable length part 32, after the first and second fields concerning all
the capacity classes.” Ex. 1005 at 5:30-33. Korpela explains that “the third field
32c describ[es] the capacity class,” Ex. 1005 at 5:29, i.e., the quality of service for
a particular class of cells, see id. at 5:10-33. Ex. 1003 at ¶ 152. Korpela discloses
that the sequential fields 32c include parameters for communicating with GSM,
GPRS and UMTS cells, respectively, including BCCH frequency lists, and
absolute ARFCN (Absolute Radio Frequency Channel Number) values. Ex. 1003
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at ¶ 152; Ex. 1006 at 423; Ex. 1005 at 5:37-41, 6:17 (GSM); Ex. 1003 at ¶ 155; Ex.
1005 at 6:11, 6:18, 5:43-46 (GPRS); Ex. 1003 at ¶ 156; Ex. 1005 at 5:47-51, 6:16
& 19 (UMTS). Thus, the fields 32c in Table I of Korpela constitute “a set of
specific parameter values” because those fields include numerical values, such as
frequency values/channel numbers for neighboring cells, as opposed to an index or
some other indication into a list of values. Ex. 1003 at ¶ 157.
(2) At Least One Specific Parameter Value
The system information message of Figure 3a also includes a number of
fields 32a, as shown in Table I. Ex. 1003 at ¶ 160. Korpela explains that “the
variable length part 32 has a first field 32a, which indicates which capacity class
(0-7) is concerned”. Id. at ¶ 160; Ex. 1005 at 5:26-28, 6:15. Each field 32a
contains a numerical value from 0 to 7. Ex. 1003 at ¶ 160; Ex. 1005 at 6:10-13.
The fields 32a of Korpela are therefore “cell information, wherein, for each cell of
a plurality of neighbor cells, said cell information comprises: at least one specific
parameter value for a first parameter” because each such field 32a contains a
numerical value representing a capacity class (i.e., a category of quality of service,
see Ex. 1005 at 5:13-15) concerning a plurality of neighboring cells. Ex. 1003 at ¶
161; Ex. 1005 at 6:5-20. In each case, fields 32a is “cell information” applicable to
each of the plurality of nearby cells in a particular capacity class, even though not
separately represented for each such cell. Ex. 1003 at ¶ 161.
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Moreover, as demonstrated above, Korpela also discloses that the system
information messages of his scheme include “L3 message information elements in
the GSM system,” Ex. 1005 at 4:65-5:10, which a person of ordinary skill in the art
would understand to refer to the information elements of the Layer 3 specification
for GSM, i.e., GSM 04.08 (Ex. 1006). Ex. 1003 at ¶ 162. That specification
discloses several layer 3 messages, each of which includes at least one “specific
parameter value”. Id. at ¶ 162; Ex. 1006 at 281. Thus, Korpela discloses “cell
information, wherein, for each cell of a plurality of neighbor cells, said cell
information comprises: at least one specific parameter value for a first
parameter”. Ex. 1003 at ¶ 163.
(3) Index
Table I of Korpela also discloses “a second field 32b, which indicates the
length of the third field 32c describing the capacity class.” Ex. 1005 at 5:27-28.
Each field 32b is an “an index for a second parameter, said index indicating which
value of said set of specific parameter values is used for said second parameter”
because each such field is a form of indication used to indicate which octets in the
fields 32c are associated with that particular class of service. Ex. 1003 at ¶ 167.
For example, as noted above, Korpela states that “[t]he third fields are in sequence
by capacity class at the end of the variable length part 32”. Ex. 1005 at 5:30-33.
The first field 32b (Ex. 1005 at 6:11) therefore indicates that the first sixteen octets
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of the fields 32c describe the GSM cells. The specific numerical values for
communicating with the neighboring GSM cells are therefore found in the first
sixteen octets. The second field 32b (Ex. 1005 at 6:13) indicates that the six octets
following the first sixteen octets of the fields 32c include specific numerical values
describing the GPRS cells. The third field 32b (Ex. 1005 at 6:16) indicates that the
forty octets following the first twenty-two octets (=16 GSM octets + 6 GPRS
octets) of the fields 32c include specific numerical values describing the UMTS
cells. Ex. 1003 at ¶ 167. Thus, the fields 32b are each a form of indication used to
indicate which octets in the fields 32c are associated with that particular class of
service. Ex. 1003 at ¶ 167. Moreover, each of the fields 32b is “cell information”
applicable to each of the plurality of nearby cells in that particular associated class
of service, even though not necessarily separately represented for each such cell,
because each such field is information concerning at least one nearby cell. Ex.
1003 at ¶ 168. Each field 32b is therefore “cell information, wherein, for each cell
of a plurality of neighbor cells, said cell information comprises: … an index for a
second parameter, said index indicating which value of said set of specific
parameter values is used for said second parameter”. Ex. 1003 at ¶ 169.
Accordingly, Korpela discloses the “wherein said neighbor cell information
message comprises …” claim element. Ex. 1003 at ¶¶ 150-177.
d) Means for Associating
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Claim 1 also requires a “means for associating a specific value of said set of
specific parameter values indicated by one of said index with the corresponding
second parameter of a neighbor cell”. Ex. 1003 at ¶ 178. Korpela discloses that
fields 32c include information describing neighboring cells, such as
frequency/channel number information for cells of a given class of service, to be
used by the mobile station should it seek to communicate with a neighboring cell
in that class of service. Ex. 1003 at ¶ 179; Ex. 1005 at 5:37-51. Korpela also
discloses that “the mobile station receives, demodulates and decodes the system
information messages transmitted by the present base station, from which it finds
out, in addition to the BCCH frequencies, the quality of service offered by the
neighbouring cells, such as the data transfer speed.” Ex. 1005 at 8:31-36; 4: 1-18;
9:25-46; Ex. 1003 at ¶ 179. Korpela also discloses that the mobile station uses the
information from the system information message to discriminate among
neighboring cells based on, among other things, the “quality of service”
information included in fields 32c. Ex. 1005 at 8:37-51 (emphasis added); Ex.
1003 at ¶ 179. In order to discriminate among neighbor cells “on the basis of the
system information message sent by the present base station,” see Ex. 1005 at
8:37-51, the mobile station of Korpela would necessarily have the ability to
associate a specific value of the set of specific parameter values contained in the
fields 32c and indicated by one of the indexes or pointers in fields 32b with a
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parameter for the neighboring cells. Ex. 1003 at ¶ 180. A person of ordinary skill
in the art would also understand that this operates as a form of compression:
instead of providing quality of service information for each cell individually, the
capacity classes instead reference a group of cells, thus reducing the amount of
information that must be transmitted. See Ex. 1003 at ¶¶ 180, 187. This type of
compression was well-known in art at the time of the invention. See, e.g. Ex. 1009
at 8:55-59; Ex. 1006 at 455; Ex. 1008 at 114; Ex. 1003 at ¶ 180. Korpela therefore
discloses the function of “associating a specific value of said set of specific
parameter values indicated by one of said index with the corresponding second
parameter of a neighbor cell”. Ex. 1003 at ¶ 180.
Korpela discloses that control block 54 of his Fig. 5b “processes the
information contained by the messages and controls the operation of the mobile
station, both as such prior art technique.” Ex. 1005 at Fig. 5b 10:64-11:4; Ex. 1003
at ¶ 183. The control block 54 of Korpela is therefore configured to use
information in fields 32c (using a parameter value specified by an index for a
parameter) describing the quality of service, and specified by the fields 32b (index
or pointer), for a parameter of a neighbor cell. Ex. 1003 at ¶ 183. Indeed,
Petitioner observes that Patent Owner has argued in parallel litigation that the
algorithm required “for performing this function is simple: using the parameter
value specified by the index for the second parameter.” Ex. 1015 at 10. A person
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of ordinary skill in the art would also understand the control block 54 of Korpela to
be a microprocessor, since it is described as processing information and also
because of the necessity to include a small processing device in a mobile station.
Ex. 1003 at ¶ 183.
Moreover, the processing control block of Korpela is at least equivalent to
the microprocessor of the 923 Patent, since the patent suggests that the recited
hardware can be part of “any mobile unit or mobile station capable of
communicating through the radio interface of a cellular telecommunications
network,” Ex. 1001 at 6:62-64, control block 54 performs the same function in
substantially the same way (by using an index or pointer to access information in
the fields 32c) to achieve the same result (retrieve neighbor cell information from
those fields) as the generic structures of the 923 Patent, and the structures disclosed
in the 923 Patent and Korpela are interchangeable. Ex. 1003 at ¶¶ 145-147 & 184.
Thus, Korpela discloses “means for associating a specific value of said set of
specific parameter values indicated by one of said index with the corresponding
second parameter of a neighbor cell.” Ex. 1003 at ¶¶ 179-191. Accordingly,
Korpela anticipates claim 11. Ex. 1003 at ¶¶ 113-192.
3. Claim 13 Is Anticipated By Korpela
Claim 13 requires “[t]he mobile communication means of clam 11, wherein
the mobile communication means comprises a cellular telephone.” Ex. 1003 at ¶
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193. Korpela discloses a mobile telephone that is capable of communication
through the radio interface of a cellular telecommunications network, such as a
GSM network. Ex. 1003 at ¶ 194; Ex. 1005 at Fig. 5b; 4:40-41; 10:64-11:14.
Accordingly, Korpela discloses this claim element. Ex. 1003 at ¶¶ 193-196.
4. Claim 14 Is Anticipated By Korpela
Claim 14 requires “[t]he mobile communication means of claim 11, wherein
the fast [sic] parameter comprises abase [sic] station identity code (BSIC).” Ex.
1003 at ¶ 197. Korpela discloses that the system information messages of the prior
art, to which Korpela has added additional information, include “L3 message
information elements in the GSM system,” which a person of ordinary skill in the
art would understand to include the System Information Type 10 messages of
GSM 04.08. Ex. 1003 at ¶¶ 116-119. GSM 04.08 explains that “[e]ach SYSTEM
INFORMATION TYPE 10 message defines a list of cells and may contain further
information for cells of that list, a cell being identified by the pair of ARFCN and
BSIC of the BCCH.” Ex. 1006 at 282 (emphasis added); Ex. 1003 at ¶ 198. Thus,
Korpela discloses “[t]he mobile communication means of claim 11, wherein the
fast parameter comprises abase [sic] station identity code (BSIC).” Ex. 1003 at ¶
199. Accordingly, Korpela anticipates claim 14. Ex. 1003 at ¶¶ 197-201.
5. Claim 11, 13 and 14 Are Obvious Over Korpela
a. Means for Receiving
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To the extent Patent Owner may argue that the structural requirements of the
“means for receiving” are not literally satisfied by Korpela, it would have been
obvious to include the conventional antenna, receiver, and microprocessor of the
923 Patent in the scheme of Korpela. Ex. 1003 at ¶ 148. A person of ordinary skill
in the art would have understood that an antenna and receiver would be necessary
for any mobile phone, an the use of microprocessors in mobile phones by 1998 was
known, Ex. 1003 at ¶ 148; U.S. patent No. 6,002,940 to Richter (Ex. 1012) at 4:10-
14; Fig. 1, and would have been an obvious modification of Korpela. Ex. 1003 at ¶
148. To use a microprocessor in the mobile phone of Korpela would have been
nothing more than the application of ordinary skill and the use of a prior art
structure for the same purpose it had been used for in the prior art without any
unexpected results. Ex. 1003 at ¶ 148.
b. Wherein Clause
To the extent Patent Owner may argue that Korpela does not disclose “a set
of specific parameter values,” it would have been obvious to include specific
numerical values in the fields 32c of Korpela, since communicating specific
parameter values in system information messages was known in the prior art. Ex.
1003 at ¶ 158; Ex. 1006 at 267-81; Ex. 1001 at 1:26-30. For example, GSM 04.08
describes System Information Message Type 5, which is sent “by the network to
mobile stations within the cell giving information on the BCCH allocation in the
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neighbour cells. . . . When received this information shall be used as the list of
BCCH frequencies of the neighbouring cells to be reported on.” Ex. 1006 at 272;
Ex. 1003 at ¶ 158. The BCCH frequencies in such a list is “a set of specific
parameter values”. Ex. 1003 at ¶ 158. To include such a list in fields 32c of the
modified system information message of Korpela would have been merely using a
known technique for its usual purpose to achieve a predictable result, and at the
least explicitly suggested by Korpela’s disclosure that “[t]he system information
message includes some mandatory data elements, which are called L3 message
information elements in the GSM system . . .”. Ex. 1005 at 5:1-3; Ex. 1003 at ¶
158. Thus, even if Patent Owner were to argue that Korpela does not disclose “a
set of specific parameter values” that claim requirement would have been an
obvious variation of Korpela. Ex. 1003 at ¶ 159.
To the extent Patent Owner may argue that Korpela does not disclose “for
each cell of a plurality of neighbor cells … at least one specific parameter value
for a first parameter,” it would have been obvious to include such information in
the system information messages of Korpela. Sending a “specific parameter
value” in a neighbor cell message, as in GSM 04.08 system information messages,
was known and, if used in the scheme of Korpela, would have achieved only
predictable results. Ex. 1003 at ¶¶ 164-165. For example, including the
information content of the GSM 04.08 system information type 10 message, which
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includes a base station identification code (“BSIC”), Ex. 1006 at 281, in the system
information messages of Korpela would have been within the level of ordinary
skill in the art, so such a person could have implemented such a modification. Ex.
1003 at ¶ 165. As demonstrated above, use of such information in the neighbor
cell messages of Korpela is suggested by Korpela’s disclosure that “[t]he system
information message includes some mandatory data elements, which are called L3
message information elements in the GSM system,” Ex. 1005 at 5:1-3; Ex. 1003 at
¶ 165. Moreover, a person of ordinary skill in the art would have recognized that
use of such information would improve the scheme of Korpela. Ex. 1003 at ¶ 165.
In particular, the system information type 10 message of GSM 04.08 is described
as being used for voice group calls and the voice broadcast features of GSM 04.08,
see Ex. 1006 at 281 & 30 et seq., which would be additional improvements to the
scheme of Korpela. Ex. 1003 at ¶ 165. If a person of ordinary skill can implement
a predictable variation, Section 103 likely bars its patentability and, if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Here, adding voice group calls
and the voice broadcast features of GSM 04.08 to the scheme of Korpela would
have improved that scheme, and a person of ordinary skill in art would have
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recognized it would do so because it would have provided the user additional
functionality. Ex. 1003 at ¶ 165. Thus, even if Patent Owner were to argue that
Korpela does not disclose “cell information, wherein, for each cell of a plurality of
neighbor cells, said cell information comprises: at least one specific parameter
value for a first parameter,” that claim requirement would have been an obvious
variation of Korpela. Ex. 1003 at ¶ 166.
To the extent Patent Owner may argue that Korpela does not disclose the
claimed “index”, it would have been obvious to include this claim element in the
system information messages of Korpela. Ex. 1003 at ¶ 170. For example, use of
an index into a set of parameters was well known in the prior art. Ex. 1003 at ¶
170; U.S. Patent No. 6,192,244 to Abbadessa (Ex. 1009) at 8:55-59.
Moreover, system information message type 10 of GSM 04.08 includes a
parameter “<first frequency: bitstring(5)>”, which is the binary coding of a first
frequency number. Ex. 1003 at ¶ 171; Ex. 1006 at 462. GSM 04.08 explains that
the first frequency number is an index into the list of frequencies included in
System Information Message Type 5 and identifies the frequency to be used for
reselection of the cell identified by an associated BSIC. Ex. 1003 at ¶ 171; Ex.
1006 at 460-63. The field “first frequency” is therefore an index into the list of
frequencies provided in System Information Message Type 5. Ex. 1003 at ¶ 171.
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System Information Message Type 14 of the GSM 04.08 specification,
though not directed to neighbor cell information, also employs the same supposed
compression technique recited in the claims neighbor cell message. Ex. 1003 at ¶
172. For example, the SI 14 Rest Octets of the System Information Message Type
14 include a “Reference Frequency List” (i.e., : a set of specific parameter values),
an HSN, or hopping sequence number (i.e., at least one specific parameter value
for a first parameter) and an ARFCN_NUMBER, which is an index into the
Reference Frequency List (i.e., an index for a second parameter). Ex. 1003 at ¶
172; Ex. 1006 at 453-54.
Thus, even if Patent Owner were to argue that Korpela does not disclose
employing an “index” into a set of parameters as claimed, to do so in the scheme of
Korpela would have been merely the combination of familiar elements according
to known methods, and an arrangement of old elements with each performing their
known function to achieve entirely predictable results. Ex. 1003 at ¶ 173. Indeed,
use of the system information elements of GSM 04.08 in the scheme of Korpela
would have been well within the level of ordinary skill in the art in 1998. Ex. 1003
at ¶ 173.
Moreover, as demonstrated above, Korpela suggests using the system
information elements of GSM 04.08 by its statement that “[t]he system information
message includes some mandatory data elements, which are called L3 message
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information elements in the GSM system …”. Ex. 1005 at 5:1-3 (emphasis added);
Ex. 1003 at ¶ 174. A person of ordinary skill in the art would have therefore been
motivated to employ the information elements of the GSM 04.08 system
information messages in the scheme of Korpela. Ex. 1003 at ¶ 174. Thus, even if
Patent Owner were to argue that Korpela does not disclose “cell information,
wherein, for each cell of a plurality of neighbor cells, said cell information
comprises: … an index for a second parameter, said index indicating which value
of said set of specific parameter values is used for said second parameter” that
claim requirement would have been an obvious variation of Korpela. Ex. 1003 at ¶
175.
c. Means for Associating
To the extent Patent Owner may argue that Korpela does not disclose
“associating a specific value of said set of specific parameter values indicated by
one of said index with the corresponding second parameter of a neighbor cell,”
such functionality would have been obvious to include in the scheme of Korpela.
Ex. 1003 at ¶ 181. It would have been only common sense to include in the
scheme of Korpela the ability to use the additional neighbor cell information set
forth in Table I of Korpela, and that would necessarily include the ability to
associate a specific value from the set of specific parameter values in fields 32c
indicated by one of fields 32b with a corresponding parameter of a neighbor cell.
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Korpela also specifically references the layer 3 technical specification of GSM
04.08, which includes at least two system information messages (types 10 and 14)
that employ an index into a set of parameters in order to communicate specific
parameters to mobile station. Ex. 1003 at ¶¶ 170-175. Thus, including in the
mobile station of Korpela the functionality required to actually use such indexes
would have been using known techniques for their usual and ordinary purpose to
achieve predictable results, and is suggested by the disclosure of Korpela. Ex.
1003 at ¶ 181. They therefore would have been an obvious modification of the
mobile station of Korpela, even if one were to assume that functionality is not
disclosed by Korpela. Ex. 1003 at ¶ 181.
To the extent Patent Owner may argue that the processing control block of
Korpela is not a microprocessor or the equivalent to the microprocessor of the 923
Patent, it would have been obvious to include the conventional microprocessor of
the 923 Patent in the scheme of Korpela. Ex. 1003 at ¶ 185. The use of
microprocessors in mobile phones by 1998 was known, Ex. 1003 at ¶ 185; U.S.
patent No. 6,002,940 to Richter (Ex. 1012) at 4:10-14; Fig. 1, and would have been
an obvious modification of Korpela. Ex. 1003 at ¶ 185. To use a microprocessor
in the mobile phone of Korpela would have been nothing more than the application
of ordinary skill and the use of a prior art structure for the same purpose it had
been used for in the prior art without any unexpected results. Ex. 1003 at ¶ 185.
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To the extent Patent Owner may argue that Korpela does not disclose the
claimed “means for associating a specific value of said set of specific parameter
values indicated by one of said index with the corresponding second parameter of
a neighbor cell” because Korpela’s Figure 3a is not characterized as a
“compressed” format, it would have been obvious to include the claimed
functionality in the scheme of Korpela. Specifically, it would have been obvious
to compress Korpela’s neighbor cell information via an also-included lookup table
for common values, i.e., dictionary compression. Ex. 1003 at ¶ 186.
Dictionary compression was a well-known compression technique and one
frequently used in cellular communication systems at the time of the invention.
See e.g. Ex. 1009 at 8:55-59; Ex. 1006 at 455; Ex. 1008 at 114; Ex. 1018 at 4:19-
20, 5:33-63; Ex. 1003 at ¶ 187. Dictionary compression works by using a table of
common values and then replacing instances of the common values in the data set
with shorter indices into the table. Ex. 1018 at 1:45-56; Ex. 1017 at 2; Ex. 1003 at
¶ 188.
At the time of the invention, it would have been obvious to a person having
ordinary skill in the art to compress Korpela’s neighbor cell information via
dictionary compression. Ex. 1003 at ¶ 190. One of ordinary skill in the art would
recognize that dictionary compression could compress Korpela’s neighbor cell
information in much the same way as existing communication messages,
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evidenced by the numerous prior art references that do so. See, e.g., Ex. 1018 at
4:19-20, 5:33-63; see also Ex. 1003 at ¶¶ 187, 190. Compressing Korpela’s
neighbor cell information would therefore have been the predictable application of
a known technique (dictionary compression) to improve similar devices (Korpela’s
mobile station) in the same way (reduced message size). Ex. 1003 at ¶ 190. One
skilled in the art would have also been motivated to use dictionary compression
because it would reduce size of the message, an explicit goal of Korpela’s system.
Ex. 1005 at 6:25-32, 7:30-33; Ex. 1003 at ¶ 190.
d. Claim 14
To the extent Patent Owner may argue that Korpela does not disclose “the
fast parameter comprises abase [sic] station identity code (BSIC),” it would have
been obvious to include such information in the system information messages of
Korpela. Ex. 1003 at ¶ 200. As demonstrated above, employing the system
information messages of GSM 04.08 in the scheme of Korpela would have been
obvious and suggested by Korpela itself, and such messages include a BSIC. Ex.
1003 at ¶¶ 172-175, 200. GSM 04.08 explains that “[e]ach SYSTEM
INFORMATION TYPE 10 message defines a list of cells and may contain further
information for cells of that list, a cell being identified by the pair of ARFCN and
BSIC of the BCCH.” Ex. 1006 at 282 (emphasis added); Ex. 1003 at ¶ 200. To
include such information as a BSIC in fields 32c of the modified system
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information message of Korpela would have been merely using a known technique
for its usual purpose to achieve a predictable result, and therefore obvious. Ex.
1003 at ¶ 200.
B. Claims 11, 13 and 14 Are Unpatentable Over Shah
1. U.S. Patent No. 6,047,071 to Shah, (“Shah”) (Ex. 1007)
Shah issued on April 4, 2000 from Application No. 08/837,970, filed April
15, 1997. Shah is therefore prior art to the 923 Patent at least under Section
102(e). Ex. 1003 at ¶ 202. Shah relates to “maintaining, changing, and/or
updating of mobile phone parameters by a network service provider without
requiring intervention by the mobile phone user.” Ex. 1007 at 1:5-10; Ex. 1003 at
¶ 203. Shah is directed to a process for securely downloading network parameters
to a mobile phone “in accordance with established industry standards (TIA/EIA/IS-
683).” Ex. 1007 at Abstract; Ex. 1003 at ¶ 204. Shah notes that over-the-air
service provisioning (OTASP) for mobile phones, both cellular and PCS, allows a
network service provider to download information to a mobile phone consistent
with the TIA IS-683 standard. Ex. 1007 at 1:14-20; Ex. 1003 at ¶ 204.
Shah explains that one type of information that can be downloaded using
prior art procedures is a “Preferred Roaming list”. Ex. 1007 at 1:50-57; Ex. 1003
at ¶ 205. Shah also discloses a roaming list update in his scheme pursuant to IS-
683-A. Ex. 1007 at 7:38-42; Ex. 1003 at ¶ 205. IS-683-A is a later version of IS-
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683 that existed at the time of Shah, see Ex. 1008 at 123 (“Document History”),
and is included herewith as Ex. 1008 (“IS-683-A”). IS-683-A explains that the
Preferred Roaming List “contains information to assist the mobile station system
selection and acquisition process.” Ex. 1008 at 77 (3-42); Ex. 1003 at ¶ 206. IS-
683-A also states that the Preferred Roaming List “indicates which systems the
mobile station should use (preferred systems). It also indicates which systems
should not be used by the mobile station (negative systems). . . .” Ex. 1008 at 114
(C-1); Ex. 1003 at ¶ 206.
The structure of the Preferred Roaming List is set forth in IS-683-A, and
includes, among other things, the “ACQ_TABLE” and the “SYS_TABLE”. Ex.
1003 at ¶¶ 207-208. IS-683-A states that the “ACQ_TABLE” is the “Acquisition
Table,” which contains “Acquisition Records.” Ex. 1008 at 78 (3-43). Each
Acquisition Record “contains parameters that the mobile station can use to acquire
a system.” Ex. 1008 at 79 (3-44). Acquisition Records can vary depending on the
type of system associated with the record, but contain information necessary to
communicate with the cells of the referenced system, such as system type and
CDMA channel number. See Ex. 1006, 79-83 (3-44-48); Ex. 1003 at ¶ 208.
IS-683-A also states that the “SYS_TABLE is the “System Table,” which
“contains parameters that the mobile station can use for identifying the acquired
system, for determining whether the acquired system is the optimal system on
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which to operate, and for determining the mobile station’s roaming status.” Ex.
1008 at 84 (3-49). IS-683-A states that the System Table includes a “System
Identification (“SID”) that “is set to the SID of the system associated with this
record.” Ex. 1008 at 84 (3-49). A SID is used to identify all of the cells of a
cellular system, such as a CDMA system. Ex. 1003 at ¶ 209; Ex. 1008 at 13 (1-1)
and 16 (1-4). The System Table also includes geographic information that
indicates to the phone which systems, and therefore which cells, are nearby. Ex.
1003 at ¶ 209; Ex. 1008 at C-1, C-2. IS-683-A also states that the System Table
includes a field called “ACQ_INDEX,” which is “the index of the Acquisition
Record that specifies the acquisition parameters for the system associated with this
record.” Ex. 1008 at 85 (3-50); Ex. 1003 at ¶ 209.
Shah discloses an example of a mobile phone that can be used with his
invention, which example includes, among other things, an antenna, a receiver and
a processor. Ex. 1003 at ¶ 210; Ex. 1008 at Fig. 1.
2. Claim 11 Is Anticipated By Shah
a) Mobile Communication Means
The preamble of claim 11 recites “[a] mobile communication means for
communication with a cellular telecommunication network, comprising”. Ex. 1003
at ¶ 211. Shah discloses a mobile phone that communicates with a cellular
network, such as a CDMA network. Ex. 1007 at 1:5-10; 4:25-30; 4:52-59; Fig. 1;
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Ex. 1003 at ¶ 212. Shah therefore discloses a “mobile communication means …”.
Ex. 1003 at ¶¶ 211-213.
b) Means for Receiving
Claim 11 also requires a “means for receiving a neighbor cell information
message”. Ex. 1003 at ¶ 214. The mobile phone of Shah is described as receiving
a “SSPR Download Request Message,” pursuant to IS-683-A. Ex. 1007 at 4:16-
30, 7:38-47; see also Figure 2 (at 208: “Follows SSPR Procedure For Roaming
List Update (See IS-683-A)”); 1:37-44; Ex. 1003 at ¶¶ 219-220. A person of
ordinary skill in the art would understand that the Selection for Preferred Roaming
(SSPR) procedure of IS-683-A is a procedure for downloading all or some of the
Preferred Roaming List defined in IS-683-A. Ex. 1003 at ¶ 221; see Ex. 1008 at 47
(3-12); 74-75 (3-39-40); see also id. at 117 (C-4); see also U.S. Patent No.
6,529,729 to Nodoushani et al. (Ex. 1013) at 8:25-28. In the Selection for
Preferred Roaming (SSPR) procedure of IS-683-A, the Preferred Roaming List is
downloaded to the mobile phone using the “SSPR Download Request Message.”
Ex. 1003 at ¶ 221; Ex. 1008 at 97-109 (4-11-23).
The “SSPR Download Request Message” containing a Preferred Roaming
List as defined in IS-683-A is a “neighbor cell information message” because it is
a message that contains information a mobile station needs to know when
communicating with a neighbor cell, including that information set forth in the
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Acquisition Table and the System Table. Ex. 1003 at ¶ 222. For example, the
Acquisition Table contains cell parameters which the mobile station needs to know
when communicating with a particular cell, such as the Acquisition Records for the
cells of neighboring systems, including system type, number of channels and
cellular CDMA channels. Ex. 1003 at ¶ 223; Ex. 1008 at 79-83 (3-44-48). The
System Table contains cell parameters which the mobile station needs to know
when communicating with a particular cell, such as the system ID and acquisition
index for the cells of neighboring systems. Ex. 1003 at ¶ 224; Ex. 1008 at (3-49-
50). The “SSPR Download Request Message” containing a Preferred Roaming
List as defined in IS-683-A is therefore a “neighbor cell information message,” and
Shah discloses the function of receiving a neighbor cell information message”.
Ex. 1003 at ¶¶ 219-225.
Shah discloses a mobile phone having an antenna, a receiver and a
processor. Ex. 1007 at Fig. 1; 3:61-4:5; Ex. 1003 at ¶ 216. A person of ordinary
skill in the art, moreover, would understand the “processor 34” of Shah to be a
microprocessor, since it is described as processing information and also because of
the necessity to include a small processing device in a mobile station. Ex. 1003 at
¶ 216.
Moreover, to the extent there are differences between the structure of Shah
and the corresponding structure for this claim element, they would be insubstantial,
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since both perform the claimed function in substantially the same way (by
receiving, demodulating and decoding the message, see Ex. 1005 at 8:31-36) to
achieve the same result (reception of the included neighbor cell information) as the
generic structures of the 923 Patent, and a person of ordinary skill in the art would
have considered the structures of Shah to be interchangeable with those of the 923
Patent, since both are simply conventional. Ex. 1003 at ¶ 217; Ex. 1001 at 6:16-
39; Ex. 1005 at 10:64-11:14. Shah therefore discloses at least equivalent structure
for this claim element. Ex. 1003 at ¶ 217.
Accordingly, Shah discloses “means for receiving a neighbor cell
information message”. Ex. 1003 at ¶¶ 214-226.
c) Wherein Clause
Claim 11 also requires “wherein said neighbor cell information message
comprises: a set of specific parameter values; and cell information, wherein, for
each cell of a plurality of neighbor cells, said cell information comprises: at least
one specific parameter value for a first parameter, and an index for a second
parameter, said index indicating which value of said set of specific parameter
values is used for said second parameter”.
The SSPR Download Request Message containing a Preferred Roaming List
as defined in IS-683-A includes an Acquisition Table, which Acquisition Table
includes a set of Acquisition Records. Ex. 1003 at ¶ 228; Ex. 1008 at 77-82 (3-42-
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47). Each Acquisition Record can include one or more numerical values, including
number of channels and cellular CDMA channel number. Ex. 1003 at ¶ 228; Ex.
1008 at 3-44-48. The Acquisition Records of the SSPR Download Request
Message are therefore “a set of specific parameter values”. Ex. 1003 at ¶ 228.
The SSPR Download Request Message containing a Preferred Roaming List
as defined in IS-683-A also includes a System Table, which System Table includes
a System Identification (“SID”) and an Acquisition Record Index
(“ACQ_INDEX”). Ex. 1003 at ¶ 229; Ex. 1008 at 84-85 (3-49-50). The System
Identification identifies a particular cellular system. Ex. 1003 at ¶ 229; Ex. 1008 at
3-49. The Acquisition Record Index is an index into the Acquisition Records of
the Acquisition Table and points to the particular Acquisition Record associated
with the identified system. Ex. 1003 at ¶ 229; Ex. 1008 at 85 (3-50). The System
Identification and the Acquisition Record Index are “cell information” because
they are information concerning a nearby cell or nearby cells. Ex. 1003 at ¶ 230.
The System Identification and the Acquisition Record Index are cell
information “for each cell of a plurality of neighbor cells” because they are cell
information applicable to each of a plurality of nearby cells in a particular cellular
system. Ex. 1003 at ¶ 231.
The System Identification is “[a] number uniquely identifying a wireless
system.” Ex. 1008 at 16 (1-4). Thus, the SID identifies the plurality of
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neighboring cells associated with the system identified by the System Information.
Ex. 1003 at ¶ 232. The System Identification is therefore “cell information,
wherein, for each cell of a plurality of neighbor cells, said cell information
comprises: at least one specific parameter value for a first parameter” because it
is a numerical parameter for a plurality of neighbor cells. Ex. 1003 at ¶ 232.
The Acquisition Index is “the index of the Acquisition Record that specifies
the acquisition parameters for the system associated with this record,” Ex. 1008 at
85 (3-50), and is therefore “and an index for a second parameter, said index
indicating which value of said set of specific parameter values is used for said
second parameter” because it indicates which acquisition record parameters should
be used to access the neighbor cells of the associated system. Ex. 1003 at ¶ 233.
The SSPR Download Request Message containing a Preferred Roaming List
as defined in IS-683-A therefore also includes “cell information, wherein, for each
cell of a plurality of neighbor cells, said cell information comprises: at least one
specific parameter value for a first parameter, and an index for a second
parameter, said index indicating which value of said set of specific parameter
values is used for said second parameter”. Ex. 1003 at ¶ 234. Shah therefore
discloses the “wherein said neighbor cell information message comprises …”
claim element. Ex. 1003 at ¶¶ 227-235.
d) Means for Associating
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Claim 1 also requires a “means for associating a specific value of said set of
specific parameter values indicated by one of said index with the corresponding
second parameter of a neighbor cell”. Shah discloses a “processor 34” that
“accesses information such as options for various features from non-volatile
memory 50 during operation”. Ex. 1007 at 4:12-14. In order to make use of the
information of the Preferred Roaming List the processor of Shah would necessarily
have to use the Acquisition Index as a pointer to the correct Acquisition Record of
the Acquisition Table, thereby associating the specific parameter values of that
Acquisition Record (such as number of channels, cellular CDMA channel number,
and number of PCS frequency blocks; Ex. 1008 at 79-83 (3-44-48)). A person of
ordinary skill in the art would therefore understand that the processor 34 of Shah is
necessarily configured to use the information of the Preferred Roaming List as
parameters for neighboring cells. Ex. 1003 at ¶ 237. A person of ordinary skill in
the art would also understand that this operates as a form of compression: instead
of providing the full contents of the Acquisition Record, the Preferred Roaming
List can instead merely reference the Record, thus reducing the amount of
information that must be transmitted. See Ex. 1003 at ¶¶ 187, 237. This type of
compression was well-known in art at the time of the invention. See, e.g. Ex. 1009
at 8:55-59; Ex. 1006 at 455; Ex. 1008 at 114; Ex. 1003 at ¶ 237. Shah therefore
discloses structure that is at least equivalent to the Patent Owner’s identification of
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structure corresponding to this claim limitation (including the algorithm “using the
parameter value specified by the index for the second parameter”). Ex. 1003 at ¶¶
237, 240. The mobile phone of Shah therefore necessarily included the
functionality of this claim element. Ex. 1003 at ¶ 237.
A person of ordinary skill in the art, moreover, would understand the
“Processor 34” of Shah to be a microprocessor, since it is described as processing
information and also because of the necessity to include a small processing device
in a mobile station. Ex. 1003 at ¶ 239.
Moreover, to the extent one could argue otherwise, the “processor 34” of
Shah is equivalent to the microprocessor of the 923 Patent, which patent suggests
that the recited hardware can be part of “any mobile unit or mobile station capable
of communicating through the radio interface of a cellular telecommunications
network. Ex. 1001 at 6:62-64; Ex. 1003 at ¶ 240. The 923 Patent therefore
discloses merely conventional hardware that performs the same function as the
disclosed microprocessor in substantially the same way (by using an index to
access information in a table) to achieve the same result (retrieve cell information
from those fields). Ex. 1003 at ¶ 240. Indeed, it was common even before 1998 to
have mobile phones of differing designs operating on the same cellular network, so
a person of ordinary skill in the art would have considered the structures disclosed
in the 923 Patent and Shah to be interchangeable. Ex. 1003 at ¶ 240. Shah
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therefore discloses a structure that is at least equivalent to the disclosed
corresponding structure for this claim element. Accordingly, Shah discloses or
renders obvious a “means for associating a specific value of said set of specific
parameter values indicated by one of said index with the corresponding second
parameter of a neighbor cell”. Ex. 1003 at ¶ 242.
3. Claim 13 Is Anticipated By Shah
Claim 13 requires “[t]he mobile communication means of clam [sic] 11,
wherein the mobile communication means comprises a cellular telephone.” As
demonstrated above, Shah discloses a mobile telephone operating in a cellular
system, such as a CDMA based network. Ex. 1007 at 4:25-26; Ex. 1003 at ¶ 244.
Shah therefore discloses this claim element. Ex. 1003 at ¶ 245.
4. Claim 14 Is Anticipated By Shah
Claim 14 requires “[t]he mobile communication means of claim 11, wherein
the fast [sic] parameter comprises abase [sic] station identity code (BSIC).”
Shah’s System ID is a code used to identify each of the base stations in a particular
system by distinguishing them from base stations of other systems. Ex. 1003 at ¶
247. Shah therefore discloses this claim element. Ex. 1003 at ¶ 247. Accordingly,
claims 11, 13 and 14 are anticipated by Shah.
5. Claim 11, 13 and 14 Are Obvious Over Shah
a) Means for Receiving
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To the extent Patent Owner may argue that Shah does not disclose the
structure of the “means for receiving,” it would have been obvious to include the
conventional antenna, receiver, and microprocessor of the 923 Patent in the scheme
of Shah for the same reasons noted above with respect to Korpela. Ex. 1003 at ¶¶
148, 218.
b) Neighbor Cell Information Message
Further, to the extent Patent Owner may argue that the Preferred Roaming
List of IS-683-A is not sufficiently disclosed by Shah, it would have been obvious
to combine the SSPR Download Request Message containing a Preferred Roaming
List of IS-683-A with the scheme of Shah, since Shah is explicitly directed to over
the air updating of the parameters using that standard. Ex. 1003 at ¶¶ 249-251.
c) Means for Associating
To the extent Patent Owner may argue Shah does not disclose “associating a
specific value of said set of specific parameter values indicated by one of said
index with the corresponding second parameter of a neighbor cell,” it would have
been obvious to include it that scheme. Ex. 1003 at ¶¶ 181, 238. In order for the
mobile phone of Shah to roam to a cell in a neighboring network it would have had
to access the Acquisition Record associated with that network, and to do so
requires use of the Acquisition Index. Ex. 1003 at ¶ 238. Shah suggests including
such functionality in his phone, and a person of ordinary skill in the art would have
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been motivated to do so, by the disclosure of Shah downloading the Preferred
Roaming List of IS-683-A. Ex. 1003 at ¶ 238. Including such functionality in the
scheme of Shah would have been only the addition of known functionality for its
known purpose to achieve predictable results, all well within the level of skill in
the art, as IS-683-A evidences. Ex. 1003 at ¶ 238.
To the extent Patent Owner may argue that Shah does not disclose the
structural requirements of this claim element, it would have been obvious to
include a microprocessor in the scheme of Shah for the same reasons noted above
with respect to Korpela. Ex. 1003 at ¶¶ 185, 241.
d) BSIC
To the extent Patent Owner may argue claim 14 is not satisfied by Shah, it
would have been obvious to include base station specific information, including a
code that specifically identifies a particular base station, into the messages of those
schemes. Ex. 1003 at ¶¶ 200, 248. For example, Shah states that his scheme may
also employ communications compliant with the TIA/EIA/IS-95 standard, Ex.
1007 at 5, 47-50; 6:45-48; 6:60-63, which requires the communication of a
message that includes a base station identification code (“BASE_ID”). See Ex.
1009 at 894 (7-170); Ex. 1003 at ¶ 248. It would have been obvious to include that
information and the SSPR Download Request Message in a single message, since
both sets of information were known to be needed by the mobile station for
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efficient and consumer friendly operation. Ex. 1003 at ¶ 248. Moreover, it would
have been within the level of skill in the art to combine these messages. Ex. 1003
at ¶ 248. There also would have been reason to do so, at least when a mobile
station first registers with a system, since it would necessarily need to be provided
the information in both messages and putting that information into one message
would be more efficient. Ex. 1003 at ¶ 248.
C. Claim 11, 13 and 14 Are Obvious Korpela in view of Shah
It also would have been obvious to combine the neighbor cell information
messages and mobile phone structures of Korpela with the techniques for
compressing information downloaded to a mobile phone as employed in the SSPR
Download Request Message disclosed in Shah. Ex. 1003 at ¶ 253. Both Korpela
and Shah are directed to the problem of efficiently downloading information over
the air to a mobile phone, Ex. 1005 at 4:1-4, Ex. 1007 at 1:5-10, as is the 923
Patent, Ex. 1001 at 2:2-4; Ex. 1003 at ¶ 253. A skilled artisan would therefore
have looked to both Korpela and Shah when considering such a problem.
Moreover, the limited bandwidth of mobile connections was well known, U.S.
Patent No. 6,192,244 to Abbadessa (“Abadessa”) (Ex. 1009) at 8:39-48, so such a
person would have been motivated to employ the technique of communicating a
set of specific parameters and an index, as taught by Shah, in the modified
neighbor cell information message of Korpela in order to reduce the amount of
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
57
information necessary to transmit, as was known, see, e.g., Ex. 1009 at 8:49-59;
Ex. 1003 at ¶ 253; see also Ex. 1003 ¶¶ 187-188 (discussing prior art compression
techniques for communication systems). As demonstrated above, both Korpela
and Shah disclose the element of the claims analyzed here. However, to the extent
Patent Owner may argue that one or the other of these references does not include
some claim element, it would have been obvious to combine Korpela and Shah in
the manner required by these claims. Ex. 1003 at ¶ 253.
V. CONCLUSION
Because the information presented in this petition shows that there is a
reasonable likelihood that the Petitioner would prevail with respect to at least one
of the claims challenged in the petition, the Petitioner respectfully requests that a
Trial be instituted and that claims 11, 13, and 14 be canceled as unpatentable.
Dated: January 16, 2015 Respectfully Submitted,
/Joseph A. Micallef/ Joseph A. Micallef Registration No. 39,772 Sidley Austin LLP 1501 K Street NW Washington, DC 20005
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 6,819,923
Attachment A:
Proof of Service of the Petition
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
CERTIFICATE OF SERVICE
I hereby certify that on this 16th day of January 2014, a copy of this Petition,
including all attachments, appendices and exhibits, has been served in its entirety
by Federal Express on the following counsel of record for patent owner:
The correspondence address of record for the ’923 Patent:
Martin & Ferraro, LLP 1557 Lake O’Pines Street, NE Hartville, OH 44632
The Patent Owner: Cellular Communications Equipment LLC 2400 Dallas Parkway, Suite 200 Plano, TX 75093
The attorneys of record for Cellular Communications Equipment LLC in Civil Action No. 6:14-cv-31 Nelson Bumgardner Casto, P.C. 3131 West 7th Street, Suite 300 Fort Worth, TX 76107 Ward & Smith Law Firm PO Box 1231 1127 Judson Road, Suite 220 Longview, TX 75606
Dated: January 16, 2015 Respectfully submitted,
/ Joseph A. Micallef / Joseph A. Micallef Registration No. 39,772 Attorney for Petitioner
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
2
PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 6,819,923
Attachment B:
List of Evidence and Exhibits Relied Upon in Petition
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
1
Exhibit # Reference Name
1001 U.S. Patent No. 6,819,923
1002 File History of U.S. Patent No. 6,819,923
1003 Declaration of Thomas La Porta
1004 Curriculum Vitae of Thomas La Porta
1005 U.S. Patent No. 6,510,146 to Korpela et al.
1006 GSM 04.08 v. 6.1.1 MS-BSS Interface; Mobile Radio Interface Layer 3 Specification
1007 U.S. Patent No. 6,047,071 to Shah
1008 TIA/EIA/IS-683-A: Over-the-Air Service Provisioning of Mobile Stations in Spread Spectrum Systems
1009 U.S. Patent No. 6,192,244 to Abbadessa
1010 U.S. Patent No. 6,434,389 to Meskanen et al.
1011 U.S. Patent No. 6,188,911 to Wallentin et al.
1012 U.S. Patent No. 6,002,940 to Richter
1013 U.S. Patent No. 6,529,729 to Nodoushani et al.
1014 GSM 1.04 Technical Specification, V. 5.0.0
1015 Plaintiff’s Opening Brief on Claim Construction, Civil Action No. 6:13-cv-507-LED
1016 Black’s Law Dictionary, 5th Ed. (1979)
1017 Philip Gage, A New Algorithm for Data Compression, 12:2 THE C USERS JOURNAL 23 (Feb. 1994)
1018 U.S. Patent No. 5,701,302 to Geiger
1019 IBM Dictionary of Computing (George McDaniel ed., 1994)
Petition for Inter Partes Review of U.S. Patent No. 6,819,923
2
Exhibit # Reference Name
1020 Prior Cases for Thomas La Porta
1021 Order Dismissing All Claims Without Prejudice, Civil Action No. 6:14-31-LED
1022 TIA/EIA-95-B: Mobile Station-Base Compatibility Standard for Dual-Mode Spread Spectrum Systems (Oct. 31, 1998)