HTC Corporationv.Cellular Communications Equipment LLC

Patent Trial and Appeal Board

Jan 4, 2016

09095906 (P.T.A.B. Jan. 4, 2016)

Trials@uspto.gov Paper 43
Tel: 571-272-7822 Entered: January 4, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HTC CORPORATION, ZTE (USA), AMAZON.COM, INC.,
PANTECH CO., LTD., PANTECH WIRELESS, INC., DELL INC.,
LG ELECTRONICS, INC., and LG ELECTRONICS U.S.A., INC.,
Petitioners,
v.
CELLULAR COMMUNICATIONS EQUIPMENT LLC,
Patent Owner.

Case IPR2014-01135
Patent 6,377,804

Before JENNIFER S. BISK, GREGG I. ANDERSON and
ROBERT J. WEINSCHENK, Administrative Patent Judges.
BISK, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318(a) AND 37 C.F.R. § 42.73

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INTRODUCTION
A. Background
NEC Corporation of America, NEC Mobile Communications, Ltd.,1
HTC Corporation, Amazon.com, Inc., ZTE (USA), Inc., Pantech Co., Ltd.,
Pantech Wireless, Inc., Dell Inc., LG Electronics, Inc., and LG Electronics
U.S.A., Inc. (collectively, “Petitioner”), filed a Corrected Petition (Paper 4,
“Pet.”) requesting an inter partes review of claims 1–12 of U.S. Patent No.
6,377,804 (Ex. 1001, “the ’804 patent”). Patent Owner, Cellular
Communications Equipment LLC, filed a Preliminary Response. Paper 9
(“Prelim. Resp.”). On January 20, 2015, we instituted a review (Paper 11,
“Institution Decision” or “Inst. Dec.”) based upon Petitioner’s assertion that
(1) claims 1, 3, and 5–9 are anticipated by Sasuta,2 and (2) claims 1, 3, 4, 6,
and 7 are anticipated by Lawrence.3
This is a Final Written Decision under 35 U.S.C. § 318(a). For the
reasons set forth below, Petitioner has not shown by a preponderance of the
evidence that claims 1 and 3–9 of the ’804 patent (“the challenged claims”)
are unpatentable.
B. Related Proceedings
The parties indicate that the ’804 patent is the subject of several
proceedings in the United States District Court for the Eastern District of
Texas. Pet. 1–2; Paper 6, 2–3.

1 NEC Mobile Communications, Ltd. was formerly known as NEC CASIO
Mobile Communications, Ltd. Paper 8, 2. NEC Corporation of America
and NEC Mobile Communications, Ltd. were dismissed on February 12,
2015. Paper 20, 2–3.
2 U.S. Patent No. 5,862,490 (“Sasuta”).
3 U.S. Patent No. 5,819,173 (“Lawrence”).
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C. The ’804 Patent
The ’804 patent relates to mobile communication systems. Ex. 1001,
Title. Specifically, the ’804 patent discusses the coexistence of a variety of
mobile telephone standards, including new generation standards that are
implemented with the expectation that they will eventually supersede older
standards. Id. at 1:14–27. The ’804 patent explicitly discusses GSM,
TDMA, and the Universal Mobile Telecommunication System (“UMTS”)
communication standards. Id. at 1:15–27. Networks using these
communication standards may coexist and frequently differ in both
geographical coverage and scope of services provided. Id. at 2:11–20. This
results in certain geographical areas being covered by more than one
network, each using a different communication standard and providing
differing services. Id. The ’804 patent describes taking advantage of this
overlap by transferring from a network operating on one standard to a
second network operating on a different standard when a mobile
communication device requests a service provided by the second network,
but not the first network. Id. at 1:65–2:10.
As an example, the ’804 patent describes the situation in Europe in
which the more recently implemented UMTS networks likely have only
limited geographical coverage, at least for an initial period of time. Id. at
3:17–20. Figure 1 of the ’804 patent is reproduced below.

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Figure 1 shows schematically the geographical coverage of two
networks. Id. at 3:3–5. Area 1, which falls wholly within area 2, illustrates
the coverage provided by the UMTS network. Id. at 20–22. Area 2
represents a pre-existing GSM network. Id. Figure 2 of the ’804 patent is
reproduced below.

Figure 2 shows a diagram of the architectures of the networks shown
in Figure 1. Id. at 3:6–7. Mobile station 3 communicates with either UMTS
base station subsystem 4 or GSM base station subsystem 6. Id. at 3:46–49.
To provide seamless operation when mobile station 3 moves between
network coverage areas, the two core networks, 5 and 7, cooperate according
to a roaming agreement. Id. at 3:49–51. In the situation where mobile
station 3 is registered with the GSM network of area 2 as its home public
land mobile network (HPLMN), and requires the use of a service provided
by a UMTS network, but not the GSM network, mobile station 3 must
“roam” for that service. Id. at 3:52–59. This activity is referred to as
“roaming for service” and differs from traditional “roaming for coverage”
defined in the GSM specification. Id. at 3:56–61, 3:66–4:4. Roaming for
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service, unlike roaming for coverage, does not require location updates or
location registration because the mobile station can remain registered with
its home network, which knows the location of the mobile station. Id. at
2:66–4:3. Figure 3 of the ’804 patent is reproduced below.

Figure 3 is a flow chart of mobile station 3 operating in the coverage
area of the networks shown in Figure 1. Id. at 3:8–9. Figure 3 illustrates
that mobile station 3 will select the HPLMN “so long as that network is
available and the selected service is provided by the HPLMN.” Id. at 3:61–
65.
D. Illustrative Claim
Of the challenged claims in the ’804 patent, claim 14 is independent.
Claims 3–9 depend, either directly or indirectly, from claim 1. Claim 1 is
reproduced below.

4 Subsequent to the filing of the Petition, a Certificate of Correction was
issued changing the language of claim 1. Ex. 2001, 12. This decision will
refer exclusively to this corrected version of claim 1 (discussed in the
Petition as “claim 1 as allowed but not issued”).
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1. A method of operating a mobile communication device
within a geographical area having overlapping coverage from
first and second mobile telephone networks, where said first
network is the home network of the mobile communication
device and said first and second networks provide respective
first and second sets of services in said geographical area, the
method comprising the steps of:
choosing a desired service to be requested;
determining if the desired service belongs to said first set;
and
if the desired service belongs to said first set, then
registering the device with said first network,
if the desired service does not belong to said first set,
then registering the device with said second network if the
desired service belongs to said second set.
ANALYSIS
A. Identification of Real Parties in Interest
The Petition identifies several real parties in interest. Pet. 1. Based
on the information in the Petition and Preliminary Response, we did not
identify any issues under 35 U.S.C. § 312(a)(2) or § 315(b), and we
instituted an inter partes review. See Inst. Dec. 2. Patent Owner argues in
its Response that NEC Corporation and HTC America are real parties in
interest that are not identified in the Petition. Paper 29 (“PO Resp.”) 2.
According to Patent Owner, the Institution Decision should be vacated
because, under 35 U.S.C. § 312(a)(2), a petition that does not identify all the
real parties in interest cannot be considered. Id. For the reasons discussed
below, we do not vacate the Institution Decision.
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1. NEC Corporation
The Petition identifies NEC Corporation of America (“NEC
America”) and NEC Mobile Communications, Ltd.5 (“NEC Mobile”) as real
parties in interest. Pet. 1. Patent Owner argues that the Petition also should
have identified NEC Corporation as a real party in interest because NEC
Corporation controlled the participation of NEC America and NEC Mobile
in this case. PO Resp. 8. Specifically, Patent Owner argues that NEC
Corporation executed a Settlement Agreement with Patent Owner that
required NEC America and NEC Mobile to withdraw from this case. Id. at
9–10. Patent Owner also argues that certain statements in the Motion to
Terminate NEC America and NEC Mobile demonstrate that NEC
Corporation controlled the participation of NEC America and NEC Mobile
in this case. Id. at 8–9.
Patent Owner and NEC Corporation executed the Settlement
Agreement that allegedly demonstrates NEC Corporation’s control with
respect to this case on November 17, 2014. Id. at 6. Because Patent Owner
is a party to the Settlement Agreement, Patent Owner knew of its terms at
that time. Id. Thus, Patent Owner could have raised the issue of whether
NEC Corporation is a real party in interest when the Settlement Agreement
was executed, but did not. Patent Owner, NEC America, and NEC Mobile
filed the Motion to Terminate that allegedly demonstrates NEC
Corporation’s control with respect to this case on February 6, 2015. Paper
19. Because Patent Owner signed the Motion to Terminate, Patent Owner
knew of the statements therein at that time. Id. at 7–8. Thus, Patent Owner

5 NEC Mobile Communications, Ltd. was formerly known as NEC CASIO
Mobile Communications, Ltd. Paper 8, 2.
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also could have raised the issue of whether NEC Corporation is a real party
in interest when the Motion to Terminate was filed, but did not.
Patent Owner instead waited until after we granted the Motion to
Terminate and dismissed NEC America and NEC Mobile from this case to
argue that NEC Corporation had controlled their participation. Ex. 2002,
19:18–25:18. The result of Patent Owner’s delay is that the parties whose
conduct is in question no longer are involved in this case. Patent Owner
previously assured the remaining parties and the Board that “NEC’s
termination from the IPRs [would] have little, if any, impact on the
remaining parties or the Board.” Paper 19, 5. Yet, now, Patent Owner seeks
the extraordinary remedy of terminating this case in its entirety based on
statements made in the documents that secured the dismissal of NEC
America and NEC Mobile (documents which the remaining parties did not
sign). Given Patent Owner’s delay and previous assurances regarding the
dismissal of NEC America and NEC Mobile, we decline to terminate this
case with respect to the remaining parties. See 37 C.F.R. § 42.12.
2. HTC America
The Petition identifies HTC Corporation as a real party in interest.
Pet. 1. Patent Owner argues that HTC America should have been identified
as a real party in interest in the Petition because of the relationship between
HTC America and HTC Corporation. PO Resp. 12–19. Specifically, Patent
Owner argues that: 1) HTC America is a wholly owned subsidiary of HTC
Corporation (id. at 12); 2) HTC America and HTC Corporation often act
jointly in other cases (id. at 12–15); 3) HTC America and HTC Corporation
share inside and outside counsel (id. at 13–14); 4) the power of attorney for
HTC Corporation was signed on behalf of an HTC America employee (id. at
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14); and 5) HTC America is identified as a real party in interest in most
other petitions for inter partes review that identify HTC Corporation as a
real party in interest (id. at 15–16). Patent Owner’s argument is not
persuasive.
Whether a party is a real party in interest is a “highly fact-dependent
question” that is evaluated “on a case-by-case basis.” Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of
the common considerations for determining whether a party is a real party in
interest include whether the party funds, directs, or controls the petition or
proceeding. Id. at 48,760. Here, Patent Owner does not identify any
evidence indicating that HTC America funds, directs, controls, or otherwise
is involved in this petition or proceeding. Patent Owner’s argument that
HTC America and HTC Corporation acted jointly in other cases and that
HTC America is named as a real party in interest in other cases does not
indicate that HTC America is a real party in interest in this case. Similarly,
Patent Owner’s argument that HTC America and HTC Corporation share
counsel does not indicate that HTC America funds, directs, controls, or
otherwise is involved in this case.
The only evidence specifically related to this proceeding is that an
employee of HTC America is identified on the power of attorney for HTC
Corporation. PO Resp. 12–18; see also, Ex. 2022, 24:20–25:6 (Transcript of
conference call with the Board: counsel for Patent Owner “So if we want to
talk about evidence specific to these cases, it’s this power of attorney in the
1135 case.”). We are not persuaded that this evidence, by itself, is sufficient
to indicate that HTC America is a real party in interest in this case. There is
no dispute that the actual signature on the power of attorney is from an
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employee of HTC Corporation. See PO Resp. 14; Paper 33 (“Reply”) 23.
And Petitioner represents that the reference to an HTC America employee
on the document was a simple oversight. Reply 23. Patent Owner does not
provide evidence to the contrary.
B. Claim Construction
We construe all claim terms using the broadest reasonable
construction in light of the ’804 patent specification. 37 C.F.R. § 42.100(b).
To properly resolve the issues presented in this proceeding, we address
explicitly the term “home network.”
The term “home network” appears only in the preamble of claim 1. A
preamble “is not limiting where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.” Catalina Marketing Int’l v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal
quotation marks omitted). Id. A preamble, however, “limits the invention if
it recites essential structure or steps, or if it is necessary to give life,
meaning, and vitality to the claim.” For example, “dependence on a
particular disputed preamble phrase for antecedent basis may limit claim
scope because it indicates a reliance on both the preamble and claim body to
define the claimed invention.” Id.
Both parties agree that, although it is part of the preamble, the term
“home network” acts as a limitation of claim 1. PO Resp. 25; Paper 42
(“Tr.”), 5–6 (Petitioner’s counsel: “We think that home network is
limiting.”), 12–13 (Petitioner’s counsel: “Since the preamble, we agreed, is
limiting . . .”). We agree that the preamble limits the scope of the challenged
claims. The body of claim 1 refers to “said first network,” which refers to
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the “first . . . mobile telephone network[]” recited in the preamble. The
preamble further defines “said first network is the home network of the
mobile communication device.” We are persuaded that this language
“indicates a reliance on both the preamble and claim body to define the
claimed invention” and is not merely a statement of intended purpose or
intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s
Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).
Patent Owner proposes a broadest reasonable interpretation of “home
network”—“the network that the mobile communication device is
preconfigured to access first.” PO Resp. 25. According to Patent Owner,
several examples described in the ’804 patent, including those illustrated by
Figures 3, 4a, and 4b, support this interpretation by showing a mobile station
that is “preconfigured to access [the] home network first.” Id. at 25–27
(citing Ex. 1001, Figs. 3, 4a, 4b, 3:22–29, 3:61–65). Petitioner proposes a
competing interpretation for the term—“the network to which the mobile
stations subscribe.” Reply 3. Petitioner argues that there is “a clear and
unambiguous definition” of the term in the specification. Id. (quoting Ex.
1001, 1:41–42 (“the ‘home’ network (i.e. the network to which the mobile
stations subscribe”)).
We agree with Petitioner that the broadest reasonable interpretation of
“home network” is “the network to which a mobile station subscribes,” as
explicitly defined in the specification. Ex. 1001, 1:40–47. Nothing in the
’804 patent indicates that the patentee intended to modify this definition. In
particular, the word “preconfigure” in Patent Owner’s proposed construction
is never recited in the ’804 patent. We, therefore, are not persuaded that
limiting the term “home network” in such a way is proper.
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C. Anticipation by Sasuta
Petitioner asserts that Sasuta anticipates claims 1, 3, and 5–9. Pet. 3–
32, 49–52. A claim is anticipated if each limitation of the claim is disclosed
in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We have considered
the parties’ arguments and supporting evidence, and we determine that
Petitioner has not shown by a preponderance of the evidence that claims 1,
3, and 5–9 are anticipated by Sasuta.
1. Overview of Sasuta
Sasuta discloses creating a catalog of service providers. Ex. 1010,
2:43–46 (“According to the inventive method, the communication unit
catalogues the service attributes for each of the plurality of service providers
so that a determination can be made as to which service providers are
necessary to meet their service requirements.”). “[F]or each of the plurality
of service requirements, one of the plurality of service providers is selected
concurrently in order to facilitate that service requirement.” Id. at 2:46–49.
Figure 3 of Sasuta is reproduced below.

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Figure 3 shows one portion of a centralized catalog of service attributes. Id.
at 3:44–54. The catalog includes column 302, storing service provider
identifiers, column 304, storing the provider’s communication service types,
and column 306, storing affiliated communication units. Id. Sasuta
describes communication unit 1012 as requiring the service slow data
(“DATA-S”) and communication unit 1001 requiring the services fast data
(“DATA-F”) and telephone interconnect (“TELE”). Id. at 3:63–4:16. Based
on these requirements, communication unit 1012 chooses provider 101 for
slow data and unit 1001 chooses provider 102 for fast data. Id. All three
providers 101, 102, and 103 provide the telephone interconnect service and
Sasuta discloses that, “since communication unit 1025 has already affiliated
with service provider 102 (as indicated by record 316) for such services,
service provider 103, with no currently active affiliation, is chosen to
provide the telephone interconnect service for communication unit 1001, as
indicated by record 320.” Id. at 4:7–16.
Figure 4 of Sasuta is reproduced below.

Figure 4 shows another portion of Sasuta’s centralized catalog. Ex. 1010,
2:19–21. The catalog includes column 410, storing service provider
identifiers, column 403, storing characteristics of signal quality, 405, storing
resource usage, and column 407, storing resource availability. Id. at 4:55–
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61. Sasuta discloses a preferred embodiment in which a desired service
requires both signal quality and resource availability to be optimized. Id. at
6:1–7. According to Sasuta, under these circumstances, “the communication
unit would select service provider 102 for this service, as it has the best
signal quality and the next best resource availability.” Id. at 6:7–10.
2. Analysis
Independent claim 1 recites “choosing a desired service to be
requested” and “determining if the desired service belongs to said first set,
then registering the device with said first network” where the first network is
the home network—“the network to which a mobile station subscribes.” Ex.
2001, col. 6, ll. 32–42 (as modified by the Certificate of Correction). In
other words, claim 1 requires a home network that is looked to first when
selecting a service (“the home network preference limitation”).
The Petition does not explain whether the home network preference
limitation is disclosed explicitly or inherently by Sasuta. Pet. 31–32, 49; Ex.
1012, App’x A4. In our Institution Decision, we, therefore, assumed that
Petitioner’s assertion was that this limitation was disclosed explicitly by
Sasuta. Inst. Dec. 12–13. During the trial, Petitioner, however, made it
clear that it does not assert that Sasuta explicitly discloses this limitation, but
instead argues that at least part of this limitation, the home network portion,
is inherently disclosed by Sasuta—“subscription to a home network is
inherent in any working cellphone.” Reply 3; Tr. 9:11–22, 13:18–4.
According to Petitioner, “[i]t is common knowledge that a cellular telephone
must be subscribed with a service provider . . . [a]bsent a subscription with a
service provider, a cellular telephone is inoperable.” Id. at 3–4. Petitioner,
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thus, concludes that “[s]ubscription with a home network is inherent in the
definition of a working cellular telephone.” Id. at 4.
Patent Owner argues Sasuta does not disclose the home network
preference limitation and requests that we reconsider the portion of our
Institution Decision finding that Sasuta explicitly discloses this limitation.
PO Resp. 29–38. Patent Owner also argues that Petitioner has not met its
burden to show that the home network preference limitation is disclosed
inherently. Tr. 61:11–18. We agree with Patent Owner.
Nothing in Sasuta’s description requires that in choosing a service
provider from the catalog of service providers, a provider must be chosen in
any particular order. In fact, Sasuta is silent on whether any particular
network, such as a home network, has priority and should be chosen first.
The Petition relies, primarily, on Figures 3 and 4, and the corresponding
descriptions, for support of anticipation by Sasuta. Pet. 31–32, 49 (citing
Ex. 1010, 3:44–4:8, 6:1–10). These portions of Sasuta, however, do not
describe a home network or any other type of network that is selected first
among those networks listed in the catalog. To the contrary, the language
corresponding with Figure 3 describes communication unit 1001 choosing
service provider 103 for its telephone interconnect service, without any
explanation, despite the fact that service provider 101 also includes that
service. The language corresponding with Figure 4, similarly, does not shed
any light on whether there is a home network that is always chosen first
from the catalog of service providers. The only language relating to how a
network is chosen in this portion of Sasuta states that “the communication
unit uses this service characteristic information by comparing them against
corresponding threshold values for these characteristics . . . [i]n this manner,
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the communication unit can determine whether a particular service provider
should be considered for providing a particular service.” Ex. 1010, 5:5–14.
Thus, Sasuta does not disclose explicitly the home network preference
limitation.
Petitioner also has not met its burden to show that the home network
preference limitation is disclosed inherently by Sasuta. “To serve as
anticipation when the reference is silent about the asserted inherent
characteristic, such gap in the reference may be filled with recourse to
extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). Petitioner acknowledges that its inherency argument was not made
until, at the earliest, the Reply brief, and that it did not proffer evidence on
the issue. Tr. 14:16–18 (“JUDGE WEINSCHENK: What evidence have
you provided us that shows us that [the home network preference limitation
is] so well-known that we don’t need it in the reference? MR. THILL: In
terms of the record, I don’t know that we made an explicit argument, and
that was not part of the testimony of our expert.”); see also Reply 3–4
(asserting that “[a]bsent a [home network] cellular telephone is inoperable”
and that it “is inherent in the definition of a working cellular telephone” to
have a home network, but providing no citations to supporting evidence for
these assertions).
Petitioner’s argument appears to be that if a gap in a prior art
reference represents functionality that is so well-known that it exceeds a
certain threshold, not only does that functionality need not be taught
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explicitly by the reference, but it also need not be supported by evidence in
the record. Tr. 25:18–26:12. Essentially, Petitioner asks us to take judicial
notice that every working cellular telephone has a home network that it gives
preference to when roaming for service. Tr. 76:7–25 (“MR. THILL: I would
appeal to just common knowledge and your own personal experience, for
that matter. If you buy a cell phone and don’t have a subscription, it will not
work. You can dial 911 by law. But it will not work. . . . And out of
personal experience, it looks for the network that’s designated internally as
its home network. That’s the very first thing it always does. In many
regards, this limitation is a trivial limitation.”).
Petitioner relies for its argument on a statement from the Manual of
Patent Examining Procedure (“MPEP”): “The specification need not
disclose what is well-known to those skilled in the art and preferably omits
that which is well-known to those skilled and already available to the
public.” Tr. 14, 26 (citing MPEP § 2164). This statement, however, is in a
section titled “Specification Must be Enabling as of the Filing Date.” MPEP
§ 2164.05(a). It refers to the requirement that a patent application satisfy 35
U.S.C. § 112—“whether the disclosure is sufficient to enable those skilled in
the art to practice the claimed invention.” Lindemann Maschinenfabrik
GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir.
1984). It does not, however, support Petitioner’s theory of anticipation. The
same is true for the cases referenced by the MPEP and relied upon by
Petitioner. Tr. 26:3–8; MPEP 2164.05(a) (citing In re Buchner, 929 F.2d
660, 661 (Fed. Cir. 1991); Hybritech Inc. v. Monoclonal Antibodies, Inc. 802
F.2d 1367, 1384 (Fed. Cir. 1986); Lindemann, 730 F.2d at 1463). Even if
we agreed with Petitioner’s legal argument, which we do not, we are not
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persuaded that the home network preference limitation is so trivial, or the
underlying facts so well-known, that Petitioner’s lack of evidence on the
subject is acceptable.
Therefore, because Sasuta does not disclose explicitly the home
network preference limitation and Petitioner does not meet its burden to
show that Sasuta inherently discloses that limitation, Petitioner has not
shown by a preponderance of the evidence that Sasuta anticipates claims 1
and 3–9.
D. Anticipation by Lawrence
Petitioner asserts that Lawrence anticipates claims 1, 3, 4, 6, and 7.
Pet. 53–56. We have considered the parties’ arguments and supporting
evidence, and we determine that Petitioner has not shown by a
preponderance of the evidence that claims 1, 3, 4, 6, and 7 are anticipated by
Lawrence.
Petitioner relies on a statement in the “Background of the Invention”
section of Lawrence as teaching a home network as recited in claim 1. Pet.
38–39, 53–56 (citing Ex. 1011, 1:49–54). For the remaining portion of the
home network preference limitation, however, Petitioner relies on language
in the “Detailed Description” of Lawrence, describing a particular
embodiment of the invention. Pet. 39–40, 53, 56 (citing Ex. 1011, 3:11–25,
3:30–39; 3:64–4:10, Fig. 1).
We agree that Lawrence, in the “Background of the Invention”
section, discusses the concept of a home network as used by “a conventional
wireless system.” Specifically, Lawrence discloses that some wireless
communicator manufacturers have attempted to address the problem of
unavailable service features by including in their telephones Number
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Assignment Modules (NAMs)—memory locations within the wireless
communicator storing an assigned telephone number and a System
Identification Number (SID), which uniquely identifies a particular wireless
network that is primarily intended to provide airtime service for that
communicator. Ex. 1011, 1:34–49. Lawrence then states: “A conventional
wireless communicator determines whether at any given time it is located
within its home local service area by scanning certain frequencies to receive
SIDs broadcast by wireless networks and then comparing the received SIDs
to SIDs stored in the NAM.” Id. at 1:49–54 (emphasis added). Thus,
Lawrence discloses that the NAM allows the communicator “to identify the
primary network to which it is pre-subscribed”—the home network. Id. at
1:54–58. Importantly, however, Lawrence adds that the NAM “does not
allow the communicator to select a network based on the availability of a
desired service feature.” Id. In other words, Lawrence discloses that
although conventional wireless systems include home networks, they do not
allow roaming for service.
In the “Detailed Description” section, Lawrence describes a wireless
communicator that does support roaming for service. Id. at 2:29–58.
Specifically, Lawrence states that “a wireless communicator tunes to a first
signaling control channel over which a wireless network broadcasts carrier-
specific information such as a [SID] number and a service menu,” which
“lists the various service features available over the network.” Ex. 1011,
3:11–18. “If the wireless network offers the communication service feature
requested by the user, the communicator initiates a service request to the
wireless network.” Id. at 3:21–25. “If the first wireless network to which
the communicator tunes does not offer the communications service feature
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requested by the user, the communicator tunes to a second control channel to
browse through the menu of the wireless network associated with the second
control channel.” Id. at 3:30–34. This process continues until a network
that offers the requested service is found or the list of networks is exhausted.
Id. at 3:34–39.
Nothing in Lawrence specifically describes how the first signaling
control channel is chosen. Moreover, there is no indication that the first
signaling control channel that a wireless communicator tunes to is the home
network described as being used by a conventional wireless communicator.
Petitioner points to language in Lawrence that describes three operational
states of the service request selector. Pet. 39–40 (citing Ex. 1011, 3:64–
4:10, Fig.1). In the first state, “upon activation of the wireless
communicator, the communicator automatically begins monitoring various
signaling control channels and registers onto a wireless network that offers a
preselected service.” Ex. 1011, 3:64–4:3. In the second state, “the
communicator only begins monitoring signaling control channels when the
user manually selects a desired service.” Id. at 4:3–6. In the third state, “the
communicator begins monitoring various signaling control channels to
conduct communication with a network that offers a service that the
communicator itself identifies as being required.” Id. at 4:6–10. Although
these examples discuss the monitoring of signaling control channels, and
how that process is initiated, they do not shed any light on whether there is a
specific order in which the control channels are monitored or that there is
any particular network, such as a home network, that is tuned to first. Thus,
Lawrence does not disclose explicitly the home network preference
limitation.
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Patent 6,377,804
21
At oral argument, Petitioner asserted that “given the definition
provided in the background [for home network], a person of ordinary skill in
the art would understand that . . . [t]he first network you tune to is the home
network.” Tr. 74:7–11. This assertion depends on the same assumption that
Petitioner made with respect to Sasuta—that we may take judicial notice that
every working cellular telephone has a home network that it gives preference
to when roaming for service. Tr. 73:2–78:12. For the reasons discussed
above, we are not persuaded by this argument.
Therefore, because Lawrence does not disclose explicitly the home
network preference limitation and Petitioner does not meet its burden to
show that Lawrence inherently discloses that limitation, Petitioner has not
shown by a preponderance of the evidence that Lawrence anticipates claims
1 3, 4, 6, and 7.
E. Petitioner’s Motion to Exclude
Petitioner filed a Motion to Exclude Exhibits 2005–2019 (Paper 38),
to which Patent Owner filed an Opposition (Paper 40), and Petitioner filed a
Reply (Paper 41). Petitioner’s Motion to Exclude Exhibits 2005–2019 is
dismissed as moot because this Decision does not rely on Exhibits 2005–
2019.
F. Petitioner’s Motion to Seal
Petitioner filed a Motion to Seal. Paper 32. Petitioner requests entry
of a protective order and seeks to seal portions of Petitioner’s Reply. Id. at
1, 3. For the reasons discussed below, the Motion to Seal is granted.
The parties agree to the default protective order found in Appendix B
of the Office Patent Trial Practice Guide with one modification. Id. at 3–4.
Specifically, the parties limit the individuals who can access confidential
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Patent 6,377,804
22
information to outside counsel for the parties, the Office, and their support
personnel. Id. We hereby enter the Protective Order filed as Exhibit 1016 in
this proceeding, which governs the treatment and filing of confidential
information in this proceeding.
There is a strong public policy that favors making information filed in
an inter partes review open to the public. Garmin Int’l, Inc. v. Cuozzo Speed
Techs. LLC, IPR2012-00001, Paper 34, 1–2 (PTAB Mar. 14, 2013). The
standard for granting a motion to seal is good cause. 37 C.F.R. § 42.54.
That standard includes showing that the information addressed in the motion
to seal is truly confidential, and that such confidentiality outweighs the
strong public interest in having the record open to the public. See Garmin
IPR2012-00001, Paper 34, 2–3. The portions of the Reply that Petitioner
seeks to seal relate to the terms of the confidential Settlement Agreement
between Patent Owner and NEC Corporation. Paper 32, 2–3. We have
reviewed the Motion to Seal, the document sought to be sealed, and the
redacted, public version of that document, and we determine that good cause
exists to grant Petitioner’s Motion to Seal.
CONCLUSION
Petitioner has not shown by a preponderance of the evidence that
claims 1 and 3–9 are anticipated by Sasuta or Lawrence.
ORDER
Accordingly, it is
ORDERED that claims 1 and 3–9 of the ’804 patent are not shown
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot;
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Patent 6,377,804
23
FURTHER ORDERED that Petitioner’s Motion to Seal is granted;
FURTHER ORDERED that the Protective Order filed as Exhibit 1016
is entered in this proceeding;
FURTHER ORDERED that the identified portions of Petitioner’s
Reply (Paper 34) will be sealed; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:
Steve Moore
Richard Thill
PILLSBURY WINTHROP SHAW PITTMAN LLP
steve.moore@pillsburylaw.com
richard.thill@pillsburylaw.com

Robert Pluta
Amanda Streff
Baldine Paul
William Barrow
MAYER BROWN LLP
rpluta@mayerbrown.com
astreff@mayerbrown.com
bpaul@mayerbrown.com
wbarrow@mayerbrown.com

Alan Wright
Steve Kelber
H.C. PARK & ASSOCIATES, PLC
awright@park-law.com
skelber@park-law.com
IPR2014-01135
Patent 6,377,804
24
PATENT OWNER:
Barry Bumgardner
John Murphy
NELSON BUMGARDNER, P.C.
barry@nelbum.com
CCE-IPR@nelbum.com

Amedeo Ferraro
MARTIN & FERRARO LLP
CCE-IPR@martinferraro.com