Sisvel International S.A.

Patent Trials and Appeals Board

Oct 15, 2021

IPR2021-00815 (P.T.A.B. Oct. 15, 2021)

Trials@uspto.gov Paper 18
571-272-7822 Date: October 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

CRADLEPOINT, INC., DELL INC.,
HONEYWELL INTERNATIONAL, INC., SIERRA WIRELESS, INC.,
TCL COMMUNICATION TECHNOLOGY HOLDINGS LIMITED,
TCT MOBILE INTERNATIONAL LIMITED, TCT MOBILE, INC.,
TCT MOBILE (US) INC., TCT MOBILE (US) HOLDINGS INC., and
THALES DIS AIS DEUTSCHLAND GMBH,
Petitioner,
v.
SISVEL INTERNATIONAL S.A.,
Patent Owner.

IPR2021-00815
Patent 7,979,070 B2

Before JAMESON LEE, MIRIAM L. QUINN, and AARON W. MOORE,
Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
The captioned entities, collectively referred to as “Petitioner,”1 filed a
Petition (Paper 1, “Petition” or “Pet.”) requesting an inter partes review of
claims 1–3 and 5–8 (the “challenged claims”) of U.S. Patent No. 7,979,070
B2 (Ex. 1001, “the ’070 patent”) pursuant to 35 U.S.C. §§ 311–319,
accompanied by the supporting Declaration of Dr. James L. Olivier
(Ex. 1011) (“the Olivier Declaration”). Sisvel International S.A. (“Patent
Owner”) filed a Preliminary Response (Paper 12) (“Preliminary Response”
or “Prelim. Resp.”), accompanied by the supporting Declaration of Dr.
Michael Smith (Ex. 2001 “the Smith Declaration”).
The standard for institution is set forth in 35 U.S.C. § 314, which
provides that an inter partes review may not be instituted unless the
information presented in the Petition and the Preliminary Response shows
that “there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
§ 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the
trial on behalf of the Director.”). Upon consideration of the parties’
contentions and the evidence of record, we conclude that Petitioner has not
established a reasonable likelihood of prevailing in demonstrating the
unpatentability of at least one challenged claim of the ’070 patent.
Accordingly, we deny Petitioner’s request and do not institute an inter
partes review.

1 ZTE (USA) Inc. and ZTE Corporation, Petitioners originally included in
filing the Petition, filed a Motion to Terminate ZTE (USA) Inc. and
ZTE Corporation from the proceeding. Paper 13. We granted that motion
on September 9, 2021, removing ZTE (USA) Inc. and ZTE Corporation as
Petitioners. Paper 15.
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II. BACKGROUND
A. Real Parties in Interest
Petitioner identifies the following entities as real parties in interest:
Cradlepoint, Inc., Dell Inc., Dell Marketing L.P., Dell Products L.P., Dell
Technologies Inc., Denali Intermediate Inc., Honeywell International, Inc.,
Sierra Wireless, Inc., Sierra Wireless America, Inc., TCL Communication
Technology Holdings Limited, TCT Mobile International Limited, TCT
Mobile, Inc., TCT Mobile (US) Inc., TCT Mobile (US) Holdings Inc.,
Telefonaktiebolaget LM Ericsson, Ericsson Inc., Thales DIS AIS
Deutschland GmbH, and Thales AIS DIS USA, LLC. Pet. 1, 3.
Patent Owner identifies Sisvel International S.A. as the real party in
interest. Paper 10, 1.
B. The ’070 Patent
The ’070 patent concerns “mobile equipment for sending an attach
request to a network.” Ex. 1001, code (54). A “basic layout” of certain
parts of a General Packet Radio Service (GPRS) wireless communication
network is shown in Figure 1, reproduced below. Id. at 2:42–44.
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As shown in Figure 1, “mobile station (MS) 1 communicates with a
Serving GPRS Support Node (SGSN) 2.” Id. at 2:44–46. Mobile station 1
and SGSN 2 are also in communication with wireless communication
network “Home Location Register (HLR) 3, at least one Gateway GPRS
Support Node (GGSN) 4 and Equipment Identification Register (EIR) 5.”
Id. at 2:46–50. In order for “mobile station 1 . . . to send or receive
information” over the wireless communication network, mobile station 1
must be “attached” to the network. Id. at 1:26–30, 3:18–20. Such
attachment occurs via an “attachment process” or “attach proceedings.” Id.
Figure 5 shows the signaling data flow for an exemplary attachment
process, combined with a PDP (Packet Data Protocol) context activation
procedure, and is reproduced below. Id. at 2:33-34.
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In step 1 of the attach process flow shown in Figure 5, the mobile
station initiates an attach and default PDP context activation by sending an
Attach Request. Id. at 4:39–41. That attach request includes data fields
indicating certain attachment parameters such as an “Attach Type”
parameter. See id. at 3:54–4:13, Fig. 3. A particular Attach Type parameter
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(of the attach request) indicates a default PDP context activation. Id. at
4:19–25, 4:41–43, Fig. 3. The default PDP context activation sets, for
instance, a default value for quality of service (QoS). Id. at 3:37–43.
Additionally, in later step 7 of the attach process, a radio access bearer
(RAB) “assignment procedure is performed for the default PDP context(s),”
i.e., a “radio access bearer establishment procedure” is performed. Id. at
5:3–4; see id. at 6:8–11. In that step, support node 2 sends a “RIB
Assignment Request” to “radio access network RAN transmitting/receiving
the radio waves to/from the mobile station 1.” Id. at 5:6–9. Then, the
procedure “set[s] up the radio bearer between the radio access network RAN
and MS (by sending a Radio Bearer Setup and a Radio Bearer Setup
Complete[)], and finally sending a RIB Assignment Response.” Id. at 5:9–
13.
At step 8, new support node 2 sends a “Create PDP Context Request”
to the gateway GPRS support node (GGSN) so that the default PDP contexts
are activated in the GGSN according to the information received, at step 6,
from the Home Location Register (HLR). Id. at 5:1519. Thus, the PDP
context activations are “therefore automatically performed based on the
HLR subscription.” Id. at 5:4345. This results in reduction of the
signaling in the radio interface, “without creating any limitations on the
network and its use.” Id. at 5:4446.
The ’070 patent also describes that the embodiment described above
shows a packet switched (PS) attach where the default PDP contexts are
automatically activated. Id. at 5:5859. The ’070 patent further explains,
however, that a default PDP context may also be activated using the “normal
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procedure” that involves performing an attach procedure “with a subsequent
PDP context activation upon request.” Id. at 5:6467.
C. Related Matters
The parties indicate that the ’070 patent has been asserted against
certain Petitioners in the following district court cases:
Case Number Venue Filing Date
1:20-cv-00649 D. Del. May 15, 2020
1:20-cv-00651 D. Del. May 15, 2020
1:20-cv-00652 D. Del. May 15, 2020
1:20-cv-00653 D. Del. May 15, 2020
1:20-cv-00654 D. Del. May 15, 2020
1:20-cv-00655 D. Del. May 15, 2020
1:20-cv-00656 D. Del. May 15, 2020
1:20-cv-00658 D. Del. May 15, 2020
1:20-cv-00659 D. Del. May 15, 2020
3:20-cv-01289 N.D. Tex. May 18, 2020
1:20-cv-22050 S.D. Fla. May 15, 2020
1:20-cv-022051 S.D. Fla. May 15, 2020
1:20-cv-22054 S.D. Fla. May 15, 2020
Pet. 3; Paper 10, 1.
D. Illustrative Claim
Petitioner challenges claims 1–3 and 5–8 of the ’070 patent. Pet. 10.
Claims 1, 5, and 7 are independent. Claim 1 is illustrative of the claimed
subject matter and is reproduced below.
1. An apparatus, comprising:
a user equipment, the user equipment being configured to:
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send an attach request to a network, wherein the
attach request is configured to trigger a create
communication connection default procedure with a
gateway device,
receive a radio bearer establishment request, and
generate a bearer establishment response.
Ex. 1001, 6:26–33.
E. Asserted Grounds
Petitioner presents the challenges summarized in the chart below.
Pet. 10.
Ground Claim(s) Challenged 35 U.S.C. § Reference/Basis
1 1–3, 5-8 103(a)2 Josse,3 Suumäki4
2
1–3, 5-8 103(a)
Soininen,5
Suumäki
3
1–3, 5-8 103(a)
Mizutani,6
Suumäki
Petitioner supports its unpatentability challenges with a Declaration of
Dr. James Olivier. Ex. 1011 (“Olivier Dec.”). Patent Owner presents a
Declaration of Dr. Michael Smith in support of its Preliminary Response.
Ex. 2001 (“Smith Decl.”).

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective
after the effective filing date of the challenged claims. Therefore, we apply
the pre-AIA version of 35 U.S.C. § 103.
3 Josse, US 6,104,929, issued Aug. 15, 2000 (Ex. 1003).
4 Suumäki, US 6,847,610 B1, issued Jan. 25, 2005 (Ex. 1004).
5 Soininen, US 6,980,801 B1, issued Dec. 27, 2005 (Ex 1006).
6 Mika Mizutani and Christian Bonnet, IP Subnet Mobility over General
Packet Radio Service (Ex. 1005) (“Mizutani”).
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III. ANALYSIS
This case presents a dispositive issue that depends on the scope of the
recited “attach request.” In particular, the issue involves whether the recited
“attach request” encompasses a conventional attach request. Neither party
proposes a claim construction of this term, or its surrounding claim
language, which specifically requires that the “attach request” is “configured
to trigger a create communication connection default procedure.” At the
outset, we note that a petition must set forth “[h]ow the challenged claim is
to be construed.” 37 C.F.R. § 42.104(b)(3). Although Petitioner is not
required to present a construction for all terms, it is important to note that the
scope of the “attach request is configured to” language is key to Petitioner’s
case and should have been presented. We highlight the importance of the
issue as follows.
For the ground based on Josse, Petitioner relies on the “Combined
IMSI/GPRS attach procedure” explained in Figures 3 and 3A of Josse. Pet.
3133. For the grounds based on Soininen and Mizutani, Petitioner relies on
the “GPRS attach” request. Id. at 52, 67. The ’070 patent, however,
describes both the GPRS attach and the combined IMSI/GPRS attach types
as attach types known in the art. Ex. 1001, 3:5462. Josse confirms this
understanding, as it too describes the three known attach types as: IMSI
attach, GPRS attach, and combined IMSI/GPRS attach. Ex. 1003, 6:6061.
But the ’070 patent describes the claimed invention in terms of providing a
new attach type: a packet-switched (or PS) attach combined with a PDP
context activation request. Ex. 1001, 3:6367. None of the references
implement an attach request with an attach type different from the
conventional types. And Petitioner does not attempt to show that any of the
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“attach requests” of the asserted prior art have a configuration such that the
mobile station can indicate its desire to attach to a new serving node and
concurrently activate a default PDP context. Rather, Petitioner has relied on
signaling that occurs after a normal or conventional “attach request” is
transmitted to imply that the prior art teaches an “attach request” configured
as the claim requires.
Patent Owner challenges Petitioner’s assertions. For each asserted
ground, Patent Owner argues that the prior art teaches conventional attach
procedures, which require a separate attach request and a separate PDP
context activation procedure. See Prelim. Resp. 34 (arguing that Josse
describes “a conventional attach with separate attachment and PDP context
activation procedures”), 46 (“Soininen, in contrast, not only separates GPRS
attach . . . from PDP context activation . . . but also teaches that an additional
step . . . should preferably interject between them . . . .”), 56 (“Mizutani
views attachment and PDP context activation as separate, discrete
procedures.”).
After our analysis of the claim language and review of Petitioner’s
arguments and evidence, together with Patent Owner’s arguments in
response, we determine that Petitioner has not demonstrated a reasonable
likelihood of prevailing on its assertion that the challenged claims are
unpatentable as asserted.
A. Claim Construction
In inter partes review proceedings based on petitions filed on or after
November 13, 2018, such as this one, we construe claims using the same
claim construction standard that would be used in a civil action under
35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b).
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Petitioner proposes that “[a]ll terms should be given their plain and
ordinary meaning to a POSITA.” Pet. 20. Patent Owner states that it “takes
no position regarding Petitioners’ proposal” and further “proposes no terms
for construction.” Prelim. Resp. 17.
However, as explained above, Petitioner’s unpatentability challenges
and Patent Owner’s arguments in response highlight a question that hinges
on claim language analysis. The issue is whether the recited “attach request
is configured to trigger a create communication connection default
procedure” may encompass a normal attach request. We hold that, based on
the claim language, the ’070 patent specification, and binding legal
authority, it may not.
1. Claim Language
The claim7 requires that a user equipment is configured to “send an
attach request.” That “attach request,” according to the claim, “is configured
to trigger a create communication connection default procedure.” The
phrase “configured to trigger” means more than just to trigger the recited
procedure. The “attach request” must be structurally designed to perform
the recited triggering. See, e.g., Acclarent, Inc. v. Albritton, IPR2017-00498,
2018 WL 3374755 *7 (July 9, 2018) (construing “configured to” and
“adapted to” as “requiring structure designed to or configured to accomplish
the specified objective, not simply that they can be made to serve that
purpose”). Thus, it is not sufficient for Petitioner to point to a normal attach
request, such as a GPRS attach request, without showing how that request is
configured to trigger the create communication connection default

7 We refer here to the language recited in claim 1, but the analysis applies
equally to independent claims 5 and 7, which recite substantively similar or
identical language.
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procedure. In other words, it is not enough to show that the prior art attach
request is transmitted and that at some point in the future a default PDP
context activation procedure (read here the “create communication
connection default procedure”) may occur. The claim does not simply link
the “attach request” to the function of triggering that further procedure.
Rather, the claim language unequivocally requires that the “attach request”
itself be “configured” to trigger that procedure.
2. The ’070 Patent Specification
The ’070 patent specification supports our interpretation of the claim
language. Figure 3 of the ’070 patent, reproduced below, shows how the
“attach request is configured.”

Figure 3 shows part of an Attach request 9 for combined attach and
default PDP context activation. Ex. 1001, 2:2930, 3:5154. Attach
request 9, sent from the mobile station, comprises “Attach Type” field 11 to
indicate which type of attach is to be performed. Id. at 3:5759. The
“attach request” specifies a combined packet switched (PS) attach with
default PDP context activation. Id. at 3:634:5. The serving node that
receives an Attach request checks the request “to detect whether a normal
attach such as a ‘packet switched’ attach is requested or a combined attach
and default [PDP] context activation request is transmitted.” Id. at 4:1519
(emphasis added). “The check is performed by examining the data field 11
of the Attach request 9 specifying the desired attach type.” Id. at 4:1921.
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When the detected attach type is the combined attach and default PDP
context activation request, the serving node performs the “packet switched”
attach. Id. at 4:15. The serving node is “furthermore adapted so as to
automatically initiate, when receiving this request and having the attachment
effected, a default [PDP] context activation without necessity for the mobile
station 1 to send any additional command.” Id. at 4:15. The ’070 patent,
therefore, describes that the request itself specifies, to some degree, that the
serving node shall automatically initiate the procedure of default PDP
context activation. Doing so accomplishes an objective of the ’070 patent:
to decrease signaling in the radio interface (air-interface). Id. at 3:2629. It
stands to reason that the claimed attach request “configured to trigger a
create communication connection default procedure” must be designed such
that the serving node can recognize the request itself as a trigger for a
subsequent default PDP context activation procedure or equivalent
procedure.
3. Legal Authority
Construing the recited “attach request” as described above ensures
that the claim is construed in context of the entire patent. The proper claim
construction is based “not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent,
including the specification.” Phillips v. AWH Corp., 415 F.3d at 1313–16 ;
see Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d
999, 1003 (Fed. Cir. 2018) (“Ultimately, ‘[t]he only meaning that matters in
claim construction is the meaning in the context of the patent.’” (quoting
Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1365 (Fed.
Cir. 2016))).
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Moreover, “we look to the words of the claims themselves, both
asserted and nonasserted, to define the scope of the patented invention.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Specifically, we note that claim 3, which depends from claim 1, recites that
the “attach request comprises a data field specifying a desired type of
attachment.” This claim confirms our interpretation of the configuration
language of claim 1 because the dependent claim further addresses how the
recited “attach request” itself is configured to trigger the recited procedure
because the request includes a field that identifies the type of attachment
desired, e.g., a combined attach versus a conventional attach procedure.
Our interpretation also ensures that the preferred embodiment is not
excluded from the scope of the claim. The specification provides a primary
example of a combined attach and default PDP context activation request as
stated above and shown in Figure 3. The second embodiment in the ’070
patent describes how to perform a normal packet-switched attach, without
the automatic initiation of a default PDP context activation procedures.
Ex. 1001, 5:5759; see also id. at 5:6466 (describing that according to
embodiments, default context is provided also in cases where “normal
procedure (attach being performed with a subsequent PDP context activation
upon request) does not apply.”). In that second embodiment, the user
equipment (or mobile station) sends first a normal request to attach (id. at
6:45)8 and subsequently sends a request for default PDP context activation
(id. at 6:67). In other words, the attach request in the second embodiment

8 The ‘070 patent specification describes the normal attach request as a
packet switched attach, according to the 3GPP standards delineated in the
Technical Specification 23.060. Ex. 1001, 6:45; see also id. at 4:1519
(identifying the packet switched attach request as a “normal attach”).
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is not configured to trigger the subsequent default PDP context activation. It
is clear that the first and only embodiment of how to perform the combined
attach and PDP context activation request is the preferred embodiment. See
id. at 3:2526 (“According to the present invention, the attach and POP
context activation processes are combined.”). The second embodiment
merely shows how the normal procedure of the user equipment performing
separate requests results in the activation of the default PDP context, which,
when using the attach request of the invention, can be performed without the
user equipment expressly requesting it. Id. at 5:5962.
Thus, we determine that the claim encompasses an “attach request”
that conveys a deviation from the normal attach request. Otherwise, the
claimed “is configured” language would be rendered meaningless, and
interpreting the claim as encompassing a normal attach request would read
out the preferred embodiment. See On-Line Techs., Inc. v. Bodenseewerk
Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).
B. Ground Based on Josse
The first ground relies on a combination of Josse and Suumäki.
Pet. 2745. For all independent claims, Petitioner relies on Josse as
disclosing the “attach request.” Id. at 3135, 4042, 4445.
1. Summary of Josse
Josse is a U.S. Patent that describes location updating for a mobile
station, or cellular telephone, roaming from location to location. Ex. 1003,
1:21–23, 2:25–32. “One type of location updating is known as an ‘attach.’”
Id. at 2:33. Reproduced below is Figure 3 of Josse showing “a diagrammatic
view of general signal flow” for an exemplary attach procedure. Id. at
4:57.
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Figure 3 shows the process of connecting mobile station (MS) 40 to
Serving GPRS (General Packet Radio Services) Support Node (SGSN) 242
(hereinafter the “new SGSN”). Id. at 6:27–29, 7:15–21.
Josse explains that, in the prior art, the standards for a Global System
for Mobile communications (GSM) network implement an attach procedure
where the new SGSN, upon receiving the attach request, performs an update
of the mobile stations’ subscription information. Id. at 2:4458. Further, in
order for data packets to be routed to the mobile station, given attachment to
a new SGSN, the GGSN must be informed of the new address by
completing a PDP context activation. Id. at 2:5967. Josse seeks to deviate
from the prior art by providing the GGSN with the new SGSN address
before the mobile device performs any PDP context activation. Id. at
6:1527. To do so, Josse adds a new field in the home location register
(HLR), which stores the GPRS subscription data for the mobile device. Id.
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at 5:2223, 4654. This new field indicates whether the subscriber is
allowed to update the GGSN with its new SGSN address after a GPRS
attach procedure. Id. Thus, Josse describes the entire process, beginning
with the attach request as follows.
First, in step 3-1 of FIG. 3, the mobile station sends an Attach Request
message to the new SGSN. Id. at 7:22–23. Josse describes the Attach
Request as including informational parameters, including the “Attach Type,”
which indicates “which type of attach is to be performed, i.e., GPRS Attach
only, IMSI Attach only, or a combined GPRS and IMSI Attach.” Id. at
8:615. The attach scenario shown in Figure 3 is generally a GPRS Attach
scenario, and more particularly a “combined IMSI/GPRS Attach procedure.”
Id. at 7:1520.
After conventional authentication functions involved in an attach
request, in step 3-3, the new SGSN sends an Update Location message to the
home location register (HLR). Id. at 7:26–27; see also 8:4657. In response
to the Update Location message, in step 3-4, the HLR initiates “Cancel
Location procedures and Insert Subscriber Data (ISD) procedures.” Id. at
7:27–28; see also 8:669:10. In that step, “the ISD operation is modified for
GPRS in order to carry GPRS related information such as PDP Types, PDP
Addresses, QoS Subscribed, etc.” for MS 40. Id. at 7:28–32, 9:14–20.
Josse’s HLR, therefore, sends, to the new SGSN, the information (or ISD)
that includes the IMSI and GPRS subscription data for the mobile station.
Id. at 9:1220. That subscription data includes Josse’s new field that
authorizes the update of the new SGSN address in the GGSN. Id. at
9:6410:11.
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In light of the received ISD (and hence the new field), the new SGSN
checks to see if there are any PDP states that meet specific criteria for
updating the GGSN with the address of the new SGSN. Id. at 9:3942. If a
PDP state for the mobile device meets the criteria, in step 3-6, the new
SGSN sends an “Update SGSN Address Request message” to the GGSN
(i.e., the gateway). Id. at 7:36–38. The “Update SGSN Address Request
message provides the new SGSN address, i.e., the address of SGSN 242 for
all PDP contexts which have a Static PDP address, which are not activated,
and for which an operator has indicated that address notification is
permitted.” Id. at 7:38–43 (emphasis added). “The information elements in
the Update SGSN Address Request message of Step 3-6 include the
following: information element, IMSI, SGSN Address, and Update Reason.”
Id. at 9:50–52. The “Update Reason information element of the Update
SGSN Address Request message can have either of two values” indicating
“that the update was initiated by a GPRS Attach Procedure” or that “that the
update was initiated by a GPRS Inter SGSN Routing Area Update
Procedure.” Id. at 9:53–60. This information, according to Josse, may be
used by the gateway for statistics purposes or used by the gateway
depending on how the gateway obtained the new SGSN address. Id. at
9:6163.
Then, in step 3-7, the gateway send the new SGSN an “Update SGSN
Address Response message “advis[ing] whether the updating requested by
the Update SGSN Address Request message has been successful.” Id. at
7:43–47. Further, in step 3-8, “Location Update procedures are performed.”
Id. at 7:50–52. After the Location Update, in step 3-9, the new SGSN sends
an Attach Accept message to the mobile station. Id. at 7:52–53.
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2. Josse’s Attach Request
From the summary of Josse, we understand that Josse’s attach request
is a normal GPRS attach. As Josse admits, the GSM network standard
discloses procedures for attaching the mobile device to the new SGSN. Ex.
1003, 2:4467. It was known, however, as Josse describes, that updating the
gateway with the new SGSN address would traditionally occur with PDP
context activation. Id. at 2:5967, 7:714. And it is clear that Josse seeks to
bypass PDP context activation by performing a new update request:
“Update SGSN Address Request.” Id. at 6:2427, 7:5457. Thus, Josse
uses a normal attach request, and adds two features to the update procedure.
First, Josse includes a new field in the HLR that indicates whether the
mobile device is allowed to benefit from this bypass update. Second, Josse
adds new signaling between the new SGSN and the gateway in which the
gateway updates its record for the mobile station with the new SGSN
address.
Both of those new features impact our understanding of Josse. There
is no indication in Josse or in the Petition that Josse’s attach request, i.e., a
GPRS attach, is in any way configured to perform the new signaling or the
updating that Petitioner identifies as possibly being “a create communication
connection default procedure.” Although Petitioner states that “Josse
triggers a PDP context activation procedure,” (Pet. 34), there is no disclosure
in Josse that (1) the attach request is configured to trigger a PDP context
activation procedure; or (2) that a PDP context activation procedure actually
occurs during the attach request procedure. Josse belies Petitioner’s
contentions for two reasons. The first reason is that any update of the ISD,
which Petitioner seems to focus on as somehow being related to PDP
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context activation, is exchanged based on the conventional method of
location update during a normal attach request. Ex. 1003, 2:4458 (referring
to the attach procedure described in GSM standard, 03.60 v. 2.0, for the
GPRS service description, Phase 2, dated, May 1997). Josse’s attach request
does not convey that anything other than the conventional attach procedure
be performed. Josse adds additional fields to the HLR so that during a
conventional attach procedure, additional information concerning the mobile
device’s subscription (ISD) can be exchanged. Thus, the fact that Josse
exchanges this ISD information is not evidence that the attach request is
anything other than a normal attach request.
Second, the field that Josse adds to the HLR is what triggers any
further packet-data connectivity that the mobile station may enjoy, if the
specified conditions are satisfied. As stated above, Josse’s new field
specifies whether the mobile station is allowed to update the gateway with
the new SGSN address information for packet-data routing before any PDP
context activation is performed. Ex. 1003, 6:2427. Josse explains that the
additional signaling between the new SGSN and the gateway occurs as a
result of receiving authorization in the new field in the ISD and after
verifying that the PDP contexts are not active. Id. at 9:3949. Thus, any
update the mobile station may receive in its communication channel for data
packet transmission occurs because the new HLR field triggers it, i.e., it is
not a function attributable to the attach request itself.
Furthermore, the Petition attributes to Josse’s attach request much of
what Petitioner contends is a PDP context activation without explaining how
Josse’s attach request is “configured to trigger” this procedure. At pages 34
and 35 of the Petition, the assertion that Josse’s attach request “triggers a
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PDP context activation” is not supported by Josse. Nor has Petitioner
explained how a normal GPRS attach or a combined IMSI/GPRS attach
request of the prior art may be configured as the claim requires. As we
stated above, in Section III.A, the claim term “attach request” is not a mere
normal attach request. Nevertheless, even if a normal attach request were
sufficient, Petitioner failed to explain how such a request “is configured” in
any way that it triggers the PDP context activation Petitioner claims Josse
teaches. On this last point, the likelihood of Josse factually supporting this
is doubtful given Josse’s express desire to bypass a PDP context activation
altogether, in light of the recommended new signaling. Ex. 1003, 6:2427
(“The present invention provides GGSN 20 with the current SGSN address,
and thereby allows mobile station (MS) 40 to receive data packets even
before mobile station (MS) 40 performs any PDP context activation.”).
We further note that Patent Owner challenges Petitioner’s theory of
obviousness as relying on a “conventional attach process,” with separate
attach and PDP context activation procedures. Prelim. Resp. 3435.
Recognizing the intrinsic value of the ’070 patent invention—combining the
attach procedure with a PDP context activation at the behest of a single
request—Patent Owner posits that Josse is either the opposite of simplicity,
i.e., a complex and expensive proposition, or utterly conventional. Id. at
3539. These argument serve to highlight for us contentions that Petitioner
does not explain, such as the contention that Josse’s ISD exchange, because
it includes PDP context information, therefore constitutes a PDP context
activation. Another confusing argument is that Josse’s “address information
is updated in the gateway . . . without having to perform separate context
activation from the mobile station.” Pet. 3435. But then Petitioner points
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out Josse’s teaching that when a new SGSN receives subscriber data, it may
require that the mobile station make a new GPRS attach and a new PDP
context activation for the new SGSN to actually us the received subscriber
data. Id. at 42 (citing Ex. 1003, 7:914).
The logic gap in Petitioner’s contentions show us that the ISD
information exchange has not been explained in any detail so as to constitute
a PDP context activation as asserted in the Petition.9 And, to the extent that
the exchange of that information is considered to be a PDP context
activation by a person of ordinary skill in the art, Josse seems to discredit
such a position by touting its procedures as something other than a PDP
context activation. These are irreconcilable positions on the present record
that Petitioner should have explained because they refute Petitioner’s
contentions that Josse’s attach request “triggers a PDP context activation,”
as stated in the Petition. Finally, to the extent Petitioner contends that Josse
teaches the mobile station activating a PDP context request, that portion of
Josse refers to the standard procedures. For instance, Petitioner
acknowledges that the mobile device may be asked to request a GPRS
Attach and a PDP context activation, when the SGSN receives new
subscriber information. Pet. 4142. This last part relies on Josse’s
teachings about the standard procedures for the SGSN to command the
mobile device to request, separately, attach and PDP context activation
(Ex. 1003, 6:497:14). This portion of Josse does not teach what Petitioner

9 We note here that the ’070 patent specification also seems to contradict
such a position in describing that although the default PDP context
information is received through the ISD, the serving node nevertheless sends
a Create PDP Context Request to the gateway specifically to activate the
default PDP context. Ex. 1001, 4:6264, 5:14:19.
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asserts, that Josse’s GPRS attach procedure includes a PDP context
activation procedure. To the contrary, Josse describes a GPRS attach
request, and separately the SGSN commands the mobile station to request a
PDP context activation. Id.
Petitioner’s reliance on Suumäki (id. at 2728, 35) does not cure these
deficiencies, and in fact, complicates further the gaps in Petitioner’s logic,
because it purports to combine teachings of a default PDP context activation
with Josse’s process which does not perform a PDP context activation in
connection with its attach request.
Consequently, we determine that Petitioner has failed to show a
reasonable likelihood of prevailing on its assertion that the challenged
claims would have been obvious over Josse, in view of Suumäki.

C. Ground Based on Soininen
Petitioner contends that each of the challenged claims is unpatentable
under 35 U.S.C. § 103(a) as obvious over Soininen and Suumäki. Pet. 46–
61. For all challenged claims, Petitioner relies on Soininen as teaching the
“attach request.” Id. at 5253, 5658, 60.
1. Overview of Soininen
Soininen describes a General Packet Radio Service (GPRS) attach
procedure in which a mobile station (MS) attaches to a GPRS network in
order for the MS to access GPRS services. Ex. 1006, 6:27–34. In particular,
“[i]n order to send and receive GPRS data, the MS . . . request[s] a PDP
activation procedure” based on “PDP contexts” that “define[ ] different data
transmission parameters.” Id. at 6:41–52. Figure 2, reproduced below, is a
signaling diagram showing a GPRS attach procedure. Id. at 4:64–65, 8:15–
19.
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As shown in step 1 of Figure 2, “the MS sends a GPRS attach request
to” an SGSN. Id. at 8:4–5. In response, in step 2, the SGSN “creates a
mobility management context (MM context), and a logical link LLC
(Logical Link Control) is established between the MS and the SGSN.” Id. at
6:33–37. After the SGSN performs a Mobile IP capability check and agent
selection procedure in step 3, the SGSN “sends to the MS a Request PDP
Context Activation message which requests the MS to initiate activation of a
PDP context.” Id. at 9:1–3.
Later in step 5, the MS sends an Activate PDP Context Request
message to the SGSN, which causes the SGSN to “send[ ] a Create PDP
Context request to the GGSN/FA2” in step 6. Id. at 9:27–34. Next,
GGSN/FA2 “creates the PDP context for the MS/MN and returns a Create
PDP Context response to the [SGSN]” in step 7. Id. at 9:34–36. The SGSN
“establishes the PDP Context for the MS/MN, and responds to the MS/MN
with the Activate PDP Context Accept message” in step 8. Id. at 9:36–39.
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Following those steps, “a virtual connection has been established between
the MS/MN and the GGSN/FA2.” Id. at 9:39–40.
2. Soininen’s Attach Request
Petitioner contends that Soninen’s attach request, when received,
“triggers PDP context activation, resulting in a virtual connection between
the MS and the GGSN (‘a create communication connection default
procedure’).” Pet. 52 (citing Ex. 1005, 8:809:3, 9:2540, Fig. 2; Olivier
Decl. ¶ 130). Patent Owner challenges this contention by arguing that
Soininen’s mobile station performs a conventional GPRS attach procedure in
accordance with the GPRS/UMTS specifications. Prelim. Resp. 4647
(citing Ex. 1005, Fig. 2, 8:4:19). And in connection with the Mobility IP
capability check, Soininen’s SGSN sends a message to the mobile station
which triggers the mobile station to initiate activation of a PDP context. Id.
at 48 (citing Ex. 1005, 9:16).
We agree with Patent Owner that Soininen’s request is a normal
attach request. Again, under Section III.A, we have determined that the
attach request cannot be a mere normal attach request, without more. As
such, Soninen’s attach request does not meet the claim limitation.
Nevertheless, even if a normal attach request were to suffice, Petitioner has
failed to explain how the procedures that allegedly constitute a PDP context
activation are triggered by a so-configured attach request. In other words,
other than the fact that Sonininen begins its mobility agent selection with an
attach request, Petitioner does not point to anything about that request that
shows the subsequent virtual connection results from a procedure that the
attach request itself is designed to trigger.
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Moreover, Soininen, as Patent Owner correctly argues, does not lend
itself to the interpretation that its GPRS attach procedure is not conventional.
We understand Soininen to implement additional signaling after the mobile
station “makes its presence known to the network by performing a GPRS
attach.” Ex. 1006, 6:2729. But Soininen also explains that in addition to
the GPRS attach, the mobile station must activate a context with a specific
message, “Activate PDP Context Request.” Id. at 6:5256. And
notwithstanding Soininen’s additional procedure of checking for and
selecting a foreign agent, the SGSN will still require that the mobile station
request activation of a PDP context. Id. at 9:16.
Although Petitioner appears to posit that Soininen’s selection of a
foreign agent somehow constitutes “a communication connection default
procedure,” Petitioner does not explain how the GPRS attach request is
configured to trigger such a procedure. Pet. 52. Nor does Petitioner explain
how the attach request also triggers the disclosed PDP context activation
procedure. Id. Finally, it is not clear, because Petitioner vacillates on its
contention, why or how the triggered procedure with the claim 1 “gateway”
may be an SGSN and a GGSN. See id. (stating first that Soininen’s attach
request triggers the required procedure with an SGSN as a “gateway”
device, and following that statement with a different contention that the
GGSN is the gateway).
Petitioner does not rely on Suumäki for teaching the “attach request,”
and, consequently, none of the deficiencies noted above are cured by
Suumäki. Accordingly, we determine that Petitioner has failed to show a
reasonable likelihood of prevailing on its assertion that the challenged
claims would have been obvious over Soininen, in view of Suumäki.
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D. Grounds Based on Mizutani
Petitioner contends that each of the challenged claims is unpatentable
under 35 U.S.C. § 103(a) as obvious over Mizutani and Suumäki. Pet. 61–
78.
In addition to arguing Mizutani was not publicly available before the
earliest priority date of the ’070 patent, Patent Owner argues that Mizutani,
like Suumäki discussed above, discloses two separate procedures. Prelim.
Resp. 56–59. We focus our analysis below on the merits of the presented
challenge, because it is dispositive.
1. Overview of Mizutani
Mizutani is an article titled “IP Subnet Mobility over General Packet
Radio Service” and describes an architecture and mobility management
procedure for a GPRS mobile data network system. Ex. 1005, 1–2.
Mizutani explains that, before a mobile terminal (MT) starts transmitting
data packets over a GPRS mobile data network system, a GPRS attaching
procedure and a Packet Data Protocol (PDP) activation procedure must
occur. Id. at 2.
Mizutani’s GPRS attaching procedure is shown in the diagram of
figure 2.2.1, reproduced below.
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As shown in step (a), the MT sends an “Attach Request” to the SGSN. Id. at
2–3. The Attach Request includes information which provides the identity
of the MT. Id. at 2. Using that information, “the SGSN gets the GPRS
subscription data that includes the PDP contexts and then creates the
mobility management (MM) contexts.” Id. at 2–3.
Further, Mizutani’s PDP Activation Procedure is shown in the
diagram of figure 2.2.2, reproduced below.

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In the PDP activation procedure shown above, the MT provides the
attaching GGSN and its IP address. Id. at 3. Further, a “null IP address
means that the MT wishes [for a] dynamic IP address,” which will be
“assigned through the attaching GGSN in the PDP activation procedure.”
Id. “As the result of the PDP activation procedure” data routing information
“is added to the PDP contexts in the SGSN.” Id.
2. Mizutani’s Attach Request
Petitioner contends that Mizutani’s “GPRS attaching procedure”
(shown in Figure 2.2.1, above) teaches “that the receipt of the attach request
is used to trigger additional steps in the attachment procedure.” Pet. 67
(emphasis added). At the outset, Petitioner’s analysis takes liberty with the
claim language, focusing on how the attach request is “used” rather than
what it is “configured” to do, as the claim requires. Notwithstanding this
deviation from the claim, Petitioner argues that Mizutani’s attach request
“triggers a PDP context activation procedure for the cellular network to
create a connection through a series of steps that update and cancel location
with the HLR and send Insert Subscription Data (ISD) from the HLR to the
SGSN.” Id. at 68 (citing Ex. 1006, Fig. 2.2.1). Petitioner contends that the
result of receiving the ISD is that the SGSN “receives PDP contexts.” In
other words, as we understand the Petition, the mere receiving of the
subscription data (which includes PDP context information) equates to a
PDP context activation procedure that is triggered by the attach request. As
already explained, Patent Owner takes issue with Petitioner’s challenge
because the attach request and the PDP context activation in Mizutani are
conventional procedures. Prelim. Resp. 56–59.
We agree with Patent Owner that the Mizutani attach request is a
normal attach request. The entirety of Mizutani’s Section 2 is an outline or
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summary of the GPRS service, including the conventional procedures of
GPRS attach and PDP context activation. Ex. 1005, 23. As stated in
Section III.A, we determined that the claimed “attach request” cannot be,
without more, a normal attach request. Furthermore, notwithstanding our
claim interpretation, Petitioner fails to explain how the GPRS attach
procedure of Mizutani “is configured to trigger” the PDP context activation
procedure as alleged.
Additionally, as described with respect to the Josse ground, pointing
to receiving the ISD at the SGSN is unpersuasive because receiving PDP
context data at this step is part of the conventional attach procedure.10
Petitioner has not shown credibly that this step of the attach procedure,
alone, is considered by a person of ordinary skill in the art as a PDP context
activation procedure. Moreover, Mizutani states that after receiving the PDP
context, the mobile terminal will issue an “Activate PDP Context Request.”
Ex. 1005, 3, Figure 2.2.2. Thus, Patent Owner is correct to point out that the
attach request results only in the conventional attach procedure, which is
separate and distinct from the PDP context activation procedure. Finally, we
note that Mizutani implies that an SGSN receiving the PDP context during
the attach procedure, and activating a PDP context request between the
SGSN and the GGSN are not the same thing, making it necessary for
Petitioner to explain its contention that the mere receipt of PDP context
information during a conventional attach procedure is equivalent to PDP
context activation. See Ex. 1005, 2 (stating that the SGSN gets the GPRS
subscription data that “includes the PDP contexts” to create a different, MM
context, and explaining later that the mobile device activates a PDP context

10 See supra n.9.
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request between SGSN and GGSN). We find the Petition lacking in this
respect as well.
As with the other grounds, Petitioner does not rely on Suumäki for
teaching the “attach request,” and, consequently, none of the deficiencies
noted are enlightened or somehow cured by Suumäki. Accordingly, we
determine that Petitioner has failed to show a reasonable likelihood of
prevailing on its assertion that the challenged claims would have been
obvious over Mizutani, in view of Suumäki.

IV. CONCLUSION
In our analysis of the grounds above, we have found that Petitioner
has failed to show sufficiently that Josse, Soininen, Mizutani, and Suumäki
teach or suggest the recited “attach request,” under our construction or that
otherwise the Petition fails to explains sufficiently that the prior art teaches
the “attach request configured to” language. This claim term is recited in all
the challenged independent claims. We have also noted other deficiencies
for the independent challenged claims in the asserted grounds as additional
reasons for our determination. Given our determination concerning the
independent claims, we do not address separately the merits of the
challenged dependent claims. Consequently, we conclude that the
information presented in the Petition does not demonstrate a reasonable
likelihood that Petitioner would prevail in showing that at least one claim of
the challenged claims of the ’070 patent is unpatentable.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied
and no inter partes review is instituted.
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Petitioner Email Service Addresses:
litigation-dkt@addyhart.com
Cradlepoint-IPRService@hklaw.com
Dell-IPRService@gibsondunn.com
SISVELII.IPR.Service@klgates.com
PerkinsServiceSisvelIPR@perkinscoie.com
TCLSisvelIPRService@pvuslaw.com

For PETITIONER Sub-Entities:

Benjamin E. Weed
Erik J. Halverson
Brian Paul Bozzo
K & L GATES LLP
Benjamin.weed.PTAB@klgates.com
erik.halverson@klgates.com
brian.bozzo@klgates.com

Amanda Tessar
David T. Keese
PERKINS COIE LLP
atessar@perkinscoie.com
dkeese@perkinscoie.com

John R. Hutchins
C. Andy Mu
Craig W. Kronenthal
Banner & Witcoff, Ltd.
jhutchins@bannerwitcoff.com
amu@bannerwitcoff.com
ekronenthal@bannerwitcoff.com

Brian M. Buroker
Paul Torchia
Nathan R. Curtis
Gibson, Dunn & Crutcher
bburoker@gibsondunn.com
IPR2021-00815
Patent 7,979,070 B2
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ptorchia@gibsondunn.com
ncurtis@gibsondunn.com

Meredith Martin Addy
Robert P. Hart
Gregory B. Gulliver
ADDYHART P.C.
meredith@addyhart.com
robvert@addyhart.com
gbgulliver@addyhart.com

Jeremy D. Peterson
Bradford A. Cangro
PV Law LLP
jeremy.pewterson@pvuslaw.com
bradford.cangro@pvuslaw.com

Jacob K. Baron
Allison M. Lucier
HOLLAND & KNIGHT
jacob.baron&hklaw.com
allison.lucier@hklaw.com

For PATENT OWNER:

Timothy Devlin
Devlin Law Firm LLC
TD-PTAB@devlinlawfirm.com