Filed: Jun. 04, 2020
Latest Update: Jun. 04, 2020
Summary: Case: 19-1497 Document: 61 Page: 1 Filed: 06/04/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit _ HUAWEI TECHNOLOGIES CO., LTD., Appellant v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor _ 2019-1497 _ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017- 01483. _ Decided: June 4, 2020 _ CONSTANTI
Summary: Case: 19-1497 Document: 61 Page: 1 Filed: 06/04/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit _ HUAWEI TECHNOLOGIES CO., LTD., Appellant v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor _ 2019-1497 _ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017- 01483. _ Decided: June 4, 2020 _ CONSTANTIN..
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Case: 19-1497 Document: 61 Page: 1 Filed: 06/04/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
HUAWEI TECHNOLOGIES CO., LTD.,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-1497
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01483.
______________________
Decided: June 4, 2020
______________________
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, for appellant. Also represented by NATHANIEL C.
LOVE, JOHN WEATHERBY MCBRIDE; MICHAEL J. BETTINGER,
CURT HOLBREICH, San Francisco, CA; RYAN C. MORRIS,
Washington, DC.
MAUREEN DONOVAN QUELER, Office of the Solicitor,
Case: 19-1497 Document: 61 Page: 2 Filed: 06/04/2020
2 HUAWEI TECHNOLOGIES CO., LTD. v. IANCU
United States Patent and Trademark Office, Alexandria,
VA, for intervenor. Also represented by THOMAS W.
KRAUSE, JOSEPH MATAL.
______________________
Before PROST, Chief Judge, REYNA and TARANTO, Circuit
Judges.
TARANTO, Circuit Judge.
Huawei Technologies Co., Ltd. owns U.S. Patent
No. 8,483,166, which describes and claims methods and ap-
paratuses by which a mobile communication device can
gain access to a 2G/3G network using a temporary identi-
fier it already has from a 4G network. Samsung Electron-
ics Co., Ltd., which is no longer a party to this case,
successfully sought from the Patent and Trademark Office
(PTO) an inter partes review of claims 1–5 and 12–16 of the
’166 patent under 35 U.S.C. §§ 311–319. The Patent Trial
and Appeal Board ultimately determined that claims 1–5
are unpatentable for obviousness and that claims 12–16
are not unpatentable. Samsung Electronics Co. v. Huawei
Technologies Co., No. IPR2017-01483, 2018 WL 6380662
(P.T.A.B. Dec. 4, 2018). On Huawei’s appeal, we affirm.
I
A
The ’166 patent, titled “Method and Apparatus for Ac-
cessing Legacy Networks Through Temporary ID of
Evolved Network,” describes how a mobile communication
device—which the patent calls “a User Equipment (UE)”—
that is set up to operate on an “evolved” network, such as a
fourth-generation (4G) network, can gain access to a “leg-
acy” network, such as a 2G or 3G network.
As background, the ’166 patent describes the structure
and functionality of a 3G network. A 3G network includes
UEs; an access network, which communicates directly with
the UEs; a core network, which provides
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HUAWEI TECHNOLOGIES CO., LTD. v. IANCU 3
telecommunication services to the UEs; and an Iu inter-
face, which connects the access and core networks. ’166 pa-
tent, col. 1, lines 26–50. The access network includes
several NodeBs—through which the UEs communicate
with the network—along with NodeB-controlling devices
referred to as Radio Network Controllers (RNCs) or, more
generally, as Radio Access Network (RAN) nodes. Id., col.
1, lines 44–46, 61–66. Each NodeB serves a geographic
area, and the area served by a set of NodeBs and their cor-
responding controlling devices is known as a “pool area.”
Id., col. 1, line 51, through col. 2, line 4. In a pool, all RAN
nodes are connected to multiple Serving GPRS (General
Packet Radio Service) Support Nodes (SGSNs), which are
the elements of the core network responsible for maintain-
ing a connection between the UEs and the core network.
See
id., col. 1, lines 37–41; J.A. 2555.
As the ’166 patent notes, when a UE first acquires ac-
cess to a 3G pool, it is assigned to a particular SGSN so
that when the UE moves within the pool area, it need not
change which SGSN it communicates with. ’166 patent,
col. 2, lines 11–17. The assigned SGSN allocates to the UE
a Packet Temporary Mobile Station Identity (P-TMSI), id.,
col. 2, lines 11–21, which the UE takes as its user ID,
id.,
col. 4, lines 64–65. The P-TMSI is 32-bits long, and some
of those bits are used for the Network Resource Identifier
(NRI), which identifies the SGSN to which the UE is as-
signed.
Id., col. 5, lines 8–34. When the UE moves outside
the initial pool area to a new pool area, the UE sends to a
RAN node in the new pool a Routing Area Update request,
which includes the P-TMSI and Routing Area Identity
(RAI) corresponding to the old pool.
Id., col. 5, lines 44–52.
When the RAN node cannot find the SGSN corresponding
to the P-TMSI—because the corresponding NRI belongs to
an SGSN in a different pool—it assigns the UE to a new
SGSN in the new pool.
Id., col. 5, lines 52–60. The new
SGSN uses the P-TMSI and RAI to locate the old SGSN
and then sends the old SGSN a request for “context”
Case: 19-1497 Document: 61 Page: 4 Filed: 06/04/2020
4 HUAWEI TECHNOLOGIES CO., LTD. v. IANCU
information regarding the UE.
Id., col. 5, line 61, through
col. 6, line 2. After receiving the context information from
the old SGSN, the new SGSN allocates a new P-TMSI and
RAI to the UE.
Id., col. 6, lines 2–4. Retrieving context
information in this way, rather than having the UE rereg-
ister with the new SGSN, enables use of the 3G network
without interruption when the UE moves from pool to pool.
See
id., col. 3, lines 32–34; J.A. 2554–55.
The ’166 patent also describes, as background, analo-
gous structures and functions from the then-developing 4G
communication networks, such as a System Architecture
Evolution (SAE) network. ’166 patent, col. 2, lines 46–51.
In the SAE network, Mobility Management Entities
(MMEs)—like the SGSNs in the 3G network—are in com-
munication with all RAN nodes within their pool and are
responsible for creating temporary IDs for the UEs and
storing UE context information. See id., col. 2, lines 46–60;
J.A. 2557–58. These temporary IDs are known as SAE-
TMSIs or S-TMSIs. See ’166 patent, col. 3, lines 21–26.
The ’166 patent notes that legacy 2G/3G networks can-
not parse the S-TMSI. In particular, when a UE operating
on an SAE network travels into territory where it seeks to
gain access to a 2G/3G network, the newly assigned SGSN
from the 2G/3G network cannot identify the MME from
which to request the UE’s context information. ’166 patent,
col. 6, lines 5–9. To solve this problem, the ’166 patent sets
out a method by which a UE adds MME information from
the evolved network to a P-TMSI sent in an access message
to a RAN node in the legacy network. Id., col. 3, lines 38–
55.
Claims 1 and 2 of the ’166 patent are representative for
purposes of deciding the issues on appeal:
1. A method for accessing a 2G/3G network com-
prising:
obtaining, by a User Equipment (UE), a temporary
identity (ID) allocated by a Mobility
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HUAWEI TECHNOLOGIES CO., LTD. v. IANCU 5
Management Entity (MME) in an evolved net-
work, wherein the temporary ID comprises
MME information for identifying the MME;
adding, by the UE, the MME information from the
temporary ID to a first P-Temporary Mobile
Station Identity (P-TMSI) in an access mes-
sage;
sending, by the UE, the access message to a Radio
Access Network (RAN) node in the 2G/3G net-
work.
2. The method of claim 1, wherein the MME in-
formation comprises an MME-Identity (MME-
id), and
wherein adding, by the UE, the MME information
from the temporary ID to the first P-TMSI in
the access message comprises:
setting, by the UE, the Network Resource Identi-
fier (NRI) of the first P-TMSI in the access mes-
sage as the MME-id.
’166 patent, col. 17, lines 46–64.
B
In May 2017, Samsung petitioned for an inter partes
review of claims 1–5 and 12–16 of the ’166 patent. Sam-
sung argued that the claims are unpatentable on four
grounds, two of which are relevant to this appeal: first,
claims 1–3, 5, 12–14, and 16 are unpatentable for obvious-
ness over a combination of TS 23.236, a technical specifica-
tion published by the 3rd Generation Partnership Project
(3GPP), and S2-073255, a 3GPP discussion document; and
second, claims 4 and 15 are unpatentable for obviousness
over TS 23.236 and S2-073255 in further view of TR 23.882,
a 3GPP technical report.
Initially, the Board instituted a review of only claims
1–5. After the Supreme Court’s decision in SAS Institute
Case: 19-1497 Document: 61 Page: 6 Filed: 06/04/2020
6 HUAWEI TECHNOLOGIES CO., LTD. v. IANCU
Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Board added
claims 12–16 to the proceedings. In its final written deci-
sion, the Board determined that claims 1–3 and 5 are un-
patentable for obviousness over a combination of TS 23.236
and S2-073255 and that claim 4 is unpatentable for obvi-
ousness over a combination of TS 23.236, S2-073255, and
TR 23.882. Samsung,
2018 WL 6380662, at *24. After
adopting a broad claim construction of “MME information
for identifying the MME” in claim 1,
id. at *5–7, the Board
determined that, even under Huawei’s narrower construc-
tion, claim 1 is unpatentable for the same reason (as rele-
vant here) that claims 2–5 are unpatentable: a relevant
artisan would have found it obvious to incorporate the
“MME-id” (of claim 2) disclosed in S2-073255 into the NRI
field taught by TS 23.236,
id. at *16–22. The Board re-
jected Samsung’s challenge to claims 12–16.
Id. at *22–24.
Huawei timely appealed, and when Samsung withdrew
from the appeal, the Director of the PTO intervened, pur-
suant to 35 U.S.C. § 143, to defend the Board’s decision.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II
On appeal, Huawei challenges the Board’s construction
of claim 1’s limitation “MME information for identifying
the MME.” It also challenges the Board’s determination
that the prior art renders claims 1–5 unpatentable for ob-
viousness even under Huawei’s claim construction of the
claim 1 limitation. In the latter challenge, Huawei argues
that the Board erroneously determined that the prior art
does not teach away from the relied-on combination and er-
roneously relied on reasoning not supported by the refer-
ences or included in Samsung’s petition.
We conclude that the Board did not err in determining
that a relevant artisan would have found it obvious to in-
corporate the MME-id disclosed in S2-073255 into the NRI
field taught by TS 23.236. Upholding the Board’s determi-
nation as to that combination suffices to affirm the Board’s
Case: 19-1497 Document: 61 Page: 7 Filed: 06/04/2020
HUAWEI TECHNOLOGIES CO., LTD. v. IANCU 7
unpatentability determination as to claims 1–5, without
reaching Huawei’s claim construction challenge.
We review the Board’s determination of obviousness de
novo and its underlying factual findings for substantial-ev-
idence support. Personal Web Technologies, LLC v. Apple,
Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). Among the factual
determinations in an obviousness analysis are “findings as
to the scope and content of the prior art,” Ariosa Diagnos-
tics v. Verinata Health, Inc.,
805 F.3d 1359, 1364 (Fed. Cir.
2015), and “[w]hether a reference teaches away,” In re
Warsaw Orthopedic, Inc.,
832 F.3d 1327, 1333 (Fed. Cir.
2016). “Substantial evidence review asks ‘whether a rea-
sonable fact finder could have arrived at the agency’s deci-
sion’ and requires examination of the ‘record as a whole,
taking into account evidence that both justifies and de-
tracts from an agency’s decision.’” Intelligent Bio-Systems,
Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359, 1366
(Fed. Cir. 2016) (quoting In re Gartside,
203 F.3d 1305,
1312 (Fed. Cir. 2000)). We review the Board’s procedural
decisions for an abuse of discretion. Ericsson Inc. v. Intel-
lectual Ventures I LLC,
901 F.3d 1374, 1379 (Fed. Cir.
2018).
A reference “teach[es] away” when a relevantly skilled
artisan, upon reading the reference, “would be discouraged
from following” a path disclosed by the reference, or “would
be led in a direction divergent” from the disclosed path.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009). A reference does not
teach away “if it merely expresses a general preference for
an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention
claimed.”
Id. (citation and quotation marks omitted).
A
Huawei focuses entirely on claim 2 in challenging the
Board’s unpatentability determination as to claims 2–5.
Case: 19-1497 Document: 61 Page: 8 Filed: 06/04/2020
8 HUAWEI TECHNOLOGIES CO., LTD. v. IANCU
We reject Huawei’s arguments for disturbing the Board’s
obviousness ruling as to those claims.
Claim 2 recites:
The method of claim 1, wherein the MME infor-
mation comprises an MME-Identity (MME-id),
and
wherein adding, by the UE, the MME information
from the temporary ID to the first P-TMSI in
the access message comprises:
setting, by the UE, the Network Resource Identi-
fier (NRI) of the first P-TMSI in the access mes-
sage as the MME-id.
’166 patent, col. 17, lines 57–64.
The Board found that S2-073255, which is a 3GPP dis-
cussion document, teaches that “the MME information
comprises an MME-Identity (MME-id).” Samsung, 2018
WL 6380662, at *19 (citing J.A. 2105 (“[T]he S-TMSI iden-
tifies both the user and the serving MME. . . . The MME id
in the S-TMSI is unique to ensure that the S-TMSI remains
unique.”)). And the Board found that TS 23.236, which is
a 3GPP technical specification, discloses the intra-domain
connection between RAN nodes and SGSN in 2G/3G net-
works and the processes by which the SGSNs exchange
context information when a UE moves from one pool to an-
other. See
id. at *14. In essence, TS 23.236 discloses the
structure and functionality of 2G/3G networks that the
’166 patent describes as prior art, discussed above. Com-
pare J.A. 1856 with ’166 patent, Fig. 1. Although neither
TS 23.236 nor S2-073255 alone teaches setting the NRI of
the P-TMSI as the MME-id, the Board found that the ref-
erences in combination conveyed that teaching to a rele-
vant artisan. Samsung,
2018 WL 6380662, at *18–19.
Huawei argues that S2-073255 actually teaches away
from incorporating its MME-id into TS 23.236’s NRI field.
Huawei points to TS 23.236’s disclosure of an NRI field at
Case: 19-1497 Document: 61 Page: 9 Filed: 06/04/2020
HUAWEI TECHNOLOGIES CO., LTD. v. IANCU 9
most ten bits long. J.A. 1864. Although S2-073255 dis-
closes a seven-bit MME-id (which could fit within
TS 23.236’s ten-bit NRI field), that disclosure, Huawei
stresses, is part of an illustration of the need to expand the
S-TMSI. See J.A. 2103. In describing two potential modi-
fications to the S-TMSI, S2-073255 proposes expanding the
length of the MME-id to 14 or 24 bits. J.A. 2104. There-
fore, Huawei contends, a relevant artisan would have been
discouraged from using an MME-id of ten bits or fewer and,
accordingly, would not have considered setting the NRI
field to the MME-id when a UE sends an access message.
The Board rejected this argument, and we conclude
that substantial evidence supports the Board’s finding that
S2-073255 does not teach away from the combination on
which the Board relied. As the Board found, S2-073255 ex-
plicitly discloses a seven-bit MME-id. Samsung, 2018 WL
6380662, at *20. Although the reference discloses modifi-
cations of S-TMSI that have longer MME-ids, the Board
found that it does not disclose that the MME-id itself must
be expanded.
Id. Rather, S2-073255 says only that the S-
TMSI should be expanded. J.A. 2103 (“[T]he length of S-
TMSI definitely should be expanded.”). Moreover, the
Board found, even if a relevant artisan would have under-
stood that the MME-id itself should be expanded, the ref-
erence does not discourage expansions (beyond seven) to
ten bits or fewer. Samsung,
2018 WL 6380662, at *21. Ad-
ditionally, Huawei’s expert testified that “neither the for-
mat nor the location of the MME-id were defined” prior to
the critical date of the ’166 patent. Ex. 2002 at ¶ 122, Sam-
sung, No. IPR2017-01483,
2018 WL 6380662. Given the
unsettled nature of the MME-id, the Board could reasona-
bly conclude that two proposals using an MME-id of 14 or
24 bits would not have dissuaded a relevant artisan from
using a shorter MME-id, which could fit within the ten-bit
NRI field.
Huawei further argues that the Board, in finding no
teaching away, impermissibly relied on modifications of the
Case: 19-1497 Document: 61 Page: 10 Filed: 06/04/2020
10 HUAWEI TECHNOLOGIES CO., LTD. v. IANCU
prior art that were not suggested in any of Samsung’s pa-
pers and not supported by the record. In the relevant por-
tion of its analysis, the Board reasoned that there were
several ways to expand the S-TMSI to increase the net-
work’s user capacity—as S2-073255 sought to do—without
necessarily expanding the MME-id beyond ten bits. Sam-
sung, 2018 WL 6380662, at *20. This discussion is just one
among several independent justifications, discussed above,
for the Board’s finding that the cited references do not
teach away. Even without this particular support, there is
substantial-evidence support for the Board’s conclusion.
Therefore, we need not determine whether the particular
part of the Board’s reasoning on which Huawei now focuses
was improper.
Finally, Huawei argues that even if S2-073255 teaches
an MME-id with ten or fewer bits, the record does not sup-
port the Board’s finding that it would have been obvious to
place that MME-id into the NRI of an access message. But
Samsung’s expert Dr. Williams testified that “it was widely
recognized at the time of the invention that the MME-id
used in LTE [long term evolution] networks was analogous
to the NRI used in 2G and 3G networks”; consequently, “[i]t
also would have been the most logical solution because the
new RAN node and new SGSN were already configured to
look at the NRI bits of the P-TMSI to derive the old SGSN.”
J.A. 2597. The Board credited this testimony, relying on
the same references as Dr. Williams to show that a relevant
artisan would have understood that the MME-id and NRI
were “equivalen[t].” Samsung, 2018 WL 6380662, at *18
(citing J.A. 2018; J.A. 2637). Huawei has not persuaded us
that the Board’s interpretation of those references is un-
reasonable.
B
The Board construed “MME information for identifying
the MME” to mean “any information that can be used to
identify the MME in an evolved network.” Samsung,
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HUAWEI TECHNOLOGIES CO., LTD. v. IANCU 11
2018 WL 6380662, at *7. Huawei argues that the “MME
information” must include at least the entire MME-id. But
even under Huawei’s construction, the Board determined
that it would have been obvious to a relevant artisan to in-
corporate the entirety of S2-073255’s MME-id into the
P-TMSI—in particular, the NRI portion of the P-TMSI—
taught by TS 23.236.
Id. at *18. As discussed above, we
agree with that determination. Therefore, we need not de-
cide the appropriate claim construction to affirm the deter-
mination that claim 1 is unpatentable.
III
For the foregoing reasons, we affirm the Board’s final
written decision. 1
AFFIRMED
1 On November 7, 2019, Huawei filed a letter with
the court asking us to vacate the Board’s decision and re-
mand for consideration by a different Board panel under
this court’s decision regarding the Appointments Clause in
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019). We reject this request. Huawei did not
raise this issue before filing its opening brief or in that
brief. We see no sound basis for distinguishing this case
from our precedent deeming the challenge forfeited in such
circumstances. See Customedia Technologies, LLC v. Dish
Network Corp.,
941 F.3d 1173, 1174 (Fed. Cir. 2019).
