Exhibit G

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 1 of 90 PageID #: 7280
 

 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

_____________________ 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

_____________________ 

CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, VERIZON 

CORPORATE SERVICES GROUP INC., 

T-MOBILE USA, INC., 

AND AT&T SERVICES, INC., 

 Petitioners, 

v. 

HEADWATER RESEARCH LLC 

Patent Owner. 

____________ 

U.S. Patent No. 8,924,543

Issue Date: December 30, 2014 

Title: SERVICE DESIGN CENTER FOR DEVICE ASSISTED SERVICE 

_____________________ 

Inter Partes Review No.: IPR2024-01042 

_____________________ 

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,924,543 

UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.107 

Mail Stop “PATENT BOARD”

Patent Trial and Appeal Board 

U.S. Patent and Trademark Office 

P.O. Box 1450 

Alexandria, VA 22313-1450 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 2 of 90 PageID #: 7281
ii 

TABLE OF CONTENTS 

Page 

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

II. OVERVIEW .................................................................................................... 1

III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ................................ 5

IV. REASONS FOR THE REQUESTED RELIEF .............................................. 6

A. Summary of the ’543 Patent .................................................................. 6

B. Prosecution History ............................................................................. 10

C. Claim Construction ............................................................................. 11

D. Priority Date of the Challenged Claims .............................................. 11

E. Person of Ordinary Skill in the Art ..................................................... 11

F. State of the Art .................................................................................... 12

1. Network Service Plan Provisioning Systems ........................... 12

2. Policy Transformation and Translation .................................... 15

3. Rules and Rule Priority ............................................................. 17

V. IDENTIFICATION OF CHALLENGES ...................................................... 18

A. Challenged Claims .............................................................................. 18

B. Statutory Grounds for Challenges ....................................................... 18

VI. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE 

UNPATENTABLE ........................................................................................ 19

A. Challenge 1: ......................................................................................... 19

1. Poh ............................................................................................. 19

2. Maes .......................................................................................... 27

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 3 of 90 PageID #: 7282
iii 

3. Motivation To Modify Poh With The Teaching Of Maes ........ 31

4. Detailed Application of Poh and Maes to the Challenged 

Claims ....................................................................................... 34

Claim 1 ...................................................................................... 34

Claim 8 ...................................................................................... 49

Claim 9 ...................................................................................... 50

Claim 10 .................................................................................... 50

Claim 15 .................................................................................... 51

Claim 21 .................................................................................... 52

Claim 28 .................................................................................... 54

Claim 42 .................................................................................... 55

Claim 43 .................................................................................... 55

Claim 45 .................................................................................... 56

Claim 46 .................................................................................... 56

Claim 87 .................................................................................... 56

Claim 88 .................................................................................... 57

Claim 89 .................................................................................... 57

Claim 96 .................................................................................... 57

Claim 98 .................................................................................... 58

Claim 99 .................................................................................... 59

Claim 120 .................................................................................. 59

Claim 121 .................................................................................. 60

B. Challenge 2: ......................................................................................... 60

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 4 of 90 PageID #: 7283
iv 

1. Burnett ....................................................................................... 60

2. Motivation To Combine Poh, Maes and Burnett. ..................... 61

3. Detailed Application of Poh, Maes, and Burnett to the 

Challenged Claims .................................................................... 62

Claim 16 .................................................................................... 62

Claim 44 .................................................................................... 64

Claim 47 .................................................................................... 65

Claim 57 .................................................................................... 67

Claim 58 .................................................................................... 68

Claim 59 .................................................................................... 68

Claim 60 .................................................................................... 69

Claim 61 .................................................................................... 70

Claim 62 .................................................................................... 70

Claim 63 .................................................................................... 70

Claim 64 .................................................................................... 71

Claim 65 .................................................................................... 71

Claim 66 .................................................................................... 71

Claim 68 .................................................................................... 71

Claim 69 .................................................................................... 72

Claim 70 .................................................................................... 72

Claim 71 .................................................................................... 72

Claim 72 .................................................................................... 72

Claim 80 .................................................................................... 73

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 5 of 90 PageID #: 7284
v 

Claim 85 .................................................................................... 73

Claim 86 .................................................................................... 73

VII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION AND 

DENY INSTITUTION .................................................................................. 74

A. The Board Should Not Deny Institution Under 35 U.S.C. § 325 ....... 74

B. The Board Should Not Deny Institution Under 35 

U.S.C.§ 314(a) ..................................................................................... 74

VIII. Mandatory Notices Under 37 C.F.R. §42.8 ................................................... 77

A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................... 77

B. Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 78

1. Judicial Matters ......................................................................... 78

2. Related Patents .......................................................................... 78

C. Lead/Back-up Counsel (37 C.F.R. § 42.8(b)(3)): ............................... 78

D. Notice of Service Information (37 C.F.R. § 42.8(b)(4)): .................... 79

IX. Conclusion ..................................................................................................... 79

 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 6 of 90 PageID #: 7285
vi 

TABLE OF AUTHORITIES 

 PAGE(S) 

CASES 

Paice LLC v. Ford Motor Co., 881 F.3d 894 (Fed. Cir. 2018) ................................ 29 

PEAG LLC v. Varta Microbattery GMBH, IPR2020-01214, Paper 8 at 17 (Jan. 6, 

2021) ..................................................................................................................... 75 

Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-

01393, Paper 24 (PTAB June 16, 2020) ............................................................... 76 

Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) 74 

 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 7 of 90 PageID #: 7286
vii 

Petitioners’ Exhibit List 

 Exhibit # Description 

1001 U.S. Patent No. 8,924,543 (“the ’543 Patent”)

1002 Select portions of prosecution history of the ’543 Patent (“File 

History”) 

1003 Declaration of Petitioners’ Expert (“Houh Declaration”) 

1004 U.S. Pat. No. 9,712,331 (“Poh”) 

1005 U.S. Pat. Pub. No. 2008/0181208 (“Maes”) 

1006 Boutaba and Polyrakis, “Toward Extensible Policy Enforcement 

Points”, in M. Sloman, J. Lobo, and E. Lupu (Eds.): POLICY 2001, 

LNCS 1995, pp. 247-261 (© Springer-Verlag Berlin Heidelbergm 

2001) 

1007 Beigi et al., “Policy Transformation Techniques in Policy-based 

Systems Management”, Proceedings Fifth IEEE International 

Workshop on Policies for Distributed Systems and Networks (2004) 

1008 Chaouchi et al., “Policy Based Networking in Integration Effort of 4G 

Networks and Services”, 2004 IEEE 59th Vehicular Technology 

Conference, VTC 2004-Spring, pp. 2977-2981 Vol. 5. 

1009 Verma et al., “Simplifying Network Administration Using PolicyBased Management”, IEEE Network, pp. 20-26 (March/April 20). 

1010 3GPP TS 23.203 (v8.4.0 (2008-12) (3rd Generation Partnership 

Project; Technical Specification Group Services and System Aspects; 

Policy and charging control architecture (Release 8)) 

1011 U.S. Pat. No. 8,032,920 (“Maes II”) 

1012 U.S. Pat. No. 9,691,082 (“Burnett”) 

1013 List of related patents 

1014 Plaintiff Headwater Research LLC’s Disclosure of Asserted Claims 

and Infringement Contentions, case no. 2:23-cv-00398, -397. 

 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 8 of 90 PageID #: 7287
1 

I. INTRODUCTION 

Pursuant to 35 U.S.C. §§ 311 et seq. and 37 C.F.R. §§ 42.1 et seq., Cellco 

Partnership d/b/a Verizon Wireless, Verizon Corporate Services Group Inc., TMobile USA, Inc., and AT&T Services, Inc., (collectively, “Petitioners”) hereby 

petitions for an inter partes review (“IPR”) of U.S. Patent No. 8,924,543 (“the 

’543 Patent”). Petitioners respectfully submit that Claims 1, 8-10, 15, 21, 28, 42-

47, 87-89, 96, 98-99, 120-121 (the “Challenged Claims”) of the ’543 Patent are 

unpatentable under 35 U.S.C. §103 in view of the prior art herein. This Petition 

demonstrates that there is a reasonable likelihood that Petitioners will prevail with 

respect to at least one of these claims. Accordingly, Petitioners respectfully 

request that the Board institute IPR.1

II. OVERVIEW 

The Challenged Claims are unpatentable as obvious over the prior art. The 

claims are directed to a prior art network service plan provisioning system for 

 

1

 Petitioners file contemporaneously IPR2024-01041 that challenges other claims 

from the ‘543 patent (“Companion Petition”). Except for the analysis of the 

dependent claims, the analysis between the Companion Petition and herein is 

substantively identical. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 9 of 90 PageID #: 7288
2 

provisioning network traffic inspection and enforcement systems with rules that 

implement policies applicable to a wireless end user device. The network service 

plan provisioning system is shown in FIG. 1 of the ’543 Patent: 

The Network Service Plan Provisioning System (blue) obtains and stores 

first and second service plan components in a Service Plan datastore (red). Each 

service plan component includes (i) a traffic classification filter for filtering a 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 10 of 90 PageID #:

7289
3 

traffic event and (ii) an enforcement action that is triggered when a traffic event 

matches the traffic classification filter (i.e., a rule with a match criteria and an 

action). The provisioning system processes the first and second service plan 

components using Enforcement Element Provisioning Instruction Translation 

Engine (purple) to create network provisioning instructions that are stored in 

Network Provisioning Instruction Set datastore (green). The provisioning 

instructions (green) are provided via Network Element Provisioning Engine to a 

network traffic inspection system and network policy enforcement system (not 

shown) in a wireless access network (pink) that services wireless end user devices 

(not shown). 

The processing of the first and second service plan components to create 

network provisioning instructions is done in accordance with a “prioritization” of a 

first traffic classification filter (of a first service plan component) over a second 

traffic classification filter (of a second service plan component). The ’543 Patent 

discloses that this prioritization of the first traffic classification filter over the 

second traffic classification filter can be accomplished in several different ways, 

including simply ordering the first and second traffic classification filters such that 

the first traffic classification filter is applied to a traffic event before the second 

traffic classification filter, which the patent refers to as “implicit” priority. 

EX1001, 11:14-35. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 11 of 90 PageID #:

7290
4 

The Poh reference is a parallel disclosure to the ’543 Patent—disclosing the 

same provisioning system architecture and approach as the ’543 Patent, but it uses 

different language. Poh’s FIG. 1 discloses that architecture, using color coding to 

identify components in common with the ’543 Patent: 

The policy realization framework is divided into two logical layers, a policy 

layer (blue) and a network layer (pink). The policy layer obtains and stores 

policies (e.g., Operator Policies and Global Subscriber Policies) in a Master Policy 

Repository (red). The provisioning system processes the policies using Policy 

Intelligence Rules System (green) to translate policies into executable instructions, 

which are sent from Policy Configuration and Provisioning Server (green) for use 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 12 of 90 PageID #:

7291
5 

by network elements such as Policy and Charging Rules Function (PCRF), Policy 

and Charging Enforcement Point (PCEF) of Gateway and/or Intelligent Security 

Gateway (ISGW) (brown) for inspection and enforcement of the rules in a wireless 

access network (pink) servicing wireless end user devices (gold). More 

specifically, the Policy Intelligence Rules System (i) takes operator policies and 

global subscriber policies from the Master Policy Repository, and subscriber 

profile data and subscription profile data from the ESPR, (ii) identifies policy 

conflicts and resolves conflicts (a form of prioritization), and (iii) determines 

applicable rules to be sent to Policy Configuration and Provisioning Server 

(PCPS), which sends those rules (as executable instructions) to configure the 

network layer for rule decision and enforcement operations. 

While Poh does not provide the specific details of the filtering performed by 

rules or the specific prioritization and enforcement mechanisms used by Poh, the 

Maes reference describes these details. Thus, the Challenged Claims are 

unpatentable over the combination of Poh and Maes. EX-1003 ¶¶115-181, 231-

316. 

III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) 

Petitioners certify that the Patent for which review is sought is available for 

inter partes review and that Petitioners are not barred or estopped from requesting 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 13 of 90 PageID #:

7292
6 

inter partes review of the Challenged Claims on the grounds identified herein. 37 

C.F.R. § 42.104(a). This Petition is filed pursuant to 37 C.F.R. § 42.106(a). 

IV. REASONS FOR THE REQUESTED RELIEF 

As explained in §§ II and VI-VIII of this Petition and in the attached 

Declaration of Petitioners’ Expert, Dr. Henry Houh (“Houh Declaration”), EX1003, the systems and methods of provisioning network service plans, as described 

and claimed in the ’543 Patent, were obvious over the prior art to a person of 

ordinary skill in the art (“POSA”) at the time of the invention. 

A. Summary of the ’543 Patent

The ’543 Patent describes a network service plan provisioning system 104 

and methods that provide network element provisioning instructions to an access 

network 102 to enforce plan policies from the network service plan provisioning 

system 104. EX-1001 8:1-43; FIG. 1. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 14 of 90 PageID #:

7293
7 

EX-1001 FIG. 1. 

The access network (pink) provides network services to a device and can 

include a wireless and/or wired network. EX-1001 8:47-52. End user devices 

include mobile phones, tablet computers or notebook computers. Users sign up for 

services plans, such as text messages, voice or data, for obtaining services from the 

access network. The access network uses policies associated with service plans for 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 15 of 90 PageID #:

7294
8 

governing use of and charging for use of the access network. Id. 7:38-66. Policies 

can include inter-network policies, e.g., traffic control, charging, and notification 

policies that remain in effect after a device passes from one network to another 

(e.g., by roaming). Policies also include intra-network policies, which apply to 

traffic within the boundaries of a network (e.g., in-network traffic control, 

charging, and/or notification policies, plus an optional traffic control policy that 

permits or prevents roaming to another network). EX-1001 8:59-67. 

As shown in FIG. 1, the network service plan provisioning system 104 

includes a service design engine 106, service plan datastore 108, optional policy 

enforcement priority rule datastore 110, enforcement element provisioning 

instruction translation engine 112, network provisioning instruction set 114, 

network element provisioning engine 116, analytics engine 118, historical 

datastore 120 and service plan selection engine 122. EX-1001 9:37-44. 

The service design engine 106 inputs service plan data structures and other 

related data into the service plan datastore 108. EX-1001, 9:45-47. In a specific 

implementation, the service design engine 106 also inputs policy enforcement 

priority rule data structures in the policy enforcement priority rule datastore 110. 

An aspect of policy control entails the superposition of a first traffic classification 

filter of a service plan over a second traffic classification filter of the service plan, 

for example by: (i) ordering the first and second traffic classification filters such 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 16 of 90 PageID #:

7295
9 

that the first traffic classification filter is applied to a traffic event before the 

second traffic classification filter; (ii) trapping a match of the first traffic 

classification filter in a kernel until the second traffic classification filter is 

matched (then applying a first relevant action of an action list); or (iii) applying an 

explicit policy enforcement priority rule. According to the ’543 Patent, because 

implicit policy enforcement priorities can be used, the policy enforcement priority 

rule datastore 110 is optional. Alternatively, explicit policy enforcement priorities 

can be mandated or a combination of implicit and explicit policy enforcement 

priorities can be used. EX-1001, 11:14-34. Policy priority can be reflected in a 

field associated with a policy. EX-1001, 23:40-45. 

The enforcement element provisioning instruction translation engine 112 

converts service plan data structures from the service plan datastore 108 into 

respective network provisioning instruction set data structures, which are stored in 

the network provisioning instruction set datastore 114. The translation engine 112 

can also convert the relevant policy enforcement priority rule data structures from 

the policy enforcement priority rule datastore 110, if applicable, for inclusion in 

the network provisioning instruction set data structures. EX-1001, 11:36-45. 

The network element provisioning engine 116 provides network element 

provisioning instructions to enforce plan policies to the access network 102. The 

network element provisioning instructions are applicable to one or more devices 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 17 of 90 PageID #:

7296
10 

that may or may not currently be on the access network 102. In one 

implementation, the network element provisioning instructions are sent to the 

access network 102 only when the applicable devices are on the access network 

102. EX-1001, 11:46-54. 

FIG. 5 illustrates a method of creating a service plan component including 

one or more filters and policy event rule records having one or more policy rules. 

EX-1001, FIG. 5, 20:22-43. Policy rules include a filter event and an enforcement 

action. For example, a policy event rule becomes applicable when a filter matches 

a traffic instance including a traffic event in a way specified by the rule. By way 

of example, traffic events can include a specified remote destination (e.g., a 

domain or IP address), a specified application (identified by, e.g., name, hash, 

certificate, signature, other secure ID, etc.), a specified operating system, specified 

content, a specified protocol (e.g., TCP, UDP, TCP/UDP), or a specified port 

number. EX-1001, 20:44-55. Policy rules can define actions upon matching (or 

no matching) of a filter event, for example, allow, block, throttle, delay, defer, or 

take no action. EX-1001, 21:27-48. Rules can also define notifications to be issued 

and charges to apply. EX-1001, 21:49-22:24. 

B. Prosecution History

The ’543 Patent issued from application number 13/248,025 filed on 

September 28, 2011 and claimed priority to over 400 applications. The application 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 18 of 90 PageID #:

7297
11 

received a first Office Action restriction requirement. The Applicant traversed the 

restriction requirement and added 95 new claims. EX-1002, 000113-000140. The 

examiner then issued a notice of allowance for all 121 claims without applying or 

discussing any prior art. EX-1002, 000101-000108. 

C. Claim Construction 

For purposes of this Petition solely, Petitioners propose that each claim term 

in the Challenged Claims be given its plain and ordinary meaning in this 

proceeding, and that no specific construction of any claim term is required because 

the prior art relied on in this Petition meets each of the claim terms under any 

reasonable construction. 

D. Priority Date of the Challenged Claims 

The ’543 Patent claims priority to a large family of over 400 applications, 

the earliest of which is dated January 29, 2009. The prior art cited herein predates 

the earliest possible priority date. 

E. Person of Ordinary Skill in the Art 

With respect to the ’543 Patent, a POSA in the January 2009 timeframe 

would have been familiar with designing rules for implementing policies for 

service plans for use of an access network and provisioning those rules to network 

elements for policy enforcement, as demonstrated by the prior art references and 

description in the State of the Art below. EX-1003 ¶45. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 19 of 90 PageID #:

7298
12 

A POSA would have gained knowledge of these concepts through a mixture 

of training and work experience, such as by having a Bachelor’s degree in 

computer science and two years of experience; or by obtaining a Master’s degree 

in computer science, but having only one year of experience; or by having no 

formal education but experience in network service plan provisioning systems of at 

least four years. EX-1003 ¶46. 

F. State of the Art

The following section describes the state of the art for network service plan 

provisioning systems as of January 2009. The prior art references, and the 

discussions of what was known to a POSA, provide general description of the state 

of the art and additional motivation to modify or combine the reference(s). 

Accordingly, these references should be considered by the Board. 

1. Network Service Plan Provisioning Systems 

Using network based policies to configure network devices is known as 

Policy-Based Networking (PBN). Prior to PBN, configuring network devices, 

such as routers, switches and other network elements, involved an administrator 

configuring each device independently. Later, other technologies attempted to 

automate the process such as using the Simple Network Management Protocol 

(SNMP). EX-1006 pp. 247-248. EX-1003, ¶98. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 20 of 90 PageID #:

7299
13 

PBN uses control/management policies, i.e., the rules that govern the 

network behavior. The administrator edits policies in a management tool that 

performs syntax, semantics and basic conflicts checking. These policies are then 

distributed to special policy servers called Policy Decision Points (PDPs). The 

PDPs process the policies, along with other data such as network state information, 

and take policy decisions about what policies should be enforced and how 

enforcement will happen. The policies are sent as configuration data to the 

appropriate Policy Enforcement Points (PEPs), which reside on management 

devices (e.g., routers, switches, gateways, etc.) and are responsible for installing 

the policies and enforcing them. EX-1006 p. 248; EX-1007 p. 14.; EX-1008 p. 

2978; EX-1009 pp. 20-21; EX-1010 p. 16. EX-1003, ¶99. Below is a diagram of a 

known PBN basic schema: 

EX-1006 p. 248. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 21 of 90 PageID #:

7300
14 

EX-1007 p. 14. 

PBN contemplated two models of operation—outsourcing and provisioning. 

In the outsourcing model, when the PEP receives a network event that it does not 

know how to handle, it sends a request to the PDP and the PDP responds by 

sending the configuration data that must be installed to respond to the event. In the 

provisioning model, the PDP sends the policies that must be enforced when the 

PEP connects to the PDP. EX-1006 p. 248; EX-1009 p. 20-21. 

PBN architectures such as shown above have been proposed by the Internet 

Engineering Task Force (IETF) and adopted in cellular systems, such as those 

governed by the 3GPP standards. EX-1008 p. 2977; EX-1010 § 5.1 (Reference 

Architecture). For example, in 3GPP Release 8 (and earlier releases), the Policy 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 22 of 90 PageID #:

7301
15 

and Charging Rules Function (PCRF) provides the role of the PDP and the Policy 

Charging and Enforcement Function (PCEF) provides the role of the PEP: 

EX-1010 p. 16. In the architecture above, rules could be predefined or 

dynamically provisioned at establishment and during the lifetime of a session, such 

as through the Gx reference point above. EX-1010 pp. 12, 19-20, 26, 45. EX1003, ¶¶100-106. 

2. Policy Transformation and Translation 

Generally, it was known that a policy management tool can take policies 

entered by an administrator and convert them to a form that can be deployed and 

interpreted by PEPs. EX-1007 p. 13; EX-1008 p. 2978 (“A policy management 

tool is often used to ensure the automatic translation of the policies from the high 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 23 of 90 PageID #:

7302
16 

or business level to the low or network level policies.”); EX-1009 p. 21, 22. The 

transformation may be performed at the PEP. EX-1007 p. 13. EX-1003, ¶¶107-

110. 

FIG. 2 below shows a policy-based management architecture incorporating 

policy transformation in the policy management tool. EX-1007 pp. 14-15: 

EX-1007 p. 13. 

In real time policy transformation, the policy-based management system 

uses an online component that dynamically monitors the behavior of network 

elements in order to ensure that the specified policy objectives are being met. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 24 of 90 PageID #:

7303
17 

System behavior is used by the transformation module to dynamically modify the 

configuration of the system to achieve the policy goals. EX-1007 p. 15. 

3. Rules and Rule Priority 

It was known that policies that are enforced by PEPs included rules that 

typically include: (1) matching (i.e., filtering) criteria for identifying packets and 

data flows; and (2) actions. These rules are determined by the operator based on, 

for example, user subscription information. Matching criteria may include 5-tuple 

information (i.e., source IP address, destination IP address, source port number, 

destination port number, and protocol ID) of incoming packets. If an IP packet, for 

example, matches filtering criteria, then the PEP takes the decision or action that 

the policy specifies. Actions may include, for example, allow or deny packets, 

guarantee a certain quality of service (QoS) level, perform reporting, performing 

charging functions, etc. EX-1006 p. 253; EX-1010, §§ 4.1 (General 

Requirements), 4.2 (Charging Requirements), 4.3 (Policy Control Requirements), 

6.2.2 (Policy and Charging Enforcement Function (PCEF)), 6.3 (Policy and 

Charging Control Rule), 6.5 (Quality of Service Control Rule). EX-1003, ¶111. 

It was also known to assign rules and policies a priority, and rules and 

policies were evaluated according to their priority. In some cases, in the event of 

conflicts between policies, the order of the policies determined the priority. EX1006 p. 253; EX-1009 pp. 22-23; EX-1010 p. 48. EX-1003, ¶112. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 25 of 90 PageID #:

7304
18 

One form of policy validation performed as part of policy transformation 

was conflict resolution. For example, in a policy with multiple rules, individual 

rules may be perfectly acceptable by themselves, but there is a conflict when any 

two rules are taken together. If a conflict is found, one way the conflict can be 

resolved is to assign the rules different priorities. Since priority can be considered 

an independent term for conflict resolution (i.e., beyond other triggering criteria 

and actions specified in the rules), policies and rules with different priorities did 

not overlap and thus did not cause conflicts. EX-1009 pp. 22-23. EX-1003, ¶113.

V. IDENTIFICATION OF CHALLENGES 

A. Challenged Claims 

Claims 1, 8-10, 15, 21, 28, 42-47, 87-89, 96, 98-99, 120-121 of the ’543 

Patent are challenged. 

B. Statutory Grounds for Challenges 

The Challenges are set forth in detail below and summarized as follows: 

Ground Claims Basis Reference 

1 1, 8-10, 15, 21, 28, 

42-43, 45-46, 87-89, 

96, 98-99, 120-121 

§ 103 Poh, alone, or in view of Maes 

2 16, 44, 47, 57-66, 68-

72, 80 and 85-86 

§ 103 Poh, alone, or in view of Maes, in 

further view of Burnett 

Ground 1: 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 26 of 90 PageID #:

7305
19 

U.S. Patent 9,712,331 (“Poh”) issued on July 18, 2017 from an application 

filed on August 20, 2008 (EX-1004). Poh is prior art under §102(a)(e). 

U.S. Patent Pub No. 2008/0181208 (“Maes”) published on July 31, 2008 

from an application filed on January 30, 2007 (EX-1005). Maes is prior art under 

§102(a)(e). 

Ground 2: 

U.S. Patent 9,691,082 (“Burnett”) issued on June 27, 2017 from an 

application filed on March 19, 2008 (EX-1012). Burnett is prior art under 

§102(a)(e). 

VI. IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE 

UNPATENTABLE 

A. Challenge 1: 

1. Poh 

(a) Provisioning Architecture 

Like the ’543 Patent, Poh teaches a policy configuration and provisioning 

system for a communication network. Poh’s FIG. 1 discloses a policy realization 

framework reflecting the architecture: 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 27 of 90 PageID #:

7306
20 

EX-1004, 3:7-46, 10:22-25, 10:28-30, 16:4-14, FIGS. 1, 3. EX-1003, ¶¶57-59. 

Poh’s policy realization framework is divided into two logical layers, a 

policy layer (blue) and a network layer (pink). The policy layer handles policy 

management, rule generation for implementing policies and provisioning of the 

network layer with generated rules: 

[T]he policy layer includes application and service policy management 

systems and network policy management systems. The policy layer can 

store, organize, determine, and apply policy rules to services requested 

by subscribers or other entities, as will be explained in more detail 

below. The policy layer can provide common policy rules across 

services and applications, and policy rule management. The policy 

layer can dynamically determine rules based upon operator policies, 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 28 of 90 PageID #:

7307
21 

network policies, subscriber specific policies, subscription specific 

policies, subscriber profile data, subscription profile data, and/or 

subscriber preferences, for example. The policy layer can also generate 

instructions or commands for driving elements in the network layer to 

grant, restrict, and/or deny requested services. Rules can be determined 

online, i.e., during a service or application session, and in real-time or 

near real-time. Additionally, or alternatively, the policy rules can be 

determined offline, i.e., not during a service or application session. 

EX-1004, 11:9-33. 

Poh’s policy layer includes a Master Policy Repository (MPR) (red) that 

receives, retrieves, accesses, organizes, and/or manages operator policies and 

global subscriber policies. Operator policies include policies for gating control, 

data throttling, packet inspection, security, privacy, emergency, charging, 

application-specific, global application, service-specific, global service, content 

provider, legacy, and the like. Policies are enforced in the network layer by a 

policy and charging rules function (PCRF) (brown), a policy and charging 

enforcement point (PCEF) (brown), a wireless application protocol (WAP) 

gateway (not shown), deep packet inspection (DPI) points (not shown), and/or 

other enforcement points that require service rules to ensure consistent 

enforcement by the network. EX-1004, 11:53-12:8; EX-1003, ¶¶60-62. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 29 of 90 PageID #:

7308
22 

Global subscriber policies include policies global to all subscribers and 

applied to one or more applications / services that are accessible to the operator’s 

subscribers. Global subscriber policies can be defined for each service or 

application, such as a service aware roaming control policy that can prevent a 

subscriber from accessing operator-defined services or applications while roaming. 

EX-1004, 12:23-31; EX-1003, ¶63. 

Poh’s MPR is fed by an Enhanced Subscription Profile Repository (ESPR) 

(red) that stores subscriber and subscription profile data. Data stored in the ESPR 

can be stored locally in the MPR. Subscriber profile data includes subscriber 

specific data related to service entitlement, service prohibition, and other 

subscriber profile data for policy rule generation and service enforcement. The 

subscriber profile data can include policy-related data, such as rate plan, rate plan 

categories, service entitlement for rate plan or rate plan categories, preemption 

priorities for differential charging or treatment types, and service related roaming 

entitlement. Subscriber profile data can also include payment type information, 

class of service (CoS) entitlement for messaging, such as short message service 

(SMS) and multimedia message service (MMS) messaging, as well as other 

network services. EX-1004, 12:61-13:26; EX-1003, ¶64. 

Poh’s subscription profile data can include all available service plans offered 

by an operator, including various categories, such as data rate plans for standalone 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 30 of 90 PageID #:

7309
23 

or integrated network cards for use in computer systems (e.g., laptop computers), 

data rate plans with voice plan add-ons, data rate plans combined with voice plans, 

international voice plans, international data plans, pooled plans, government plans, 

WiFi add-on plans, device-specific plans, push email plans, business plans, media 

bundles, global positioning system (GPS) plans, any combination thereof, and the 

like. EX-1004, 13:38-49; EX-1003, ¶65. 

Poh’s provisioning system processes the policies from the MPR using Policy 

Intelligence Rules System (PIRS) (green) to translate policies into rules in the form 

of executable instructions, which are sent from Policy Configuration and 

Provisioning Server (PCPS) (green) for use by network elements such as PCRF, 

PCEF, and/or Intelligent Security Gateway (ISGW) (brown) in a wireless access 

network (pink) servicing wireless end user devices (gold). EX-1004, 13:60-14:2; 

EX-1003, ¶66. 

Poh’s access network (pink) provides devices (gold) access to services and 

applications provided by the application functions (AF’s) via wireless access 

technologies. Devices can include handheld devices such as an information 

appliance, a smartphone, a personal digital assistant (PDA), a mobile phone, a 

personal communicator, and a handheld game console; other mobile devices such 

as laptop computers; stationary devices such as desktop computers, servers, and the 

like; and various other telephony devices. EX-1004, 14:64-15:7. EX-1003, ¶67. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 31 of 90 PageID #:

7310
24 

(b) Policy Processing into Rules Instructions 

Poh’s PIRS (i) takes operator and global subscriber policies from the MPR, 

and subscriber and subscription profile data from the ESPR, (ii) identifies policy 

conflicts and resolves conflicts (a form of prioritization), and (iii) determines 

applicable rules to be sent to Poh’s PCPS, which sends those rules (in the form of 

executable instructions) to configure the network layer for rule decision and 

enforcement operations. EX-1004, 11:26-28, 13:64-14:2; 15:60-16:2, 16:61-65, 

18:41-44. EX-1003, ¶68. 

Fig. 7 shows the operation of the PIRS: 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 32 of 90 PageID #:

7311
25 

EX-1004, FIG. 7, 19:4-20:36. The operation of Poh’s PIRs and Figure 7 is 

detailed for element [1.3] below. EX-1003, ¶¶69-70. 

(c) Rule Provisioning and Enforcement 

Poh discloses that each network resource can have its own policy decision 

function and policy enforcement point. EX-1004 1:22-25. Policy decisions 

typically involve examining (e.g., filtering) some aspect of network traffic, and an 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 33 of 90 PageID #:

7312
26 

enforcement action is taken for the traffic in the event of a match. EX-1004, 1:25-

35 (detailing charging policy enforcement and actions). EX-1003, ¶71. 

Poh’s PCPS can identify rules for provisioning the PCRF, PCEF, OCS, and 

ISGW network elements. EX-1004, 14:10-13, 11:57-64, 24:1:8, FIG. 10. Rules 

are passed from the PCPS to the network elements as instructions. EX-1004, 

11:26-28; 16:32-35; 18:41-48, 21:8-34; EX-1003, ¶72. 

Poh’s PCRF is a decision point function in the network layer for control, 

altering of QoS, where applicable, and providing dynamic or personalized charging 

rules at a subscriber level. The dynamic charging rules can be operator-defined 

such as roaming control, usage threshold, subscriber entitlements, subscriber 

prohibitions, and/or subscriber and subscription profile data. The PCRF can also 

trigger messages and/or notifications to subscribers for events such as differential 

charges, or if the PCRF is triggered to treat the subscriber differently than the 

subscriber’s expected treatment. For example, the PCRF can note that an enhanced 

charge rate, dropped IP flow, and/or QoS change will be invoked for a service or 

application. Upon such a determination, the PCRF (or PCEF) triggers a subscriber 

notification for the change. EX-1004, 14:17-35. See also EX-1004, 18:26-43 

(policy trigger event includes a subscriber request for a network resource such as a 

service, application, QoS or the link). EX-1003, ¶73. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 34 of 90 PageID #:

7313
27 

Poh’s PCEF is an enforcement point function that can reside in a gateway 

function 130. The PCEF enforces subscriber level control and charging policies for 

packet data protocol (PDP) contexts and IP flow, for example. The PCEF can be 

invoked by the rules or charging event trigger and can trigger the OCS to take 

actions including, for example, providing an “advice of charge,” or tracking usage. 

EX-1004, 14:36-46; EX-1003, ¶74. 

(d) ISGW 

Poh’s ISGW implements security policies provisioned to it from the PCPs. 

EX-1004, 11:57-64, 24:1:8, FIG. 10. Using the security policies, the ISGW 

monitors network traffic and recognizes security threats. EX-1004, 23:8-11; 

24:31-38. The ISGW sends information relating to security threats directly to a 

policy enforcement and/or access control enforcement point such as, for example, 

the PCRF. EX-1004, 23:17-20. The ISGW can analyze the security threat to 

determine an enforcement point including the ISGW itself or the PCRF, the PCEF, 

or another network node. EX-1004, 39-50; EX-1003, ¶75. 

To the extent Poh does not provide the details of filtering performed by rules 

or the specific prioritization and enforcement mechanisms used by Poh, Maes 

describes these details. 

2. Maes 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 35 of 90 PageID #:

7314
28 

Maes discloses a smart router that analyzes messages and/or packets (or 

other communications) in a telecommunications network (i.e., traffic), identifies 

information about the traffic, and applies programmable policies to the messages. 

EX-1005, Abstract, [0007], [0019], [0022]. Maes’ policies address processes as 

security, charging, logging, auditing, quality of service (including throttling, 

prioritized routing, etc.), privacy, preferences, and anything else specified by a 

combination of conditions and actions. EX-1005, [0023]. A “policy rule” is a 

“combination of a condition and actions to be performed if the condition is true.” 

EX-1005, [0024]. EX-1003, ¶¶78-79. 

An operator defines business objectives implemented as policies enforced 

through rules. For example, policies can include “any combination of rules, 

including any combination of conditions and actions” and workflows or business 

processes can “describe sequences in which rules are executed, or how conditions 

may be combined with action to enforce the one or more policies on a 

communication.” EX-1005, [0025]. “A workflow or business process includes a 

logical combination of one or more conditions to be satisfied and one or more 

actions to be executed to enforce or evaluate the one or more policies.” EX-1005, 

[0025]. EX-1003, ¶80. 

Maes’ policies include complex nested policy arrangements. For example, 

Maes incorporates by reference US 11/024,160, which issued as U.S. 8,032,920 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 36 of 90 PageID #:

7315
29 

(“Maes II”) (EX-1011). EX1005 [0025].2 Maes II discloses that “each policy ... 

may itself be composed of multiple policies, which further evaluate conditions 

and/or perform actions.” EX-1011 3:13-17. Maes II teaches that it was known to 

use any logical arrangement or sequence of conditions and actions. EX-1011 3:35-

46, 4:37-47. Policies and actions can be executed serially (as discussed above) or 

in parallel and policies to be applied may depend on the results of previous actions. 

EX-1011, 1:48-50; 5:4-5; 6:8-11; 6:37-62. EX-1003, ¶81. 

Exemplary policies described by Maes include: 

 Conditions and actions to check the load of a network route or an end 

point and redirect a message accordingly where possible and 

advantageous (i.e., load balancing). 

 Check the QoS for the traffic or traffic type and route accordingly. 

 Throttle back traffic when maximum capacity is reached, or when 

other conditions are met, such as receiving more message traffic than 

is authorized. 

 

2

 A patent that is specifically incorporated by reference is broad and unambiguous, 

and plainly sufficient to incorporate the referenced patent in its entirety. 

Paice LLC v. Ford Motor Co., 881 F.3d 894, 907 (Fed. Cir. 2018). 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 37 of 90 PageID #:

7316
30 

 Check account standing and charges, such as within the service layer 

to a charging enabler, or to a billing system capable of correlating 

them with the information about the service if available. 

 Determine that traffic may have to be filtered, or may require further 

processing in the service layer. For example, a policy can determine 

that traffic pertains to messaging such as MMS or email, and can send 

the traffic to a filtering application (e.g., content filtering, anti-spam, 

antivirus, privacy/preference policies of target, etc.). 

EX-1005, [0026]-[0027]; EX-1003, ¶¶82-87. 

FIG. 2 shows the smart router 202: 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 38 of 90 PageID #:

7317
31 

EX-1005, FIG. 2. In this figure, inbound traffic is received by a sniffer or message 

inspection module 204 of the smart router 202. A policy evaluation and 

enforcement module 206 of the smart router receives messages from the message 

inspection module 204, and applies policies to the messages. EX-1005, [0028]. 

EX-1003, ¶¶88-89. 

3. Motivation To Modify Poh With The Teaching Of Maes

A POSA would have been motivated to combine Poh with Maes with a 

reasonable expectation of success. EX-1003, ¶¶120-130. Poh teaches a 

provisioning system for a wireless access network that (i) obtains and stores 

policies, (ii) processes those policies to create rules (in the form of instructions), 

where processing those policies involves giving one policy precedence over 

another, and (iii) provisions those rules to network elements in the wireless access 

network for policy enforcement. While Poh may not expressly state that each 

policy has (i) a “traffic classification filter” for filtering traffic events by a traffic 

inspection system and (ii) an enforcement action that is triggered in a network 

policy enforcement system, or state that one traffic classification filter can be given 

“priority” over a second traffic classification filter, Maes discloses that each rule 

that effectuates a policy is a “combination of a condition and actions to be 

performed if the condition is true.” EX-1003, ¶122. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 39 of 90 PageID #:

7318
32 

Maes also discloses that policies are applied to traffic that has been 

inspected by a sniffer/inspection module if they match traffic criteria for 

application of the policy. Maes also confirms that rules can be arranged in any 

sequence, with any combination of conditions and actions, to effectuate the 

business objectives of the policy or policies, i.e., “policies can address such 

processes as security, charging, logging, auditing, quality of service (including 

throttling, prioritized routing, etc.), privacy, preferences, and anything else 

specified by a combination of conditions and actions.” EX-1005, [0023]; EX-1003, 

¶123. 

Thus, a POSA understood that policy rules with criteria for filtering 

(matching) traffic (e.g., to identify traffic for quality of service, throttling, 

prioritized routing, etc.) and actions to be taken upon a match, and prioritization of 

such rules by their traffic classification filters, were well known in the art as 

evidenced by Maes. A POSA would have understood the types of rules disclosed 

in Maes, and their prioritization, could be used by the provisioning system of Poh 

for provisioning Poh’s network elements, such as Poh’s PCRF, PCEF and/or 

ISGW network elements, to achieve Poh’s policy objectives. EX-1003, ¶124. 

A POSA would be motivated to modify the teachings of Poh to use the rules 

of Maes, where each rule or group of rules includes a traffic classification filter and 

an action or actions to be taken. For example, the types of policies—and thus the 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 40 of 90 PageID #:

7319
33 

types of rules that embody those polices—used in both Poh and Maes overlap, 

including policies for security, charging, logging, auditing, QoS (including 

throttling, prioritized routing, etc.), and privacy, for example. See EX-1004, 

11:57-67, 14:17-24; EX-1005, [0023]. Further, Poh and Maes both disclose the 

use of those policies in wireless access networks, where rules embodying those 

policies are enforced against network traffic by enforcement points. EX-1003, 

¶125. 

A POSA would have also been motivated to order the rules of Poh, as 

suggested by Maes, in an order that gives priority to a first rule’s traffic 

classification filter over a second rule’s traffic classification filter. Indeed, Poh 

already discloses that as part of resolving conflicts of one policy over another, one 

policy can be given “precedence” over another. A POSA understood that 

“precedence” is a form of “priority”. A POSA would have understood, as 

confirmed by Maes, that one technique for giving a policy precedence over another 

is to give that policy priority over the other by ordering its rules such that they are 

executed—and thus its filtering criteria is evaluated—before the other. EX-1003, 

¶126. 

A POSA would be confident of the success of the modification as it is a 

software solution that uses known techniques—rules and logical arrangement of 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 41 of 90 PageID #:

7320
34 

rules—for their intended purpose—implementing objectives of policies in a 

network. EX-1003, ¶127. 

Poh and Maes are also analogous art to the claimed invention, being in the 

same field of network communications, including network service plan 

provisioning systems for network policies. EX-1001, claim 1; EX-1004, 1:8-24; 

EX-1005, [0007], [0024]; EX-1003, ¶128. 

Further, the combination of Poh and Maes is directed to the same problem as 

the ’543 Patent—properly provisioning network elements to implement network 

and operator policies and objectives—and proposes the same solution—

provisioning network elements with the appropriate logical arrangement of rules 

for enforcing network and operator policies and objectives. Thus, the Challenged 

Claims are unpatentable over this combination. EX-1003 ¶129. 

4. Detailed Application of Poh and Maes to the Challenged 

Claims3

Claim 1 

[1.0] A network service plan provisioning system 

communicatively coupled to a wireless end-user device over a 

wireless access network, the network service plan provisioning 

system comprising one or more network elements configured 

to: 

 

3

 As used herein, “discloses” or “teaches” includes that the reference’s disclosure 

renders the discussed concept (element, claim) obvious to a POSA. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 42 of 90 PageID #:

7321
35 

If the preamble is limiting, Poh’s FIG. 1 illustrates a network service plan 

provisioning system (blue) communicatively coupled to a wireless end-user device 

(gold) over a wireless access network (pink), the network service plan provisioning 

system comprising one or more network elements (blue, red, green, brown). 

EX-1004 FIG. 1, annotated (“Annotated FIG. 1). EX-1003 ¶¶134-135. 

[1.1] obtain and store a first service plan component and a 

second service plan component, 

Poh’s Master Policy Repository (MPR) 102 (red) stores and/or retrieves all 

policies (obtain and store a first / second service plan components). EX-1001 

19:25-27; EX-1003, ¶¶137-143. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 43 of 90 PageID #:

7322
36 

Specifically, Poh’s policy realization framework is divided into a policy 

layer (blue) and a network layer (pink). Poh’s policy layer handles policy 

management, rule generation for implementing policies and provisioning of the 

network layer with generated rules. 

Poh’s policy layer includes application and service policy management 

systems and network policy management systems. The policy layer stores, 

organizes, determines, and applies policy rules to services requested by subscribers 

or other entities. The policy layer provides common policy rules across services 

and applications, and policy rule management. The policy layer dynamically 

determines rules based upon operator policies, network policies, subscriber specific 

policies, subscription specific policies, subscriber profile data, subscription profile 

data, and/or subscriber preferences. EX-1004 11:9-33. EX-1003, ¶¶139-140. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 44 of 90 PageID #:

7323
37 

Further, Poh’s MPR (red) is part of the policy layer and receives, retrieves, 

accesses, organizes, and/or manages operator policies and global subscriber 

policies. EX-1004, 11:53-55. Further, Poh’s MPR can be fed by other policy 

repositories, such as an enhanced subscription profile repository (ESPR) that can 

be configured to store subscriber and subscription profile data and subscription 

profile data. In an embodiment, at least a portion of the data stored in the ESPR 

can be stored locally in, or migrated to, the MPR. EX-1004 12:55-13:2; EX-1003, 

¶141. 

As detailed below in limitation [1.2], policies for the operator / network / 

subscriber / subscription, subscriber / subscription profile data and/or subscriber 

preferences stored in the MPR include a first service plan component and a second 

service plan component. EX-1003, ¶142. 

[1.2] the first service plan component comprising (1) information 

specifying a first traffic classification filter for filtering a 

traffic event in a network traffic inspection system, the traffic 

event being associated with the wireless end-user device and 

(2) a first network policy enforcement action that is triggered 

in a network policy enforcement system when the traffic event 

possesses a characteristic that matches the first traffic 

classification filter, and the second service plan component 

comprising (a) information specifying a second traffic 

classification filter for filtering the traffic event in the network 

traffic inspection system, and (b) a second network policy 

enforcement action that is triggered in the network policy 

enforcement system when the traffic event possesses a 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 45 of 90 PageID #:

7324
38 

characteristic that matches the second traffic classification 

filter; 

Poh discloses this limitation in the PCRF and PCEF actions that receive 

instructions to implement rules and enforce them, based on policies stored in the 

MPR. EX-1003, ¶¶145-159. This element basically recites having two rules with 

each rule having a specific condition (filter) and action that occurs when that rule’s 

condition is met. EX-1003, ¶145. 

As an initial matter, the ’543 Patent does not describe what a “characteristic” 

is, but a POSA understood it is a condition that triggers a rule, e.g., QoS, roaming, 

etc. EX-1003, ¶147. 

Poh provides several examples. For example, Poh’s PCRF is a decision 

point function in the network layer for control and is able to alter the QoS of a 

communication from a subscriber based on subscriber entitlements, subscriber 

prohibitions, and/or subscriber and subscription profile data 122, 124. EX-1004 

14:17-24. EX-1003, ¶148. This is an example of a first component comprising (1) 

identifying a required level of QoS for a specific client requesting wireless access, 

the traffic event being associated with the wireless end-user device (information 

specifying a first traffic classification filter ...) and (2) altering QoS to the required 

level for the subscriber (a first network policy enforcement action ... triggered ... 

when the traffic event possesses a characteristic that matches the first traffic 

classification filter). EX-1003, ¶¶148-150. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 46 of 90 PageID #:

7325
39 

Similarly, this passage shows a first component that specifies a particular 

characteristic (such as a usage threshold or subscriber entitlement for a particular 

service) and a resulting action when a filter specifying that characteristic is 

matched (such as the actions of differential charging or 

denying/allowing/restricting the particular service based on the subscriber plan or 

entitlements and/or the action of notifying the subscriber). “The PCRF 108 can 

also trigger messages and/or notifications to subscribers for events such as, for 

example, differential charges, or if the PCRF 108 is triggered to treat the subscriber 

differently than the subscriber's expected treatment. For example, the PCRF 108 

can note that an enhanced charge rate, dropped IP flow, and/or QoS change will be 

invoked for a service or application.” EX-1004, 14:25-35. See also EX-1004, 

21:50-22:3 (identifying rules / conditions for actions such as differential charging 

or disabling applications); 8:57-63 (actions such as differential charging and 

notification); 11:44-52 (actions such as differential charging, gating control, 

notifications); claim 7 (listing different policies resulting in different actions); 

claim 3 (deny or allow access rule). EX-1003, ¶151. 

In the context of Poh, “gating control” would include actions such as 

denying, allowing or restrict a particular service. EX-1004, 11:23-30; 3:33-42, 

19:60-63; 20:37-54. EX-1003, ¶152. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 47 of 90 PageID #:

7326
40 

Each of these rules / actions above can correspond to each of the first and 

second service plan components. EX-1003, ¶153. 

Further, Poh’s PCEF is an enforcement point function that can reside in 

gateway. The PCEF enforces subscriber level control and charging policies by the 

rules passed to the PCEF by the PCRF. The subscriber policies can include policies 

that are global to all subscribers and applied to one or more applications or services 

that are accessible to the operator’s subscriber base. Global subscriber policies can 

be defined for each service or application. A global subscriber policy includes a 

service aware roaming control policy to prevent a subscriber from accessing 

operator-defined services or applications while roaming. EX-1004 12:23-39. This 

is an example of a second component comprising (1) identifying whether or not the 

wireless subscriber requesting wireless access is roaming (information specifying a 

second traffic classification filter ...) and (2) preventing the wireless subscriber 

from accessing operator-defined services or applications while roaming (a second 

network policy enforcement action ... triggered ... when the traffic event possesses 

a characteristic that matches the second traffic classification filter). EX-1003, 

¶154. 

Additionally, Poh teaches different operator policy types used for inspection 

and enforcement of traffic including gating control policies, data throttling 

policies, and packet inspection policies. EX-1004 11:57-60. Thus, Poh includes 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 48 of 90 PageID #:

7327
41 

different combinations of policies that include first and second components for 

inspecting traffic and triggering an enforcement action. EX-1004 21:53-61 

(various “combinations” of different policies including roaming); 13:38-59. EX1003, ¶155. 

Even though Poh does not use the term “traffic classification filters,” a 

POSA understood that Poh discloses traffic classification filters. EX-1003, ¶156 

(citing EX-1001, 35:52-36:46). As discussed in the State of the Art section above, 

a POSA understood that it was known that policies are enforced by policy 

enforcement points, and these policy enforcement points receive rules that include 

matching (i.e., filtering) criteria for identifying packets and data flows and 

enforcement actions to be applied upon matches. EX-1006 p. 253; EX-1010, §§ 

4.1-4.3, 6.2.2, 6.3, 6.5; EX-1007 p. 13; EX-1008 p. 2978; EX-1003, ¶156. A 

POSA understood Poh’s rules include a traffic classification filter because those 

rules includes (1) matching criteria (as described above), and (2) an enforcement 

action (as described above). EX-1003, ¶¶156-157. 

If Patent Owner asserts that Poh does not expressly state that its rules 

include traffic classification filters, a POSA would be motivated to modify the 

teachings of Poh to include traffic classification filters as taught by Maes for the 

reasons discussed in the Motivation to Modify Teachings section (§VI.A.3), above. 

Maes describes that a policy rule is a “combination of a condition and actions to be 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 49 of 90 PageID #:

7328
42 

performed if the condition is true.” EX-1005, [0024]. Maes further describes that 

policies are applied to traffic that has been inspected by a sniffer/inspection 

module if they match traffic criteria for application of the policy traffic 

classification filters. Thus, as described in the Motivation to Modify Teachings 

section, a POSA would be motivated to modify the teaching of Poh so that each 

policy or policy rule has (i) a “traffic classification filter” for filtering traffic events 

by a traffic inspection system and (ii) an enforcement action that is triggered in a 

network policy enforcement system. EX-1003, ¶158. 

[1.3] process the first service plan component and the second 

service plan component to create a network provisioning 

instruction set in accordance with a prioritization of the first 

traffic classification filter over the second traffic classification 

filter, the network provisioning instruction set comprising one 

or more traffic inspection provisioning instructions for the 

network traffic inspection system and one or more policy 

enforcement provisioning instructions for the network policy 

enforcement system, the network traffic inspection system and 

the network policy enforcement system implementing one or 

more policies applicable to the wireless end-user device; 

Poh discloses this element. EX-1003, ¶¶161-174. Effectively, this element 

recites two actions: (1) prioritizing the first filter over the second filter and (2) 

converting the rules to “instructions” for the network to implement. Poh’s Policy 

Intelligence Rules System (PIRS) 126 (green) prioritizes rules. Poh’s PCPS 

converts the rules to instructions. EX-1003, ¶161. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 50 of 90 PageID #:

7329
43 

Poh’s PIRS receives the policies and determines rules for the network to use 

in addressing subscriber requests (process the first service plan component and the 

second service plan component to create a network provisioning instruction set). 

EX-1004 18:59-61. Poh’s PIRS analyzes the policies to determine how the 

network should handle the request for resources. Rules determination includes 

reconciliation of the policies, to determine which policies should be given 

precedence, and/or additional operations to determine how the network, application 

or service should be instructed to implement and/or enforce the determined policy 

(create a network provisioning instruction set ... with a prioritization of the first 

traffic classification filter over the second traffic classification filter). EX-1004 

20:26-35; EX-1003, ¶162. 

The rules from Poh’s PIRS are sent to Poh’s PCPS to generate instructions 

for the PCRF, PCEF and/or ISGW to implement policy rule charging decisions, 

charging, and enforcement for the wireless subscriber (the network provisioning 

instruction set comprising... traffic inspection provisioning instructions... and ... 

policy enforcement provisioning instructions ... implementing one or more policies 

applicable to the wireless end-user device). EX-1004 16:28-34 (PCPS “receive[s] 

rules from the PIRS 126 and send[s] instructions to the PCRF, PCEF, and OCS ... 

for policy rule charging decisions, charging, and enforcement purposes. The PCPS 

128 can receive rules from the PIRS 126, generate instructions for the PCRF, other 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 51 of 90 PageID #:

7330
44 

elements in the network layer, and/or application servers, and send the instructions 

to the appropriate policy element”), EX-1004, 21:8-34, Figs. 3, 8; EX-1003, ¶163. 

FIG. 7 schematically illustrates PIRS operation. 

EX-1004, Fig. 7. 

In step 702, the PIRS retrieves and/or receives operator policies, global 

subscriber policies, subscriber profile data and/or subscription profile data from the 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 52 of 90 PageID #:

7331
45 

MPR. Events, such as the request of a network resource by a subscriber, can 

trigger sending of policies to the PIRS. EX-1004, 19:19-29; EX-1003, ¶¶164-166. 

At steps 704-708, the PIRS analyzes policies to identify conflicts. For 

example, operator policies, global subscriber policies and/or subscriber policies 

may conflict with each other. Policy conflict identification includes identifying 

and tagging the conflicting policies and to perform more operations on the policies. 

EX-1004 19:30-48; EX-1003, ¶167. 

At step 710, PIRS resolves conflicts based on criteria such as policy conflict 

resolution rules and/or a policy resolution application. For example, if a network 

operator may specific policies to deny services based on privacy, safety, and/or 

liability concerns. PIRS can be configured to address any requests for services 

addressed by the operator policy by giving the operator policy precedence in policy 

conflict resolution, thereby determining to deny the service, even if a 

subscriber/subscription policy, allows such services. EX-1004 19:49-64; EX-1003, 

¶168. 

Similarly, PIRS can be configured to give subscriber policies precedence 

over operator policies and/or global subscriber policies. EX-1004, 19:65-20:25. 

By way of example, a subscriber can decide to disable SMS for an account. One or 

more subscriber policies can be generated to reflect the subscriber’s choice. The 

network operator can determine that it wants to grant SMS resources by default to 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 53 of 90 PageID #:

7332
46 

subscribers who request SMS resources. To implement this policy, the operator 

creates operator policies and/or global subscriber policies that grant SMS resources 

by default. PIRS can resolve conflicts by giving the subscriber’s policies 

precedence over the operator policies and/or the global subscriber policies. For 

example, though an SMS resource may be granted by default to all subscribers, this 

particular subscriber can be denied the SMS resource to enforce the subscriber’s 

policies 122, 124. Other conflict scenarios and resolution methods are possible 

and contemplated. EX-1004, 19:65-20:25; EX-1003, ¶169. 

Thus, as detailed above, PIRS can be configured to resolve conflicts with 

operator policies by giving the operator policies precedence (... a prioritization of 

the first traffic classification filter over the second traffic classification filter). EX1004 19:54-56; EX-1003, ¶170. 

At step 712, PIRS determines rules based upon policies. PIRS analyzes 

policies to determine how the network should handle the resource request. 

Determination includes policy reconciliation, precedence, and/or additional 

operations to instruct implementation and/or enforcement of the determined policy. 

EX-1004 20:26-36; EX-1003, ¶171. 

Furthermore, PIRS can determine a rule that reflects action needed to grant, 

restrict, and/or deny the requested resource. The determined rules reflect action 

determined by reconciling various policies or one or more policies that had no 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 54 of 90 PageID #:

7333
47 

conflicts. For example, if analysis of an operator policy reflected a network 

operator’s desire to grant a network resource, and analysis of subscriber policies 

also resulted in granting of a network resource, PIRS generates a rule that reflects 

the desired action, i.e., to grant the requested network resource to the subscriber. 

The generated rules can describe the determined network action in response to the 

resource request. At step 714, the rule is passed to other network elements. EX1004 20:37-53; EX-1003, ¶172. 

Poh’s PCPS receives rules, generates instructions implementing those rules 

and provides those instructions to policy elements such as the PCRF and PCEF for 

implementation. EX-1004 14:4-16; 16:28-34, 18:41-44, 20:61-61:34; Fig. 8; EX1003, ¶173. 

If PO asserts that Poh’s determining of rules giving precedence to traffic 

classification filter over another is not the claimed prioritization, a POSA would be 

motivated to modify the teachings of Poh to include prioritization of Poh’s rules by 

their traffic classification filters as taught by Maes for the reasons described in the 

Motivation to Modify Teaching section. EX-1003, ¶174. 

[1.4] provide the one or more traffic inspection provisioning 

instructions to the network traffic inspection system; and 

As detailed in [1.3] Poh’s PCPS (brown) is configured to receive rules 

created by the PIRS and provide the instructions to elements such as the PCRF, 

PCEF and/or ISGW, any one of which is or includes a network traffic inspection 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 55 of 90 PageID #:

7334
48 

system (provide ... traffic inspection provisioning instructions to the network 

traffic inspection system). EX-1004 14:4-10; 16:28-31; EX-1003, ¶¶176-177. 

[1.5] provide the one or more policy enforcement provisioning 

instructions to the network policy enforcement system. 

As detailed in [1.3-1.4], Poh’s PCRF, PCEF, and/or ISGW is or includes a 

network traffic inspection systems and is or includes a network policy enforcement 

system and receives provisioning instructions from the PIRS. Further, Poh 

contemplates multiple PCRFs, PCEFs and ISGWs. EX-1004 14:4-10; 16:28-34; 

EX-1003, ¶¶179-181. 

In some embodiments, one of the PCRF, PCEF and ISGW operates as the 

network traffic inspection system and another of the PCRF, PCEF and ISGW 

operates as the network policy enforcement system. For example, the ISGW 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 56 of 90 PageID #:

7335
49 

implements security policies provisioned to it from the PCPS to monitor network 

traffic and recognize security threats. EX-1004, 11:57-64, 23:7-24:11, 24:31-38, 

FIG. 10. The ISGW sends information relating to security threats to a policy 

enforcement and/or access control enforcement point such as the PCRF. EX-1004, 

23:17-20. More specifically, the ISGW analyzes security threats to determine an 

enforcement point for a security policy that addresses the recognized threat. The 

enforcement point can be the ISGW itself or an access control enforcement point 

such as the PCRF, the PCEF, or another network node. EX-1004, 24:39-50; EX1003, ¶181. 

Claim 8 

The network service plan provisioning system of claim 1, wherein 

at least one of the one or more policies is dependent on a network 

state. 

Poh’s policies include being dependent on whether the device is roaming 

(dependent upon a network state): 

a global subscriber policy can be a service aware roaming control 

policy that can prevent a subscriber from accessing operator-defined 

services or applications while roaming. 

EX-1004 12:28-31; FIG. 1, claim 7 (listing policies with different states. EX1003, ¶¶231-233. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 57 of 90 PageID #:

7336
50 

Further, Poh’s subscriber profile data and subscription profile data include 

location information and service related roaming entitlements (dependent upon a 

network state). EX-1004 12:61-64; 13:9-14, 18:45-60. EX-1003, ¶233. 

Claim 9 

The network service plan provisioning system of claim 8, wherein 

the network state comprises a congestion state of the wireless 

access network, a network location, a type of the wireless access 

network, whether the wireless access network is a roaming 

network, a routing identifier associated with the wireless access 

network, or a combination of these. 

Poh discloses this limitation for the reasons for Claim 8 (e.g., roaming 

network, location). 

Further, Poh’s policies may be based on quality of service (QoS) (comprises 

a congestion state of the wireless access network). EX-1004 18:26-44. Poh’s 

disclosure is consistent with the disclosure of the ’543 Patent that the congestion 

state includes the QoS class settings of packet error rate, jitter and delay settings, 

queue settings, and tag settings. EX-1001 38:28-35. Poh’s policies may be related 

to “networks” which renders obvious a type of the network. EX-1004, 18:13-16, 

13:47-55 (specific application policies for legacy networks). EX-1003, ¶¶235-236. 

Claim 10 

The network service plan provisioning system of claim 9, wherein 

the congestion state is based on a time of day, a measure of 

network congestion, a measure of a delay, a measure of a jitter, a 

packet error rate, or a combination of these. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 58 of 90 PageID #:

7337
51 

Poh discloses this limitation for the reasons for Claim 9. A POSA 

understood that QoS class settings include packet error rate, jitter, delay settings 

and time window parameters. EX-1001 38:28-35. A POSA would recognize that 

“Standardized QoS characteristics” were known to include “packet delay budget” 

(delay settings) and “packet error loss rate” (packet error rate) as those concepts 

had been standardized long prior to the ‘543 Priority Date. EX-1010, Section 

6.1.7.2. EX-1003, ¶238. 

Claim 15 

The network service plan provisioning system of claim 1, wherein 

the one or more network elements are further configured to 

include in the network provisioning instruction set an instruction 

to assist in enforcing a classification-based charging policy, 

wherein the classification is selected from the group of 

classification categories consisting of: application, destination, 

network, time of day, congestion state, quality of service, content 

type, and a combination of two or more of the classification 

categories. 

As discussed for limitation [1.4] and [1.5], Poh’s PIRS and PCPS generate 

instructions provided to the PCEF, PCRF and ISGW for enforcement. Poh’s 

PCRF is a decision point function in the network layer for control, altering of 

Quality of Service (QoS), and providing dynamic or personalized charging rules at 

a subscriber level (an instruction to assist in enforcing a classification-based 

charging policy). Poh’s classifications include roaming control, and based upon the 

subscriber entitlements, subscriber prohibitions, and/or subscriber and subscription 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 59 of 90 PageID #:

7338
52 

profile data, 124. EX-1004 14:17-24. Poh’s “policy trigger” includes a “request 

for a network resource such as a ... service, [or] a QoS.” EX-1004, 18:30-32. EX1003, ¶241. The subscriber profile data includes service related roaming 

entitlement (an instruction to assist in enforcing a classification-based charging 

policy). EX-1004 13:9-15. EX-1003, ¶241. For example, the classification can 

include an “application” such as “SMS.” EX-1004 20:9-25. Indeed, Poh gives a 

specific example of using two classifications. EX-1004 12:31-32. (“policy that can 

prevent a subscriber from accessing operator-defined applications (applications) 

while roaming (network)”). See also EX-1004 14:29-32 (QoS / application). 

Thus, a POSA understood that Poh’s PCPS can include provisioning 

instructions to assist in enforcing a classification-based charging policy using 

multiple of the claimed classifications. EX-1003, ¶242. 

Claim 21 

The network service plan provisioning system of claim 1, wherein 

the one or more network elements are further configured to 

facilitate reuse of the first service plan component, the second 

service plan component, the first traffic classification filter, the 

second traffic classification filter, the first policy enforcement 

action, or the second policy enforcement action in a plurality of 

service plans by storing the first service plan component, the 

second service plan component, the first traffic classification 

filter, the second traffic classification filter, the first policy 

enforcement action, and the second policy enforcement action as 

one or more objects in a catalog. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 60 of 90 PageID #:

7339
53 

As described for Claim 1, MPR is the master policy repository storing the 

first service plan component, the second service plan component, the first traffic 

classification filter, the second traffic classification filter, the first policy 

enforcement action, and the second policy enforcement action. The MPR receives, 

retrieves, accesses, organizes, and/or manages operator policies and global 

subscriber policies. EX-1004 11:53-56. EX-1003, ¶¶244-248. 

Poh does not provide explicit details of the MPR structure. However, the 

’543 Patent describes that its database model storing provisioning plans is “one of 

the more common models in use today” being data structures including “fields, 

records, files, objects, and any other applicable known or convenient structures for 

storing data.” EX-1001 11:3-13. Thus, a POSA would be motivated to implement 

a data structure having the policies stored as objects in a catalog because it uses 

one of the most commonly “known” models in use at the time the ’543 Patent was 

filed. Using a “catalog” is merely one of a limited number of design choices 

known to a POSA for which implementation of the profile data would be obvious. 

EX-1003, ¶245. 

Further, Poh discloses that the subscription profile data, which can be stored 

in the MPR or retrieved from ESPR, can include: 

The subscription profile data can include all available service plans 

offered by an operator as defined, maintained, and updated, for 

example, by operator service offer management personnel. Service 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 61 of 90 PageID #:

7340
54 

plans can include various categories, such as data rate plans for stand 

alone or integrated network cards for use in computer systems (e.g., 

laptop computers), data rate plans with voice plan add-ons, data 

rate plans combined with voice plans, international voice plans, 

international data plans, pooled plans, government plans, WiFi addon plans, device-specific plans, push email plans, business plans, 

media bundles, global positioning system (GPS) plans, any 

combination thereof, and the like. Each service plan can have 

normal operation and roaming entitlements for domestic and 

international plans. Roaming entitlements enable the operator to 

provide flat rate service plans for international roaming as defined by 

thresholds, country, and roaming operator. 

EX-1004 13:36-59. A POSA understood that this subscription profile data is a 

catalog containing the components recited in claim 21 as objects because such 

objects were a known implementation that allowed for ready access and retrieval 

of objects stored in computer data structures. EX-1003, ¶¶247-248. 

Claim 28 

The network service plan provisioning system of claim 1, wherein 

the one or more network elements are further configured to 

obtain service plan parameters for multiple service plans, 

combine one or more service policies for the multiple service 

plans into one composite-plan policy set, and provision the 

network policy enforcement system to enforce the composite 

policies for the multiple service plans. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 62 of 90 PageID #:

7341
55 

Poh discloses composite policies for multiple service plans. For example, 

Poh discloses “add-on” and “combined” plans. EX-1004 13:36-59 (quoted above 

in claim 21 analysis). EX-1003, ¶250. 

Moreover, as described for Claim 1, Poh describes how to evaluate multiple 

plans to develop enforcement rules, and the PIRS/PCPS generate provisioning 

instructions to implement the combined plans (provision the network policy 

enforcement system to enforce the composite policies for the multiple service 

plans). EX-1004 14:4-10; 16:28-31. EX-1003, ¶251. 

Claim 42 

The network service plan provisioning system of claim 1, wherein 

the network policy enforcement system comprises a policy 

decision element. 

Poh’s PCRF is part of the network policy enforcement system. See Claim 1. 

Poh’s PCRF is a decision point function (policy decision element). EX-1004 

14:17-24. Moreover, Poh’s PCEF and ISGW execute network policy enforcement 

actions defined in policy enforcement provisioning instructions that are triggered 

by traffic matches and thus are, or include, a policy decision element. See [1.2], 

[1.3] and [1.5]. EX-1003, ¶253. 

Claim 43 

The network service plan provisioning system of claim 1, wherein 

the network policy enforcement system or the network traffic 

inspection system comprises a gateway. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 63 of 90 PageID #:

7342
56 

Poh discloses this limitation for the reason discussed for Claim 1. Poh’s 

PCEF is an enforcement point function that can reside in gateway 130 (network 

policy enforcement system ...comprises a gateway). EX-1004 14:46-39; FIG. 1. 

Further Intelligent Security Gateway (ISGW) 138 is a gateway. EX-1004, 15:30-

32, FIG. 1. EX-1003, ¶255. 

Claim 45 

The network service plan provisioning system of claim 1, wherein 

at least a portion of the network policy enforcement system is in a 

network system communicatively coupled to the wireless end-user 

device over the wireless access network. 

As detailed in claim 1, Poh’s PCEF and ISGW are part of a network system 

in communication with end user devices. EX-1004 14:46-39; 14:64-67; 23:8-11; 

FIG. 1. EX-1003, ¶257. 

Claim 46 

The network service plan provisioning system of claim 1, wherein 

the network traffic inspection system or the network policy 

enforcement system comprises a programmable element. 

As detailed in claim 1, PCRF, PCEF and ISGW are (1) part of the 

enforcement system, and (2) programmable. EX-1004 3:36-39; 9:16-24; 22:50-

23:6; FIG. 10. EX-1003, ¶259. 

Claim 87 

The network service plan provisioning system of claim 1, wherein 

the one or more policies comprise a traffic control policy. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 64 of 90 PageID #:

7343
57 

Poh discloses this limitation for the reasons in Claims 1, 8 and 15. For 

example, Poh discloses a roaming policy (a traffic control policy). 

Poh’s disclosure is consistent with the ‘543 Patent disclosure describing a 

traffic control policy that permits or prevents roaming to another network. EX1001 8:66-67. EX-1003, ¶¶261-262.

Claim 88 

The network service plan provisioning system of claim 87, 

wherein the control policy specifies to allow, block, throttle, delay, 

or defer the traffic event. 

Poh’s policies’ actions include those that restricts access, (throttle), deny 

access, (block), and an allow access (allow) to the requested service. EX-1004 

5:20-24, 11:26-34, 12:23-33, 18:35-44, claim 3. EX-1003, ¶264. 

Claim 89 

The network service plan provisioning system of claim 87, 

wherein the traffic control policy is based on a network state, a 

device state, a service-plan-usage state, or a combination of these. 

See claims 1, 8, 9 and 87, for example, where the network state is roaming or 

usage thresholds. EX-1003, ¶265. 

Claim 96 

The network service plan provisioning system of claim 1, wherein 

the first service plan component or the second service plan 

component comprises a carrier component, a network protection 

component, an application component, a sponsored component, a 

subscriber-paid component, a marketing interceptor component, a 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 65 of 90 PageID #:

7344
58 

parental control component, a bulk component, a post-bulk 

component, or an end-of-life component. 

Poh discloses a variety of policies, including operating and subscriber 

policies, each of which can include a component in one or more categories recited 

in the claims: 

Operator policies can include native operator policies and/or shared 

operator policies (a carrier component, a network protection 

component), such as, but not limited to, gating control policies, data 

throttling policies, packet inspection policies (a network protection 

component), security policies (a network protection component), 

privacy policies, emergency policies, charging policies, applicationspecific policies (an application component), global application 

policies, service-specific policies, global service policies, content 

provider policies, legacy policies.... 

EX-1004 11:57-67. EX-1003, ¶¶268-269. 

Claim 98 

The network service plan provisioning system of claim 1, wherein 

the first service plan component or the second service plan 

component is associated with a service class. 

Poh’s subscriber policy-related data includes service entitlement, service 

prohibition, and other subscriber profile data (service class). For example, the 

subscriber policy related data includes rate plans, rate plan categories, service 

entitlement for rate plan or rate plan categories, pre-emption priorities for 

differential charging or treatment types, and service related roaming entitlement for 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 66 of 90 PageID #:

7345
59 

prepaid or postpaid payment types, as well as class of service (CoS) (all service 

class) entitlement for messaging, such as short message service (SMS) and 

multimedia message service (MMS) messaging, as well as other network services. 

EX-1004 13:9-27. EX-1003, ¶272. 

Claim 99 

The network service plan provisioning system of claim 98, 

wherein the service class is paid, marketing intercept, carrier, 

network protection, sponsored, parental control, open access, 

bulk, post-bulk, or a combination of these. 

Poh discloses this limitation for the reasons in Claims 98, e.g., different 

“payment types” such as prepaid or postpaid rate plans (paid). EX-1004 13:9-27. 

EX-1003, ¶274. 

Claim 120 

The network service plan provisioning system of claim 1, wherein 

the one or more policies comprise a policy associated with a 

tethering function. 

Poh discloses this limitation. As an initial matter, the ’543 Patent does not 

describe any tethering function. However, a POSA understood that tethering 

allows a device (e.g., laptop computer) to use a separate device for network access. 

Poh discloses “Service plans can include various categories, such as data rate plans 

for stand alone or integrated network cards for use in computer systems (e.g., 

laptop computers), ..., WiFi add-on plans.” Poh’s plans for a “stand alone ... 

network card[]” discloses the claimed tethering function because the “stand alone 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 67 of 90 PageID #:

7346
60 

card” would be tethered to the laptop either through a connection such as USB or 

the disclosed “WiFi add-on plan” (a policy associated with a tethering function). 

EX-1004 14:65-15:7; 13:38-59. EX-1003, ¶275. 

Claim 121 

The network service plan provisioning system of claim 1, wherein 

the one or more policies comprise a policy associated a web page, 

a domain, an application, a roaming network, an e-mail service, a 

networking service, a music download service, a video game 

service, a multimedia service, or a combination of these. 

Poh discloses several examples of the claimed policies such as policies 

associated with: 

roaming networks (EX-1004 12:29-39; 13:50-59); 

e-mail service (EX-1004 13:41-59); 

applications (EX-1004 12:17-22; 14:47-55); 

music download services (EX-1004 14:48-51); 

multimedia services (EX-1004 14:51-55). 

EX-1003, ¶276. 

B. Challenge 2: 

1. Burnett 

Burnett teaches a system and method for allowing a wireless subscriber to 

dynamically update their service plan. Specifically, the system provides the 

subscriber with a notification via SMS and email that includes a service plan 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 68 of 90 PageID #:

7347
61 

update offer. In response to the update offer, the subscriber indicates whether it 

accepted or declined the offer. The system updates the service plan for the 

subscriber as applicable. EX-1012 1:64-2:12; 2:23-27; 2:28-46. EX-1003, ¶278. 

2. Motivation To Combine Poh, Maes and Burnett. 

A POSA would have been motivated to combine these references with a 

reasonable expectation of success. EX-1003, ¶¶279-281. Poh and Burnett: (1) 

have a same inventor (Lisuan Poh); (2) were filed by the same leading technology 

company (AT&T); (3) were filed within a few months of each other; and (4) 

describe overlapping implementations of the same technology (policy enforcement 

in a wireless network). Poh presents an overall description of the policy 

enforcement including subscribers managing their subscriptions. Burnett (with the 

same inventor) provides further details of how subscribers dynamically manage 

their subscriptions to add or enhance their services. Effectively, Poh and Burnett 

are two complementary pieces of an overall subscription management system. The 

proposed modification is that Poh’s disclosure (including its existing subscriber 

management options) is augmented to include the specific disclosure of Burnett 

allowing for notification and dynamic modification of subscriber profiles. EX1003, ¶279. 

A POSA would be further motivated to make such modification because Poh 

discloses that it tracks usage by a subscriber and offers dynamic charging using 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 69 of 90 PageID #:

7348
62 

charging thresholds, and also provides notification to a subscriber related to an 

enhanced charged rate, and Burnett expressly discloses that it would be mutually 

beneficial to the subscriber and the service provider to offer to upgrade or 

downgrade a subscriber's service plan based upon subscriber history and subscriber 

usage data. EX-1004 14:20-35; EX-1012 1:42-45; 7:40-53. EX-1003, ¶280. 

A POSA understood that it would be a simple software modification to 

present an option to a subscriber to accept or decline a subscription update offer 

using a wireless phone or computer and thus have a reasonable expectation of 

success. EX-1003, ¶281. 

3. Detailed Application of Poh, Maes, and Burnett to the 

Challenged Claims 

Claim 16 

The network service plan provisioning system of claim 1, wherein 

the one or more network elements are further configured to 

include in the network provisioning instruction set an instruction 

to assist in presenting a service buy page notification with an 

actionable response. 

As discussed for Claim 1, Poh’s PIRS and PCPS generate provisioning 

instructions that are sent to PCRF and PCEF. Some instructions relate to charging 

the subscriber to assist in presenting a service buy page notification with an 

actionable response. For example, Poh’s PCRF can trigger messages and/or 

notifications to subscribers for events such as, for example, differential charges, or 

if the PCRF is triggered to treat the subscriber differently than the subscriber’s 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 70 of 90 PageID #:

7349
63 

expected treatment (presenting a service buy page notification). Furthermore, 

Poh’s PCRF can note that an enhanced charge rate, dropped IP flow, and/or QoS 

change will be invoked for a service or application. Upon such as determination, 

the PCRF, PCEF or OCF can trigger a notification to a subscriber relating to the 

change. EX-1004 14:25-35. EX-1003, ¶283. 

Further, Poh’s subscriber can change preferences for various rate plans 

frequently (an actionable response). EX-1004 21:65-22:3. Thus, a POSA 

understood that Poh’s subscriber could change a rate plan in response to receiving 

a notification from the PCRF that an enhanced charge rate will be invoked. EX1003 ¶284. 

If PO asserts that Poh does not expressly state presenting a service buy page 

notification with an actionable response, a POSA understood that it would be 

obvious to modify Poh to include presenting an option to a subscriber to accept or 

decline a subscription update offer as taught Burnett (presenting a service buy 

page notification with an actionable response). EX-1012 2:39-46. Burnett’s 

subscriber option includes presenting the option on the user’s wireless-end user 

device such as a phone with a user feedback component software for accepting or 

declining offers. EX-1012, 3:63-65, 5:33-47, 7:54-8:24, 9:31-52. EX-1003 ¶285. 

In this regard, the Poh/Burnett combination mirrors the ‘543 patent which 

describes a “notification policy structure” that notifies the user of policy 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 71 of 90 PageID #:

7350
64 

enforcement issues, such as thresholds, expirations, and block events. EX-1001, 

13:37-14:3. The ‘543 system may present “notification actions” for the user to 

provide feedback or instructions such as buying or approving plan changes. EX1001, 13:55-14:3. The ‘543 user may also use a “client dashboard” associated with 

computers connected to the network infrastructure to “buy” additional services. 

EX-1001, Fig. 9, 29:63-30:45. EX-1003 ¶286. 

Thus, the combination discloses a portion of the policy enforcement system 

being present on the wireless user’s device to allow user notifications of policy 

events and offer the user the option to provide feedback to the enforcement system 

such as through buying (or declining) offers. EX-1003, ¶287. 

Claim 44 

The network service plan provisioning system of claim 1, wherein 

at least a portion of the network policy enforcement system is on 

the wireless end-user device. 

The combination discloses this limitation for same reasons as Claim 16. For 

example, a subscriber receives notifications regarding usage to enforce the 

subscriber’s service plan, including an option to a subscriber to accept or decline a 

subscription update offer using the wireless end-user device. 

The user notification/action/feedback system (both in the prior art and in the 

‘543 patent) comprises a portion of the network policy enforcement system. For 

example, the ‘543 patent notification system allows for user “feedback” which 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 72 of 90 PageID #:

7351
65 

matches Burnett’s “user feedback component software.” EX-1001, 13:55-14:3; 

EX-1012, 9:31-52. That “subscriber feedback” is used by the “analytics engine” 

for policy enforcement. EX-1001, 11:55-12:3; 13:55-14:3; 21:49-22:12; 24:45-55; 

34:4-15. Indeed, Challenged Claim 61 recites that the notification is related to 

policy enforcement. Thus, the Poh/Burnett system for notification and actions 

such as policy changes mirrors that of the ‘543 Patent. EX-1003, ¶¶288-289. 

Thus, a POSA understood that the wireless end-user device is a portion of 

the network enforcement system because it receives notifications relating to the 

enforcement of the subscriber’s service plan and provides the opportunity for the 

subscriber to change the service plan being enforced. EX-1003, ¶290. 

Claim 47 

The network service plan provisioning system of claim 1, wherein 

the network policy enforcement system or the network traffic 

inspection system comprises a modem or an agent on the wireless 

end-user device. 

The combination discloses this limitation for the reasons in Claims 44 and 

45. EX-1003, ¶¶291-293. Specifically, the combination discloses that end user 

device 134 can be a smart phone that uses various wireless access technologies to 

communicate with gateway 130. EX-1004 14:64-15:24, EX-1012, 3:62-67. EX1003, ¶291. Burnett shows such a component: 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 73 of 90 PageID #:

7352
66 

EX-1012, Fig. 4, 9:53-10:15. Burnett’s transceivers render obvious the claimed 

“modem.” EX-1003, ¶292. Moreover, the claimed “agent” is rendered obvious by 

Burnett’s “applications” (408) which include the “user feedback component 

software for accepting or declining update offers.” EX-1012, 9:31-52. EX-1003, 

¶292. 

A POSA understood that the end user device would use a modem to 

communicate with the gateway using the wireless access technologies. EX-1003, 

¶293; see also EX-1004 FIG. 10 (showing input/out 1004 through which ISGW 

138 communicates); 22:50-53. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 74 of 90 PageID #:

7353
67 

Claim 57 

The network service plan provisioning system of claim 1, wherein 

the network policy enforcement system comprises a notification 

element. 

Poh discloses several different notification functions. EX-1003, ¶¶294-299. 

For example, the PCRF (and/or PCEF) (notification element) includes a 

notification function that triggers messages and/or notifications to subscribers for 

events such as differential charges, or if the PCRF is triggered to treat the 

subscriber differently than the subscriber’s expected treatment. EX-1004, 14:17-

35. EX-1003, ¶295. 

Poh further describes that the system is “further configured to trigger a 

notification to notify a subscriber that an action is to be taken. In some 

embodiments, the trigger is an online trigger. In some embodiments, the trigger is 

an offline trigger.” EX-1004 8:61-65, 11:48-49, 14:25-35. A POSA understood 

that the purpose of sending a notification to a subscriber is to inform the subscriber 

of a change in how the subscriber was being treated and to afford the subscriber to 

an opportunity to change the subscriber preferences. EX-1003, ¶296. Poh 

describes that a subscriber can change preferences frequently, for example, 

disabling SMS. EX-1004 21:61-22:3. Another example is that the subscriber 

would be subject to an enhanced charge rate, which a POSA understood would be 

triggered by exceeding a specified threshold of resources, for accessing a service 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 75 of 90 PageID #:

7354
68 

not included in a service plan or accessing a higher priority service. A subscriber 

receiving the notification would have the opportunity to accept or deny the charges 

or change the current service plan. Any change in the subscriber policies would be 

reflected in new provisioning instructions. EX-1004, 14:25-35; EX-1003, ¶296. 

Another notification function is that the ISGW (notification element) can 

send a notification of a security threat to network elements (notification element), 

and vice versa. EX-1004 9:22-28, 24:57-25:4. EX-1003, ¶297. 

Burnett matches Poh in describing notifications sent from the “service 

personalization engine” to the “user feedback component software” on the mobile 

device. EX-1012, 5:24-47, 9:31-52, Figs. 1-5. EX-1003, ¶298. 

Further, for the reasons in Claim 16, Poh as modified by Burnett, the 

PCRF/PCEF (notification element) provides a notification including a subscription 

offer update presenting an option to a subscriber to accept or decline a subscription 

update offer. EX-1003, ¶299. 

Claim 58 

The network service plan provisioning system of claim 1, wherein 

the network policy enforcement system implements a notification 

function. 

The combination discloses this limitation for the reasons for Claim 57. 

Claim 59 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 76 of 90 PageID #:

7355
69 

The network service plan provisioning system of claim 58, 

wherein the one or more network elements are further configured 

to: 

obtain notification information, the notification information at 

least assisting to specify or identify a notification content, a 

notification trigger, or a notification offer; and 

determine at least a portion of the policy enforcement 

provisioning instructions based on the notification information. 

The combination discloses this limitation for the reasons for Claims 1, 16 

and 57. The obtained notification information is any of Poh’s received 

notifications such as the enhanced charge rate, dropped IP flow, and/or QoS 

change and the security threats (e.g., at the ISGW or other network element) and 

the provisioning instructions are triggered to provide the response (such as the QoS 

change, charge rate change or responding to the security threat to be blocked 

(determine at least a portion of the policy enforcement provisioning instructions 

based on the notification information). They also disclose providing notification 

content or a notification offer as discussed for Claim 16. EX-1004 14:25-35; EX1003, ¶301. 

Claim 60 

The network service plan provisioning system of claim 1, wherein 

the one or more policies comprise a notification policy. 

The combination discloses this limitation for the reasons for Claims 1, 16, 

and 57, where the MPR includes policies regarding notifying a subscriber that an 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 77 of 90 PageID #:

7356
70 

action is to be taken (notification policies), such as for differential charges, 

dropped IP flows or QoS changes. EX-1004 14:25-35; EX-1003, ¶302. 

Claim 61 

The network service plan provisioning system of claim 60, 

wherein the one or more policy enforcement provisioning 

instructions assist in causing a notification to be delivered to a 

subscriber or to the wireless end-user device. 

The combination discloses this limitation for the reasons for Claims 1, 16, 

57 and 60. 

Claim 62 

The network service plan provisioning system of claim 61, 

wherein the notification comprises a selection option for 

providing feedback or instructions. 

The combination discloses this limitation for the reasons for Claims 1, 16, 

57, 60 and 61, where the notification includes an enhanced charge rate and an 

opportunity to accept or deny it through subscriber plan changes. EX-1003, ¶304. 

Claim 63 

The network service plan provisioning system of claim 61, 

wherein the notification indicates that a usage of a service plan 

has reached a particular percentage of a limit, or that a requested 

network activity has been capped because a policy limit has been 

reached. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 78 of 90 PageID #:

7357
71 

The combination discloses this limitation for the reasons in Claims 1, 16, 57, 

60 and 61, where an enhanced charge rate is tied to exceeding a specified usage 

threshold of a service plan. EX-1004 14:17-35; EX-1003, ¶305. 

Claim 64 

The network service plan provisioning system of claim 61, 

wherein the notification provides information about a service 

plan limit or an overage. 

The combination discloses this limitation for the reasons in Claim 63. 

Claim 65 

The network service plan provisioning system of claim 61, 

wherein the notification provides information about an offer. 

The combination discloses this limitation for the reasons in Claims 1, 16 and 

57, where the notification offers the subscriber the option to change the service 

plan. EX-1003, ¶307. 

Claim 66 

The network service plan provisioning system of claim 65, 

wherein the offer is an offer to allow an overage, an offer for a 

new service plan, or an offer to block an ongoing usage. 

The combination discloses this limitation for the reasons in Claim 65. 

Claim 68 

The network service plan provisioning system of claim 61, 

wherein the notification provides information about an activity of 

the wireless end-user device that has been blocked, or an activity 

of the wireless end-user device that is not allowed. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 79 of 90 PageID #:

7358
72 

The combination discloses this limitation for the reasons in Claim 57, where 

the notification is, for example, a dropped IP flow. EX-1004 14:25-35. EX-1003, 

¶309. 

Claim 69 

The network service plan provisioning system of claim 61, 

wherein the notification provides a message or an offer based on 

a current activity or a status of the wireless end-user device. 

The combination discloses this limitation for the reasons in Claims 1, 16, 57, 

60 and 61. EX-1004, 14:17-35. EX-1003, ¶310. 

Claim 70 

The network service plan provisioning system of claim 69, 

wherein the current activity or the status of the wireless end-user 

device is based on the traffic event. 

The combination discloses this limitation for the reasons in Claim 69. 

Claim 71 

The network service plan provisioning system of claim 61, 

wherein the notification is an actionable notification enabling a 

user of the wireless end-user device to provide a response to the 

notification. 

The combination discloses this limitation for the reasons in Claims 1, 16, 57 

and 60. 

Claim 72 

The network service plan provisioning system of claim 71, 

wherein the response comprises a directive to dismiss the 

notification, a directive to cancel the notification, an 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 80 of 90 PageID #:

7359
73 

acknowledgment of the notification, a request for information, or 

a request to make a purchase. 

The combination discloses this limitation for the reasons in Claims 1, 16, 57, 

60, 61 and 71. 

Claim 80 

The network service plan provisioning system of claim 61, 

wherein the notification comprises an upsell offer. 

The combination discloses this limitation for the reasons in Claims 1, 16, 57 

and 60. 

Claim 85 

The network service plan provisioning system of claim 61, 

wherein the notification comprises information about a purchase, 

a data usage, an application, an amount of data, a percentage, or 

a combination of these. 

The combination discloses this limitation for the reasons in Claim 63. 

Claim 86 

The network service plan provisioning system of claim 61, 

wherein the notification comprises information to assist a 

subscriber in activating the wireless end-user device, selecting a 

service plan for the wireless end-user device, setting a preference, 

or a combination of these. 

The combination discloses this limitation for the reasons in Claims 1, 16, 57 

and 60. 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 81 of 90 PageID #:

7360
74 

VII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION AND 

DENY INSTITUTION 

A. The Board Should Not Deny Institution Under 35 U.S.C. § 325 

The examiner did not cite or apply Poh, Maes or Burnett (or any other prior 

art). Thus, the Board should not discretionarily deny institution under these 

circumstances. 

B. The Board Should Not Deny Institution Under 35 U.S.C.§ 314(a) 

The Board has discretion to deny institution under 35 U.S.C. § 314(a). 

Related to the Director’s June 2022 interim guidance regarding application of the 

Fintiv factors4

, the Petition is particularly strong in the underlying merits. Thus, 

under the Interim Guidance, the Board should not deny institution. 

Nevertheless, the Board’s decision in Sotera Wireless, Inc. v. Masimo Corp., 

IPR2020-01019, Paper 12 (Dec. 1, 2020) instructs that a holistic view of the 

remaining Fintiv factors also weighs in favor of institution. 

Factor 1 is neutral because no request for stay has been filed. 

Under factor 2, trial date has been set for May 19, 2025. EX-1022. A Final 

Written Decision is expected in the present matter in November 2025. Considering 

 

4

 Interim Procedure For Discretionary Denials In AIA Post Grant Proceedings 

With Parallel District Court Litigation, PTO Director’s Memorandum (June 21, 

2022). 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 82 of 90 PageID #:

7361
75 

the uncertainties of litigation scheduling, particularly as here where multiple trials 

are scheduled for the same date, this factor weighs against discretionary denial. 

Factor 3 favors institution. The co-pending litigation is in its early stages, 

and the investment in it has been minimal. The parties have not exchanged 

proposed claim terms or constructions, and will not complete claim construction 

briefing until September 2024. The Markman hearing is not until November 2024. 

Fact discovery is not set to close until December 2024, and expert discovery is not 

set to close until February 2025. See PEAG LLC v. Varta Microbattery GMBH, 

IPR2020-01214, Paper 8 at 17 (Jan. 6, 2021) (finding that since no claim 

construction hearing had yet been held and discovery was not completed, the little 

investment in the parallel proceeding weighed against discretionary denial). Thus, 

this factor weighs against discretionary denial. 

Under factor 4, there will not be complete overlap in the issues raised in the 

IPR and the Related Litigation and this favors institution. PO asserted 71 claims 

from the ‘543 patent and 300+ claims from four patents in the Related Litigations 

(EX-1014) – an amount that far exceeds the number of claims that the district court 

will allow at trial. See https://txed.uscourts.gov/?q=model-order-focusing-patentclaims-and-prior-art-reduce-costs. (Model Order limiting patentees to a “Final 

Election of Asserted Claims, which shall identify no more than five asserted claims 

per patent ... and no more than a total of 16 claims”). Thus, it is extremely unlikely 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 83 of 90 PageID #:

7362
76 

the district court addresses the validity of all 71 asserted claims of the ’543 

challenged in this Petition and its companion Petition. 

Under factor 5, Petitioners are defendants in the Related Litigations. This 

factor is neutral as it is “far from an unusual circumstance that a petitioner in inter 

partes review and a defendant in a parallel district court proceeding are the same.” 

See Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC, 

IPR2019-01393, Paper 24 at 12-13 (PTAB June 16, 2020). 

To the extent that the Board finds that factors 1-5 favor discretionary denial, 

under factor 6, other circumstances weigh in favor of institution. Here, the merits 

of the Petition are particularly strong and the claims did not receive any analysis 

during prosecution. For example, as detailed above, the Challenged Claims recite 

merely the use of well-known structural components to implement well-known 

policies to arrive at well-known outcomes. The Challenged Claims recite nothing 

that is novel or non-obvious—thus demonstrating that the Petition is particularly 

strong in the merits. This evidence, if unrebutted, shows that it is highly likely that 

the Petitioners would succeed in demonstrating the unpatentability of at least one 

claim. 

When viewed holistically, the timing of the present Petition is reasonable, 

there has been relatively limited investment in the Related Litigation, and there is 

minimal overlap between the present IPR and the Related Litigation. Further, 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 84 of 90 PageID #:

7363
77 

coupling these Fintiv considerations with compelling evidence of unpatentability 

presented in the Petition, the efficiency and integrity of the IPR process is best 

served by instituting review. 

VIII. Mandatory Notices Under 37 C.F.R. §42.8 

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

The real party-in-interest in this Petition is Cellco Partnership d/b/a Verizon 

Wireless, Verizon Corporate Services Group Inc., T-Mobile USA, Inc., AT&T 

Services, Inc., AT&T Mobility LLC, and AT&T Corp.5

 

5

 Out of an abundance of caution, Petitioners identify all current defendants in the 

below identified cases as potential real parties in interest only for the purpose of 

this proceeding and only to the extent that Patent Owner contends that these 

separate legal entities should be named real parties in interest in this IPR. 

Petitioners do so to avoid the potential expenditure of resources to resolve such a 

challenge. Petitioners also acknowledge that each petitioner has a number of 

affiliates. No unnamed entity is funding, controlling, or otherwise has an 

opportunity to control or direct this Petition or Petitioners’ participation in any 

resulting IPR. Petitioners are also not aware of any affiliate that would be barred 

from filing this Petition under 35 U.S.C. § 315(e). 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 85 of 90 PageID #:

7364
78 

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

1. Judicial Matters 

As of the filing date of this Petition and to the best knowledge of Petitioners, 

the ’543 Patent is involved in the following litigations (the “Related Litigations”): 

 Headwater Research LLC v Verizon Communications Inc., et al, Case 

No. 2:23-cv-00352-JRG-RSP (EDTX); 

 Headwater Research LLC v AT&T Inc., et al, Case No. 2:23-cv00398-JRG-RSP (EDTX); 

 Headwater Research LLC v T-Mobile US, Inc., et al, Case No. 2:23-

cv-00379-JRG-RSP (EDTX); 

Administrative Matters: 

As of the filing date of this Petition and to the best knowledge of Petitioners, 

the ’543 Patent has not been subject to any Petitions for inter partes reviews. 

2. Related Patents 

See Exhibit 1013. 

C. Lead/Back-up Counsel (37 C.F.R. § 42.8(b)(3)): 

Lead Counsel: 

Patrick D. McPherson, USPTO Reg. No. 46,255 

DUANE MORRIS LLP 

901 New York Avenue N.W., Suite 700 East 

Washington, DC 20001 

P: (202) 776-7800 

F: (202) 776-7801 

PDMcPherson@duanemorris.com

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 86 of 90 PageID #:

7365
79 

Back-up Counsel: 

Kevin P. Anderson, Reg. No. 43,471 

DUANE MORRIS LLP 

901 New York Avenue N.W., Suite 700 East 

Washington, D.C. 20001 

P: (202) 776-5213 

F: (202) 776-7801 

kpanderson@duanemorris.com

Back-up Counsel: 

Joseph A. Powers, Reg. No. 47,006 

DUANE MORRIS LLP 

30 South 17th Street 

Philadelphia, PA 19103-4196 

P: (215) 979-1842 

F: (215) 979-1000 

japowers@duanemorris.com

D. Notice of Service Information (37 C.F.R. § 42.8(b)(4)): 

Please direct all correspondence to lead and back-up counsel at the above 

addresses. Petitioners consent to electronic service at the email addresses above. 

IX. Conclusion 

Petitioners request the Board institute IPR and cancel all Challenged Claims 

as unpatentable. 

Respectfully submitted, 

BY: /Kevin P. Anderson/ 

Kevin P. Anderson 

USPTO Reg. No. 43,471 

Duane Morris LLP 

Dated: 

June 20, 2024

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 87 of 90 PageID #:

7366
Petition for Inter Partes Review of U. S. Patent No. 8,924,543 

CERTIFICATION OF SERVICE ON PATENT OWNER 

Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4) and 42.105, the undersigned 

certifies that on the 20th of June, 2024, a complete and entire copy of this Petition 

for Inter Partes Review of U.S. Patent No. 8,924,543 and all supporting exhibits 

were served by electronic means by agreement with Patent Owner to: 

106963 - Headwater Research LLC 

C/O Farjami & Farjami LLP 

26522 La Alameda Ave., Suite 360 

Mission Viejo, CA 

UNITED STATES 

mfarjami@farjami.com

ffarjami@farmjami.com

Reza Mirzaie (CA SBN 246953) 

rmirzaie@raklaw.com 

Neil Rubin (CA SBN) 

nrubin@raklaw.com 

Paul A. Kroeger (CA SBN 229074) 

pkroeger@raklaw.com 

Philip X. Wang (CA SBN 262239) 

pwang@raklaw.com 

James N. Pickens (CA SBN 307474) 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 88 of 90 PageID #:

7367
Petition for Inter Partes Review of U. S. Patent No. 8,924,543 

2 

jpickens@raklaw.com 

Adam Hoffman 

ahoffman@raklaw.com 

Jacob Buczko 

jbuczko@raklaw.com 

Minna Chan 

mchan@raklaw.com 

Christian Conkle 

cconkle@raklaw.com 

RUSS AUGUST & KABAT 

12424 Wilshire Blvd. 12th Floor 

 

 / Kevin P. Anderson / 

Kevin P. Anderson, Reg. No. 43,471 

901 New York Avenue, N.W. 

Suite 700 East 

Washington, D.C. 20001 

P: (202) 776-7800 

F: (202) 776-7801 

kpanderson@duanemorris.com 

ATTORNEY FOR PETITIONER 

 

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 89 of 90 PageID #:

7368
Petition for Inter Partes Review of U. S. Patent No. 8,924,543 

3 

CERTIFICATE OF COMPLIANCE 

Pursuant to 37 C.F.R. § 42.24 et seq., the undersigned certifies that this 

document complies with the type-volume limitations. This document contains 

13,985 words as calculated by the “Word Count” feature of Microsoft Word 2010, 

the word processing program used to create it. 

Dated: June 20, 2024 By: Kevin P. Anderson 

 Kevin P. Anderson 

 Reg. No. 43,471 

 Duane Morris LLP 

 901 New York Avenue, N.W., 

Suite 700 East 

 Washington D.C., 20001 

 P: (202) 776-7800 

 F: (202) 776-7801 

 kpanderson@duanemorris.com

Case 2:23-cv-00352-JRG-RSP Document 99-7 Filed 10/24/24 Page 90 of 90 PageID #:

7369