Exhibit H

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 1 of 85 PageID #: 7538
 

 

 

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.: IPR2024-01041 

_____________________ 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 2 of 85 PageID #: 7539
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 .......................................................................................... 26

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 3 of 85 PageID #: 7540
iii 

3. Motivation To Modify Poh With The Teaching Of Maes ........ 30

4. Detailed Application of Poh and Maes to the Challenged 

Claims ....................................................................................... 33

Claim 1 ...................................................................................... 33

Claim 2 ...................................................................................... 48

Claim 3 ...................................................................................... 51

Claim 4 ...................................................................................... 53

Claim 5 ...................................................................................... 54

Claim 6 ...................................................................................... 58

Claim 7 ...................................................................................... 58

Claim 11 .................................................................................... 58

Claim 12 .................................................................................... 60

Claim 13 .................................................................................... 61

Claim 22 .................................................................................... 62

Claim 23 .................................................................................... 62

Claims 30-33, and 35-41 ........................................................... 64

Claim 90 .................................................................................... 66

Claim 91 .................................................................................... 67

Claim 92 .................................................................................... 67

Claim 93 .................................................................................... 67

Claim 112 .................................................................................. 68

Claim 113 .................................................................................. 68

VII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION AND 

DENY INSTITUTION .................................................................................. 69

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 4 of 85 PageID #: 7541
iv 

A. The Board Should Not Deny Institution Under 35 U.S.C. § 325 ....... 69

B. The Board Should Not Deny Institution Under 35 

U.S.C.§ 314(a) ..................................................................................... 69

VIII. Mandatory Notices Under 37 C.F.R. §42.8 ................................................... 72

A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................... 72

B. Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 73

1. Judicial Matters ......................................................................... 73

2. Related Patents .......................................................................... 74

C. Lead/Back-up Counsel (37 C.F.R. § 42.8(b)(3)): ............................... 74

D. Notice of Service Information (37 C.F.R. § 42.8(b)(4)): .................... 74

IX. CONCLUSION .............................................................................................. 75

 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 5 of 85 PageID #: 7542
v 

TABLE OF AUTHORITIES 

 PAGE(S) 

CASES 

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .......................................... 58, 64 

Paice LLC v. Ford Motor Co., 881 F.3d 894 (Fed. Cir. 2018) ................................ 28 

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

2021) ..................................................................................................................... 70 

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

01393, Paper 24 at 12-13 (PTAB June 16, 2020) ................................................ 71 

Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) 70 

 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 6 of 85 PageID #: 7543
vi 

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. 8,032,920 (“Maes II”) 

1012 [this exhibit intentionally left blank] 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 7 of 85 PageID #: 7544
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, 2-7, 11-13, 16, 22-23, 

30-33, 35-41, 57-66, 68-72, 80, 85-86, 90-93, and 112-113 (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 IPR2024-01042 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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 8 of 85 PageID #: 7545
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 9 of 85 PageID #: 7546
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 10 of 85 PageID #:

7547
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 11 of 85 PageID #:

7548
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 ¶115-230. 

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 

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).

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 12 of 85 PageID #:

7549
6 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 13 of 85 PageID #:

7550
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 14 of 85 PageID #:

7551
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 15 of 85 PageID #:

7552
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 16 of 85 PageID #:

7553
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 17 of 85 PageID #:

7554
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 18 of 85 PageID #:

7555
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 19 of 85 PageID #:

7556
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 20 of 85 PageID #:

7557
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 21 of 85 PageID #:

7558
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 22 of 85 PageID #:

7559
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 23 of 85 PageID #:

7560
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 24 of 85 PageID #:

7561
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, 2-7, 11-13, 16, 22-23, 30-33, 35-41, 57-66, 68-72, 80, 85-86, 90-

93, and 112-113 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, 2-7, 11-13, 22-

23, 30-33, 35-41, 

90-93, and 112-113 

§ 103 Poh, alone, or in view of Maes 

Ground 1: 

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). 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 25 of 85 PageID #:

7562
19 

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). 

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: 

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

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 26 of 85 PageID #:

7563
20 

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, 

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. 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 27 of 85 PageID #:

7564
21 

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. 

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 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 28 of 85 PageID #:

7565
22 

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 

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 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 29 of 85 PageID #:

7566
23 

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. 

(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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 30 of 85 PageID #:

7567
24 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 31 of 85 PageID #:

7568
25 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 32 of 85 PageID #:

7569
26 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 33 of 85 PageID #:

7570
27 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 34 of 85 PageID #:

7571
28 

(“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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 35 of 85 PageID #:

7572
29 

 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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 36 of 85 PageID #:

7573
30 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 37 of 85 PageID #:

7574
31 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 38 of 85 PageID #:

7575
32 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 39 of 85 PageID #:

7576
33 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 40 of 85 PageID #:

7577
34 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 41 of 85 PageID #:

7578
35 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 42 of 85 PageID #:

7579
36 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 43 of 85 PageID #:

7580
37 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 44 of 85 PageID #:

7581
38 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 45 of 85 PageID #:

7582
39 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 46 of 85 PageID #:

7583
40 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 47 of 85 PageID #:

7584
41 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 48 of 85 PageID #:

7585
42 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 49 of 85 PageID #:

7586
43 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 50 of 85 PageID #:

7587
44 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 51 of 85 PageID #:

7588
45 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 52 of 85 PageID #:

7589
46 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 53 of 85 PageID #:

7590
47 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 54 of 85 PageID #:

7591
48 

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 2 

The network service plan provisioning system of claim 1, wherein 

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 comprises order 

traffic inspection comparison operations in the one or more 

traffic inspection provisioning instructions such that the one or 

more traffic inspection provisioning instructions direct the 

network traffic inspection system to determine whether the traffic 

event possesses the characteristic that matches the first traffic 

classification filter before determining whether the traffic event 

possesses the characteristic that matches the second traffic 

classification filter. 

This limitation is disclosed by Poh, alone, or in combination with Maes. 

EX-1003, ¶¶183-190 For the same reasons discussed with Claim 1, Poh discloses 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 55 of 85 PageID #:

7592
49 

a first traffic classification and a second traffic classification filter, and giving 

precedence to one policy over another. A POSA understood that Poh’s disclosure 

of giving precedence of one policy over another means that rules (traffic 

classification filter) would be applied in order of precedence (... traffic inspection 

provisioning instructions ... to determine whether the traffic event possesses the 

characteristic that matches the first traffic classification filter before determining 

whether the traffic event possesses the characteristic that matches the second 

traffic classification filter). EX-1003, ¶184. 

Poh provides several examples that multiple conditions can be required and 

that a POSA would recognize would be implemented by applying one policy 

sequenced before applying a second policy. EX-1003, ¶185. For example, the first 

classification filter would be a form of authorization (“an allow access rule that 

allows access to the requested [IP] service”) and then the second classification 

filter would be application-specific QoS (e.g., a “QoS change will be invoked for a 

service or application”). EX-1004, 5:23-34, 14:29-30. EX-1003, ¶185. Another 

example would be the first traffic classification filter to determine whether the user 

is roaming, and if so, the second classification filter can determine which services 

to allow while roaming, e.g., allowed to (or not) access Internet when roaming. 

EX-1004 12:29-31 (“service aware roaming control policy that can prevent a 

subscriber from accessing operator-defined services or applications while 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 56 of 85 PageID #:

7593
50 

roaming”); 13:50-53; 21:53-61 (various “combinations” of different policies 

including roaming); EX-1003, ¶185. 

Alternatively, in the same example, if the user is allowed to roam, the 

second classification filter can determine the charging model for type of 

communications when roaming. EX-1004, 14:21-23 (“dynamic charging rules ... 

based on ... roaming control”); EX-1003, ¶186. Basically, any specific rule types 

can be sequenced in the claimed fashion including usage rules such as thresholds, 

QoS, roaming, application types, and rules at different levels (e.g., operator, global 

subscriber, or individual subscriber as detailed above). As a further example, rules 

that have higher priority / precedence would be sequenced first. For example, if a 

higher precedence operator rule precluded a particular action (e.g., a particular 

service or application), then a POSA would understand that such a rule would be 

evaluated first, followed by a subscriber rule because the evaluation of the operator 

rule may eliminate the need to evaluate the subscriber rule. EX-1003, ¶186. 

Moreover, by their very nature, it is obvious to apply rules in sequence. A 

POSA would recognize that two rules below that are written differently are still 

logically the same: 

1. “If [condition A] and [condition B] then [action]” 

2. “If [condition A] then 

 If [condition B] then 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 57 of 85 PageID #:

7594
51 

 [action]” 

The specific format of the rule specification is an implementation detail that is 

obvious. EX-1003, ¶¶187-188. 

To the extent that Patent Owner argues that Poh does not expressly state 

determining whether the traffic event possesses the characteristic that matches the 

first traffic classification filter before determining whether the traffic event 

possesses the characteristic that matches the second traffic classification filter,

Maes discloses this limitation. EX-1003, ¶189. Specifically, Maes discloses 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, ¶189. 

Thus, a POSA understood that the teaching of Poh would be modified so 

that the first traffic classification filter would be executed in sequence before the

second traffic classification filter, as taught by Maes. A POSA would be 

motivated to modify the teachings of Poh with the teachings of Maes for the reason 

described in the Motivation to Modify Teachings section above. EX-1003, ¶190. 

Claim 3 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 58 of 85 PageID #:

7595
52 

The network service plan provisioning system of claim 2, wherein 

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 further comprises 

include in the network provisioning instruction set one or more 

instructions directing the network traffic inspection system to 

determine whether the traffic event possesses the characteristic 

that matches the second traffic classification filter only if the 

traffic event does not possess the characteristic that matches the 

first traffic classification filter. 

This limitation is disclosed by Poh, alone, or in combination with Maes. EX1003, ¶¶192-195. As detailed for Claim 2, Maes discloses 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. Thus, as modified by 

Maes, Poh discloses that you only get to the second traffic classification filter if the 

first traffic classification does not trigger. EX-1003, ¶193. 

An example of this would be when the first traffic classification filter 

triggers when the user is roaming, and the second classification filter identifies the 

applications available to the user when the user is not roaming (determine whether 

the traffic event possesses the characteristic that matches the second traffic 

classification filter only if the traffic event does not possess the characteristic that 

matches the first traffic classification filter). Similarly, for a pair of rules that 

prevent roaming for certain applications and then differentially charge for roaming, 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 59 of 85 PageID #:

7596
53 

the charging rule would only need to be evaluated if the first rule does not match 

the filter (e.g., the list of applications for which roaming is not allowed). EX-1003, 

¶194. 

Even if Poh does not disclose this sequence of evaluations, a POSA would 

be motivated to modify the teachings of Poh with the teachings of Maes for the 

reason described in the Motivation to Modify Teachings section. EX-1003, ¶195. 

Claim 4 

The network service plan provisioning system of claim 2, wherein 

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 further comprises 

include in the network provisioning instruction set one or more 

instructions directing the network traffic inspection system to 

determine whether the traffic event also possesses the 

characteristic that matches the second traffic classification filter 

if the traffic event possesses the characteristic that matches the 

first traffic classification filter. 

This limitation is disclosed by Poh, alone, or in combination with Maes, for 

the reasons discussed with respect to Claims 1-3. EX-1003, ¶¶197-198. Further, 

Maes discloses that a policy refers to an ordered combination of policy rules that 

defines how to administer, manage, and control access to resources. A policy 

contains a combination of conditions and actions, with a condition being any 

expression that yields a Boolean value and an action (e.g., invocation of a function, 

Script, code, workflow) being associated with a policy condition in a policy rule. 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 60 of 85 PageID #:

7597
54 

An action is executed when its associated policy condition results in “true” from 

the policy evaluation step. EX-1004 [0024]. Thus, a POSA understood that 

Boolean logic would be used such that the second traffic classification filter would 

be considered if the first traffic classification filter is true. EX-1003, ¶197. 

Poh provides several examples where multiple conditions are required and 

that triggering of one policy results in triggering of a second policy. For example, 

the first classification filter could be a form of authorization (subscriber is allowed 

IP communications/internet access) and then the second classification filter could 

be application-specific QoS. Another example would be the first traffic 

classification filter determines whether the user is roaming, and if so, the second 

classification filter determines which services to allow while roaming, e.g., 

allowed to (or not) access Internet when roaming. Or in the same example, if the 

user is allowed to roam, the second classification filter can determine the charging 

model for type of communications when roaming. There are any number of 

scenarios expressly taught by the combination of Poh and Maes, and a POSA 

would be motivated to modify the teachings of Poh with the teachings of Maes for 

the reason described in the Motivation to Modify Teachings section. EX-1003, 

¶198. 

Claim 5 

[5.0] The network service plan provisioning system of claim 

1, further comprising: 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 61 of 85 PageID #:

7598
55 

[5.1] a policy enforcement priority rule datastore including a 

policy enforcement priority rule for determining whether the 

traffic event possesses the characteristic that matches the first 

traffic classification filter before determining whether the 

traffic event possesses the characteristic that matches the 

second traffic classification filter, 

[5.2] and wherein 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 comprises include the policy enforcement 

priority rule in the network provisioning instruction set. 

Poh discloses this limitation for the same reasons discussed with Claims 1-4. 

This claim essentially calls for a “priority rule” to determine the order of 

evaluation of the first/second filters. EX-1003, ¶¶199-205. 

As detailed in element [1.1] and Section VI.A.1(a), Poh’s MPR categorizes 

and stores received policies. EX-1004 18:9-25. EX-1003, ¶200. As detailed in 

element [1.3], Poh’s PIRS analyzes the stored policies to resolve conflicts and 

prioritize those policies. EX-1004, Fig. 7, 19:4-20:6. 

Poh’s PIRS includes policy reconciliation instructions 206 and rules 

determination instructions 208 that may resolve conflicts with operator policies by 

giving the operator policies precedence as detailed in [1.3] (policy enforcement 

priority rule [and] datastore). EX-1004, 15:33-16:3, 19:50-64, 20:26-36, Figs. 2, 

7; EX-1003, ¶201. 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 62 of 85 PageID #:

7599
56 

A POSA understood that the PIRS functionality to process the rules (e.g., to 

resolve conflicts) teaches ordering the evaluation of rules/policies—thus 

establishing a priority. EX-1003, ¶202. For example, Poh discloses that the PIRS 

can be configured to give subscriber policies precedence over operator policies 

and/or global subscriber policies (determining whether the traffic event possesses 

the characteristic that matches the first traffic classification filter before 

determining whether the traffic event possesses the characteristic that matches the 

second traffic classification filter). For example, operator policy and/or a global 

subscriber policy may grant access to a particular resource, while a subscriber 

policy denies the subscriber access to the same resource that the operator policy 

and/or the global subscriber policy allow. EX-1004 19:65-20:5. In this case, 

giving priority to a subscriber policy over an operator/global policy is an example 

of a policy enforcement priority rule based on policy reconciliation instructions 

206 and rules determination instructions 208 (a policy enforcement priority rule 

datastore). Similarly, a rule allowing (or denying) roaming access would sensibly 

be evaluated before a rule specifying differential charges for roaming. Poh teaches 

(1) any of its policy criteria can be specified at operator, global, or subscriber 

levels; and (2) the precedence rules can specify precedence for any of the levels 

over the other. Thus, effectively, Poh teaches that any of the rules can have 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 63 of 85 PageID #:

7600
57 

precedence based on the policy reconciliation instructions 206 and rules 

determination instructions 208. EX-1003, ¶202. 

As noted in element [1.3], Poh’s PIRS sends the processed policies to the 

PCPS which further processes the policies and generates instructions. EX-1004, 

14:4-16, 16:3-37, 21:8-34, Figs. 3, 8. EX-1003, ¶203. 

Thus, in operation, the PIRS and PCPS processing includes the policy 

enforcement priority rule in the network provisioning instruction set because the 

instructions ultimately generated include the results of ordering the filter 

evaluation as per the policy reconciliation instructions and rules determination 

instructions (in accordance with a prioritization of the first traffic classification 

filter over the second traffic classification filter comprises include the policy 

enforcement priority rule in the network provisioning instruction set). EX-1003, 

¶204. 

If PO asserts that the policy enforcement priority rule must be expressly 

included in the network provisioning instructions set as a separate instruction/rule, 

a POSA understood that including an express rule in the provisioning instructions 

to give one policy priority over another is an obvious variant of achieving that 

through ordering of rules. Thus, such an express rule is merely an implementation 

detail for which there are only two options: express rule or an implicit rule defined 

in the ordering of policies. EX-1003, ¶205. Selecting one from the limited number 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 64 of 85 PageID #:

7601
58 

of different known implementations is a design choice that does not impart 

patentability. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, (2007). 

Claim 6 

The network service plan provisioning system of claim 5, wherein 

the policy enforcement priority rule comprises a priority order for 

a plurality of traffic classification filters, the plurality of traffic 

classification filters including the first traffic classification filter 

and the second traffic classification filter. 

Poh discloses this example for the same reasons discussed with respect to 

Claim 5. 

Claim 7 

The network service plan provisioning system of claim 5, wherein 

the policy enforcement priority rule comprises a priority 

specification for one or both of the first service plan component 

and the second service plan component. 

Poh discloses this example for the same reasons discussed with respect to 

Claim 5. 

Claim 11 

The network service plan provisioning system of claim 5, wherein 

the one or more network elements are further configured to 

provide a user interface for a service plan design environment 

that provides for entering the policy enforcement priority rule in 

the design environment by entering a priority assignment for the 

first service plan component, entering a priority assignment for 

the second service plan component, positioning the first and 

second service plan components in a priority ordering, defining 

the first or second service plan component as belonging to a 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 65 of 85 PageID #:

7602
59 

service type that has an implied or literal ordering, or a 

combination of these. 

Poh discloses this claim. EX-1003, ¶¶208-211. As an initial matter, as 

detailed in Section IV.F (State of the Art), a POSA already knew before the 

Priority Date that such rules were configured using a user interface, such as a 

“policy management tool,” or a “policy editing tool” in a design environment to 

input policies and to specify priorities as claimed. EX-1007 p. 14, FIG. 1; EX1006 p. 248; EX-1003, ¶209. Thus, the claimed concept of a “user interface” to 

enter the various rule criteria, actions, and priority assignments is obvious and not 

independently patentable. 

Poh’s PIRS includes an I/O interface for input/output of data and rules 

from/to the MPR. EX-1004, 15:33-16:3. Moreover, network operators specify the 

PIRS policy reconciliation and rules determination instructions (policy 

enforcement priority rule) that define the priority assignments for the service plan 

components. EX-1004, 19:49-20:36. Thus, a POSA would understand Poh to 

teach, including rendering obvious, a user interface in a design environment for the 

operator to specify the priority rules as claimed. EX-1003, ¶210. Using a user 

interface to specify particular data for use in a computer program is not patentable. 

Furthermore, Poh expressly describes that policies stored at the MPR can be 

updated at any time by network operators which a POSA understood would 

include a user interface in a design environment for the operator to specify the 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 66 of 85 PageID #:

7603
60 

policies, rules, subscriber data, and subscription data to the MPR (a user interface 

for a service plan design environment that provides for entering the policy 

enforcement priority rule in the design environment). EX-1004 16:62-67. Poh 

further describes that a precedence (priority rule) can be ascribed to the policy 

(defining the first or second service plan component as belonging to a service type 

that has an implied or literal ordering). EX-1004 19:65-20:25; EX-1003, ¶211. 

For example, as discussed with claim 5, the MPR categorizes the policies and can 

correlate the subscriber specific policies with other policies. EX-1004 18:9-25. A 

POSA understood that in order to correlate the global subscriber policy for 

roaming, with the subscriber profile data that identified service related roaming 

entitlements, the system needs to determine whether a subscriber is roaming first, 

before determining what service entitlement are accessible. EX-1003, ¶211. Thus, 

this correlation would be the precedence or the order of applying the plans that are 

stored in the MPR (defining the first or second service plan component as 

belonging to a service type that has an implied or literal ordering). EX-1003, 

¶211. 

Claim 12 

The network service plan provisioning system of claim 1, wherein 

the information specifying the first traffic classification filter 

comprises an inspection criterion selected from a group of 

inspection criteria consisting of: a specific device application, a 

specific network destination, a specific network source, a specific 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 67 of 85 PageID #:

7604
61 

traffic type, a specific content type, a specific traffic protocol, and 

a combination of two or more of the inspection criteria. 

Poh discloses several examples wherein information specifying the first 

traffic classification filter comprises inspection criteria including accessing 

operator defined service or applications (specific device application, specific 

content type, specific traffic type, specific traffic protocol) EX-1004 12:23-39, 

14:56-63, 18:9-25, malicious users (specific network destination) EX-1004 23:44-

63, malicious/abusive users (specific network source) EX-1004 24:24-38, session 

initiation protocol (SIP) (specific traffic protocol) EX-1004, 14:56-63, and 

roaming (specific traffic type) EX-1004 12;23-39. EX-1003, ¶212. 

Claim 13 

The network service plan provisioning system of claim 1, wherein 

the first or second policy enforcement action is an action selected 

from a group of actions consisting of: apply a traffic control 

policy; apply a service usage accounting, charging, or billing 

policy; apply a service notification policy; and a combination of 

two or more of the actions. 

Poh discloses several examples wherein the first or second policy 

enforcement action is an action applying a charging policy (charging or billing 

policy) (EX-1004 12:9-17); alter a QoS (traffic control policy) (EX-1004 14:17-

24); deny/restrict/allow traffic (traffic control policy) (EX-1004, claim 3, 21:22-

24); trigger a notification (service notification policy) (EX-1004 14:25-35). EX1003, ¶213. 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 68 of 85 PageID #:

7605
62 

Claim 22 

The network service plan provisioning system of claim 1, wherein 

the first service plan component further comprises an additional 

policy enforcement action to augment the first policy enforcement 

action, and wherein the second service plan component further 

comprises the additional policy enforcement action to augment 

the second policy enforcement action. 

As described for Claims 1 and 2, Poh in combination with Maes discloses 

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. EX-1005, 

[0023]. Using examples discussed in Claim 4, the first service plan component can 

include an additional policy enforcement action to augment the first policy 

enforcement action by altering the QoS of a subscriber while roaming, and the 

second service plan component includes the additional policy enforcement action 

to augment the second policy enforcement action by charging for the altered QoS 

while roaming. Any of Poh’s specific actions can be used to augment the existing 

rules. EX-1003, ¶214. 

Claim 23 

The network service plan provisioning system of claim 1, wherein 

the first service plan component further comprises an additional 

policy enforcement action to over-ride the first policy enforcement 

action, and wherein the second service plan component further 

comprises the additional policy enforcement action to over-ride 

the second policy enforcement action. 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 69 of 85 PageID #:

7606
63 

This limitation is disclosed for the same reasons as discuss respect to Claim 

4. As detailed in Poh and in claims 1 and 4, Poh allows for a precedence such that 

one of the rule levels (operator, global, individual subscriber) may override the 

other rule levels for different rules and thus discloses this claim. EX-1003, ¶215. 

For example, this is shown by the first service plan does not allow roaming, 

and the subscriber overrides the policy enforcement action by requesting roaming 

(additional policy enforcement action to over-ride the first policy enforcement 

action), and the second enforcement action is overridden by charging for the 

allowed roaming (additional policy enforcement action to over-ride the second 

policy enforcement action). EX-1003, ¶216. The same set of over-ride action can 

apply to other actions such as overriding usage thresholds or denial/allow/restrict 

service actions. 

Similarly, Poh discloses such overrides in its policy reconciliation and 

prioritization actions discussed for element [1.3] and claim 2. EX-1004, 19:29-

20:25; 20:37-54. This process determines if one particular rule should have 

“precedence” over another rule. One instance of precedence is overriding the first 

rule. Poh gives an example of an operator rule allowing SMS, but another rule 

denying SMS and therefore the second rule overrides the first rule. EX-1004, 

20:10-23. This reconciliation/precedence processing allows for a second action to 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 70 of 85 PageID #:

7607
64 

override a first action for any of the specified service plan components. EX-1003, 

217. 

Claims 30-33, and 35-41 

Claims 30-33 and 35-41 all ultimately depend from Claim 1 and further limit 

the “process the first and second service plan components” step to generate 

provisioning instructions for various combinations of when the first and second 

traffic classification filters are applied, scenarios in which one or other or both 

filters match traffic characteristics, when the first and second traffic enforcement 

policies are enforced, and scenarios in which one or the other or both policy 

enforcement actions are enforced. These claims are disclosed by Poh in 

combination with Maes for the same reasons discussed with Claims 1 (in particular 

element [1.3]) and 2 regarding policy reconciliation, precedence and prioritization 

as well as the generation of instructions reflecting that reconciliation and 

precedence. EX-1003, ¶¶218-221. Moreover, these claims merely reflect design 

choices in implementation of different permutations of known evaluations for 

which Poh describes the generalized evaluation process and provides specific 

examples. Such design choices are not patentable. KSR, 550 U.S. at 421. 

Maes discloses that an operator defines business objectives, reflects those 

business objectives in policies and those policies are enforced through rules. Maes 

discloses that policies can include “any combination of rules, including any 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 71 of 85 PageID #:

7608
65 

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. In this manner, complex, hybrid, 

and/or merged topologies are possible.” EX-1005, [0025]; EX-1003, ¶219. These 

claims merely reflect different “combination of rules, including any combination of 

conditions and actions” disclosed in Maes and are thus obvious under the proposed 

combination. EX-1003, ¶219. 

Further, Maes discloses that policies can take on complex nested policy 

arrangements to implement desired objectives and that “each policy ... may itself 

be composed of multiple policies, which further evaluate conditions and/or 

perform actions.” EX1005 [0025] (citing EX-1011 3:13-17). Essentially, any 

logical arrangement of conditions and actions is possible including specifying 

actions that are to be executed only in the event a condition is/is not satisfied. The 

conditions may also be based on the result of previous evaluations and/or actions 

performed. EX-1011 4:37-47; 1:48-50; 5:4-5; 6:8-11; 6:37-62; EX-1003, ¶220. 

Each limitation recited in Claims 30-33 and 35-41 include specific 

combinations and sequences of conditions (traffic classification filters) and actions 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 72 of 85 PageID #:

7609
66 

(enforcement actions) including specifying actions that are to be executed only in 

the event a condition is/is not satisfied as expressly taught by Maes. A POSA 

would be motivated to modify the teachings of Poh with the teachings of Maes to 

include the combinations and sequences of conditions and actions recited in Claims 

30-33 and 35-41 for the reasons specified in the Motivation to Modify Teachings 

section above. EX-1003, ¶221. 

Claim 90 

The network service plan provisioning system of claim 1, wherein 

the traffic event is associated with a particular destination, a 

particular application on the wireless end-user device, a content 

type, a protocol, a port, or an operating system of the wireless 

end-user device. 

Poh, combined with Maes, discloses that a policy trigger event (traffic event) 

can include a subscriber request for a network resource. EX-1004 18:26-35. 

Further Poh discloses that many different network resources are available to a 

subscriber including any application or service accessible by the network 

subscribers (particular application) such as location-based services, presencebased services, music services, video services, mobile television services, and the 

like (specific content type, particular destination, particular application) as well as 

malicious or abusive users (particular destination). The resources are made 

accessible through an Internet Protocol Multimedia System (IMS) that supports IP 

multimedia applications (Internet protocol (IP) address) within a UMTS wireless 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 73 of 85 PageID #:

7610
67 

communications network to offer their subscribers multimedia services based on 

and built upon Internet applications, services and protocols, including SIP 

(specified protocol). EX-1004 14:47-63, 23:24-24:57 (protecting from 

abusive/malicious user destinations identified by, for example, IP addresses). EX1003, ¶222. Moreover, as detailed in Section IV.F.3, it was known to a POSA to 

include events based on destinations, applications, or protocols. EX-1003, ¶222. 

Moreover, Maes clarifies that such policy evaluation rules can include 

“destination IP address” and type of traffic (protocol, content type). EX-1005, 

[0034], [0038]. EX-1003, ¶223. 

Claim 91 

The network service plan provisioning system of claim 1, wherein 

the traffic event is associated with a specified remote destination, 

a specified application, a specified operating system, a specified 

content, a specified protocol, or a specified port number. 

This limitation is disclosed for the same reasons discussed with respect to 

Claim 90. 

Claim 92 

The network service plan provisioning system of claim 91, 

wherein the specified remote destination is identified by a domain 

or an Internet protocol (IP) address. 

This limitation is disclosed for the same reasons discussed with Claim 90. 

Claim 93 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 74 of 85 PageID #:

7611
68 

The network service plan provisioning system of claim 91, 

wherein the specified application is identified by a name, a hash, 

a certificate, or a signature. 

This limitation is disclosed for the same reasons discussed with Claim 90 

where the application is a specified location-based service, presence-based service, 

music service, video service, mobile television service, and the like. EX-1004 

14:47-63. A POSA understood that specified services are identified by name, 

hash, certificate or signature. EX-1003, ¶¶226-227. 

Claim 112 

The network service plan provisioning system of claim 1, wherein 

the information specifying the first traffic classification filter or 

the information specifying the second traffic classification filter 

comprises a name, a description, a filtering parameter, a launch 

mechanism, or a combination of these. 

Poh discloses this limitation for the same reasons discussed with Claim 1 

where the traffic classification filters are based on descriptions of the type of 

services, e.g., roaming, and this description is also used as a filtering parameter 

(description, filtering parameter). EX-1004, claims 3, 7 (listing differentlyidentified rules/policies). Moreover, such specifications are obvious because in 

implementing such filters, there would need to be some identification of the 

different filters and any such identification would comprise one of the claimed 

identifiers (such as a description or filtering parameter). EX-1003, ¶¶228-229. 

Claim 113 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 75 of 85 PageID #:

7612
69 

The network service plan provisioning system of claim 112, 

wherein the filter parameter specifies filtering the traffic event by 

destination, by application, by operating system, by protocol, or 

by port. 

This limitation is disclosed for the same reasons discussed with Claim 90 

(destination, application, protocol). 

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 or Maes (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. 

 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 76 of 85 PageID #:

7613
70 

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 

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 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 77 of 85 PageID #:

7614
71 

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 

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 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 78 of 85 PageID #:

7615
72 

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, 

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 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 79 of 85 PageID #:

7616
73 

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. 

 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 80 of 85 PageID #:

7617
74 

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

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. 

Case 2:23-cv-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 81 of 85 PageID #:

7618
75 

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 82 of 85 PageID #:

7619
Petition for Inter Partes Review of U. S. Patent No. 8,924,543 

DM2\19770467.2

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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 83 of 85 PageID #:

7620
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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 84 of 85 PageID #:

7621
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 

13,645 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-00379-JRG-RSP Document 99-8 Filed 10/25/24 Page 85 of 85 PageID #:

7622