Exhibit E

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 1 of 116 PageID #:

7220
UNITED STATES PATENT AND TRADEMARK OFFICE

——————————

BEFORE THE PATENT TRIAL AND APPEAL BOARD

——————————

GOOGLE LLC, CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, 

VERIZON CORPORATE SERVICES GROUP INC.,

T-MOBILE USA, INC., SPRINT LLC F/K/A SPRINT CORP.,

AND AT&T SERVICES, INC.,

Petitioners,

v.

Headwater Research LLC,

Patent Owner.

——————————

Case: IPR2024-00943

U.S. Patent No. 8,589,541

Issue Date: Nov. 19, 2013

Title: Device-Assisted Services for Protecting Network Capacity

——————————

PETITION FOR INTER PARTES REVIEW

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 2 of 116 PageID #:

7221
i

TABLE OF CONTENTS

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

II. STANDING.....................................................................................................1

III. RELIEF REQUESTED ...................................................................................1

IV. THE ’541 PATENT.........................................................................................1

A. Overview ...............................................................................................1

B. Prosecution History ...............................................................................2

C. POSITA.................................................................................................2

V. CLAIM CONSTRUCTION ............................................................................3

VI. PRIOR ART OVERVIEW..............................................................................3

A. Rao.........................................................................................................3

B. Fadell.....................................................................................................4

C. Freund....................................................................................................6

VII. Ground 1: Rao-Fadell Renders Obvious Claims 1, 91-96, 99, 102-138, 

140-152, and 158-159......................................................................................6

A. Motivation to Combine .........................................................................6

B. Claim 1 ..................................................................................................9

C. Claim 91 ..............................................................................................28

D. Claim 92 ..............................................................................................31

E. Claim 93 ..............................................................................................33

F. Claim 94 ..............................................................................................35

G. Claim 95 ..............................................................................................38

H. Claim 96 ..............................................................................................38

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 3 of 116 PageID #:

7222
ii

I. Claim 99 ..............................................................................................39

J. Claim 102 ............................................................................................40

K. Claim 103 ............................................................................................41

L. Claim 104 ............................................................................................42

M. Claim 105 ............................................................................................43

N. Claim 106 ............................................................................................46

O. Claim 107 ............................................................................................47

P. Claim 108 ............................................................................................48

Q. Claim 109 ............................................................................................49

R. Claim 110 ............................................................................................50

S. Claim 111 ............................................................................................50

T. Claim 112 ............................................................................................51

U. Claim 113 ............................................................................................52

V. Claim 114 ............................................................................................53

W. Claim 115 ............................................................................................54

X. Claim 116 ............................................................................................54

Y. Claim 117 ............................................................................................56

Z. Claim 118 ............................................................................................58

AA. Claim 119 ............................................................................................58

BB. Claim 120 ............................................................................................58

CC. Claim 121 ............................................................................................59

DD. Claim 122 ............................................................................................59

EE. Claim 123 ............................................................................................60

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 4 of 116 PageID #:

7223
iii

FF. Claim 124 ............................................................................................60

GG. Claim 125 ............................................................................................61

HH. Claim 126 ............................................................................................61

II. Claim 127 ............................................................................................61

JJ. Claim 128 ............................................................................................61

KK. Claim 129 ............................................................................................62

LL. Claim 130 ............................................................................................63

MM. Claim 131 ............................................................................................63

NN. Claim 132 ............................................................................................63

OO. Claim 133 ............................................................................................63

PP. Claim 134 ............................................................................................64

QQ. Claim 135 ............................................................................................64

RR. Claim 136 ............................................................................................64

SS. Claim 137 ............................................................................................65

TT. Claim 138 ............................................................................................65

UU. Claim 140 ............................................................................................66

VV. Claim 141 ............................................................................................68

WW. Claim 142 ............................................................................................69

XX. Claim 143 ............................................................................................70

YY. Claim 144 ............................................................................................70

ZZ. Claim 145 ............................................................................................70

AAA.Claim 146 ............................................................................................70

BBB. Claim 147 ............................................................................................72

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 5 of 116 PageID #:

7224
iv

CCC. Claim 148 ............................................................................................73

DDD.Claim 149 ............................................................................................75

EEE. Claim 150 ............................................................................................77

FFF. Claim 151 ............................................................................................77

GGG.Claim 152 ............................................................................................78

HHH.Claim 158 ............................................................................................78

III. Claim 159 ............................................................................................79

VIII. Ground 2: Rao-Fadell-Freund Render Obvious Claims 97-98, 100-

101, 139. ........................................................................................................79

A. Motivation to Combine .......................................................................79

B. Claim 97 ..............................................................................................81

C. Claim 98 ..............................................................................................83

D. Claim 100 ............................................................................................84

E. Claim 101 ............................................................................................85

F. Claim 139 ............................................................................................86

IX. 35 U.S.C. § 314..............................................................................................88

X. 35 U.S.C. § 325..............................................................................................89

XI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8.................................90

A. Real Party-in-Interest ..........................................................................90

B. Related Matters....................................................................................91

C. Lead and Backup Counsel Information...............................................91

XII. CONCLUSION..............................................................................................93

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 6 of 116 PageID #:

7225
v

TABLE OF AUTHORITIES

Cases

CoolIT Systems, Inc. v. Asetek Danmark A/S,

IPR2021-01195, Paper 10 (PTAB Dec. 28, 2021).............................................89

Statutes

35 U.S.C. § 314........................................................................................................88

35 U.S.C. § 315........................................................................................................91

35 U.S.C. § 325........................................................................................................89

Regulations

37 C.F.R. § 42.8 .......................................................................................................90

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 7 of 116 PageID #:

7226
vi

LIST OF EXHIBITS

Exhibit Description

EX-1001 U.S. Patent No. 8,589,541 (“the ’541 patent”)

EX-1002 U.S. Patent Publication No. 2006/0039354 to Rao et al. (“Rao”)

EX-1003 U.S. Patent Publication No. 2010/0017506 to Fadell (“Fadell”)

EX-1004 U.S. Patent No. 5,987,611 to Freund (“Freund”)

EX-1005 U.S. Patent No. 8,028,060 to Wyld et al. (“Wyld”)

EX-1006 File History of U.S. Patent No. 8,589,541 (Excerpted) 

EX-1007 Curriculum Vitae of Andrew Wolfe

EX-1008

Enable-ExchangeCertificate, Microsoft, https://learn.microsoft.com/

en-us/powershell/module/exchange/enable-exchangecertificate?view

=exchange-ps (last visited May 15, 2024)

EX-1009 Larry L. Peterson & Bruce S. Davie, Computer Networks: A Systems 

Approach (3d ed. 2003)

EX-1010 U.S. Patent Publication No. 2007/0038763 to Oestvall (“Oestvall”)

EX-1011 U.S. Patent Publication No. 2009/0207817 to Montemurro et al. 

(“Montemurro”)

EX-1012

Elizabeth Woyke, World’s Most Wired Airports, NBC News(Mar. 11, 

2008, 10:02 AM), https://www.nbcnews.com/id/wbna23391922 (last 

visited May 15, 2024)

EX-1013

Madison Avenue Calling, Gainesville Sun (Jan. 19, 2007, 11:00 PM),

https://www.gainesville.com/story/news/2007/01/20/madison-avenuecalling/31509806007/ (last visited May 15, 2024)

EX-1014

Spyros Sakellariadis, Using Exchange Server with SMTP and POP3, 

ITPro Today (May 31, 1998), https://www.itprotoday.com/email-andcalendaring/using-exchange-server-smtp-and-pop3#close-modal (last 

visited May 16, 2024)

EX-1015 Declaration of Petitioner’s Expert, Andrew Wolfe (“Wolfe

Declaration”)

EX-1016 U.S. Patent No. 8,914,783 to Van Camp (“Van Camp”)

EX-1017 Eastern District of Texas Model Order Focusing on Claim and Prior 

Art Reduction

EX-1018

Docket Control Order, Headwater Research LLC v. Verizon 

Communications Inc., No. 2:23-cv-00352, ECF No. 40 (E.D. Tex. 

Oct. 24, 2023)

EX-1019 [Reserved]

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 8 of 116 PageID #:

7227
vii

Exhibit Description

EX-1020 Defendants’ Motion to Focus Patent Claims, Headwater Research 

LLC v. AT&T Services, Inc., No. 2:23-cv-00397, ECF No. 53 (E.D. 

Tex. Apr. 11, 2024)

EX-1021 Defendants’ Motion for Entry of an Order Focusing Asserted Patent 

Claim and Prior Art, Headwater Research LLC v. T-Mobile USA, 

Inc., No. 2:23-cv-00379, ECF No. 58 (E.D. Tex. Apr. 30, 2024)

EX-1022 Defendants’ Motion for Entry of an Order Focusing Asserted Patent 

Claim and Prior Art, Headwater Research LLC v. Verizon 

Communications Inc., No. 2:23-cv-00352, ECF No. 63 (E.D. Tex. 

May 1, 2024)

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 9 of 116 PageID #:

7228
viii

CLAIM LISTINGS

Independent Claim 1

[1a] A non-transitory computer-readable storage medium storing machineexecutable instructions that, when executed by one or more processors 

of a wireless end-user device, cause the one or more processors to:

[1b] identify a service usage activity of the wireless end-user device, the 

service usage activity being associated with a first software component 

of a plurality of software components on the wireless end user device,

[1c] the service usage activity comprising one or more prospective or 

successful communications over a wireless network;

[1d] determine whether the service usage activity comprises a background 

activity;

[1e] determine at least an aspect of a policy based on a user input obtained 

through a user interface of the wireless end-user device or based on 

information from a network element,

[1f] the policy to be applied if the service usage activity is the background 

activity, the policy at least for controlling the service usage activity; and

[1g] if it is determined that the service usage activity is the background 

activity, apply the policy. 

Dependent Claim 91

91 The non-transitory computer-readable storage medium recited in claim 

1, wherein apply the policy comprises cause a notification to be 

presented through a user interface of the wireless end-user device.

Dependent Claim 92

92 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification provides information about the policy.

Dependent Claim 93

93 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification provides information about an option to set, 

control, override, or modify the at least an aspect of the policy or a 

second aspect of the policy.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 10 of 116 PageID #:

7229
ix

Dependent Claim 94

94 The non-transitory computer-readable storage medium recited in claim 

91, wherein, when executed by the one or more processors of the 

wireless end-user device, the machine-executable instructions further 

cause the one or more processors to obtain an indication of a user 

response to the notification.

Dependent Claim 95

95 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification provides a warning or an alert.

Dependent Claim 96

96 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification provides information about a service plan 

limit.

Dependent Claim 97

97 The non-transitory computer-readable storage medium recited in claim 

91, wherein the first software component is at least a portion of an 

application, and wherein the one or more prospective or successful 

communications over the wireless network comprise an attempt to 

launch, run, or execute the application, and wherein the notification 

comprises information about the attempt to launch, run, or execute the 

application.

Dependent Claim 98

98 The non-transitory computer-readable storage medium recited in claim 

91, wherein the one or more prospective or successful communications 

over the wireless network comprise an attempted or successful launch 

or execution of the first software component, and wherein the 

notification comprises information about the attempted or successful 

launch or execution of the first software component.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 11 of 116 PageID #:

7230
x

Dependent Claim 99

99 The non-transitory computer-readable storage medium recited in claim 

91, wherein the policy is based on a limit, and wherein, when executed 

by the one or more processors of the wireless end-user device, the 

machine-executable instructions further cause the one or more 

processors to determine that a data usage associated with the service 

usage activity is not less than the limit, and wherein cause a notification 

to be presented through a user interface of the wireless end-user device 

comprises trigger presentation of the notification based on the 

determination that the data usage associated with the service usage 

activity is not less than the limit.

Dependent Claim 100

[100a] The non-transitory computer-readable storage medium recited in claim 

91, wherein the one or more prospective or successful communications 

over the wireless network comprise an attempt to download or load an 

application, and

[100b] wherein the notification comprises information about the attempted 

download or load of the application.

Dependent Claim 101

101 The non-transitory computer-readable storage medium recited in claim 

91, wherein the one or more prospective or successful communications 

over the wireless network comprise an attempt to initiate usage of a 

cloud-based service or application, and wherein the notification 

comprises information about the attempted initiation of usage of the 

cloud-based service or application.

Dependent Claim 102

102 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification indicates that one or more service usage 

activities are subject to the policy.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 12 of 116 PageID #:

7231
xi

Dependent Claim 103

103 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification provides information about a second 

network.

Dependent Claim 104

104 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification comprises an offer for a service plan 

upgrade or downgrade.

Dependent Claim 105

105 The non-transitory computer-readable storage medium recited in claim 

91, wherein apply the policy further comprises obtain an indication of a 

user preference in response to the notification.

Dependent Claim 106

106 The non-transitory computer-readable storage medium recited in claim 

105, wherein the indication of the user preference comprises a user 

directive to associate the policy with a second software component.

Dependent Claim 107

107 The non-transitory computer-readable storage medium recited in claim 

105, wherein the indication of the user preference comprises a user 

directive to allow or block the service usage activity.

Dependent Claim 108

108 The non-transitory computer-readable storage medium recited in claim 

105, wherein the indication of the user preference identifies a traffic 

control setting associated with the policy.

Dependent Claim 109

109 The non-transitory computer-readable storage medium recited in claim 

105, wherein the indication of the user preference comprises a user 

directive to allow the service usage activity under a specified condition.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 13 of 116 PageID #:

7232
xii

Dependent Claim 110

110 The non-transitory computer-readable storage medium recited in claim 

105, wherein the indication of the user preference comprises a user 

directive to override or modify the policy.

Dependent Claim 111

111 The non-transitory computer-readable storage medium recited in claim 

91, wherein cause a notification to be presented through a user interface 

of the wireless end-user device comprises cause the notification to be 

presented based on occurrence of a trigger.

Dependent Claim 112

112 The non-transitory computer-readable storage medium recited in claim 

111, wherein the trigger is: a measure of the service usage activity 

satisfies a first condition relative to a threshold, an aspect of the service 

usage activity satisfies a second condition, a change to the policy, or a 

message from the network element.

Dependent Claim 113

113 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification enables a user associated with the wireless 

end-user device to obtain information about at least an aspect of the 

service usage activity or a service plan associated with the wireless enduser device.

Dependent Claim 114

114 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification presents a list of service usage activities or 

software components, the list of service usage activities or software 

components including the service usage activity or the first software 

component.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 14 of 116 PageID #:

7233
xiii

Dependent Claim 115

115 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification presents an option to modify the policy.

Dependent Claim 116

116 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification presents an indication of a measure of usage 

of the wireless network associated with the service usage activity.

Dependent Claim 117

117 The non-transitory computer-readable storage medium recited in claim 

91, wherein the notification is provided through an e-mail, a text 

message, a window, a setting, or a voice message.

Dependent Claim 118

118 The non-transitory computer-readable storage medium recited in claim 

1, wherein, when executed by the one or more processors of the 

wireless end-user device, the machine-executable instructions further 

cause the one or more processors to:

cause a notification to be presented through a user interface of the 

wireless end-user device.

Dependent Claim 119

119 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification provides information about the policy.

Dependent Claim 120

120 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification provides information about an option to 

set, control, override, or modify the at least an aspect of the policy or a 

second aspect of the policy.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 15 of 116 PageID #:

7234
xiv

Dependent Claim 121

121 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification indicates that the service usage activity is 

the background activity.

Dependent Claim 122

122 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification provides information about a second 

network.

Dependent Claim 123

123 The non-transitory computer-readable storage medium recited in claim 

118, wherein, when executed by the one or more processors of the 

wireless end-user device, the machine-executable instructions further 

cause the one or more processors to obtain an indication of a user 

preference in response to the notification.

Dependent Claim 124

124 The non-transitory computer-readable storage medium recited in claim 

123, wherein the indication of the user preference comprises a user 

directive to associate the policy with the first software component.

Dependent Claim 125

125 The non-transitory computer-readable storage medium recited in claim 

123, wherein the indication of the user preference comprises a user 

directive to restrict, allow, or block the service usage activity.

Dependent Claim 126

126 The non-transitory computer-readable storage medium recited in claim 

123, wherein the indication of the user preference identifies a traffic 

control setting associated with the policy.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 16 of 116 PageID #:

7235
xv

Dependent Claim 127

127 The non-transitory computer-readable storage medium recited in claim 

123, wherein the indication of the user preference comprises a user 

directive to override or modify the policy.

Dependent Claim 128

128 The non-transitory computer-readable storage medium recited in claim 

123, wherein the indication of the user preference comprises a user 

acknowledgment of the notification.

Dependent Claim 129

129 The non-transitory computer-readable storage medium recited in claim 

123, wherein the indication of the user preference indicates one or more 

network types.

Dependent Claim 130

130 The non-transitory computer-readable storage medium recited in claim 

129, wherein the one or more network types comprise WiFi, 4G, 3G, 

wireless, wired, or a combination of these.

Dependent Claim 131

131 The non-transitory computer-readable storage medium recited in claim 

118, wherein cause a notification to be presented through a user 

interface of the wireless end-user device comprises cause the 

notification to be presented based on occurrence of a trigger.

Dependent Claim 132

132 The non-transitory computer-readable storage medium recited in claim 

131, wherein the trigger is: a measure of the service usage activity 

satisfies a first condition relative to a threshold, an aspect of the service 

usage activity satisfies a second condition, a change to the policy, or a 

message from the network element.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 17 of 116 PageID #:

7236
xvi

Dependent Claim 133

133 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification enables a user associated with the wireless 

end-user device to obtain information about at least an aspect of the 

service usage activity or a service plan associated with the wireless enduser device.

Dependent Claim 134

134 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents a list of service usage activities or 

software components, the list of service usage activities or software 

components including the service usage activity or the first software 

component.

Dependent Claim 135

135 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents information about a setting 

associated with the policy.

Dependent Claim 136

136 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents information about the wireless 

network.

Dependent Claim 137

137 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents an indication of a measure of 

usage of the wireless network associated with the service usage activity.

Dependent Claim 138

138 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents information about a network busy 

state or a network availability state.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 18 of 116 PageID #:

7237
xvii

Dependent Claim 139

139 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents an indication of a measure of 

usage of the wireless network associated with the first software 

component.

Dependent Claim 140

140 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification presents information about a statistic 

associated with the service usage activity.

Dependent Claim 141

141 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification comprises a gauge providing service usage 

information associated with the service usage activity.

Dependent Claim 142

142 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification comprises a gauge providing service usage 

information associated with one or more networks, the one or more 

networks including the wireless network.

Dependent Claim 143

143 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification comprises a gauge providing information 

associated with a service plan.

Dependent Claim 144

144 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification is provided through an e-mail, a text 

message, a window, a setting, or a voice message.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 19 of 116 PageID #:

7238
xviii

Dependent Claim 145

145 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification comprises a warning or an alert.

Dependent Claim 146

146 The non-transitory computer-readable storage medium recited in claim 

118, wherein the information from the network element is first 

information, and wherein the notification is based on second 

information from the network element.

Dependent Claim 147

147 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification comprises information about a cost or a 

charge associated with the service usage activity.

Dependent Claim 148

148 The non-transitory computer-readable storage medium recited in claim 

118, wherein the notification comprises information about a service 

sponsor.

Dependent Claim 149

149 The non-transitory computer-readable storage medium recited in claim 

1, wherein, when executed by the one or more processors of the 

wireless end-user device, the machine-executable instructions further 

cause the one or more processors to:

detect an attempted use of the first software component; and

based on the detected attempted use of the first software component, 

cause a notification to be presented through a user interface of the 

wireless end-user device.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 20 of 116 PageID #:

7239
xix

Dependent Claim 150

150 The non-transitory computer-readable storage medium recited in claim 

149, wherein the notification provides information to enable a user 

associated with the wireless end-user device to override the policy.

Dependent Claim 151

151 The non-transitory computer-readable storage medium recited in claim 

149, wherein the notification provides information about a cost or a 

charge associated with the service usage activity.

Dependent Claim 152

152 The non-transitory computer-readable storage medium recited in claim 

149, wherein the notification provides information to enable a user 

associated with the wireless end-user device to change or upgrade a 

service plan associated with the wireless end-user device.

Dependent Claim 158

158 The non-transitory computer-readable storage medium recited in claim 

1, wherein the user input obtained through the user interface of the 

wireless end-user device specifies a user preference associated with the 

service usage activity or the first software component.

Dependent Claim 159

159 The non-transitory computer-readable storage medium recited in claim 

158, wherein the user preference comprises a preference to restrict, 

allow, block, delay, or throttle the service usage activity.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 21 of 116 PageID #:

7240
1 

I. INTRODUCTION

Petitioners request inter partes review (“IPR”) of claims 1, 91-152, and 158-

159 of U.S. Patent No. 8,589,541. 

II. STANDING

Petitioners are not barred or estopped from requesting IPR on these grounds. 

III. RELIEF REQUESTED

Grounds

1 Rao in view of Fadell renders obvious claims 1, 91-96, 99, 102-138, 

140-152, and 158-159. 

2 Rao in view of Fadell and Freund renders obvious claims 97-98, 

100-101, and 139. 

IV. THE ’541 PATENT

A. Overview 

The ’541 patent discloses “differentially controlling . . . network service 

usage activities” based on “the type of service activity requesting network access.” 

EX-1001, 15:13-18. A service usage control policy is applied “to protect network 

capacity.” Id., 18:8-19:58. If a service usage activity is classified as a background 

activity, the control policy may assign it a priority. Id., 18:8-20:43. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 22 of 116 PageID #:

7241
2 

 

Id., Figs. 14, 18. 

B. Prosecution History 

The original claims were rejected. EX-1006, 192-214, 579-84. The applicant 

rewrote the independent claim and added 173 new dependent claims. Id., 647-701.

With an Examiner’s amendment, the Examiner allowed all 174 claims. Id., 744-56. 

C. POSITA

A POSITA at the time of the invention would have at least a bachelor’s degree 

in computer science, computer engineering, or a similar field, and approximately 

two years of industry or academic experience in a field related to computer software 

development and/or computer networking. EX-1015 ¶¶50-52. Work experience can 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 23 of 116 PageID #:

7242
3

substitute for education, and additional education can substitute for work experience. 

Id.

V. CLAIM CONSTRUCTION

No terms require construction to resolve this Petition.

VI. PRIOR ART OVERVIEW 

A. Rao

Rao discloses remote access client 120 that intercepts inbound or outbound 

network packets associated with applications of client 105. Rao ¶¶38-43, 99-110, 

184-86. Intercepted packets are queued according to priority policies. Id. ¶¶38-46, 

80, 184-94. Rao prioritizes by criteria, including by application and whether the 

application is “running in the foreground or the background.” Id. ¶¶182, 188-93.

Id., Fig. 1A. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 24 of 116 PageID #:

7243
4

Rao describes some of its disclosures as “embodiments,” but invites a POSITA 

to combine them. Id. ¶¶218-19; id. ¶¶74, 131. A POSITA would have therefore 

understood Rao to disclose various aspects of a single system. EX-1015 ¶¶56-59. A

POSITA also would have been motivated and found it obvious to combine Rao’s 

“embodiments” in view of Rao’s express invitation and taught benefits. Id.

B. Fadell

Fadell discloses controlling network usage. Fadell ¶¶16-17. Resource 

utilization component 110 monitors “utilization,” provides alerts, and “performs

utilization shifting” to manage data/bandwidth consumption. Id.

Id., Fig. 1. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 25 of 116 PageID #:

7244
5 

Fadell gives users notices, including the following, providing service plan 

information and options to purchase resources, limit use, and/or switch networks. Id.

¶¶17-29, 50-70.

Id., Fig. 3 (annotated).

Id., Fig. 4 (annotated). 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 26 of 116 PageID #:

7245
6 

Id., Fig. 5 (annotated). 

C. Freund

Freund’s client monitor application 311 intercepts, monitors, logs, and filters 

network communications associated with applications. Freund, 1:58-3:59, 

13:23-15:30. Access rules with specified application criteria govern Internet access. 

Id., 3:60-4:28. The monitor restricts rule-violating network traffic by, e.g. “denying 

Internet access” or “issu[ing] a warning.” Id., 4:26-5:64, 19:57-60, 21:12-20.

VII. Ground 1: Rao-Fadell Renders Obvious Claims 1, 91-96, 99, 102-138, 

140-152, and 158-159

A. Motivation to Combine 

It would have been obvious to combine Rao and Fadell, which disclose 

complementary methods for controlling network communications. EX-1015 

¶¶317-18; Rao ¶¶85-89, 97-105, 179-95, Figs. 5A-5B; Fadell ¶¶21-22, 47-72, 

Figs. 1, 3-6. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 27 of 116 PageID #:

7246
7

Like Rao’s “remote access client,” Fadell’s “resource utilization component” 

monitors resource usage and notifies users when usage reaches a limit to avoid 

penalties. Fadell ¶¶16, 21-27, 47-72, Figs. 1, 3-6. Fadell’s resource utilization 

component may enable, disable, cancel, delay, or reschedule network 

communications based on, e.g., importance, type of data transferred, associated 

application or protocol, and/or resources available. Id.; EX-1015 ¶¶319-20.

A POSITA would have looked to Fadell to improve Rao given their 

similarities and benefits. EX-1015 ¶¶321-22. The combined system would apply a 

prioritization to network packets from a background activity and notify a user when 

resource usage approaches a threshold. Id. When the threshold is met in Rao-Fadell, 

background activity network packets would be queued and deprioritized (Rao 

¶¶180-95), and the user would be notified and given options to proceed (Fadell ¶¶47-

72, Figs. 1, 3-6). EX-1015 ¶¶321-23. In one example, when a monthly data limit is 

reached, the policy would notify the user and cause the system to intercept/queue

background activity (e.g., email, auto-updates, RSS feeds). Id.

A POSITA would have been motivated to combine the functionalities of Rao 

and Fadell (including, e.g., those associated with Rao’s remote access client and 

Fadell’s resource utilization component) to de-prioritize “low-priority” background 

activity, as both Rao and Fadell suggest, Rao ¶¶179, 182, 188-89, 192; Fadell ¶¶60, 

64, 66, while providing the user information and options for how to proceed, as 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 28 of 116 PageID #:

7247
8

Fadell suggests, Fadell ¶¶47-72, Figs. 1, 3-6; EX-1015 ¶323. This would have 

minimized data-overage costs by rescheduling/delaying background activity near 

resource limits while providing the user with options for proceeding, e.g., by 

reducing resource usage, purchasing additional data, or switching networks. EX1015 ¶¶323-26; Fadell ¶¶2-7, 16-18, 56-57, 63-65. Rao and Fadell both contemplate 

cellular use, and Rao’s prioritization would have benefited from Fadell’s usage limits 

and notifications in this “pay to use” context. EX-1015 ¶¶323-26; Rao ¶¶198, 130; 

Fadell ¶¶2-7, 16-18, 23, 42-46.

Combining Rao and Fadell would have been nothing more than the simple 

combination of known elements to obtain predictable results. EX-1015 ¶¶327-28.

For example, the combination of Fadell’s resource usage thresholds and notifications 

with Rao’s prioritization techniques would have yielded the predictable result of a 

system that applies a prioritization of network packets associated with background 

activity and notifies the user when resource usage limits reach a threshold. Id. This 

also would have been nothing more than the use of the known techniques of 

monitoring resource usage limits and notifying the user to improve Rao in the same 

way and apply prioritization to background activity to avoid data overages. Id. A 

POSITA would have had a reasonable expectation of success in combining Rao with 

Fadell because both disclose monitoring network activity from handheld devices and 

mobile telephones and policies relating to associated network traffic. Id.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 29 of 116 PageID #:

7248
9 

B. Claim 1 

1. [1a] “A non-transitory computer-readable storage medium 

storing machine-executable instructions that, when 

executed by one or more processors of a wireless end-user 

device, cause the one or more processors to:”

To the extent the preamble is limiting, Rao discloses “computing device 102” 

of client 105 (“wireless end-user device”) that includes a non-volatile “main memory 

unit” (“non-transitory computer-readable storage medium”) and a “central 

processing unit” (“one or more processors”). Rao ¶¶118-25, 99-100, 130, 79-116, 

83-84, Figs. 1A-1E. Computing device 102 includes storage device 128 storing 

remote access client software 120. Id. ¶124, Fig. 1D. Rao’s memory and/or storage 

device stores instructions the CPU executes. Id. ¶¶116, 119, 124; EX-1015 ¶¶68-73. 

Like Rao, Fadell’s wireless end-user device may include “a cellular 

telephone.” Fadell ¶¶29, 37. Fadell also discloses a “resource utilization 

component.” Id. ¶31; EX-1015 ¶¶329-32.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 30 of 116 PageID #:

7249
10

Fadell, Fig. 2. 

It would have been obvious to implement the Rao-Fadell device as a cellular 

phone or handheld computer that communicates over wireless (e.g., cellular) 

networks. Id. ¶¶29, 37. The Rao-Fadell device includes memory, storage, and a 

processor to execute stored instructions associated with the disclosed 

software/applications (e.g., Rao’s remote access client 120 and/or Fadell’s resource 

utilization component 110). EX-1015 ¶¶329-32. It would have been obvious to 

include functionalities associated with both Rao’s remote access client 120 and 

Fadell’s resource utilization component 110 in the combined instructions. Id. Rao 

explains that its policies are non-exclusive, Rao ¶182, and a POSITA would have 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 31 of 116 PageID #:

7250
11

found it obvious to combine Rao’s prioritization policies and Fadell’s resource usage 

notification policies, EX-1015 ¶¶329-32; supra §VII.A.

2. [1b] “identify a service usage activity of the wireless enduser device, the service usage activity being associated with 

a first software component of a plurality of software 

components on the wireless end-user device,”

Rao discloses service usage activity: network packets communicated via 

network 104, which may be a wireless network. Rao ¶¶41-46, 52, 101-16; EX-1015 

¶¶74-75, 83; also EX-1001, 19:8-37. The network packets are associated with “a 

first software component” of many: “one or more applications 338a-338n, which 

access the network 104” and provide “real-time data communications.” Rao

¶¶179-95, 87-91; EX-1015 ¶77. Each application is or includes a software 

component on the wireless end-user device. Rao ¶¶184, 188; EX-1015 ¶76. 

Rao discloses identifying a service usage activity associated with the software 

components because it teaches “intercepting” the network packets, “storing” the 

network packets, and “inspecting” the network packets to associate an application 

with the network packets. EX-1015 ¶78.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 32 of 116 PageID #:

7251
12

Rao, Fig. 5B (annotated). 

Filter 322 “intercept[s] any of the network traffic . . . such as network packets 

associated with the application 338” to route the packets. Id. ¶¶99, 101-16, 179-81, 

Fig. 1C, 5A; EX-1015 ¶¶78-79. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 33 of 116 PageID #:

7252
13

Rao, Fig. 1C (annotating remote access client 120).

Id., Fig. 5A (annotating remote access client 120).

Rao further stores intercepted packets in a queue, id. ¶¶186, 180-84, 191-93, 

Fig. 5C, and filter 322 “can inspect the contents of the packets” to, e.g., identify the 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 34 of 116 PageID #:

7253
14

network or verify the application(s) that generated the packets, Rao ¶¶102-07, 186-

87; EX-1015 ¶¶80-82. Based on this inspection, “agent 326 identifies the network 

packet as generated from an application 338a-338n by any of the content of the 

network packet” (e.g., “headers, fields, or the type and content of data”). Rao ¶187. 

Agent 326 may inspect the packet and “verify that the identified application actually 

generated the packet.” Id. ¶187; id. ¶¶105-09, 187. Agent 326 may associate the 

packet “with an application 338a-338n by matching information from the routing 

table 538.” Id. ¶187; EX-1015 ¶81. Rao teaches “indicating” a priority for the 

packets based on the associated application (step 570), confirming that they are 

identified as claimed. Rao, Fig. 5B; EX-1015 ¶82.

Intercepting, storing, and inspecting a network packet is (or requires) 

identifying the network packet; this understanding is consistent with the ’541 patent.

E.g., EX-1001, 69:5-35, 70:57-71:3, 72:22-28, 87:54-65, 96:66-97:54, Figs. 14, 18, 

claims 8, 17 (describing similar activities, e.g., “packet inspection” as “identifying”); 

EX-1015 ¶82.

Like Rao, Fadell discloses data transfers to/from device 120 via wireless 

network 102 (“service usage activity of the wireless end-user device”). Fadell 

¶¶17-22, 26-32, 46-47, 62, 71-72. 

Like Rao, Fadell identifies service usage activity. To monitor and limit 

resource usage, Fadell’s resource utilization component “identif[ies]” data requests 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 35 of 116 PageID #:

7254
15

and/or transfers (service usage activity). EX-1015 ¶¶333-37. This includes 

associating data requests and/or transfers with data types, applications, and/or 

protocols. Fadell ¶¶18, 56, 59-61, 64. 

Id., Fig. 1. 

Given these teachings, a POSITA would have been motivated to implement 

functionalities from both Rao’s remote access client 120 and Fadell’s resource 

utilization component 110 in the combined instructions to identify service usage 

activity in order to implement the Rao-Fadell policy. EX-1015 ¶¶333-37; supra 

§VII.A.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 36 of 116 PageID #:

7255
16

3. [1c] “the service usage activity comprising one or more 

prospective or successful communications over a wireless 

network;”

Rao’s network packets disclose “service usage activity 

comprising . . . communications over a wireless network.” 

Remote access client 120 intercepts in-and-outbound network traffic 

associated with applications 338a-338n of client 105, which is “connected to 

network 104.” Rao ¶¶110, 179-80, 185 (“obtain inbound and/or outbound packets of 

the client 105, such as the network traffic associated with application 338”); id.

¶¶125, 195 (describing wireless interfaces/connections).

Rao’s intercepting, inspecting, and/or storing packets in queues before

communicating them from the queues discloses identifying one or more prospective

communications. Id. ¶¶184-86, 105, 110-11, 180, 194-95; EX-1015 ¶¶84-86. 

Intercepting “inbound . . . [packets] . . . associated with application 338” 

discloses identifying one or more successful communications over a wireless 

network. Rao ¶184; EX-1015 ¶86. Communicating outbound network packets from 

the queues also discloses successful communications. Rao ¶¶189-95, Figs. 1A-C, 

5A; EX-1015 ¶86.

Like Rao, Fadell discloses that “[e]lectronic device 120 may connect to 

network 102 using . . . any suitable wired or wireless communications path.” Fadell 

¶28; EX-1015 ¶¶338-41. Fadell discloses that communications between electronic 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 37 of 116 PageID #:

7256
17

devices 120 and network 102 may be routed through its resource utilization 

component, the functionality of which would have been incorporated with that of 

Rao’s remote access client in Rao-Fadell. Fadell ¶¶27-28; supra §VII.A. 

Fadell, Fig. 1.

Fadell’s resource utilization component monitoring device data requests 

and/or transfers to or from network 102 (service usage activity) discloses identifying 

service usage activity comprising prospective or successful communications over 

the wireless network. Id. ¶¶24-28, 46-47; EX-1015 ¶¶338-41. 

4. [1d] “determine whether the service usage activity 

comprises a background activity;”

After intercepting, Rao’s remote access client 120 “determinesthe association 

of network packets with applications 338a-338n in order to determine priorities and 

apply any priority based policies 520.” Rao ¶187; EX-1015 ¶87. This includes 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 38 of 116 PageID #:

7257
18

“determin[ing] whether the application 338a-338n associated with the network 

packet is running in the foreground or the background of the client 105.” Rao ¶¶188,

38-41, 182. This determination is made during step 565, when network packets are 

associated with an application. Id. ¶¶187-88; EX-1015 ¶¶87-88.

Rao, Fig. 5B (annotated).

By determining whether network packets are associated with an application 

“running in the background,” Rao determines whether the associated service usage 

activity “comprises a background activity,” id. ¶¶41, 188, and therefore determines 

whether the service usage activity associated with a first software component 

comprises a background activity, EX-1015 ¶89.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 39 of 116 PageID #:

7258
19

Determining whether an activity is a background activity was well known, as 

Rao discloses, and the methodology for making that determination would have been 

a simple design choice among finite, known options, for which a POSITA would 

have had a reasonable expectation of success. Id. ¶90.

Rao’s teachings would have been implemented in Rao-Fadell to enable a 

policy that applies prioritization (e.g., a lower priority) as suggested by Rao and 

Fadell. Supra §VII.A; EX-1015 ¶342.

5. [1e] “determine at least an aspect of a policy based on a user 

input obtained through a user interface of the wireless enduser device or based on information from a network 

element,”

Rao discloses remote access client 120 may include “one or more policies 

520 [a policy] for specifying client-side prioritization of network communications 

related to applications 338a-338n.” Rao ¶182. Rao’s prioritization is a policy, and 

the specific priority assigned to intercepted packets is an aspect of that policy. EX1015 ¶¶91-92, 95; Rao ¶¶38-43, 180, 182.

Policies 520 may be “provided by or downloaded [to agent 326] via the 

gateway 340” (a network element) over network 104. Rao ¶183; id. ¶¶87, 90-96 

(“communicat[ing] over the network 104 to the gateway 340”). Accordingly, the 

policy would be based on information from a network element. EX-1015 ¶93.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 40 of 116 PageID #:

7259
20

Rao, Fig. 1A (annotated).

Id., Fig. 5A (annotated). 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 41 of 116 PageID #:

7260
21

Further, a user may “configur[e]” an aspect of a policy through “a user 

interface, graphical or otherwise, design[ed] and constructed for configuring or 

specifying the policies 520.” Id. ¶183; EX-1015 ¶94.

If Rao does not expressly disclose determining at least an aspect of the policy, 

Rao renders this obvious. Rao emphasizes prioritization on an application-byapplication basis, Rao ¶¶182, 191, and a POSITA would therefore have been 

motivated to obtain information from the network or the user to determine the 

prioritization to be applied (both generally and to the specific application and 

associated packets) to implement the system as Rao suggests, EX-1015 ¶96; Rao 

¶184.

Rao’s teachings, including those associated with Rao’s remote access client, 

would be incorporated into Rao-Fadell. EX-1015 ¶343. To the extent it is argued 

Rao alone does not disclose this limitation, it would have been obvious to combine 

Rao and Fadell to provide a policy that specifies a prioritization for network packets 

and notifies a user when a resource usage threshold is reached. Id. ¶¶344-50; supra 

§VII.A. 

Fadell discloses that a user may receive “reminders or alarms” that the user 

has reached a resource limit or threshold. Fadell ¶¶51-53, 48-50, 54-70. Fadell thus 

discloses a “policy” (e.g., providing notifications at a threshold) and an “aspect of a 

policy” (e.g., threshold value). EX-1015 ¶¶344-50. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 42 of 116 PageID #:

7261
22

Fadell determines the usage threshold and whether it has been reached based 

on (1) information regarding resource use from “a router or network component

downstream” (network element) and/or (2) user-defined ranges (user input) provided 

via “component[s] for allowing a user to provide inputs” (user interface). Fadell

¶¶36-37, 50-51; EX-1015 ¶¶344-50. At least an aspect of the policy is based on the 

range/threshold (user input) or the resource use information (information from a 

network element). EX-1015 ¶¶344-50.

The Fadell policy notifies the user when a resource usage threshold is reached, 

and these notifications are thus based on the limit/threshold information received 

from the network element or user: 

Fadell, Fig. 3.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 43 of 116 PageID #:

7262
23

Id., Fig. 4.

Id., Fig. 5, ¶¶50-70; EX-1015 ¶¶344-350.

For the reasons discussed, supra §VII.A, a POSITA would have combined 

Rao and Fadell to provide a system with a policy that controls network activity and 

alerts a user when resource usage limits approach a threshold, implementing these 

features in Rao-Fadell, which discloses [1e]. A POSITA also would have combined 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 44 of 116 PageID #:

7263
24

Rao with Fadell for the reasons explained in Fadell: to “assist the consumer in 

avoiding excess fees or penalties[] the consumer may receive (e.g., from the data 

provider or from the resource utilization component).” Fadell ¶51; EX-1015 ¶¶348-

49. This would have allowed a user to control resource usage, avoid overage charges, 

and prioritize foreground activity when resource usage limits are reached. EX-1015 

¶¶348-49.

6. [1f] “the policy to be applied if the service usage activity is 

the background activity, the policy at least for controlling 

the service usage activity; and”

Rao’s policies 520 may “define [packet] prioritization based on whether an 

application is running in the foreground or the background.” Rao ¶¶182, 188-89, 

40-42, 193 (“packets may be further prioritized by the characteristic of the 

application . . . , e.g., a foreground application”). “The policies 520 may be 

specified conditionally,” so that no policy applies to some packets, and packets 

associated with different applications may have higher or lower priority. Id. ¶¶182, 

193; EX-1015 ¶¶97-99.

Rao therefore discloses conditional policies based on whether the application 

(and, as a POSITA would have understood, its associated network 

communication/service usage activity) is background activity. EX-1015 ¶100. By 

defining prioritization based on whether an application is running in the background 

(e.g., assigning specific priority to the service usage activity associated with the 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 45 of 116 PageID #:

7264
25

application), Rao discloses its policy is to be applied if the service usage activity is 

the background activity. Id. The policy “controls” the service usage activity by 

prioritizing and communicating the packets “according to the determined priority.” 

Rao ¶¶189-95, 40-41, Fig. 5B (steps 570, 575); EX-1015 ¶¶100-101.

Alternatively, these disclosures at least render obvious applying prioritization 

(the policy) to queued packets “if” they are associated with background applications 

such as background service usage activity (e.g., for remote access client 120 to focus 

on deprioritizing background applications associated with background service usage 

activity). Rao ¶¶182, 188-89, 193, 40-42; EX-1015 ¶¶102-103. This would have 

improved Rao and furthered its objectives of, e.g., reducing network congestion, 

improving bandwidth available to foreground applications, and improving system 

speed/efficiency, by assigning background activity, including 

unnecessary/unwanted/unknown activity, a lower priority than actively used 

applications. Rao ¶¶3, 80, 184; EX-1015 ¶¶104-05.

In the combined Rao-Fadell system, it would have been obvious to implement 

Rao’s policy of assigning a priority to network packets based on the packets being 

background activity when a resource usage limit or threshold is reached and a user 

is notified, as taught by Fadell. Fadell ¶¶49-72, Figs. 3-6; EX-1015 ¶¶354-55. As 

discussed, supra §VII.A, in Rao-Fadell, a POSITA would have been motivated to 

apply a lower prioritization to background activity and notify a user when a resource 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 46 of 116 PageID #:

7265
26

usage limit or threshold is reached to prevent inadvertent overages, reduce consumer 

costs, and provide Fadell’s notifications that include options for proceeding. EX1015 ¶¶354-55. 

7. [1g] “if it is determined that the service usage activity is the 

background activity, apply the policy.”

Rao assigns priority to network packets associated with background activity 

(service usage activity determined to be background activity) and transmits those 

packets according to that priority, thus applying the policy. EX-1015 ¶¶106-109.

“[A]gent 326 uses the policies 520 to apply a priority to network packets of 

applications 338a-338n in accordance with the prioritization rules specified or 

indicated by the policies 520,” including those based on “characteristics . . . such as 

running in the foreground or background, to indicate priority for a network packet 

of the application.” Rao ¶189, Fig. 5 (Step 570). Agent 326 then “indicates the 

priority to the filter 322 . . . to apply the indicated priorities.” Id. ¶¶189-93; EX-1015 

¶108. The packets are communicated “according to the determined priorities.” Rao

¶¶194-95, Fig. 5 (Step 575); EX-1015 ¶108. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 47 of 116 PageID #:

7266
27

Rao, Fig. 5B (annotated).

At minimum, Rao renders obvious applying a policy if it is determined the 

service usage activity is the background activity for the reasons discussed. Supra 

[1f]; EX-1015 ¶110. For example, applying prioritization (e.g., lower priority) to 

queued packets received from background applications would further Rao’s 

objectives, and a POSITA would have been motivated to do so. Supra [1f]; Rao ¶¶3, 

80, 184; EX-1015 ¶110.

In Rao-Fadell, it would have been obvious to apply Rao’s prioritization to 

network packets determined to be background activity at least when a threshold is 

reached. EX-1015 ¶¶356-63. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 48 of 116 PageID #:

7267
28

In doing so, it would have been obvious to apply prioritization (e.g., lower 

priority) to background activity packets and notify a user of data resources (e.g., via 

Fadell’s screens 300-500) to enable the user to control how to proceed. Fadell 

¶¶50-71, Figs. 3-6; EX-1015 ¶¶360-63. For example, a user may elect, as Fadell 

teaches, to “reschedule or cancel processes requesting data of lesser importance” via 

screen 400 and cause intercepted and/or future intercepted background activity 

packets to remain in a queue, as taught by Rao. Fadell ¶¶57-60; Rao ¶¶180-95; 

EX-1015 ¶¶360-63. A POSITA would have applied and/or modified Rao in this 

manner to prevent inadvertent overages and reduce costs for the consumer, and been 

motivated to do so for the reasons discussed above. Supra [1f], §VII.A; EX-1015 

¶¶360-63.

C. Claim 91

1. “ . . . claim 1, wherein apply the policy comprises cause a 

notification to be presented through a user interface of the 

wireless end-user device.” 

Fadell’s consumer “receive[s] any suitable type of report, notice, reminder or 

alarm related to data provider resource consumption.” Fadell ¶49; EX-1015 ¶504. 

Fadell’s screen 300 provides “data resource usage information,” screen 400 provides 

“selectable options for several actions that the consumer may take . . . within [a] 

predetermined range of the allocated resource limit,” and screen 500 “prompt[s] a 

user to switch networks.” Fadell ¶¶49, 54, 51; EX-1015 ¶504. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 49 of 116 PageID #:

7268
29

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 50 of 116 PageID #:

7269
30

Fadell, Figs. 3-5.

A POSITA would have combined Fadell’s resource usage notifications with 

Rao’s queuing and prioritizing background-activity-network packets to provide a 

policy that controls network activity and causes a notification to be presented when 

resource usage limits approach a threshold. Supra claim 1; EX-1015 ¶505. 

A POSITA would have been motivated to present notifications based on

Fadell’s teaching and suggestion. EX-1015 ¶506; Fadell ¶49, Figs. 3-5. This would 

have provided user-selectable options (e.g., time-scheduling or selecting a new 

network), as Fadell suggests, Fadell ¶49, Figs. 3-5, and would have required merely 

routine skill given Rao’s and Fadell’s user interface disclosures, supra [1e], and the 

ubiquity at the time of such notifications, EX-1015 ¶506. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 51 of 116 PageID #:

7270
31

D. Claim 92

1. “ . . . claim 91, wherein the notification provides information 

about the policy.” 

Fadell’s notifications (supra claim 91) include “the amount . . . of resources 

consumed for a tier subscription period,” the expected consumption for a period, 

and/or expected data overage penalties. Fadell ¶¶49-53, Fig. 3; EX-1015 ¶¶507-08. 

They provide the “expected excess consumption or carry-over for the period (e.g., 

month),” “indicat[e] that the consumer has reached a limit in data provider 

resources,” and notify the consumer within a predetermined range of the limit. Fadell 

¶¶53-62, Figs. 3-5; EX-1015 ¶¶508-09. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 52 of 116 PageID #:

7271
32

Fadell, Figs. 3-5. 

These notifications would have provided information about Rao-Fadell’s 

policy. Supra [1a]-[1g]; EX-1015 ¶510. The Rao-Fadell policy intercepts 

background network packets, defines prioritization for the packets, and notifies the 

user when a resource usage threshold is reached. Supra [1a]-[1g]. Fadell’s 

notifications provide information about, e.g., the resource usage threshold set by the 

user within the policy. EX-1015 ¶510. 

A POSITA would have been motivated to present Fadell’s notifications with 

information about the policy to allow the user to understand the policy being 

implemented, select how to proceed, and better understand and control resource 

usage to prevent data overages/charges. Id. ¶511; Fadell ¶¶49, 51-52, Figs. 3-5. This 

would have required only routine skill for a POSITA given Rao’s and Fadell’s user 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 53 of 116 PageID #:

7272
33

interface disclosures, supra [1e], Fadell’s disclosure of notifications, and the wellknown nature of these concepts, EX-1015 ¶511. 

E. Claim 93

1. “ . . . claim 91, wherein the notification provides information 

about an option to set, control, override, or modify the at 

least an aspect of the policy . . . . .” 

Fadell’s screen 400 has selectable options 410, 412, and 414 for user responses 

to Fadell’s notifications. Supra claim 91; Fadell ¶¶53-62, Fig. 4. 

Option 410 prevents or allows data resource access. Fadell ¶¶ 53, 55. Option 

412 (i) restricts transmission of certain data types; or (ii) changes the data transfer 

process to reduce resource use. Id. ¶56. Option 414 purchases resources. Id. ¶53.

Id., Fig. 4.

Fadell’s options disclose or would have rendered obvious a notification that 

provides an option to set, control, override, or modify at least an aspect of the RaoCase 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 54 of 116 PageID #:

7273
34

Fadell policy. EX-1015 ¶¶512-15. Preventing data use (options 410, 412) teaches 

setting, controlling, and/or modifying an aspect of a policy by 

setting/controlling/modifying how Rao-Fadell handles queued packets. Id.

A POSITA would have implemented Rao-Fadell to prevent packets from 

being communicated if the user selects option 410 or 412. Id. ¶516. Such controls 

would set, control, and/or modify at least an aspect of the policy controlling how

packets are communicated from the queues. Id.; supra [1a]-[1g]. A POSITA would 

have been motivated to implement Rao-Fadell this way because it would have 

provided users greater control of data usage, prevented data overages, and given 

users options for how to use data in Rao-Fadell. EX-1015 ¶516. 

Fadell’s option 414 to purchase additional data, Fadell ¶57, also discloses 

setting, controlling, overriding, and/or modifying at least an aspect of the policy, 

EX-1015 ¶517. Purchasing additional data with option 414 would have set, 

controlled, overridden, or modified the data threshold set by the user, an aspect of 

the policy. Id. A POSITA would have been motivated to implement Rao-Fadell in 

this way because it would have provided users greater control of data usage, 

prevented data overage charges, and given users options for avoiding data overages. 

Id.

Fadell also discloses an option to exceed the allocated resources. Fadell ¶53. 

A POSITA would understand this to be an override of at least an aspect of the policy 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 55 of 116 PageID #:

7274
35

and would have implemented Rao-Fadell this way for similar reasons. EX-1015 

¶518.

A POSITA would have been motivated to present Fadell’s notifications with 

information about options to set, control, override, or modify an aspect of the policy 

in Rao-Fadell in view of Fadell’s examples and suggestion to do so. Id. ¶519; Fadell

¶¶49, 50-72, Figs. 3-6. Providing these options would have allowed the user to 

determine how the policy is implemented, select how to proceed, and better 

understand and control resource usage to prevent data overages and associated 

charges. EX-1015 ¶519; Fadell ¶¶49, 51-52. This would have required only routine 

skill. EX-1015 ¶519.

F. Claim 94

1. “ . . . claim 91, wherein, . . . the one or more processors . . . 

obtain an indication of a user response to the notification.”

Fadell discloses options 320, 410-414, 420, and/or 510-516 and 520. Fadell

¶¶49, 50-70, Figs. 3-5; supra claim 91. Options 320, 420, and 520 close their 

respective screens. Fadell ¶50, 57, 65, Figs. 3-5. Options 410-412 and 510-516

provide responses to their respective screens. Id. ¶¶54-63, Figs. 4-5; supra claim 93.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 56 of 116 PageID #:

7275
36

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 57 of 116 PageID #:

7276
37

Fadell, Figs. 3-5.

Each option obtains an indication of a user response to the notification. 

EX-1015 ¶¶520-24. Each option is selectable and indicates the user’s response to the 

notification including, e.g., closing the screen, switching networks, and/or restricting 

resource usage or users. Id.

A POSITA would have been motivated to cause Fadell’s notification to obtain 

an indication of a user response based on Fadell’s examples and suggestion. Id. ¶525; 

Fadell ¶¶49, 50-70, Figs. 3-5. This would have allowed Rao-Fadell to register that a 

user received the notification and would have allowed the user to select how to 

proceed, determine how to implement the policy, and understand and control 

resource usage. EX-1015 ¶525; Fadell ¶¶49, 51-52. Implementing this would have 

required only routine skill. EX-1015 ¶525.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 58 of 116 PageID #:

7277
38

G. Claim 95

1. “ . . . claim 91, wherein the notification provides a warning 

or an alert.”

Fadell’s screens 300-500 provide a “warning” and “alert.” Fadell ¶¶22, 51-53 

(referring to notifications as “warnings” or “alert[s]”); EX-1015 ¶¶526-28; supra

claims 1, 91.

H. Claim 96

1. “ . . . claim 91, wherein the notification provides information 

about a service plan limit.”

Fadell’s notifications provide “a notice of the amount . . . of resources 

consumed for a tier subscription period.” Fadell ¶49. The notifications assist in 

avoiding “excess fees or penalties, the consumer may receive (e.g., from the data 

provider.”). Id. ¶51. This includes determining “that the consumer has reached an 

initial limit or threshold that is less than the allocated resource limit” and providing 

screen 300. Id. Screen 400 indicates “the consumer has reached a limit in data 

provider resources,” id. ¶54, and screen 500 indicates “the allocated data provider 

resource limit for the current network,” id. ¶63.

These alerts disclose “information about a service plan limit.” Id. ¶¶43-44. A 

POSITA would have been motivated to display Fadell’s notifications with this 

information to enable a user to understand his or her data usage, prevent inadvertent 

overages and unwanted fees, and decide how to proceed when a limit/threshold is 

met. EX-1015 ¶¶529-33; supra claims 1, 91.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 59 of 116 PageID #:

7278
39

I. Claim 99

1. “ . . . claim 91, wherein the policy is based on a limit, and 

. . . determine that a data usage associated with the service 

usage activity is not less than the limit, and . . . trigger 

presentation of the notification based on the 

determination . . . ”

Fadell discloses a policy based on a limit by disclosing notificationsindicating 

the consumer’s resource use and whether it is approaching, has reached, or has 

exceeded a “limit or threshold.” Supra claim 92; Fadell ¶¶51, 54-56, 71-72, 

Figs. 3-6; Fadell ¶¶49-50, 52-53, 57-70; EX-1015 ¶¶535-36. Fadell provides screen 

300 and/or 400 in response to determining that data usage exceeds (“is not less than”) 

a provider resource limit. Fadell ¶¶49-52, 54-56, 63. Fadell also provides screen 500 

in response to determining that data provider resource limit “has been reached.” Id.

¶¶ 63-70, Fig. 5.

Id., Fig. 5.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 60 of 116 PageID #:

7279
40

A POSITA would have incorporated Fadell’s limit, including the initial limit 

or threshold set by a user and/or a data provider resource limit, into the Rao-Fadell 

policy to trigger Fadell’s notifications when data usage has reached the threshold, 

limit, or range. EX-1015 ¶¶534-40; supra claim 91. A POSITA would have been 

motivated to do so, as Fadell teaches, to enable a user to understand resource usage, 

prevent inadvertent overages, and decide how to proceed when a limit or threshold 

is met. EX-1015 ¶¶539-40; Fadell ¶¶49, 50-70, Figs. 3-5; supra claim 92 (providing 

motivations applicable here).

J. Claim 102

1. “ . . . claim 91, wherein the notification indicates that one or 

more service usage activities are subject to the policy.”

Fadell discloses notifications indicating that resource usage has reached or 

exceeded a limit. Supra claim 91; EX-1015 ¶542; Fadell ¶¶49, 50-70, Figs. 3-5. 

Fadell’s data usage notifications indicate a service usage activity is subject to the 

policy. EX-1015 ¶¶541-42. That is, Fadell’s notifications indicate that a resource 

usage limit/threshold has been reached, and therefore “one or more service usage 

activities” (e.g., data transfers/network packets) are subject to the policy. Id. Fadell’s 

option 412 to restrict resource usage based on the types of data transmitted, protocol,

or user requesting the transfer, indicates one or more service usage activities (e.g., 

related to the restricted usage) are subject to the policy. Fadell ¶56, Fig. 4. It also 

would have been obvious for the Rao-Fadell notifications to tell the user that certain 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 61 of 116 PageID #:

7280
41

background communications are being deprioritized because of the resource usage 

limit, as Rao teaches. EX-1015 ¶542; see Rao ¶¶179-95. 

A POSITA would have incorporated Fadell’s usage notifications into Rao. 

Supa claims 93, 91; EX-1015 ¶543. Providing notifications that indicate a service 

usage activity is subject to a policy would have enabled a user to understand his/her 

data usage, prevent inadvertent overages, and decide how to proceed when a limit or 

threshold is met. EX-1015 ¶543. A POSITA would have been motivated to cause 

such usage-based notifications to allow a user to select how to proceed, determine 

how the policy is being implemented, and understand and control resource usage to 

prevent data overages and associated charges. Id.; Fadell ¶¶49-70, Figs. 3-5. 

Providing such notifications would have required only routine skill. EX-1015 ¶543. 

K. Claim 103

1. “ . . . claim 91, wherein the notification provides information 

about a second network.” 

Screen 500 includes options to switch to Ethernet, Wi-Fi, 3G cellular, or 

EDGE cellular networks. Fadell ¶¶63-70, Fig. 5; supra claims 1, 91. These options 

identify networks by unique identifiers, such as by name and type, Fadell ¶63, which

are both “information about a second network,” EX-1015 ¶¶544-45. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 62 of 116 PageID #:

7281
42

Fadell, Fig. 5.

A POSITA would have incorporated Fadell’s screen 500 into Rao-Fadell to

prevent inadvertent overages and unwanted fees, and to allow a user to decide how 

to proceed when a limit/threshold is met. EX-1015 ¶546; supra claims 1, 91. This 

includes switching networks when reaching a data limit on a first network. EX-1015 

¶546. Providing such notifications would have required only routine skill. Id. ¶547. 

L. Claim 104

1. “ . . . claim 91, wherein the notification comprises an offer 

for a service plan upgrade or downgrade.”

Screen 400 includes “option 414 for purchasing additional data provider 

resources.” Supra claims 1, 91; Fadell ¶57, Fig. 4.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 63 of 116 PageID #:

7282
43

Id., Fig. 4.

Option 414 offers a service plan upgrade. EX-1015 ¶¶548-50. In response to 

its selection, a data provider provides additional resources that otherwise would 

exceed a given plan. Fadell ¶¶57, 43, 44; EX-1015 ¶550. 

A POSITA would have combined Fadell’s upgrade option into Rao-Fadell to 

give additional user control over the policy by purchasing more resources, thereby 

preventing overages. EX-1015 ¶551; Fadell ¶¶54-62, Fig. 4. A POSITA would have 

expected success based on Fadell’s teachings. EX-1015 ¶551.

M. Claim 105

1. “ . . . claim 91, wherein apply the policy further comprises 

obtain an indication of a user preference in response to the 

notification.”

Fadell discloses options 320, 410, 412, 414, 420, 510, 512, 514, 516, and 520. 

Fadell ¶¶49, 50-70, Figs. 3-5; supra claim 94. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 64 of 116 PageID #:

7283
44

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 65 of 116 PageID #:

7284
45

Fadell, Figs. 3-5.

Each option indicates “user preference” in response to Fadell’s notification. 

EX-1015 ¶¶552-55. Closing the notification via options 320, 420, and 520 indicates

a preference to close the notification. Id. Options for restricting use or switching 

networks indicate preferences to restrict resource usage and switch networks. Id. A 

POSITA would have implemented Fadell’s screens 300-500, including their options 

to capture a user preference, into Rao-Fadell. Id. A POSITA would have been 

motivated to do so to capture how the user would like to proceed at or near a data 

limit, control implementation of the policy in Rao-Fadell, and enable the user to 

prevent data overages and associated charges. Id. ¶556; Fadell ¶¶49-70, Figs. 3-5. 

Doing so would have required only routine skill. EX-1015 ¶556.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 66 of 116 PageID #:

7285
46

N. Claim 106

1. “ . . . claim 105, wherein the indication of the user preference 

comprises a user directive to associate the policy with a 

second software component.”

Fadell’s option 412 restricts “data transfers . . . based on the protocol or 

application requesting the data transfer.” Fadell ¶¶56, 59, Fig. 4. Fadell’s disclosure 

of selecting option 412 discloses or renders obvious claim 106. EX-1015 ¶¶557-58. 

A POSITA would have included option 412 in Rao-Fadell to allow a user to 

direct application of Rao-Fadell’s policy to packets associated with a selected 

application, in the same or similar manner as the policy applies to background 

activity. EX-1015 ¶559. A POSITA would have been motivated to do so and would 

have expected success based on Fadell’s teachings. Id. ¶560; Fadell ¶¶49, 57-62, 

Fig. 4. This would have enabled a user to control implementation of the policy in 

Rao-Fadell and target particular applications, enabling the user to prevent data 

overages and associated charges. EX-1015 ¶560; Fadell ¶¶49, 51-52. For example, 

a user may understand that a particular application, including a second software 

component that is a separate component or application from background activity of 

a first software component (supra claim 1), may consume considerable resources 

and wish to restrict usage of that application when at a resource usage 

limit/threshold. Fadell ¶53; EX-1015 ¶560. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 67 of 116 PageID #:

7286
47

O. Claim 107

1. “ . . . claim 105, wherein the indication of the user preference 

comprises a user directive to allow or block the service 

usage activity.”

Fadell’s option 412 “restrict[s] resource usage to stay within the resource 

allocation.” Fadell ¶¶56, 59, Fig. 4. Fadell also discloses enabling the user to 

“prevent the download of media data, but allow or permit the download of web 

pages or other non-media intensive transfers.” Id. ¶59. Users may “reschedule or 

cancel processes requesting data of lesser importance.” Id. ¶60. Users may also 

allow the data transfer by purchasing additional data resources from the provider. Id.

¶53.

Opting to “restrict,” “prevent” or “cancel” is a user preference that includes a 

user directive to block the service usage activity (at least temporarily), and opting to 

“allow” or purchase additional data resources allows a service usage activity. 

EX-1015 ¶¶561-63. The preference includes, for example, identifying the particular 

data transfer, and the directive is, for example, restricting, preventing, or canceling 

it. Id.

A POSITA would have applied these teachings in Rao-Fadell to enable a user 

to restrict or allow the intercepted network packets (e.g., of “lesser importance,” 

which corresponds with Rao’s background activity). Id. ¶564; Fadell ¶¶49, 57-62, 

Fig. 4. This would have enabled a user to control implementation of the Rao-Fadell 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 68 of 116 PageID #:

7287
48

policy and elect whether to allow or permit queued background activity to control 

resource usage and prevent overages. EX-1015 ¶565; Fadell ¶¶49, 51-52. Doing so

would have required only routine skill. EX-1015 ¶565. 

P. Claim 108

1. “ . . . claim 105, wherein the indication of the user preference 

identifies a traffic control setting associated with the 

policy.”

The ’541 patent discloses “traffic control techniques,” e.g., “throttle, delay, 

priority queue, time window, suspend, quarantine, kill, [or] remove” service usage 

activity. EX-1001, 19:47-53. 

Fadell’s restricting or allowing resource usage via screen 400 discloses 

claim 108 because Fadell discloses throttling, delaying, suspending, and killing 

resource usage by “prevent[ing],” “reschedul[ing],” or “cancel[ing]” the activity. 

Fadell ¶¶56, 59-61, Fig. 4; supra claim 107. 

Fadell similarly discloses time-windowing resource usage. Fadell ¶61 

(describing rescheduling and metering “based on the day or time of day”). Rao also 

discloses a traffic control setting via a priority queue by intercepting, queuing, and 

assigning a priority to network packets. Rao ¶¶179-95, Fig. 5A. 

A POSITA would have applied Fadell’s and/or Rao’s teachings in Rao-Fadell 

to enable a user to restrict, delay, queue, and/or permit resource usage when a data 

limit or threshold is reached. EX-1015 ¶¶566-69. For example, screen 400 would 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 69 of 116 PageID #:

7288
49

enable a user to restrict/allow intercepted/queued packets and reschedule or cancel

processes of “lesser importance.” Id. A POSITA would have been motivated to do so 

and expected success based on Rao and Fadell’s teachings. Id. ¶570; Fadell ¶¶49, 

57-62; Rao ¶¶179-95. This would have enabled a user to control implementation of 

the policy in Rao-Fadell and elect whether to allow or permit queued background 

activity to prevent overages and associated charges. EX-1015 ¶570; Fadell ¶¶49, 

51-52.

Q. Claim 109

1. “ . . . claim 105, wherein the indication of the user preference 

comprises a user directive to allow the service usage activity 

under a specified condition.”

Fadell’s allowing “download of web pages or other non-media intensive 

transfers” via screen 400 and rescheduling processes of “lesser importance” 

discloses claim 109. Fadell ¶¶56, 59-60. By allowing certain applications like web 

pages and “non-media intensive transfers” to proceed, or by rescheduling lesser 

important tasks, a user is allowing the service usage activity under a specified 

condition. EX-1015 ¶¶571-73. The condition includes the specific application or 

identified network packets associated with a web browser or other applications 

requesting “non-media intensive transfers.” Id.; Fadell ¶¶56, 59-60. Fadell’s 

rescheduling also teaches claim 109, because it applies a time-based condition to 

allow the rescheduled activity. EX-1015 ¶573; Fadell ¶¶56, 59-60.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 70 of 116 PageID #:

7289
50

A POSITA would have applied these teachings to Rao-Fadell to obtain an 

indication of user preference to permit queued network packets associated with 

background activity in view of Fadell’s teaching and suggestion. EX-1015 ¶¶574-75; 

Fadell ¶¶49, 57-62, Fig. 4. This would enable a user to control implementation of 

the policy in Rao-Fadell and elect whether to allow or permit queued background 

activity and thus control resource usage and prevent overages and associated 

charges. EX-1015 ¶575; Fadell ¶¶49, 51-52. The modification would require only 

routine skill. Supra claim 108; EX-1015 ¶575.

R. Claim 110

1. “ . . . claim 105, wherein the indication of the user preference 

comprises a user directive to override or modify the policy.”

Supra claim 93 (providing options to override/modify policy by indicated 

preference restricting data use, purchasing data, exceeding data allocation), claim 

94, claim 105; EX-1015 ¶¶576-81.

S. Claim 111

1. “ . . . claim 91, . . . cause the notification to be presented 

based on occurrence of a trigger.”

Fadell’s “determining that the consumer is within a particular range . . . [or]

has reached an initial limit or threshold” discloses an “occurrence of a trigger.”

Fadell ¶¶51, 49-72, Figs. 3-6; EX-1015 ¶¶582-84; supra claim 99. Fadell discloses 

presenting a notification in response to determining the resource usage exceeds a 

limit, threshold, or is within a range of a data provider resource limit for a given 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 71 of 116 PageID #:

7290
51

period. Fadell ¶¶49-52, 54-56, 63; EX-1015 ¶585. Fadell also discloses providing 

notification screen 500 when the data provider resource limit “has been reached.” 

Fadell ¶¶63-70, Fig. 5; EX-1015 ¶585. 

A POSITA would have incorporated Fadell’s trigger, including its initial limit 

or threshold set by a user and/or a data provider resource limit, into Rao-Fadell’s

policy to trigger Fadell’s notifications when resource usage has reached the 

threshold, limit, or range. EX-1015 ¶586; supra claims 1, 91, 99. A POSITA would 

have been motivated to exercise routine skill and do so to enable a user to understand 

his/her data usage, prevent inadvertent overages and unwanted fees, and decide how 

to proceed when a limit or threshold is met. EX-1015 ¶¶586-87; Fadell ¶¶49, 51-52. 

T. Claim 112

1. “ . . . claim 111, wherein the trigger is: a measure of the 

service usage activity satisfies a first condition relative to a 

threshold . . . .” 

Supra claims 99, 111 (determining a data usage associated with service usage 

activity meets/exceeds limit triggers the notification); Fadell ¶¶51-61, 71-72; 

EX-1015 ¶¶588-89. 

Fadell’s initial limit discloses a measure of the service usage activity (e.g., 

data use associated with background activity) satisfying a first condition relative to 

a threshold (e.g., using data up to predetermined range). EX-1015 ¶590. For 

example, where the service usage activity is background activity and the service 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 72 of 116 PageID #:

7291
52

usage activity meets or exceeds Fadell’s initial limit the service usage activity would 

satisfy a first condition relative to a threshold. Id. ¶591.

A POSITA would have implemented Rao-Fadell to measure resource usage 

and trigger a notification based on network packets, including those associated with 

background activity, meeting Fadell’s initial usage limit. Id. ¶592. A POSITA would 

have incorporated these conditions in Rao-Fadell to trigger Fadell’s notifications and 

would have expected success. Supra claims 1, 91; EX-1015 ¶592. A POSITA would 

have been motivated to do so to allow a user to select how to proceed and to 

understand and control resource usage to prevent data overages. EX-1015 ¶593; 

Fadell ¶¶49, 51-52. 

U. Claim 113

1. “ . . . claim 91, wherein the notification enables a user . . . to 

obtain information about at least an aspect of . . . a service 

plan associated with the wireless end-user device.”

Fadell’s notifications disclose providing information about at least an aspect 

of a service plan associated with the wireless end-user device (e.g., the service plan 

limit). Supra claims 1, 91, 96; Fadell ¶¶49-72, 43, Figs. 3-6. Fadell’s service plan is 

“associated” with the wireless end-user device because resources are allocated to 

specific wireless-end user devices/groups. Fadell ¶¶42, 43, 67; EX-1015 ¶594.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 73 of 116 PageID #:

7292
53

V. Claim 114

1. “ . . . claim 91, wherein the notification presents a list of . . . 

software components . . . including . . . the first software 

component.”

Rao-Fadell renders obvious a notification that presents a list of software 

components including the first software component. EX-1015 ¶¶595-96. Fadell’s 

screen 400 includes option 412 that “restrict[s] resource usage . . .  based on the 

protocol or application requesting the data transfer.” Fadell ¶56. In response to the 

selection of option 412, “data transfers may be restricted based on the . . .

application requesting the data transfer.” Id. A user may “allow or permit” data 

requests “based on the application requesting the data.” Id. ¶59. 

To restrict data transfers for specific applications, the user would be provided 

the option to select which applications to restrict or permit continued data transfer. 

EX-1015 ¶597. It would have therefore been obvious to provide a list of applications 

(e.g., “software components”) for the user to select and control after selecting option 

412. Id.

A POSITA would have been motivated to include a list of applications in RaoFadell’s notifications, including the first software component to let the user: 

(i) control implementation of the policy, control which applications can or cannot 

continue to use data, and thus avoid inadvertent overages and fees; (ii) select which 

applications could engage in data transfers despite the user being at or near a data 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 74 of 116 PageID #:

7293
54

limit; and (iii) prioritize certain applications or maintain their operation while 

restricting others. Id. ¶598. Providing such a list would have required only routine 

skill for a POSITA, with expected results, and would have been obvious based on 

Fadell. Id.

W. Claim 115

1. “ . . . claim 91, wherein the notification presents an option to 

modify the policy.”

Supra claim 93; EX-1015 ¶¶599-600.

X. Claim 116

1. “ . . . claim 91, wherein the notification presents an 

indication of a measure of usage of the wireless network 

associated with the service usage activity.”

Fadell’s notification 408 informs the user: “You are within 1% of exceeding 

the allocated data provider resources.” Fadell, Fig. 4. The consumer can set this 

range (“within 1%”). Id. ¶¶54, 51-52. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 75 of 116 PageID #:

7294
55

Id., Fig. 4. 

Screen 400 gives the user options for responding to the notification, including 

restricting the amount of resources used, accepting a lower quality download, and 

exceeding the limit by purchasing additional resources. Id. ¶¶53, 56. Where a user 

chooses to exceed the limit, the consumer may only be allowed to exceed it by a 

particular amount before providing a new alert or displaying a new request for 

authorization or payment. Id. ¶53.

It would have been obvious to inform a user how much of their remaining 

resources would be consumed by a service usage activity (or how much the activity 

would cause them to exceed their resources), as Fadell teaches and suggests. 

EX-1015 ¶¶601-05; Fadell ¶¶53, 56. This would have allowed a user to make 

informed decisions, e.g., whether to reduce a data transfer size, by informing him/her 

of the resource cost for each option. EX-1015 ¶605; Fadell ¶¶53, 56. 

Likewise, a POSITA would have been motivated to include these features in 

Rao-Fadell. EX-1015 ¶605; see claim 91 (describing benefits of Fadell’s 

notifications). For example, Rao discloses determining “characteristics or statistics

of the application 338a-338n such as size, memory usage, total execution time, 

and/or frequency of use,” Rao ¶188, and that its policies may be “specified in 

accordance to . . . the size of the payload of the network packet,” id. ¶182. It would 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 76 of 116 PageID #:

7295
56

have been obvious to provide in Fadell’s screen 400 these determined characteristics 

or statistics of the application or the network packet. EX-1015 ¶605. 

A POSITA would have been motivated to provide a measure of usage of the 

wireless network at or near limit because it would have provided users with 

information related to network usage, allowed a user to decide whether to allow the 

network packet from the queues, or modify the data plan to permit communication 

without an overage charge. Id. ¶606. This would have given a user greater control 

over the policy and provided users with additional information from which to decide 

how to implement the policy. Id. 

Y. Claim 117

1. “ . . . claim 91, wherein the notification is provided 

through . . . a window . . . .” 

Fadell’s screens 300-500 provide a notification through a window. Fadell

¶¶49-70, Figs. 3-5; supra claims 1, 91. A POSITA would have displayed Fadell’s 

screens via the user interface of the end-user device in Rao-Fadell, been motivated 

to do so, and reasonably expected success in doing so. EX-1015 ¶¶607-08; supra

claims 1, 91.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 77 of 116 PageID #:

7296
57

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 78 of 116 PageID #:

7297
58

Fadell, Figs. 3-5.

Z. Claim 118

1. “ . . . claim 1, wherein . . . the one or more processors . . . 

cause a notification to be presented through a user interface 

of the wireless end-user device.”

Supra claims 1, 91; EX-1015 ¶609.

AA. Claim 119

1. “ . . . claim 118, wherein the notification provides 

information about the policy.”

Supra claim 92; EX-1015 ¶¶610-14.

BB. Claim 120

1. “ . . . claim 118, wherein the notification provides 

information about an option to set, control, override, or 

modify the at least an aspect of the policy or a second aspect 

of the policy.”

Supra claim 93; EX-1015 ¶615.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 79 of 116 PageID #:

7298
59

CC. Claim 121

1. “ . . . claim 118, wherein the notification indicates that the 

service usage activity is the background activity.”

Rao-Fadell renders obvious claim 121. Rao-Fadell’s application may include, 

e.g., background email updates, auto-update processes, and virus program updates. 

Rao ¶¶179, 192; Fadell ¶¶60-61. It would have been obvious to provide a notification 

associated with these applications/processes in Rao-Fadell so the user is aware of 

the application/process and understands the associated service usage activity is 

background activity. EX-1015 ¶¶616-17. 

It also would have been obvious to indicate in the notification, such as Fadell’s 

screens, that packets (service usage activity) associated with the application are 

being intercepted, queued, and assigned a priority because they are associated with 

background activity. Id. ¶618. A POSITA would have been motivated to do so

because it would have informed the user of the system’s actions and identified which 

applications are being prioritized. Id. This would have given the user more 

information about, and control over, the system and policy. Id. For example, by 

knowing of background activity, the user can take action to override the policy to

allow certain background activity. Id.

DD. Claim 122

1. “ . . . claim 118, wherein the notification provides 

information about a second network.”

Supra claim 103; EX-1015 ¶619.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 80 of 116 PageID #:

7299
60

EE. Claim 123

1. “ . . . claim 118, . . . obtain an indication of a user preference 

in response to the notification.”

Supra claim 105; EX-1015 ¶620.

FF. Claim 124

1. “ . . . claim 123, wherein the indication of the user preference 

comprises a user directive to associate the policy with the 

first software component.”

Fadell’s screen 400 includes option 412 to restrict resource usage, including

“based on the protocol or application requesting the data transfer.” Fadell ¶56, 

Fig. 4; id. ¶59 (limiting data requests “based on the application”). By receiving an 

indication to restrict resource usage based on a particular application via screen 400, 

Fadell discloses or renders obvious claim 124. EX-1015 ¶¶621-23. 

A POSITA would have applied Fadell’s indication through screen 400 to 

restrict certain applications by applying the Rao-Fadell policy of intercepting, 

queuing, and defining a prioritization to network packets associated with the selected 

application in the same or similar manner as applied to background activity. Id. A 

POSITA would have been motivated to do so in view of Fadell’s teaching and 

suggestion. Id. ¶624; Fadell ¶¶49, 57-62, Fig. 4. This would have allowed a user to 

control implementation of the policy in Rao-Fadell and target applications, allowing 

the user to prevent data overages and associated charges caused by those 

applications. EX-1015 ¶624; Fadell ¶¶49, 51-52. For example, a user may 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 81 of 116 PageID #:

7300
61

understand that particular applications consume considerable resources and wish to 

restrict their usage when at a resource usage limit/threshold. EX-1015 ¶624; Fadell

¶53.

GG. Claim 125

1. “ . . . claim 123, wherein the indication of the user preference 

comprises a user directive to restrict, allow, or block the 

service usage activity.”

Supra claim 107; EX-1015 ¶625.

HH. Claim 126

1. “ . . . claim 123, wherein the indication of the user preference 

identifies a traffic control setting associated with the 

policy.”

Supra claim 108; EX-1015 ¶626.

II. Claim 127

1. “ . . . claim 123, wherein the indication of the user preference 

comprises a user directive to override or modify the policy.”

Supra claim 110; EX-1015 ¶627.

JJ. Claim 128

1. “ . . . claim 123, wherein the indication of the user preference 

comprises a user acknowledgment of the notification.”

Supra claims 94, 123, 91; EX-1015 ¶¶628-29. Rao-Fadell teaches an 

indication of a user preference that is a “user acknowledgment” of a notification 

(e.g., claim 128) for the same reasons Rao-Fadell teaches obtaining an indication of 

a user response to a notification (e.g., claims 94, 123). EX-1015 ¶¶628-29. A 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 82 of 116 PageID #:

7301
62

response to a notification is an acknowledgement of the notification or at least 

requires acknowledgement of it. Id.

KK. Claim 129

1. “ . . . claim 123, wherein the indication of the user preference 

indicates one or more network types.” 

Fadell’s screen 500 prompts a user and provides options to switch networks. 

Supra claims 103, 122; Fadell ¶¶63-70, Fig. 5. Fadell’s options “may identify 

networks by unique identifiers, such as by name (e.g., so that several networks of 

the same type, such as Wi-Fi, may be available for selection).” Fadell ¶63. Fadell’s

options identify networks by type; therefore, a POSITA would have understood that 

the selection of a particular option (an indication of the user preference) indicates a 

network type. EX-1015 ¶¶630-31. 

Fadell, Fig. 5.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 83 of 116 PageID #:

7302
63

A POSITA would have been motivated to incorporate this aspect of Fadell in 

Rao-Fadell and would have had a reasonable expectation of success in doing so. 

Supra claims 103, 118; EX-1015 ¶632. 

LL. Claim 130

1. “ . . . claim 129, wherein the one or more network types 

comprise WiFi, 4G, 3G, wireless, wired, or a combination of 

these.” 

Supra claims 103, 122, 129; Fadell, Fig. 5; EX-1015 ¶633. 

MM. Claim 131

1. “ . . . claim 118, . . . cause the notification to be presented 

based on occurrence of a trigger.” 

Supra claim 111; EX-1015 ¶634. 

NN. Claim 132

1. “ . . . claim 131, wherein the trigger is: a measure of the 

service usage activity satisfies a first condition relative to a 

threshold . . . .” 

Supra claim 112, 91; EX-1015 ¶635. 

OO. Claim 133

1. “ . . . claim 118, wherein the notification enables a user . . . to 

obtain information about at least an aspect of . . . a service 

plan . . . .” 

Supra claim 113; EX-1015 ¶636. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 84 of 116 PageID #:

7303
64

PP. Claim 134

1. “ . . . claim 118, wherein the notification presents a list of 

. . . software components, the list of . . . software components 

including . . . the first software component.”

Supra claim 114; EX-1015 ¶637.

QQ. Claim 135

1. “ . . . claim 118, wherein the notification presents 

information about a setting associated with the policy.”

Supra claims 108, 105, 126; EX-1015 ¶638. By providing options to the user 

to restrict data usage and/or purchase additional resources, Fadell’s notification 

presents information about a setting associated with the policy. Fadell ¶¶56, 59-61, 

Fig. 4; supra claim 8; EX-1015 ¶638.

RR. Claim 136

1. “ . . . claim 118, wherein the notification presents 

information about the wireless network.”

Supra claim 116; EX-1015 ¶639. Fadell’s screen 500 presents information 

about the current wireless network, such as “notification 508 indicating to the user 

that the allocated data provider resource limit for the current network (identified by 

indication 506).” Fadell ¶63, Fig. 5. Fadell’s screens 300-400 provide information 

about the wireless network, including data consumed and remaining, and an 

indication of the user being “within 1% of exceeding” a data resource limit. Id.

¶¶50-62, Figs. 3-4; EX-1015 ¶639.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 85 of 116 PageID #:

7304
65

SS. Claim 137

1. “ . . . claim 118, wherein the notification presents an 

indication of a measure of usage of the wireless network 

associated with the service usage activity.” 

Supra claim 116; EX-1015 ¶640. 

TT. Claim 138

1. “ . . . claim 118, wherein the notification presents 

information about . . . a network availability state.” 

By providing information about a second network (supra claim 103), Fadell’s

notification presents information about a network availability state. EX-1015 ¶641. 

In Fadell, if “the limit for the current network has been reached, the resource 

utilization component may identify other networks available to the consumer for 

which allocated data provider resources remain.” Fadell ¶¶63-65, Fig. 5. This may 

include “identify[ing] a Wi-Fi or Ethernet network for which resources are 

available,” “options for each identified available network,” and “the amount of 

resources available for each network.” Id. ¶63, Fig. 5. This discloses information 

about a “network availability state.” EX-1015 ¶641.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 86 of 116 PageID #:

7305
66

Fadell, Fig. 5.

This corresponds with the ’541 patent, which discloses techniques and/or 

policies based on “availability state for alternative networks.” EX-1001, 91:32-34, 

71:19-23; EX-1015 ¶642.

UU. Claim 140

1. “ . . . claim 118, wherein the notification presents 

information about a statistic associated with the service 

usage activity.”

Fadell’s screens 300 and 400 present information related to the service usage 

activity’s contribution to a user’s data limit for a given period. Screen 300 provides 

“a notice of data provider resources used,” including data consumed and remaining, 

estimated data usage, and comparisons of estimated usage to the service plan. Fadell 

¶¶50-53, Fig. 3. Screen 400 indicates that “the consumer has reached a [data] limit” 

or is within a percentage of exceeding it. Id. ¶¶54-62, Fig. 4. These provide 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 87 of 116 PageID #:

7306
67

“statistic[s] associated with the service usage activity” because the usage activity 

contributes to the user’s data consumption information presented in Fadell’s 

notifications—information that a POSITA would have understood are statistics. 

EX-1015 ¶¶643-45.

Rao also determines “characteristics or statistics of the application 338a338n such as size, memory usage, total execution time, and/or frequency of use.” 

Rao ¶¶188, 182. It would have been obvious to provide in Fadell’s notification (e.g., 

screens 300-400) these determined application characteristics or statistics associated 

with a network packet intercepted by the system, as Fadell and Rao teach and 

suggest. EX-1015 ¶¶646-47. This would provide information about a statistic 

associated with the service usage activity. Id. A POSITA would have been motivated 

to include Fadell’s notifications, including screen 300-400, and provide via those 

notifications information about a statistic associated with the service usage activity, 

including Rao’s additional information. Id. ¶647; Rao ¶¶182, 188. This would have 

kept a user informed about applications associated with network packets, including 

their frequency of use and data requirements, before sending data over the network. 

EX-1015 ¶647. This would have furthered Fadell’s objectives of monitoring 

resource usage and preventing data overages. Fadell ¶49; EX-1015 ¶647.

It also would have been obvious to provide statistics in Fadell’s notifications 

about background activity initiated by incoming requests to the user device. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 88 of 116 PageID #:

7307
68

EX-1015 ¶648. Fadell discloses “log[ging] and quantify[ing] the number of 

unsolicited pings” to the user’s device. Fadell ¶66. Measuring this “ensure[s] that 

data transfers not initiated or requested by the consumer are not included in the 

measured data provider metering,” and not charged to the user. Id. Common 

background pings include tests for network connectivity and pings for location data. 

EX-1015 ¶648. Indicating to the user that a network packet, sent in response to a 

ping or incoming from the ping, would have benefited the user by preventing charges 

based on data requests the user did not initiate, as Fadell explains. Id.; Fadell ¶66. It 

would also allow the user to monitor and, if desired, terminate, background requests 

that cause frequent pings. EX-1015 ¶648. Providing such information, including a 

count or frequency of pings, provides information about a statistic associated with 

the service usage activity. Id.

VV. Claim 141

1. “ . . . claim 118, wherein the notification comprises a gauge 

providing service usage information associated with the 

service usage activity.”

Rao-Fadell discloses providing a notification of the user’s rate of 

consumption, the largest consumer on the network, or “other characteristics or 

statistics” associated with the service usage activity. Supra claim 140. It would have 

been obvious to present this information as a “gauge.” Fadell describes presenting 

information as a percentage. Fadell ¶54, Fig. 4; EX-1015 ¶¶649-51. As explained for

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 89 of 116 PageID #:

7308
69

claim 140, a POSITA would have been motivated to better inform the user regarding 

their network use, as Rao and Fadell suggest. Supra claim 140; EX-1015 ¶¶650-51.

To the extent a “gauge” requires graphics, Fadell renders this obvious. 

EX-1015 ¶652. Fadell describes interfaces with the device’s current and/or historical 

service usage. Id. A POSITA would have recognized that how to present RaoFadell’s information was a design choice and would have been motivated to include 

a graphical representation for the same reasons a POSITA would have been 

motivated to provide a graphical representation of the information on screens 

300-500, or other statistics to allow the user to easily review this information at-aglance. Id. Providing the information Fadell recommends graphically, e.g., Fadell 

¶50, Figs. 3-4, would have been straightforward and yielded expected results, 

EX-1015 ¶652.

WW. Claim 142

1. “ . . . claim 118, wherein the notification comprises a gauge 

providing service usage information associated with one or 

more networks, the one or more networks including the 

wireless network.”

Supra claims 140-41; EX-1015 ¶654. The ’541 patent discloses that “a UI fuel 

gauge” may be displayed that includes network service usage “relative to a service 

plan for the device.” EX-1001, 73:65-74:2. Similarly, Fadell’s screens 300-500

provide a “gauge” providing service usage information associated with one or more 

networks, the one or more networks including the wireless network. Supra claim 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 90 of 116 PageID #:

7309
70

141; Fadell ¶¶49-70, Figs. 3-5. A POSITA would have combined Fadell with Rao 

with a reasonable expectation of success and would have been motivated to make 

the combination as provided in claim 141. Supra claim 141. Fadell’s disclosures also 

render claim 142 obvious. Supra claim 141; EX-1015 ¶¶653-58. 

XX. Claim 143

1. “ . . . claim 118, wherein the notification comprises a gauge 

providing information associated with a service plan.”

Supra claim 142; EX-1015 ¶659.

YY. Claim 144

1. “ . . . claim 118, wherein the notification is provided 

through . . . a window . . . .”

Supra claim 117; EX-1015 ¶660. 

ZZ. Claim 145

1. “ . . . claim 118, wherein the notification comprises a 

warning or an alert.”

Supra claim 95; EX-1015 ¶661. 

AAA.Claim 146

1. “ . . . claim 118, wherein the information from the network 

element is first information, and wherein the notification is 

based on second information from the network element.”

In Rao-Fadell, Rao’s gateway 340 discloses a “network element,” and the 

information used to determine an aspect of a policy from the gateway may be “first 

information.” Supra [1e]-[1g], claim 118; Rao ¶¶183, 90-96, Fig. 1A; EX-1015 

¶¶662-63.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 91 of 116 PageID #:

7310
71

Rao, Fig. 1A (annotated).

Fadell further discloses a notification that may be based on information from 

a network element. EX-1015 ¶¶664-65; Fadell ¶50 (explaining that screen 300 

notification provides “information related to the consumption of data provider 

resource” that is transmitted via “a router or network component.”), Fig. 3. This 

information regarding data consumption discloses “second information.” EX-1015 

¶665.

In Rao-Fadell, a POSITA would have been motivated to implement Rao’s 

gateway as the network element that provides both first information about the policy 

and a notification regarding data resource usage based on second information, as 

Fadell teaches and suggests. Id. ¶666; Fadell ¶50, Fig. 3. This would have benefited 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 92 of 116 PageID #:

7311
72

users by notifying them of resource usage to avoid using more data than allotted. 

EX-1015 ¶666. Implementing Rao’s gateway to both provide information about the 

policy and notifications, as suggested by Rao and Fadell, would have been within a 

POSITA’s capabilities and a design choice. Id. Applying Fadell’s teachings to Rao’s 

gateway would have been combining known elements according to understood 

principles to yield predictable results. Id.

BBB. Claim 147

1. “ . . . claim 118, wherein the notification comprises 

information about a cost or a charge associated with the 

service usage activity.”

Fadell’s notification “include[s] option 414 for purchasing additional data 

provider resources,” which requires “authorization to charge for additional 

resources.” Fadell ¶¶57, 63 (providing authorization via financial information, 

personal account pin or passcode, etc.). 

Fadell’s option for purchasing additional resources, including authorization to 

charge for them, is information about a cost or a charge associated with the service 

usage activity. EX-1015 ¶¶667-71. An authorization charge would include 

information related to costs. Id. If claim 118 requires quantitative notification of the 

cost/charge, it would have been obvious from Rao-Fadell’s teachings to inform a 

customer of the cost/charge when selling the additional data. Id. A POSITA would 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 93 of 116 PageID #:

7312
73

have been motivated to include such information in the notification to allow the user 

to purchase additional resources fully understanding the costs. Id.; Fadell ¶¶57-61.

A POSITA would have found it obvious to apply these teachings in Rao-Fadell

to enable users to control their resource usage and understand the potential cost of 

continued post-threshold use. EX-1015 ¶672. This would have required only routine 

skill for a POSITA, who would have understood how to present notifications and 

offer the user options as Fadell suggests. Id.

CCC.Claim 148

1. “ . . . claim 118, wherein the notification comprises 

information about a service sponsor.” 

Fadell’s notification provides an option to change networks, and that

notification identifies different networks by “unique identifiers,” such as by name. 

Fadell ¶63, Fig. 5. A POSITA would have understood that free, paid, and sponsored 

network access were common, and that network access may be sponsored. EX-1015 

¶¶673-75; EX-1013. For example, in exchange for viewing an ad, the user might 

receive free or reduced-cost network access. EX-1015 ¶675. Network access might 

also be contingent on, e.g., paying the service sponsor. Id.; EX-1012. 

Fadell discloses including multiple networks of a type in the notification, 

Fadell ¶63, and it would have been beneficial to include information about each 

network (whether free, paid, or sponsored by a service sponsor) in the notification 

(e.g., using Fadell’s unique network identifiers) to allow an informed choice. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 94 of 116 PageID #:

7313
74

EX-1015 ¶676. Fadell also discloses that a user may have to pay for resources on a 

network. Fadell ¶¶53, 57. Accordingly, where a network offers sponsored access, a 

POSITA would have included information about the service sponsor (e.g., the 

sponsor’s name or the cost charged by the sponsor) as part of the “unique identifier” 

suggested by Fadell. EX-1015 ¶676.

Alternatively, Fadell’s “network administrator” is an exemplary “service 

sponsor” and discloses claim 148. Id. ¶677; Fadell ¶¶67-70. Fadell’s network 

administrator “allocate[s] a particular amount of data provider resources to each 

user,” and “monitor[s] the consumption and provide[s] . . . alerts to each of the 

devices or users.” Fadell ¶¶67-69. For example, a network administrator who 

administers an employee network (e.g., local area network or Wi-Fi network) would 

pay a data provider for data and control use of the data on the network. EX-1015 

¶677. This is consistent with the ’541 patent’s description of a “sponsored service 

provider.” EX-1001, 78:63-79:8, 80:48-62.

Fadell’s screen 300 provides a notification that includes a “a personal 

message from a network administrator to the consumer” that “instruct[s]” the 

consumer “to cut back on resource use.” Fadell ¶¶50, 69. A POSITA would have 

understood that this message discloses a notification that includes information 

“about a service sponsor,” such as information about the network administrator’s 

desire for consumer to reduce data usage. EX-1015 ¶678.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 95 of 116 PageID #:

7314
75

Fadell’s “network administrator may allow the user or device to exceed the 

allocated resources in exchange for an additional charge (e.g., a payment or penalty)” 

paid to “the data provider.” Fadell ¶70. The user pays by “selecting an option 

agreeing to the penalty.” Id. This is also a notification from a service sponsor that

includes “information about a service sponsor,” including the penalty and who the 

user is paying. Id. ¶57, Fig. 4; EX-1015 ¶679.

A POSITA would have combined Fadell’s network administrator and its 

notifications into Rao-Fadell to alert users of the administrator’s directives to control 

data usage and permit reminders and overage/penalty payments. EX-1015 ¶680. A 

Doing so would allocate resources to different devices within the network,

maximizing use of available data while reducing overages. Id.; Fadell ¶¶67-70. 

DDD.Claim 149

1. “ . . . claim 1, . . . detect an attempted use of the first 

software component; and . . . cause a notification to be 

presented . . . .”

Rao-Fadell renders obvious continuing to present notifications after an initial 

notification. Supra [1g]; Fadell ¶¶50-70, Figs. 3-5; EX-1015 ¶¶681-83. For example, 

if a data limit is reached and a background email update were deprioritized, and then

the email client later attempted to retrieve email, it would have been obvious to 

monitor that attempt and again notify the user to determine how to proceed. EX-1015 

¶¶681-83. This discloses claim 149.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 96 of 116 PageID #:

7315
76

Detecting attempted uses and causing another notification would have been 

obvious based on Fadell’s notifications and options for determining how to proceed 

near a limit or threshold. Id. ¶684. Screen 400 provides “selectable options” to 

restrict resource usage. Fadell ¶¶49, 52, 56, Fig. 4. Moreover, in Fadell, “data 

transfers may be restricted based on the protocol or application requesting the data 

transfer,” id. ¶56, e.g., based on the software component, which detects attempted 

uses of those software components, EX-1015 ¶685. It would have been obvious to 

cause another notification on detection of an attempted use to inform the user of, 

e.g., “resources consumed for a tier subscription period,” the expected consumption 

for a particular period, and/or expected penalties for data overages, as Fadell 

suggests. Fadell ¶¶49-50, 54-55, 63, Figs. 3-5; EX-1015 ¶686. This would have 

allowed the user to reschedule tasks or purchase additional resources, e.g., using 

option 414. Fadell ¶¶57-61; EX-1015 ¶686.

Doing so would have enabled users to better control their resource usage and 

stay within/below limits. EX-1015 ¶687. For example, having opted to restrict use 

of a particular application following an initial alert, a user seeking to use that 

application later would, on receiving the attempted-use notification, be able to 

instead reschedule, cancel, delay, slow down, enable, disable, and/or switch to other 

networks to run processes of “lesser importance,” overriding the prior prioritization 

policy impact. Fadell ¶60; EX-1015 ¶687.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 97 of 116 PageID #:

7316
77

EEE. Claim 150

2. “ . . . claim 149, wherein the notification provides 

information to enable a user . . . to override the policy.”

Rao-Fadell teaches causing a notification to be presented when the user 

attempts to use the first software component and allowing the user to override their 

earlier application of the policy, e.g., by opting to exceed the allocated resources or

purchasing additional resources to allow an otherwise-restricted application to 

operate. Supra claim 149; Fadell ¶¶ 53, 57; EX-1015 ¶¶688-89. Purchasing

additional resources allows a user to override a previous resource limit, as the ’541 

patent confirms. EX-1001, 109:10-14; EX-1015 ¶689. A POSITA would have been 

motivated to include this option in Rao-Fadell and would have had a reasonable 

expectation of success in doing so. Supra claim 149; EX-1015 ¶690.

FFF. Claim 151

3. “ . . . claim 149, wherein the notification provides 

information about a cost or a charge associated with the 

service usage activity.”

Rao-Fadell discloses notifications related to an attempt to use an application, 

supra claim 149, and its notifications may include information related to a cost or 

charge associated with using an application, supra claim 147; Fadell ¶¶57, 63; 

EX-1015 ¶¶691-95. A POSITA would have been motivated to include such 

information in the notification to allow the user to purchase additional resources

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 98 of 116 PageID #:

7317
78

fully understanding the costs and would have expected success. Supra claims 147, 

149; Fadell ¶¶57-61; EX-1015 ¶696.

GGG. Claim 152

4. “ . . . claim 149, wherein the notification provides 

information to enable a user . . . to change or upgrade a 

service plan . . . .”

Supra claims 104, 149, 150. Fadell discloses that the notification includes

“option 414 for purchasing additional data provider resources,” which changes or 

upgrades the service plan. Fadell ¶57; EX-1015 ¶¶697-99. A POSITA would have 

been motivated to include option 414 in the notification. EX-1015 ¶700; supra

claims 104, 149, 150.

HHH. Claim 158

1. “ . . . claim 1, wherein the user input . . . specifies a user 

preference associated with the service usage activity or the 

first software component.”

Rao-Fadell teaches claim 158. Supra [1e] (explaining users configure

policies 520 using a user interface of the end-user device). The user input specifies 

a user preference that is associated with the service usage activity because the input

defines how the user prefers to prioritize network packets (service usage activity). 

Supra [1e]; EX-1015 ¶725. For example, the user preference may specify active 

applications are processed ahead of background applications. Rao ¶3; Fadell ¶60, 

Fig. 4.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 99 of 116 PageID #:

7318
79

Rao-Fadell also teaches that the user input specifies a user preference 

associated with the service usage activity or the first software component for the 

reasons explained above in claims 107 and 109. Supra claims 107, 109; EX-1015 

¶¶726-28.

III. Claim 159

1. “ . . . claim 158, wherein the user preference comprises a 

preference to restrict, allow, block, delay, or throttle the 

service usage activity.”

Rao-Fadell’s user input defines how the user prefers to restrict, allow, block, 

delay, or throttle the service usage activity. Supra claims 107, 108, 109, 110; 

EX-1015 ¶¶729-32.

VIII. Ground 2: Rao-Fadell-Freund Render Obvious Claims 97-98, 100-101, 

and 139

A. Motivation to Combine

The disclosures of Rao, Fadell, and Freund complement one another, and a 

POSITA would have combined them to produce a system that, when a resource usage 

limit/threshold is met, queues network packets and determines packets are associated 

with background activity using Freund’s method of determining whether 

application(s) are in user’s focus. EX-1015 ¶880; supra §VII.A, claim 1. Like Rao, 

Freund monitors network communications and distinguishes between foreground 

and background activity. Freund, 14:51-21:50, 8:63-9:3, 10:16-43. Freund discloses 

monitoring network activity on a “per process or per application basis.” Id., 4:5-5:5, 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 100 of 116 PageID #:

7319
80

4:51-63, 10:44-11:28. Freund also discloses warnings, such as “an error dialog,” a 

“redirecti[on] . . . to an error page,” or “an application error,” when an application is 

“not allowed to access the Internet.” Id., 4:26-28, 5:61-64,13:20-22, 26:52-58. 

A POSITA would have incorporated Freund’s per application monitoring and 

associated warnings into Rao-Fadell. EX-1015 ¶884. As Freund discloses, doing so 

would have benefited system administrators measuring productivity (e.g., on an 

employer network or device). Freund, 8:63-9:3, 10:16-43. By monitoring application

use, unproductive web browsing can be identified and minimized. Id. Specific 

applications can also be isolated and blocked. Id., 4:26-28, 13:20-22, 26:52-58. This 

would have benefited both Rao and Fadell, for example, by monitoring applications 

that are background activity and/or consume significant bandwidth to assist 

intercepting the activity and notifying a user. EX-1015 ¶884.

A POSITA would have been motivated to incorporate Freund’s applicationspecific notifications into Rao-Fadell to provide user notifications when applications 

have launched/attempted to launch, thereby informing users what processes are 

consuming data and bandwidth. Id. ¶885. This would have enabled a user to act to 

modify usage to avoid data overages/charges. Id. Combining Freund’s applicationspecific monitoring and notifications with Rao-Fadell would have been simply the 

use of known techniques of application monitoring to improve similar methods (e.g., 

Rao’s packet prioritizing and Fadell’s notifications and resource monitoring) in the 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 101 of 116 PageID #:

7320
81

same way. Id. The combination also would have been combining known prior art 

features according to understood principles to yield predictable results. Id. In doing 

so, the system would issue application-specific notifications to inform users of 

approaching resource usage limits and allow them to take appropriate actions. Id.

B. Claim 97

1. “ . . . claim 91, . . . first software component is at least a 

portion of an application, and . . . the 

. . . communications . . . comprise an attempt to launch, run, 

or execute the application, and . . . the notification comprises 

information about the attempt to launch, run, or execute the 

application.”

Fadell discloses communications that comprise an attempt to launch, run, or 

execute an application. Specifically, Fadell discloses a web browser application and 

refraining from “automatically start[ing] playing back [of] video or audio” on a web 

page until the user instructs. Fadell ¶59. By offering the user the choice of whether 

to start playing back video/audio in Fadell’s web browser, Fadell discloses 

attempting to launch, run, or execute a software component that provides the video 

or audio. Id.; EX-1015 ¶¶887-89. Fadell also discloses restricting data transfers 

“based on the protocol or application, ” Fadell ¶56, which discloses detecting

attempted uses of software components, supra claim 147.

An application may also prompt other components to engage in background 

activity (e.g., automatic updates, virus scan updates, RSS feed detectors). EX-1015 

¶890; Fadell ¶¶56, 60; Rao ¶¶182, 188. A POSITA would have been motivated to 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 102 of 116 PageID #:

7321
82

apply Fadell’s teachings in Rao-Fadell to allow the user to decide whether to start 

such an attempt to launch/run/execute background activity. EX-1015 ¶890. This 

would have conserved resources and avoided unnecessary data expenditure. Fadell 

¶59. A POSITA would have been motivated to do so to prevent software components 

from consuming data and bandwidth, potentially without the user’s knowledge. 

EX-1015 ¶890; Fadell ¶¶56, 60; Rao ¶¶182, 188. This would have been no more 

than combining known elements according to understood principles to yield 

predictable results. EX-1015 ¶890.

Freund further discloses a client monitor that “can stop [an] application from 

accessing the Internet and/or warn the user” based on bandwidth or a resource 

threshold. Freund, 5:61-64, 30:10-28, 26:52-58, Fig. 7G.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 103 of 116 PageID #:

7322
83

Id., Fig. 7G (“warn user with dialog”); EX-1015 ¶891.

A POSITA would have understood that Freund’s warnings provide a 

notification that comprises information about the attempt to launch/run/execute the 

application. EX-1015 ¶892. A POSITA would have implemented Freund’s 

application-specific warnings to notify a user of system rules operating on a 

particular application. Id. ¶893. This would have allowed a user to understand what 

applications are being intercepted, queued, and prioritized, as suggested by Freund, 

Freund, 30:10-28, and provided the user greater control over the policy in the 

combined system (e.g., by prompting the user to redesignate the application’s

priority). EX-1015 ¶893. A POSITA also would have recognized a security benefit 

of identifying applications attempting to launch/run/execute in the background, as

Freund explains these may pose security concerns. Freund, 10:44-11:28; Fadell ¶66; 

EX-1015 ¶894.

C. Claim 98

1. “ . . . claim 91, wherein the . . . communications over the 

wireless network comprise an attempted or successful 

launch or execution of the first software component, and 

wherein the notification comprises information about the 

attempted or successful launch or execution . . . .”

Supra claim 97; EX-1015 ¶895.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 104 of 116 PageID #:

7323
84

D. Claim 100

1. [100a] “ . . . claim 91, wherein the one or more prospective 

or successful communications . . . comprise an attempt to 

download or load an application, and”

Rao discloses applications running on client 105. Rao ¶88. Freund discloses

similar applications, Freund, 15:12-18, 24:1-5, 29:60-66, including those 

“downloaded from the Internet,” id., 10:66-11:1, 21:33-40, 29:50-51. A POSITA 

would have understood that attempts to download or load applications were common 

types of network activity, as taught by Freund, and accounted for in Rao-FadellFreund. EX-1015 ¶¶896-900. Rao confirms that wireless downloads were within a 

POSITA’s skill by explaining that both relevant policies and its remote access client 

may be downloaded onto wireless end-user devices over a wireless network. Rao 

¶¶116, 183, 220. Accordingly, a POSITA would have understood that in Rao-FadellFreund, one or more prospective or successful communications over the wireless 

network may comprise an attempt to download/load an application. EX-1015 ¶900.

2. [100b] “wherein the notification comprises information 

about the attempted download or load of the application.”

Freund discloses application-specific notifications when system rules are 

being applied to an application, and a POSITA would have been motivated to include 

these in Rao-Fadell-Freund. Supra claim 97. Likewise, a POSITA would have been 

motivated to warn the user when the policy is applied to a download/load of the 

application. Supra claim 97; EX-1015 ¶¶901-03. This is confirmed by Fadell, which 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 105 of 116 PageID #:

7324
85

teaches media-heavy downloads may “require significant resources.” Fadell ¶¶18, 

59. Alerting the user of an attempted download/load of an application would have 

allowed the user to reschedule or restrict the download to avoid over-use of resources 

and minimize costs. Id. ¶¶18, 60-61; EX-1015 ¶903.

E. Claim 101

1. “ . . . claim 91, wherein . . . communications . . . comprise an 

attempt to initiate usage of a cloud-based service or 

application, and wherein the notification comprises

information about the attempted initiation . . . .”

Rao-Fadell-Freund teaches communications comprising an attempt to initiate 

usage of an application and related notifications. Supra claim 97. Rao-Fadell-Freund 

further teaches usage that comprises a “cloud-based service or application” and 

renders obvious claim 101.

Rao discloses that its client 105 may connect to “a server farm 102e, . . . via 

a gateway 350,” which is a “logical group of one or more servers that are 

administered as a single entity” and “may be running one or more applications

338N.” Rao ¶¶86, 91. By disclosing a “server farm” that runs “one or more 

applications” that are remotely accessible over a network, Rao renders obvious a 

cloud-based service/application, which are remotely accessed services/applications 

run on multiple servers and remotely maintained for users to access. EX-1015 

¶¶904-07. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 106 of 116 PageID #:

7325
86

Usage of a remotely accessible (e.g., cloud-based) application would initiate

via network communications, Rao ¶¶86, 91, and a POSITA would have been 

motivated to include notifications comprising information about that attempted 

initiation, as discussed with respect to Freund in claim 97, to offer the user the 

opportunity to decide whether to start that process, supra claim 97; EX-1015 ¶907.

F. Claim 139

1. “ . . . claim 118, wherein the notification presents an 

indication of a measure of usage of the wireless network 

associated with the first software component.”

Rao-Fadell discloses a notification that indicates a measure of usage of the 

wireless network associated with a service usage activity. Supra claim 116. RaoFadell-Freund further discloses or renders obvious a notification that indicates a 

measure of usage associated with the first software component.

Freund discloses monitoring internet access on a per application basis, which 

provides “the ability to specify which applications can (and cannot) access the 

Internet.” Supra claim 1; Freund 9:63-10:1, 10:44-11:28, 25:20-51. Freund’s client 

monitor “can stop [the] application from accessing the Internet and/or warn the user” 

due to bandwidth concerns or user exceeding a resource threshold. Freund, 5:61-64, 

30:10-28. Freund displays these warnings to the user. Id., 26:52-58, Fig. 7G. 

Freund’s per-application monitoring simplifies the task of tracking bandwidth 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 107 of 116 PageID #:

7326
87

utilization for a network, including providing detailed review of Internet access use.

Id., 10:16-11:28; EX-1015 ¶¶908-13.

Based on Freund’s per-application teachings, a POSITA would have been 

motivated to notify the user (via a notification) not just the resource usage associated 

with a particular service usage activity, as Fadell teaches (supra claim 116), but the 

application associated with that activity, thus providing application-specific 

information. EX-1015 ¶914. Doing so would have enabled the system to “track[] 

bandwidth utilization” and “provid[e] [a] detailed review on how the Internet access 

is being used” based on applications requesting data. Id.; Freund, 10:44-11:28.

A POSITA would have applied Freund’s per-application monitoring in the 

combined system to inform the user how much data particular applications consume

and provide the user more system information. EX-1015 ¶915. This would have 

enabled the user to take corrective actions, e.g., restricting particular 

applications/activities. Id.; Fadell ¶¶51-53, 58-61.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 108 of 116 PageID #:

7327
88

Freund, Fig. 7G. Applying Freund’s per-application monitoring and associated 

warnings/dialogs in the combined system’s notifications would have been nothing 

more than combining known elements according to understood principles for 

predictable results, EX-1015 ¶915.

IX. 35 U.S.C. § 314

The Board should not deny institution under the Fintiv factors based on the 

Related Matters identified below. That Petitioner Google is not a party to the Related 

Matters favors institution under all factors, and particularly Factor 5. For all other 

Petitioners, the statuses of the Related Matters (Factors 1-4) are either neutral or 

favor institution.

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 109 of 116 PageID #:

7328
89

Factor 1 is neutral. Factor 2 favors institution. The first trial in any Related 

Matter is May 19, 2025. Further, the trial date is not determinative particularly 

because, in EDTX, multiple trials are commonly scheduled on the same date.

Factor 3 favors institution. The first Markman hearing is not until 

November 19, 2024, and completion of discovery and dispositive motions all follow 

institution. EX-2018, 4. Petitioners diligently brought this challenge approximately 

6 months after receiving contentions for all 174 claims. CoolIT Sys., Inc. v. Asetek 

Danmark A/S, IPR2021-01195, Paper 10 at 11-14 (PTAB Dec. 28, 2021). 

Factor 4 favors institution. This Petition challenges 65 claims, which will 

likely be greater than the number of claims tried. EX-1017 ¶¶3-4. Moreover, Patent 

Owner asserts the patent in multiple litigations, and resolving invalidity questions 

here would mitigate duplicative efforts. 

If Factor 6 is considered, the compelling merits of this petition outweigh any 

concerns that might arise under Factors 1-5. Petitioners rely on prior art that the 

Office never applied, present significantly different invalidity grounds, and rely on 

Dr. Wolfe’s declaration explaining each claim’s invalidity.

X. 35 U.S.C. § 325

These grounds were not previously considered by the Office. Rao and Freund 

were not before the Examiner, and he did not discuss Fadell, which was submitted 

with over 700 references. After just one rejection, the independent claim was 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 110 of 116 PageID #:

7329
90

rewritten, all 173 dependent claims were added, and the claims were allowed after a 

minor amendment with only a conclusory supporting rationale. EX-1015 ¶¶42-46.

XI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

A. Real Party-in-Interest

Google LLC,1 Cellco Partnership d/b/a Verizon Wireless, Verizon Corporate 

Services Group Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., AT&T 

Services, Inc., AT&T Mobility LLC, and AT&T Enterprises LLC2 are the real 

parties-in-interest for this petition.3

1 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of 

Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest 

to this proceeding. 

2 Related-Matter Defendant AT&T Corp. has undergone a corporate transaction and 

is now merged and converted into AT&T Enterprises, LLC.

3 Defendant-Petitioners Cellco Partnership d/b/a Verizon Wireless, Verizon 

Corporate Services Group Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., 

and AT&T Services, Inc. also acknowledge that each petitioner has a number of 

affiliates and state that no unnamed entity is funding, is controlling, or otherwise has 

an opportunity to control or direct this Petition or their participation in any resulting 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 111 of 116 PageID #:

7330
91

B. Related Matters

The ’541 patent is, or has been, involved in the following proceedings:

Name Number Forum Filed

Headwater Research LLC v.

Verizon Communications Inc.

2:23-cv-00352 E.D. Tex. Jul. 28, 2023

Headwater Research LLC v.

AT&T Inc.

2:23-cv-00397 E.D. Tex. Sept. 1, 2023

Headwater Research LLC v.

AT&T Inc.

2:23-cv-003984 E.D. Tex. Sept. 1, 2023

Headwater Research LLC v.

T-Mobile US, Inc.

2:23-cv-003775 E.D. Tex. Aug. 21, 2023

Headwater Research LLC v.

T-Mobile US, Inc.

2:23-cv-00379 E.D. Tex. Aug. 21, 2023

C. Lead and Backup Counsel Information 

Petitioners provide the following designation of counsel:

Lead Counsel Back-Up Counsel

Erika H. Arner (Reg. No. 57,540)

erika.arner@finnegan.com

Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP

Daniel C. Tucker (Reg. No. 62,781)

daniel.tucker@finnegan.com

Alexander M. Boyer (Reg. No. 66,599)

alexander.boyer@finnegan.com

IPR. Defendant-Petitioners Cellco Partnership d/b/a Verizon Wireless, Verizon 

Corporate Services Group Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., 

and AT&T Services, Inc. are also not aware of any affiliate that would be barred 

from filing this Petition under 35 U.S.C. § 315(e). 

4 The -00398 case has been consolidated with the -00397 case. 

5 The -00377 case has been consolidated with the -00379 case. 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 112 of 116 PageID #:

7331
92

1875 Explorer Street

Suite 800

Reston, VA 20190-6023

Tel: 571-203-2700; Fax: 202-408-

4400

Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP

1875 Explorer Street

Suite 800

Reston, VA 20190-6023

Tel: 571-203-2700; Fax: 202-408-4400

Cara E. Regan (Reg. No. 70,209)

cara.regan@finnegan.com

Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP

901 New York Ave. NW

Washington DC, 20001

Tel: 202-408-4000; Fax: 202-408-4400

Patrick D. McPherson (Reg. No. 46,255)

PDMcPherson@duanemorris.com

DUANE MORRIS LLP 

901 New York Ave. NW

Suite 700 East

Washington, DC 20001

Tel: 202-776-7800; Fax: 202-776-7801

Kevin P. Anderson (Reg. No. 43,471)

KPAnderson@duanemorris.com

DUANE MORRIS LLP 

901 New York Ave. NW

Suite 700 East

Washington, DC 20001

Tel: 202-776-7800; Fax: 202-776-7801

In concurrently filed Powers of Attorney, Google LLC has granted Power of 

Attorney to Practitioners at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 

and Cellco Partnership d/b/a Verizon Wireless, Verizon Corporate Services Group 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 113 of 116 PageID #:

7332
93

Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., and AT&T Services, Inc. 

have granted Power of Attorney to Practitioners at Duane Morris LLP.

Petitioners consent to service by email at the addresses listed above and 

Headwater-541-IPRs@Finnegan.com, PDMcPherson@duanemorris.com, and 

KPAnderson@duanemorris.com. 

XII. CONCLUSION

Petitioners respectfully request that the Board grant IPR and find all 

challenged claims unpatentable.

Dated: June 7, 2024 By: /Erika H. Arner/ 

Erika H. Arner (Reg. No. 57,540)

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 114 of 116 PageID #:

7333
CERTIFICATE OF COMPLIANCE

Pursuant to 37 C.F.R. § 42.24(a)(1)(i), the undersigned hereby certifies that 

the foregoing PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 

8,589,541 contains 13,999 words, excluding parts of this Petition exempted under 

§ 42.24(a), as measured by the word-processing system used to prepare this paper.

Dated: June 7, 2024 /Daniel C. Tucker/ 

Daniel C. Tucker (Reg. No. 62,781)

Counsel for Petitioner 

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 115 of 116 PageID #:

7334
CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), the undersigned certifies 

that on June 7, 2024, a copy of the foregoing Petition for Inter Partes Review, the 

associated powers of attorney, and Exhibits 1001-1018, and 1020-1022 were 

served by FedEx Priority Overnight on the correspondence address of record 

indicated in the Patent Office’s public Patent Center system for U.S. Patent No. 

8,589,541:

Dr. Greg Raleigh

Headwater Research LLC

110 North College Avenue, Suite 1116

Tyler, TX 75702

Dated: June 7, 2024 By: /William Esper/ 

William Esper

Case Manager and PTAB Coordinator

Finnegan, Henderson, Farabow, 

Garrett & Dunner, L.L.P

Case 2:23-cv-00379-JRG-RSP Document 99-5 Filed 10/25/24 Page 116 of 116 PageID #:

7335