Exhibit A

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Trials@uspto.gov Paper 11 

571-272-7822 Date: October 23, 2024 

UNITED STATES PATENT AND TRADEMARK OFFICE 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS, 

VERIZON CORP. SERVS. GRP. INC., T-MOBILE USA, INC., 

AT&T SERVS., INC., AT&T MOBILITY LLC, and AT&T CORP., 

Petitioner, 

v. 

HEADWATER PARTNERS I LLC, 

Patent Owner. 

IPR2024-00809 

Patent 9,198,042 B2 

Before HYUN J. JUNG, STEPHEN E. BELISLE, and RUSSELL E. CASS, 

Administrative Patent Judges. 

JUNG, Administrative Patent Judge. 

DECISION 

Granting Institution of Inter Partes Review 

35 U.S.C. § 314 

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I. INTRODUCTION 

A. Background and Summary 

Cellco Partnership d/b/a Verizon Wireless, Verizon Corp. Servs. Grp. 

Inc., T-Mobile USA, Inc., AT&T Servs., Inc., AT&T Mobility LLC, and 

AT&T Corp. (collectively, “Petitioner”) filed a Petition (Paper 4, “Pet.”) 

requesting institution of an inter partes review of claims 1–18 of U.S. Patent 

No. 9,198,042 B2 (Ex. 1001, “the ’042 patent”). Headwater Partners I LLC 

(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). 

With our authorization, Petitioner filed a Reply to the Preliminary Response 

directed only to our discretion under 35 U.S.C. § 314(a) (Paper 9, “Prelim. 

Reply”), and Patent Owner filed a Sur-reply (Paper 10, “Prelim. Sur-reply”). 

Under 35 U.S.C. § 314, an inter partes review may not be instituted 

“unless . . . there is a reasonable likelihood that the petitioner would prevail 

with respect to at least 1 of the claims challenged in the petition.” Upon 

consideration of the Petition in view of the record at this stage and for the 

reasons explained below, we determine that Petitioner has shown a 

reasonable likelihood of prevailing with respect to at least one of the 

challenged claims. 

Thus, we institute an inter partes review of claims 1–18 of the 

’042 patent on all presented challenges. 37 C.F.R. § 42.108(a) (“When 

instituting . . . review, the Board will authorize the review to proceed on all 

of the challenged claims and on all grounds of unpatentability asserted for 

each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 

(2018). 

B. Real Parties in Interest 

Petitioner identifies as real parties in interest Cellco Partnership d/b/a 

Verizon Wireless, Verizon Corp. Servs. Grp. Inc., T-Mobile USA, Inc., 

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AT&T Servs., Inc., AT&T Mobility LLC, and AT&T Corp. Pet. 81. 

Petitioner also names all current defendants in related litigation as potential 

real parties in interest. Id. n.4. Patent Owner identifies itself as a real party 

in interest. Paper 6, 1. 

C. Related Matters 

The parties identify Headwater Research LLC v. Verizon Commc’ns 

Inc., 2:23-cv-00352-JRG-RSP (E.D. Tex.), Headwater Research LLC v. 

AT&T Inc., 2:23-cv-00398-JRG-RSP (E.D. Tex.), and Headwater Research 

LLC v. T-Mobile US, Inc., 2:23-cv-00379-JRG-RSP (E.D. Tex.) as related 

matters. Pet. 82; Paper 6, 1. 

D. The ’042 Patent (Ex. 1001) 

The ’042 patent issued on November 24, 2015 from an application 

filed on January 9, 2013 that is a continuation of two previously filed 

applications, the earliest of which was filed on March 2, 2009. Ex. 1001, 

codes (22), (45), (63), 1:7–16. The ’042 patent also claims priority to 

several provisional applications, the earliest of which was filed on January 

28, 2009. Id. at code (60), 1:16–43. 

Figure 1 of the ’042 patent is below reproduced. 

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Figure 1 shows “a secure execution environment for device assisted 

services.” Ex. 1001, 2:10–11. “[T]he device execution environments 

include program/functional elements for,” as an example, a “mobile 

communications device, such as a mobile phone” that uses modem 

subsystems 125, 127 to connect to access networks 136 and 138. Id. at 

5:40–52. 

Secure execution environment 100 has application execution 

partition 102, kernel execution partition 112, protected device assisted 

service (“DAS”) execution partition 114, and modem execution partition 

124. Ex. 1001, 5:54–65. Application programs execute in application 

execution partition 102, and low level drivers and OS programs execute in 

kernel execution partition 112. Id. at 5:54–58. DAS agents and functions 

execute in DAS execution partition 114, and modem program elements 

execute in modem execution partition 124. Id. at 5:58–65. 

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“[P]rotected DAS partition 114 can make it more difficult for a 

hacker, malware or system errors to compromise, attack or modify the 

device assisted service measurements, service policy implementation or 

service usage control operations on the device (e.g., communications 

device).” Ex. 1001, 6:32–37. “[S]ervice control link (e.g., host service 

control link 118 via host secure channel 150 to network service control 

link 152) is used for communication between the device assisted service 

agents and a service controller 122.” Id. at 7:28–32. 

Service controller 122 can include access control integrity server 156 

and policy control server 154. Ex. 1001, 8:8–9, 8:26–27. “Access control 

integrity server 156 is used to compare various access control verification 

checks to ensure that the device assisted service agents have not been 

compromised.” Id. at 8:8–11. “[P]olicy control server 154 stores policy 

settings for the various service plans that can be implemented on the device, 

and communicates the appropriate policy settings to the appropriate device 

DAS agents.” Id. at 8:26–30. “[S]ervice controller 122 has secure access to 

service measures, service control settings, software images, software 

security state(s), and/or other settings/functions, for example, by virtue of 

the hardware enhanced execution partition and the secure channel into the 

protected DAS partition 114.” Id. at 8:31–36. 

E. Illustrative Claim 

The ’042 patent includes 18 claims, all of which Petitioner challenges. 

Claim 1, reproduced below, is the only independent claim. 

1. A method comprising: 

receiving, over a service control link, a report from a 

wireless end-user device, the report comprising information 

about a device service state; 

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determining, based on the report, that a particular service 

policy setting of the wireless end-user device needs to be 

modified, the particular service policy setting being stored in a 

protected partition of the wireless end-user device, the protected 

partition configured to deter or prevent unauthorized 

modifications to the particular service policy setting, the 

particular service policy setting being associated with a service 

profile that provides for access by the wireless end-user device 

to a network data service over a wireless access network, the 

particular service policy setting configured to assist in 

controlling one or more communications associated with the 

wireless end-user device over the wireless access network; and 

is in response to determining that the particular service 

policy setting needs to be modified, sending configuration 

information to the wireless end-user device over the service 

control link, the configuration information configured to assist in 

modifying or allowing modifications to the particular service 

policy setting. 

Ex. 1001, 19:22–45. 

F. Asserted Prior Art and Proffered Testimonial Evidence 

Petitioner identifies the following references as prior art in the 

asserted grounds of unpatentability: 

Name Reference Exhibit 

Wright US 2004/0123153 A1, published June 24, 2004 1005 

Limont US 2007/0006289 A1, published Jan. 4, 2007 1004 

Xu US 2007/0061535 A1, published Mar. 15, 2007 1016 

Polson US 2007/0104169 A1, published May 10, 2007 1008 

Petitioner contends that the above references are prior art under § 102(a), 

(b), (e), and (g).1

 Pet. 10–11. Petitioner also provides a Declaration of 

1

 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), 

Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16, 

2013. Because the ’042 patent issued from an application filed before that 

date, our citations to 35 U.S.C. §§ 102 and 103 in this Decision are to their 

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Henry Houh, Ph.D. (Ex. 1003). Patent Owner provides a Declaration of Erik 

De La Iglesia (Ex. 2001). 

G. Asserted Grounds 

Petitioner asserts that claims 1–18 are unpatentable on the following 

grounds: 

Claims Challenged 35 U.S.C. § References/Basis 

1, 2, 6–18 103(a) Limont, Wright, Xu 

3–5 103(a) Limont, Wright, Xu, Polson 

Pet. 10. 

II. 35 U.S.C. § 314(a) 

Petitioner argues that factors 2–6 of Apple Inc. v. Fintiv, Inc., 

IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) 

weigh against exercising discretion to deny the Petition. Pet. 78–81; Prelim. 

Reply 1–3. Patent Owner responds that each of the Fintiv factors favors 

denial. Prelim. Resp. 10–22; Prelim. Sur-reply 1–3. 

Fintiv instructs us to consider whether to deny institution in certain 

circumstances when there is parallel district court litigation, upon 

consideration of six factors: 

1. whether the court granted a stay or evidence exists that 

one may be granted if a proceeding is instituted; 

2. proximity of the court’s trial date to the Board’s 

projected statutory deadline for a final written decision; 

3. investment in the parallel proceeding by the court and 

the parties; 

pre-AIA versions. See also Pet. 7 (noting that “[t]he ‘042 Patent’s 

application claims priority to various applications, the earliest of which was 

filed January 28, 2009”). 

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4. overlap between issues raised in the petition and in the 

parallel proceeding; 

5. whether the petitioner and the defendant in the parallel 

proceeding are the same party; and 

6. other circumstances that impact the Board’s exercise of 

discretion, including the merits. 

Fintiv, Paper 11 at 6. 

Our analysis of Fintiv is guided by the USPTO Director’s 

Memorandum issued on June 21, 2022, titled “Interim Procedure for 

Discretionary Denials in AIA Post Grant Proceedings with Parallel District 

Court Litigation” (“Director’s Memo”). We turn to the Fintiv factors. 

A. Factor 1: Stay 

According to the parties, the related litigation is not stayed. Pet. 79; 

Prelim. Resp. 11–13 (arguing also that a stay is unlikely to be granted); 

Prelim. Sur-reply 1; see also Ex. 3001 (notifying the Board that stays have 

been requested in all related proceedings). 

Because the related litigation is not stayed and there is insufficient 

evidence that a stay may or may not be granted if trial is instituted, Fintiv

factor 1 is neutral. 

B. Factor 2: Proximity to Trial Date 

The parties indicate that trial is set for May 19, 2025 and June 2, 2025 

in related proceedings, and those dates are before the deadline for a final 

written decision in October 2025. Pet. 79 (arguing also that there are 

uncertainties in litigation scheduling); Prelim. Resp. 13–16 (arguing also that 

the scheduled trial date is consistent with time-to-trial statistics); see also 

Prelim. Reply 2–3 (arguing trial dates are very fluid); Prelim. Sur-reply 1, 3 

(arguing that Petitioner is speculating the trial date may change). 

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Because the earliest trial date in the related litigation is set to start 

about five months before the due date for a final written decision in this 

proceeding, Fintiv factor 2 favors exercising our discretion to deny 

institution. 

C. Factor 3: Investment in Parallel Proceeding 

Petitioner argues that “co-pending litigation is in its early stages,” 

claim construction briefing will not be completed until September 2024, a 

Markman hearing is scheduled for November 2024, fact discovery is set to 

close in December 2024, and expert discovery is set to close in February 

2025. Pet. 79. Patent Owner argues that fact discovery and claim 

construction proceedings are well underway. Prelim. Resp. 16–17; Prelim. 

Sur-reply 1. Patent Owner also argues that Petitioner unduly delayed filing 

its petition. Prelim. Resp. 17–18. 

The docket control orders of the related proceedings indicate that 

claim construction hearings are scheduled for November 2024, fact 

discovery is scheduled to be completed by December 2024, and expert 

discovery is to be completed by February 2025. Ex. 1022, 3–4; Ex. 2005, 3. 

Another related proceeding has due dates following about a month behind. 

Ex. 2003, 1–3. 

Thus, the parties have expended significant effort on this case, but the 

claim construction hearing will not occur until after institution and it is not 

apparent that the district court has yet invested significant effort related to 

invalidity issues. As a result, Fintiv factor 3 is neutral. 

D. Factor 4: Overlap with Parallel Proceeding 

Petitioner stipulates that it “will not pursue invalidity challenges in 

this district court litigation on the grounds or the prior art references asserted 

in the Petition” to reduce or eliminate any risk of duplicative litigation. 

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Prelim. Reply 1; Ex. 1024; Ex. 1025; Ex. 1026; see also Pet. 78 (stipulating 

not to pursue in related litigation the grounds presented in this proceeding). 

Petitioner argues that there will be no overlap in evidence of invalidity 

between the present proceeding and related litigation. Prelim. Reply 1. 

Patent Owner argues that Petitioner’s stipulation is weak because it 

“does not quell concerns of overlap with parallel litigation” and “agree[s] to 

far less than the natural consequences of this IPR proceeding to a final 

written decision.” Prelim. Sur-reply 1 (citing Prelim. Reply 1); see also 

Prelim. Resp. 20 (arguing similarly). Patent Owner also argues that 

Petitioner admitted that prior art relied upon in related litigation has similar 

disclosures as Limont. Prelim. Sur-reply 2 (citing Ex. 2018, 43–46; 

Ex. 2019, 67–70; Ex. 2020, 55–58). 

Petitioner further argues that “there will not be complete overlap in 

the issues raised in the IPR and the Related Litigation” because the Petition 

challenges claims that are not at issue in the Litigation. Pet. 79. 

Specifically, according to Petitioner, claims 10, 11, and 15 are challenged in 

this proceeding but not in the related litigation. Id. at 79–80. Petitioner also 

argues that, in the related litigation, Patent Owner asserted over 300 claims 

from four patents, but the court will only allow five claims per patent to be 

challenged at trial. Id. at 80. Petitioner, thus, argues that “it is highly 

unlikely the district court addresses the validity of even all 15 asserted 

claims of the ’042 [patent].” Id. 

Patent Owner argues that Petitioner “challenges all of the claims that 

are currently asserted in the litigation.” Prelim. Resp. 18 (citing Pet. 14; 

Ex. 1017; Ex. 1021, 2). Patent Owner also argues that the three additional 

claims challenged here do not make a meaningful difference. Id. at 19–20. 

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Petitioner replies that Patent Owner has reduced in related litigation 

its infringement contentions to only seven claims and is obligated to reduced 

it further to five claims before trial. Prelim. Reply 1–2 (citing PO Resp. 18; 

Ex. 1027). Patent Owner replies that the common and necessary 

streamlining in related litigation still does not make a meaningful difference. 

Prelim. Sur-reply 2. 

Based on Petitioner’s stipulation (Prelim. Reply 1; Ex. 1024; 

Ex. 1025; Ex. 1026), we determine there is very minimal overlap between 

issues raised in the Petition and in the parallel proceedings. Moreover, this 

proceeding will address all claims of the ’042 patent. 

Fintiv factor 4, therefore, weighs strongly against exercising our 

discretion to deny institution. 

E. Factor 5: Whether Petitioner and Defendant are the Same Party 

The parties agree that Petitioner includes defendants in the parallel 

litigation. Pet. 80 (arguing also the factor should be neutral); Prelim. 

Resp. 21; Prelim. Sur-reply 1. 

Because Petitioner and defendants in the related litigation are the 

same, Fintiv factor 5 favors exercising our discretion to deny institution. 

F. Factor 6: Merits and Other Considerations 

Petitioner argues that “the merits of the Petition are particularly strong 

and the claims did not receive any analysis during prosecution.” Pet. 80; see 

also Pet. 7 (noting that “[c]laims 1–18 received a first Office Action 

allowance with no prior art applied”) (citing Ex. 1002, 48); Prelim. Reply 3 

(noting “the lack of prior art applied during prosecution”). Petitioner 

specifically argues that Limont addresses the same problem with the same 

solution as the ’042 patent and discloses identical architecture and concepts 

as the ’042 patent. Pet. 80. 

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Patent Owner argues that Petitioner fails to present compelling 

unpatentability challenges and that Petitioner delayed filing its petition. 

Prelim. Resp. 21–22. 

As discussed below, we determine on the present record that 

Petitioner’s proposed combination starting with Limont shows a reasonable 

likelihood of demonstrating that claim 1 is unpatentable. Petitioner’s 

showing at this stage, even if it were not considered “compelling,” indicates 

that another look at the claims of the ’042 patent is warranted, because, as 

Petitioner argues, the proposed combination addresses the same problem 

with a similar solution, similar architecture, and similar concepts as the 

’042 patent. Pet. 11–77. Petitioner’s references were also not cited during 

prosecution. Ex. 1001, code (56). As Petitioner points out, no references 

were applied to the claims during prosecution. Pet. 7; Ex. 1002, 48. Thus, 

we find that Petitioner’s showing is stronger than the minimum showing 

necessary to meet the “reasonable likelihood” standard required for 

institution. 

In sum, on the facts of this proceeding, Fintiv factor 6 weighs against 

exercising our discretion to deny institution. 

As specified in the Director’s Memo, “compelling, meritorious 

challenges will be allowed to proceed at the PTAB even where district court 

litigation is proceeding in parallel.” Director’s Memo 4. The Director’s 

Memo does not require a Petitioner to establish compelling merits to avoid 

discretionary denial. Additionally, the Director clarified the Interim 

Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if 

that analysis supports discretionary denial, the Board should engage the 

compelling merits question.” CommScope Techs. LLC v. Dali Wireless, 

Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). 

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Here, we do not find that Fintiv factors 1–5 weigh in favor of 

discretionary denial. Additionally, after weighing Fintiv factors 1–6, we 

determine that, on balance, these factors do not favor exercising our 

discretion to deny institution. Therefore, under the circumstances of this 

case, there is no need to determine whether the Petition establishes 

compelling merits. 

G. Conclusion on Fintiv Factors 

Based on a holistic analysis of the Fintiv factors taking into 

consideration “whether efficiency and integrity of the system are best served 

by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to 

exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter 

partes review. 

III. ANALYSIS 

A. Legal Standards 

“In an [inter partes review], the petitioner has the burden from the 

onset to show with particularity why the patent [claim] it challenges is 

unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. 

Cir. 2016). This burden of persuasion never shifts to Patent Owner. 

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 

(Fed. Cir. 2015). The Board may authorize an inter partes review if we 

determine that the information presented in the Petition shows that there is a 

reasonable likelihood that Petitioner will prevail with respect to at least one 

of the claims challenged in the petition. 35 U.S.C. § 314(a). 

Petitioner contends that the challenged claims of the ’042 patent are 

unpatentable under § 103. Pet. 10. A claim is unpatentable under § 103 if 

the differences between the claimed subject matter and the prior art are such 

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that the subject matter, as a whole, would have been obvious at the time the 

invention was made to a person having ordinary skill in the art to which said 

subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 

(2007). The question of obviousness is resolved on the basis of underlying 

factual determinations, including: (1) the scope and content of the prior art; 

(2) any differences between the claimed subject matter and the prior art; 

(3) the level of skill in the art; and (4) where in evidence, so-called 

secondary considerations.2

 Graham v. John Deere Co., 383 U.S. 1, 17–18 

(1966). When evaluating a combination of teachings, we must also 

“determine whether there was an apparent reason to combine the known 

elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 

418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Whether a 

combination of elements produces a predictable result weighs in the ultimate 

determination of obviousness. Id. at 416–417. 

B. Level of Ordinary Skill in the Art 

Petitioner argues that a person of ordinary skill in the art “would have 

been familiar with the changing of configuration settings of end-user devices 

to control access of the device to network data services, and storing those 

configuration settings in a protected partition” and “would have gained this 

knowledge through a mixture of training and work experience, such as by 

having a Bachelor’s degree in computer science and two years of 

experience.” Pet. 7–8 (citing Ex. 1003 ¶¶ 41–43). 

For purposes of its Preliminary Response, Patent Owner does not 

challenge Petitioner’s proposed level of ordinary skill in the art. Prelim. 

Resp. 4 (quoting Pet. 7–8); Ex. 2001 ¶ 31. 

2

 The record does not yet include any objective indicia of non-obviousness. 

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Based on the preliminary record, we adopt Petitioner’s asserted level 

of ordinary skill to determine whether there is a reasonable likelihood that 

Petitioner would prevail with respect to at least one of the claims challenged 

in the Petition. 

C. Claim Construction 

In an inter partes review, the claims are construed 

using the same claim construction standard that would be used to 

construe the claim in a civil action under 35 U.S.C. [§] 282(b), 

including construing the claim in accordance with the ordinary 

and customary meaning of such claim as understood by one of 

ordinary skill in the art and the prosecution history pertaining to 

the patent. 

37 C.F.R. § 42.100(b) (2021); see Phillips v. AWH Corp., 415 F.3d 1303, 

1312–13 (Fed. Cir. 2005) (en banc). 

Petitioner proposes that claim terms be given their plain and ordinary 

meaning “because the prior art relied on in this Petition meets each claim 

term under any reasonable construction.” Pet. 7. “For purposes of this 

preliminary response, Patent Owner agrees that no formal claim construction 

is necessary.” Prelim. Resp. 4–5 (quoting Pet. 7); Ex. 2001 ¶ 32. 

In its arguments against the challenges, Patent Owner contends that 

one of ordinary skill in the art would have understood “‘network data 

service’ is a service that provides network data,” and that the intrinsic and 

extrinsic evidence supports its asserted plain and ordinary meaning. Prelim. 

Resp. 5–6 (citing Ex. 1001, 1:45–2:3; Ex. 2001 ¶¶ 29–30, 35, 40–41). 

Patent Owner also contends that “service policy settings” are related to plans 

that provide network data services, as disclosed by the ’042 patent, and “not 

some service (like email) that may be accessed using, but does not itself 

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provide, network data service.” Id. at 7–8 (citing Ex. 1001, 8:26–30, 11:66–

12:7; Ex. 2001 ¶¶ 37, 38). 

Patent Owner further contends that its infringement contentions are 

consistent with the understanding of “service policy settings” and the 

settings are not merely generic settings for accessing other services. Prelim. 

Resp. 8 (citing Ex. 2001 ¶ 42). Patent Owner additionally contends that, 

because Petitioner includes providers of “network data services,” it should 

be “well aware of the distinction between general services provided over the 

Internet (e.g., email services or AI services like ChatGPT that can be 

accessed via the Internet) and ‘network data services’ which are services for 

provision of network data to a device.” Id. at 8–9 (citing Ex. 2001 ¶ 43). 

In Patent Owner’s view, email and web site services would not meet 

the plain and ordinary meaning of “network data service,” because “the ’042 

patent does not even mention email or web pages.” Prelim. Resp. 9 (citing 

Ex. 2001 ¶ 43). Patent Owner also argues that email and web page servers 

verifying and updating configuration settings would not solve the problem 

addressed by the ’042 patent—avoiding degradation of overall network 

service experience due to user capacity concerns. Id. at 9–10 (citing 

Ex. 2001 ¶¶ 28–30, 44). Patent Owner, thus, argues that “the ’042 patent 

does not encompass servers providing email and web page services as within 

the claimed ‘network data service.’” Id. at 10. 

Based on Patent Owner’s cited support from the Specification and 

declarant testimony that has not yet been challenged, we adopt Patent 

Owner’s proposed plain and ordinary meaning of “network data service” to 

mean “a service that provides network data.” Prelim. Resp. 5; Ex. 1001, 

1:48–49 (“many access networks such as wireless networks, cable networks 

and DSL (Digital Subscriber Line)”); Ex. 2001 ¶ 30. The parties should 

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consider further addressing Patent Owner’s proposed interpretation during 

trial. 

At this preliminary stage, we determine that express claim 

interpretation of any other term is not necessary to determine whether 

Petitioner shows a reasonable likelihood of prevailing. Realtime Data, LLC 

v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to 

construe ‘only those terms that . . . are in controversy, and only to the extent 

necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. 

Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 

D. Asserted Obviousness of Claim 1 Based on Limont, Wright, and Xu 

1. Limont (Ex. 1004) 

Limont is “directed towards methods . . . for enforcing device settings 

for mobile devices.” Ex. 1004 ¶ 16. Figure 3 of Limont is below 

reproduced. 

Figure 3 shows a “computer architecture that facilitates enforcing 

configuration settings of mobile devices,” such as computer architecture 

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300. Ex. 1004 ¶¶ 25, 72. “[M]obile device 101 includes client 

module 193A (e.g., a Web browser)” and “can utilize client module 193A to 

access data maintained by a server.” Id. 

“Computer system 141 includes server module 193B (e.g., a Web 

server)” that “includes policy enforcement module 194 and data access 

module 195.” Ex. 1004 ¶ 73. Computer system 141 also includes 

configuration settings 191 that include policy setting 191A . . . 191Z. Id. 

“Configuration settings can include: operating system settings, application 

program settings, hardware settings, allocated resource settings, network 

interface settings, wireless protocol settings, etc.” Id. Computer 141 further 

includes configuration versions 192A . . . 192Z. Id. ¶ 75. 

“Server module 193B can interoperate with client side programs (e.g., 

client module 193A) to transfer data (e.g., Web pages) to a mobile device,” 

and “in response to a mobile device data request, policy enforcement 

module 194 can determine if a requesting mobile device’s policy settings are 

appropriate for accessing data.” Ex. 1004 ¶ 77. 

“Configuration enforcement module 193 can interoperate with one or 

more of an authentication module, authorization modules, and policy 

enforcement module of server module 193B (not shown) to reduce the 

likelihood of inappropriate data access.” Ex. 1004 ¶ 78. “When 

configuration settings are appropriate (and, for example, a user is 

authenticated and authorized and policy settings are appropriate), data access 

module 195 accesses requested data and transfers requested data to the 

requesting mobile device.” Id. “[W]hen configuration settings are 

inappropriate (and even if a user is authenticated and authorized and policy 

requirements are appropriate), configuration enforcement module 194 can 

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access appropriate configuration settings and transfer the appropriate 

configuration settings to the requesting mobile device.” Id. 

Limont also describes “method 400 for enforcing an appropriate 

mobile device configuration prior to permitting a mobile device to access 

maintained data.” Ex. 1005 ¶¶ 79–91, Fig. 4. 

2. Wright (Ex. 1005) 

Wright’s “protection of data is administered through one or more 

security policies” that can “determin[e] accessibility of data for the mobile 

device,” for example, “as required or recommended by a security policy.” 

Ex. 1005 ¶ 14. The “security policy may not allow a particular network 

service or application or both to be used based upon either or both of a 

particular detected location or the activity status of a security feature.” Id.

Wright describes “system 200 for administering protection of data 

accessible by a mobile device.” Ex. 1005 ¶ 47. System 200 can include 

authorization module 232, policy distribution module 234, policy 

management module 236, policy setting module 238, and policy 

enforcement module 244. Id. ¶¶ 47, 48, Fig. 2A. System 200 can protect 

data resident in the mobile device or “data 242 that is accessible by the 

mobile device over a network 204.” Id. ¶ 47. 

“[P]olicy distribution module 234 distributes security information to 

the one or more client mobile devices” and “has a communication interface 

or is communicatively coupled to the policy management module 236 for 

receiving notifications of updated security information.” Ex. 1005 ¶ 51. 

“Examples of security information are versions of existing policies, policies, 

or software.” Id. “[P]olicy management module 236 determines 309 

whether the security information is to be encrypted.” Id. ¶ 104. 

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Wright also describes “system 201 for protecting data accessible by a 

mobile device based on a location associated with a network environment in 

which the mobile device is operating.” Ex. 1005 ¶ 58, Fig. 2B. System 201 

“determin[es] and enforc[es] security policies based upon the activity status 

of a security feature in a communication session between the mobile device 

and another computer” and includes location detection module 208, policy 

setting module 212, security features determination module 210, policy 

enforcement control module 214, memory location(s) 216, authorization 

module 245, and client diagnostics module 246. Id. 

3. Xu (Ex. 1016) 

Xu’s “processing unit with embedded system functions provides a 

secure base for enforcing security and/or operating policies” for “an 

electronic device such as a computer, cellular telephone, personal digital 

assistant, media player, etc.” Ex. 1016 ¶ 3. “The processing unit may 

include features and functional support found in most or all modern 

microprocessors and also support additional functions providing . . . secure 

storage.” Id. 

Xu describes that “secure memory 318 may store, in a tamper resistant 

manner, code and data related to the secure operation of the computer 302.” 

Ex. 1016 ¶ 23, Fig. 3. “Data in the secure memory 318 may include . . . 

policy data 322 that may specify policy related operational directives such as 

metering, reporting, update requirements, etc.” Id. ¶ 23. Cryptography 

function 334 may also be used. Id. ¶ 25. Xu further describes how 

computer 300 is configured according to policy data 322 and when noncompliance to a policy is discovered. See id. ¶¶ 29–32. 

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4. Claim 1 

Petitioner notes that it primarily relies on description related to the 

embodiment shown in Figures 3 and 4 of Limont, and that the description 

for Figures 1 and 2 “contain parallel invalidating disclosure” that are relied 

upon for corresponding disclosures. Pet. 26 (citing Ex. 1003 ¶¶ 304–307). 

For “[a] method,” Petitioner argues that Limont discloses “a method 

for enforcing an appropriate mobile device configuration prior to permitting 

a mobile device to access maintained data.” Pet. 24–26 (citing Ex. 1003 

¶¶ 300–303; Ex. 1004, Figs. 1–4). 

For “receiving, over a service control link, a report from a wireless 

end-user device, the report comprising information about a device service 

state,” Petitioner argues that Limont teaches (1) computer system 141 

receiving request 176 from mobile device 101, (2) request 176 including a 

configuration version representing a current configuration setting including 

“policy settings,” (3) the configuration version or policy version teaching or 

suggesting “information about the device service state,” and 

(4) communication links 132, 133 using wireless protocols thereby teaching 

or suggesting “a service control link.” Pet. 26–27 (citing Ex. 1003 ¶¶ 309–

341; Ex. 1004 ¶¶ 80–81, Fig. 4), 27–28 (citing Ex. 1003 ¶¶ 328–331; 

Ex. 1004 ¶¶ 47, 73), 28 (citing Ex. 1003 ¶¶ 332–341; Ex. 1004 ¶¶ 38, 43, 56, 

Figs. 1, 3). 

Petitioner also argues that Limont’s description of configuration 

settings and policy settings are consistent with the disclosure of “device 

service state includ[ing] current service usage policy settings, current DAS 

settings, device status information, application status information, or other 

state and/or settings information” in the ’042 patent. Pet. 27 (citing 

Ex. 1001, 17:46–18:11; Ex. 1003 ¶¶ 315–327). Petitioner further points to 

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data command, data request 164, and policy version 118. Id. (citing 

Ex. 1003 ¶¶ 314–327; Ex. 1004 ¶¶ 30, 55, 58, 59, 67–69). 

For “determining, based on the report, that a particular service policy 

setting of the wireless end-user device needs to be modified,” Petitioner 

argues that Limont discloses receiving a report indicating a mobile device 

configuration and using the configuration to determine if the existing 

policies need to be modified. Pet. 28–30 (citing Ex. 1003 ¶¶ 343–375; 

Ex. 1004 ¶¶ 45–53, 60–65, 80–83, Fig. 2 (steps 202, 205), Fig. 4 (step 402)). 

Petitioner also argues that Limont’s mobile device seeks access to data on a 

server that can only be accessed with appropriate configuration settings. Id.

at 30 (citing Ex. 1003 ¶¶ 354–360, 374; Ex. 1004 ¶¶ 60–64, 73, 79, 84–89, 

Fig. 4 (step 405)). Petitioner further argues that Limont uses “configuration 

setting” and “policy setting” interchangeably. Id. (citing Ex. 1003 ¶¶ 362–

369; Ex. 1004 ¶¶ 45, 55, 77–78, 83). Petitioner additionally argues that 

Limont’s configuration settings are sent from computer system 141. Id. at 

30–31 (citing Ex. 1003 ¶¶ 370–374; Ex.1004 ¶¶ 65, 85, 89). 

For “the particular service policy setting being stored in a protected 

partition of the wireless end-user device, the protected partition configured 

to deter or prevent unauthorized modifications to the particular service 

policy setting,” Petitioner argues that Limont’s mobile device 101 includes 

memory 112 for storing configuration settings 191B, K, N, R and 

configuration version 192L but Limont does not teach that the configuration 

settings are secure. Pet. 31–32 (citing Ex. 1003 ¶¶ 378–386; Ex. 1004 ¶¶ 86, 

Figs. 1, 3). 

According to Petitioner, Wright teaches encrypted security 

information, such as policy, and permissions for policies. Pet. 32–33 (citing 

Ex. 1003 ¶¶ 387–394; Ex. 1005 ¶¶ 14, 51, 61, 78–103, 262, 280–284). 

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Petitioner argues that Wright’s teachings regarding policies generally 

correspond to Limont’s policy disclosures. Id. at 33 (citing Ex. 1003 

¶¶ 395–398; Ex. 1005 ¶¶ 48, 180–184, Figs. 5B–5F). Petitioner also argues 

that Wright teaches a “protected partition.” Id. at 34 (citing Ex. 1003 

¶¶ 395–410; Ex. 1005 ¶¶ 47, 58–60, 176–177, 280, Fig. 2B). 

Petitioner preemptively argues that, if Patent Owner asserts that the 

“protected partition” requires more than storing data, then Wright’s 

protected partition also encrypts and decrypts. Pet. 35–36 (citing Ex. 1003 

¶ 415; Ex. 1005 ¶¶ 47, 51, 62, 131, Figs. 2B, 3C). Petitioner also argues that 

Wright’s protected partition prevents unauthorized users modifying policies 

stored in encrypted memory and, in view of Wright, Limont’s data would 

likewise be protected. Id. at 36 (citing Ex. 1003 ¶¶ 416, 417; Ex. 1004 ¶ 71; 

Ex. 1005 ¶¶ 48, 78–104, 229–230, 259–264, 280–284). 

Petitioner further argues that, to the extent “stored in a protected 

partition” requires a secure execution environment, as shown in Figure 4 of 

the ’042 patent, then Xu teaches such an environment that Petitioner 

proposes to combine with Limont’s memory 112 to execute Wright’s 

encryption protections. Pet. 36–40 (citing Ex. 1001, Fig. 1; Ex. 1003 

¶¶ 418–440; Ex. 1016 ¶¶ 3, 23, 25, 29–32, Fig. 3, claim 9). 

For “the particular service policy setting being associated with a 

service profile that provides for access by the wireless end-user device to a 

network data service over a wireless access network,” Petitioner argues that 

Limont’s mobile device 101 wirelessly exchanges data and includes network 

interface 180 for receiving data from and transmitting data to external 

sources. Pet. 42 (citing Ex. 1003 ¶¶ 443–470; Ex. 1004 ¶ 41). Petitioner 

also argues that Limont teaches configuration versions and settings that 

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include settings for network interface and wireless protocol. Id. at 42–43 

(citing Ex. 1003 ¶¶ 444–446; Ex. 1004 ¶¶ 43, 45–53, 56, 75, 87). 

Petitioner further argues that Limont’s data exchange and network 

interface and wireless protocol settings would have been understood to be 

“service policy settings that provides for access . . . to a network data service 

over a wireless access network.” Pet. 43 (citing Ex. 1003 ¶¶ 447–451). 

According to Petitioner, “Limont describes several forms of specific services 

with distinct accessed data also corresponding to the ‘network data 

service,’” such as email and web servers. Id. (citing Ex. 1004 ¶¶ 38, 45, 73). 

Petitioner also argues that Limont’s policies allow for access by 

providing data on or from a server. Pet. 44 (citing Ex. 1003 ¶¶ 452–466). 

Petitioner further argues that Limont’s policy enforcement module 194 

determines if the policy settings of the mobile device are appropriate for 

accessing the data on the server. Id. (citing Ex. 1003 ¶¶ 467–469; Ex. 1004 

¶ 77). 

For “the particular service policy setting configured to assist in 

controlling one or more communications associated with the wireless enduser device over the wireless access network,” Petitioner contends with 

reference to previous arguments that Limont’s server 142, 193 evaluates and 

modifies configuration or policy settings for accessing requested server data 

and different types of communications such as email and web service. 

Pet. 44–45 (citing Ex. 1003 ¶¶ 473–474, 452–466, 475). Petitioner also 

contends that Limont’s configuration settings can alter network interface and 

wireless protocol settings and, thus, teaches “control[ling] one or more 

communications associated with the wireless end-user device over the 

wireless access network.” Id. at 45 (citing Ex. 1003 ¶ 476; Ex. 1004 ¶¶ 73, 

87). 

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Regarding “is in response to determining that the particular service 

policy setting needs to be modified, sending configuration information to the 

wireless end-user device over the service control link, the configuration 

information configured to assist in modifying or allowing modifications to 

the particular service policy setting,” Petitioner argues with reference to 

previous arguments that Limont discloses determining that a service policy 

setting needs to be modified and sending modified settings to a mobile 

device for implementation. Pet. 45–46 (citing Ex. 1003 ¶¶ 479–486; 

Ex. 1004 ¶¶ 65, 66, 84–89, Figs. 1, 3, 4, claim 6). 

a) Petitioner’s Asserted Reason for Modifying 

Petitioner argues that Limont, Wright, and Xu each “teach[es] the 

same subject of managing and updating secure data, including policies, 

wirelessly on mobile devices,” and because of the similar identification of 

problems and proposed solutions, one of ordinary skill in the art would have 

been motivated to consider and combine their teachings. Pet. 19 (citing 

Ex. 1003 ¶¶ 264–267), 20 (citing Ex. 1003 ¶¶ 278–287; Ex. 1004 ¶ 13; 

Ex. 1005 ¶ 9). In Petitioner’s view, the citing of Wright during prosecution 

of Limont supports that the ordinarily skilled artisan would have considered 

their teachings to be closely related. Id. at 19–20 (citing Ex. 1003 ¶¶ 268–

277; Ex. 1013, 140–141, 145–148, 229–230). 

Petitioner contends that one of ordinary skill in the art would have 

recognized from the references that policy information needs to be protected 

during transmission and that malicious users should be prevented from 

accessing critical data on mobile devices. Pet. 20–21 (citing Ex. 1003 

¶¶ 283–287). According to Petitioner, “Limont does not expressly provide 

protection for data on the device” but “Wright provides the complementary 

solutions of encrypting data.” Pet. 21–22 (citing Ex. 1003 ¶¶ 283, 289–294; 

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Ex. 1004 ¶¶ 47–49); see also id. at 35 (arguing “Wright addresses the same 

issues identified by Limont” and “provides a solution for the problems 

identified in Limont”) (citing Ex. 1003 ¶¶ 410–413; Ex. 1005 ¶¶ 14, 131–

132, Figs. 2B, 3C). 

Petitioner argues that one of ordinary skill in the art would have been 

“motivated to modify Limont’s teachings of storing policy settings on the 

mobile device by encrypting the policy settings as taught by Wright” 

because a “malicious user” could access policies to allow access to data and 

prevent even an “authorized” user from changing policies. Pet. 22–23 

(citing Ex. 1003 ¶¶ 293, 295). Petitioner also argues that using Wright in 

Limont would have been merely an application of a well-known operation 

on a known component for known and intended purposes. Id. at 23 (citing 

Ex. 1003 ¶¶ 296–297). Petitioner further argues that the ordinarily skilled 

artisan “would have been motivated to consider Xu’s supplementary solution 

for the same reasons as discussed above for Wright.” Id. (citing Ex. 1003 

¶¶ 165–222, 427–440). Petitioner additionally argues that it was known in 

the art to protect confidential data. Id. at 23–24 (citing Ex. 1003 ¶¶ 165–

222); see also id. at 9–10 (contending protected partitions were known in the 

art at the time of invention). 

In its mapping of the claim limitations to the references, Petitioner 

argues that one of ordinary skill in the art would have been “motivated to 

implement a secure environment as taught by Xu on Limont’s mobile device 

incorporating Wright’s encryption functionality” so as “to provide for the 

protection of data in mobile devices using techniques such as hardware 

protections and encryptions” and to address “‘malicious users’ accessing 

confidential information.” Pet. 40–41 (citing Ex. 1003 ¶¶ 263–267, 379–

286, 431–440; Ex. 1004 ¶ 13; Ex. 1016 ¶ 30). Petitioner also argues that one 

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of ordinary skill in the art would have been “motivated to modify Wright’s 

encryption functionality using a secure environment as taught by Xu” 

because “the teachings of Xu beneficially increase Limont’s and Wright’s 

protections.” Id. at 41 (citing Ex. 1003 ¶ 437; Ex. 1005 ¶¶ 78, 267; Ex. 1016 

¶¶ 25–26). 

Petitioner further argues that one of ordinary skill in the art would 

have had a reasonable expectation of success in making the proposed 

combination. Pet. 19 (citing Ex. 1003 ¶¶ 165–222, 263–298, 427–440), 23 

(citing Ex. 1003 ¶¶ 296–297; Ex. 1004 ¶¶ 9, 40, Fig. 1), 42 (citing Ex. 1003 

¶¶ 438–440). 

b) Patent Owner’s Preliminary Response 

Patent Owner responds that Petitioner fails to show that Limont 

discloses a “service policy setting . . . associated with a service profile that 

provides for access by the wireless end-user device to a network data service 

over a wireless access network.” Prelim. Resp. 5 (citing Pet. 42–44; 

Ex. 2001 ¶¶ 35–42). According to Patent Owner, one of ordinary skill in the 

art would have understood “‘network data service’ is a service that provides 

network data,” its plain meaning supported by intrinsic and extrinsic 

evidence. Id. at 5–6 (citing Ex. 1001, 1:45–2:3; Ex. 2001 ¶¶ 29–30, 35, 40–

41), 8–9 (citing Ex. 2001 ¶ 43). 

Patent Owner, thus, argues that Petitioner’s reliance on email and web 

site services fails to meet the plain and ordinary meaning of “network data 

services.” Prelim. Resp. 9. Patent Owner also argues that email and web 

page servers “would not solve the same problem of alleviating user capacity 

concerns for an access network” that is addressed by the ’042 patent. Id. 

at 9–10 (citing Ex. 1001, 1:45–2:3; Ex. 2001 ¶¶ 28–30, 44). 

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Patent Owner further argues that “service policy settings” are related 

to plans that provide network data services, as disclosed in the ’042 patent, 

“are specific to the particular network data service provided by carriers,” and 

“not some service (like email) that may be accessed using, but does not itself 

provide, network data service.” Prelim. Resp. 7–8 (citing Ex. 1001, 8:26–

30, 11:66–12:7; Ex. 2001 ¶¶ 37, 38). 

c) Petitioner Shows a Reasonable Likelihood of Prevailing 

Based on the preliminary record, Petitioner shows a reasonable 

likelihood of prevailing in its challenge that Limont, Wright, and Xu teach, 

suggest, or would have been understood to disclose the limitations of claim 1 

and that one of ordinary skill in the art would have combined those 

references in the manner asserted with a reasonable expectation of success. 

Regarding “network data service,” Petitioner points to Limont’s 

teachings that (1) its “[m]obile device 101 can wirelessly exchange data” 

“using wireless protocols (e.g., GPRS, GSM, etc. to a mobile telephone 

server provider),” (2) mobile device 101 has network interface 180 “to 

receive data from external sources and/or transmit data to external sources,” 

and (3) configuration settings for the mobile device includes “network 

interface and wireless protocol settings.” Pet. 42–43; Ex. 1004 ¶¶ 41, 43, 

87. Petitioner also cites paragraph 56 that states “[c]ommunication link 133 

abstracts the actually physical representation of the connection from 

computer system 141 to network 131” that “can include wireless 

communication using wireless protocols.” Pet. 43. 

Petitioner, thus, contends that these teachings together would have 

been understood to disclose providing access “to a network data service over 

a wireless access network because the network interface controls the 

transmission/reception of data from the mobile device, and the wireless 

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protocol specifies the format of the data wireless transmitted over the 

wireless access network to the mobile device.” Pet. 43 (citing Ex. 1003 

¶¶ 447–451). At this stage, these arguments and cited evidence sufficiently 

show Limont would have been understood to disclose accessing a network 

data service. 

Petitioner goes on to argue that “Limont describes several forms of 

specific services with distinct accessed data also corresponding to the 

‘network data service,’” such as an email server and web server. Pet. 43. 

According to Petitioner, these servers communicate with Limont’s mobile 

device using wireless protocol “over network 131 (access by the wireless 

end-user device to a network data service).” Id. (citing Ex. 1004 ¶¶ 38, 45, 

73). Petitioner’s position appears to be that Limont’s description of email 

and web servers show accessing a network data service because access to 

these “specific services” is “over network 131.” See id.

At this stage, Petitioner presents sufficient argument and evidence that 

Limont teaches a “network data service” even under Patent Owner’s 

proposed plain and ordinary meaning discussed above in Section III.C. 

Therefore, on the record before us, Petitioner shows a reasonable likelihood 

of prevailing on claim 1 as unpatentable over Limont, Wright, and Xu. 

E. Remaining Challenges 

Claims 2 and 6–18 depend directly or indirectly from claim 1. 

Ex. 1001, 19:46–49, 20:13–49. Petitioner argues with citations to the record 

that Limont or Limont and Wright teach, suggest, or would have been 

understood to disclose the additional limitations of claims 2 and 6–18. 

Pet. 46–62. 

Claims 3–5 recite “an intermediate network device.” Ex. 1001, 

19:50–20:12. Petitioner argues with citations to the record that adding 

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Polson to its proposed combination teaches or suggests the additional 

limitations of claims 3–5. Pet. 69–77. Petitioner also argues with support 

that one of ordinary skill in the art would have had reason to further combine 

with Polson and would have had a reasonable expectation of success in 

making that combination. Id. at 64–69. 

Patent Owner does not provide arguments beyond those described 

above for claim 1. See generally Prelim. Resp. For the reasons above, we 

preliminarily determine that Petitioner demonstrates a reasonable likelihood 

of prevailing with respect to its challenge to independent claim 1. We, 

therefore, institute review on all challenged claims on all grounds set forth in 

the Petition. 37 C.F.R. § 42.108(a); see also SAS, 138 S. Ct. at 1354. 

IV. CONCLUSION 

After considering the evidence and arguments presented in the 

Petition and the cited evidence, we determine that Petitioner has 

demonstrated a reasonable likelihood of prevailing in proving that at least 

one of claims 1–18 of the ’042 patent is unpatentable, and thus, we institute 

an inter partes review of all challenged claims on all presented challenges. 

37 C.F.R. § 42.108(a). 

At this stage of the proceeding, the Board has not made a final 

determination as to the patentability of any challenged claim or any 

underlying factual and legal issues. 

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V. ORDER 

In consideration of the foregoing, it is hereby: 

ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes

review of claims 1–18 of U.S. Patent No. 9,198,042 B2 is instituted with 

respect to all grounds set forth in the Petition; and 

FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 

37 C.F.R. § 42.4(b), inter partes review of U.S. Patent No. 9,198,042 B2 

shall commence on the entry date of this Order, and notice is hereby given of 

the institution of a trial. 

For PETITIONER: 

Patrick D. McPherson 

Kevin P. Anderson 

DUANE MORRIS LLP 

PDMcPherson@duanemorris.com 

kpanderson@duanemorris.com 

FOR PATENT OWNER: 

Reza Mirzaie 

Dale Chang 

Amy E. Hayden 

James A. Milkey 

Neil Rubin 

Philip X. Wang 

RUSS, AUGUST & KABAT 

rmirzaie@raklaw.com 

dchang@raklaw.com 

ahayden@raklaw.com 

jmilkey@raklaw.com 

nrubin@raklaw.com 

pwang@raklaw.com 

rak_headwater@raklaw.com 

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