NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

HUAWEI TECHNOLOGIES CO., LTD.,

Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________

2019-1497

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2017-

01483.

______________________

Decided: June 4, 2020

______________________

CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chicago, IL, for appellant. Also represented by NATHANIEL C.

LOVE, JOHN WEATHERBY MCBRIDE; MICHAEL J. BETTINGER,

CURT HOLBREICH, San Francisco, CA; RYAN C. MORRIS, 

Washington, DC. 

 MAUREEN DONOVAN QUELER, Office of the Solicitor, 

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2 HUAWEI TECHNOLOGIES CO., LTD. v. IANCU

United States Patent and Trademark Office, Alexandria, 

VA, for intervenor. Also represented by THOMAS W.

KRAUSE, JOSEPH MATAL. 

 ______________________

Before PROST, Chief Judge, REYNA and TARANTO, Circuit 

Judges.

TARANTO, Circuit Judge.

Huawei Technologies Co., Ltd. owns U.S. Patent 

No. 8,483,166, which describes and claims methods and apparatuses by which a mobile communication device can 

gain access to a 2G/3G network using a temporary identifier it already has from a 4G network. Samsung Electronics Co., Ltd., which is no longer a party to this case, 

successfully sought from the Patent and Trademark Office 

(PTO) an inter partes review of claims 1–5 and 12–16 of the 

’166 patent under 35 U.S.C. §§ 311–319. The Patent Trial

and Appeal Board ultimately determined that claims 1–5 

are unpatentable for obviousness and that claims 12–16 

are not unpatentable. Samsung Electronics Co. v. Huawei 

Technologies Co., No. IPR2017-01483, 2018 WL 6380662

(P.T.A.B. Dec. 4, 2018). On Huawei’s appeal, we affirm.

I

A

The ’166 patent, titled “Method and Apparatus for Accessing Legacy Networks Through Temporary ID of 

Evolved Network,” describes how a mobile communication 

device—which the patent calls “a User Equipment (UE)”—

that is set up to operate on an “evolved” network, such as a 

fourth-generation (4G) network, can gain access to a “legacy” network, such as a 2G or 3G network. 

As background, the ’166 patent describes the structure 

and functionality of a 3G network. A 3G network includes 

UEs; an access network, which communicates directly with 

the UEs; a core network, which provides 

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telecommunication services to the UEs; and an Iu interface, which connects the access and core networks. ’166 patent, col. 1, lines 26–50. The access network includes 

several NodeBs—through which the UEs communicate 

with the network—along with NodeB-controlling devices

referred to as Radio Network Controllers (RNCs) or, more 

generally, as Radio Access Network (RAN) nodes. Id., col. 

1, lines 44–46, 61–66. Each NodeB serves a geographic 

area, and the area served by a set of NodeBs and their corresponding controlling devices is known as a “pool area.” 

Id., col. 1, line 51, through col. 2, line 4. In a pool, all RAN 

nodes are connected to multiple Serving GPRS (General 

Packet Radio Service) Support Nodes (SGSNs), which are 

the elements of the core network responsible for maintaining a connection between the UEs and the core network. 

See id., col. 1, lines 37–41; J.A. 2555. 

As the ’166 patent notes, when a UE first acquires access to a 3G pool, it is assigned to a particular SGSN so 

that when the UE moves within the pool area, it need not 

change which SGSN it communicates with. ’166 patent, 

col. 2, lines 11–17. The assigned SGSN allocates to the UE 

a Packet Temporary Mobile Station Identity (P-TMSI), id., 

col. 2, lines 11–21, which the UE takes as its user ID, id., 

col. 4, lines 64–65. The P-TMSI is 32-bits long, and some 

of those bits are used for the Network Resource Identifier 

(NRI), which identifies the SGSN to which the UE is assigned. Id., col. 5, lines 8–34. When the UE moves outside 

the initial pool area to a new pool area, the UE sends to a

RAN node in the new pool a Routing Area Update request, 

which includes the P-TMSI and Routing Area Identity 

(RAI) corresponding to the old pool. Id., col. 5, lines 44–52. 

When the RAN node cannot find the SGSN corresponding 

to the P-TMSI—because the corresponding NRI belongs to 

an SGSN in a different pool—it assigns the UE to a new 

SGSN in the new pool. Id., col. 5, lines 52–60. The new 

SGSN uses the P-TMSI and RAI to locate the old SGSN

and then sends the old SGSN a request for “context” 

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information regarding the UE. Id., col. 5, line 61, through 

col. 6, line 2. After receiving the context information from 

the old SGSN, the new SGSN allocates a new P-TMSI and 

RAI to the UE. Id., col. 6, lines 2–4. Retrieving context 

information in this way, rather than having the UE reregister with the new SGSN, enables use of the 3G network 

without interruption when the UE moves from pool to pool. 

See id., col. 3, lines 32–34; J.A. 2554–55.

The ’166 patent also describes, as background, analogous structures and functions from the then-developing 4G 

communication networks, such as a System Architecture 

Evolution (SAE) network. ’166 patent, col. 2, lines 46–51. 

In the SAE network, Mobility Management Entities 

(MMEs)—like the SGSNs in the 3G network—are in communication with all RAN nodes within their pool and are 

responsible for creating temporary IDs for the UEs and 

storing UE context information. See id., col. 2, lines 46–60; 

J.A. 2557–58. These temporary IDs are known as SAETMSIs or S-TMSIs. See ’166 patent, col. 3, lines 21–26.

The ’166 patent notes that legacy 2G/3G networks cannot parse the S-TMSI. In particular, when a UE operating 

on an SAE network travels into territory where it seeks to 

gain access to a 2G/3G network, the newly assigned SGSN

from the 2G/3G network cannot identify the MME from 

which to request the UE’s context information. ’166 patent, 

col. 6, lines 5–9. To solve this problem, the ’166 patent sets 

out a method by which a UE adds MME information from 

the evolved network to a P-TMSI sent in an access message 

to a RAN node in the legacy network. Id., col. 3, lines 38–

55. 

Claims 1 and 2 of the ’166 patent are representative for 

purposes of deciding the issues on appeal: 

1. A method for accessing a 2G/3G network comprising:

obtaining, by a User Equipment (UE), a temporary 

identity (ID) allocated by a Mobility 

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Management Entity (MME) in an evolved network, wherein the temporary ID comprises 

MME information for identifying the MME;

adding, by the UE, the MME information from the 

temporary ID to a first P-Temporary Mobile 

Station Identity (P-TMSI) in an access message;

sending, by the UE, the access message to a Radio 

Access Network (RAN) node in the 2G/3G network.

2. The method of claim 1, wherein the MME information comprises an MME-Identity (MMEid), and

wherein adding, by the UE, the MME information 

from the temporary ID to the first P-TMSI in 

the access message comprises:

setting, by the UE, the Network Resource Identifier (NRI) of the first P-TMSI in the access message as the MME-id.

’166 patent, col. 17, lines 46–64.

B

In May 2017, Samsung petitioned for an inter partes

review of claims 1–5 and 12–16 of the ’166 patent. Samsung argued that the claims are unpatentable on four 

grounds, two of which are relevant to this appeal: first, 

claims 1–3, 5, 12–14, and 16 are unpatentable for obviousness over a combination of TS 23.236, a technical specification published by the 3rd Generation Partnership Project 

(3GPP), and S2-073255, a 3GPP discussion document; and 

second, claims 4 and 15 are unpatentable for obviousness 

over TS 23.236 and S2-073255 in further view of TR 23.882, 

a 3GPP technical report. 

Initially, the Board instituted a review of only claims 

1–5. After the Supreme Court’s decision in SAS Institute 

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Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Board added 

claims 12–16 to the proceedings. In its final written decision, the Board determined that claims 1–3 and 5 are unpatentable for obviousness over a combination of TS 23.236 

and S2-073255 and that claim 4 is unpatentable for obviousness over a combination of TS 23.236, S2-073255, and 

TR 23.882. Samsung, 2018 WL 6380662, at *24. After 

adopting a broad claim construction of “MME information 

for identifying the MME” in claim 1, id. at *5–7, the Board 

determined that, even under Huawei’s narrower construction, claim 1 is unpatentable for the same reason (as relevant here) that claims 2–5 are unpatentable: a relevant 

artisan would have found it obvious to incorporate the 

“MME-id” (of claim 2) disclosed in S2-073255 into the NRI 

field taught by TS 23.236, id. at *16–22. The Board rejected Samsung’s challenge to claims 12–16. Id. at *22–24.

Huawei timely appealed, and when Samsung withdrew 

from the appeal, the Director of the PTO intervened, pursuant to 35 U.S.C. § 143, to defend the Board’s decision. 

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 

II

On appeal, Huawei challenges the Board’s construction 

of claim 1’s limitation “MME information for identifying 

the MME.” It also challenges the Board’s determination 

that the prior art renders claims 1–5 unpatentable for obviousness even under Huawei’s claim construction of the 

claim 1 limitation. In the latter challenge, Huawei argues 

that the Board erroneously determined that the prior art 

does not teach away from the relied-on combination and erroneously relied on reasoning not supported by the references or included in Samsung’s petition.

We conclude that the Board did not err in determining 

that a relevant artisan would have found it obvious to incorporate the MME-id disclosed in S2-073255 into the NRI 

field taught by TS 23.236. Upholding the Board’s determination as to that combination suffices to affirm the Board’s 

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unpatentability determination as to claims 1–5, without 

reaching Huawei’s claim construction challenge.

We review the Board’s determination of obviousness de 

novo and its underlying factual findings for substantial-evidence support. Personal Web Technologies, LLC v. Apple, 

Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). Among the factual 

determinations in an obviousness analysis are “findings as 

to the scope and content of the prior art,” Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir. 

2015), and “[w]hether a reference teaches away,” In re 

Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 

2016). “Substantial evidence review asks ‘whether a reasonable fact finder could have arrived at the agency’s decision’ and requires examination of the ‘record as a whole, 

taking into account evidence that both justifies and detracts from an agency’s decision.’” Intelligent Bio-Systems, 

Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 

(Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d 1305, 

1312 (Fed. Cir. 2000)). We review the Board’s procedural 

decisions for an abuse of discretion. Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 

2018).

A reference “teach[es] away” when a relevantly skilled 

artisan, upon reading the reference, “would be discouraged 

from following” a path disclosed by the reference, or “would 

be led in a direction divergent” from the disclosed path. 

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 

F.3d 1314, 1327 (Fed. Cir. 2009). A reference does not 

teach away “if it merely expresses a general preference for 

an alternative invention but does not criticize, discredit, or 

otherwise discourage investigation into the invention 

claimed.” Id. (citation and quotation marks omitted).

A

Huawei focuses entirely on claim 2 in challenging the 

Board’s unpatentability determination as to claims 2–5. 

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We reject Huawei’s arguments for disturbing the Board’s 

obviousness ruling as to those claims.

Claim 2 recites: 

The method of claim 1, wherein the MME information comprises an MME-Identity (MME-id), 

and

wherein adding, by the UE, the MME information 

from the temporary ID to the first P-TMSI in 

the access message comprises:

setting, by the UE, the Network Resource Identifier (NRI) of the first P-TMSI in the access message as the MME-id.

’166 patent, col. 17, lines 57–64.

The Board found that S2-073255, which is a 3GPP discussion document, teaches that “the MME information 

comprises an MME-Identity (MME-id).” Samsung, 2018 

WL 6380662, at *19 (citing J.A. 2105 (“[T]he S-TMSI identifies both the user and the serving MME. . . . The MME id 

in the S-TMSI is unique to ensure that the S-TMSI remains 

unique.”)). And the Board found that TS 23.236, which is 

a 3GPP technical specification, discloses the intra-domain 

connection between RAN nodes and SGSN in 2G/3G networks and the processes by which the SGSNs exchange 

context information when a UE moves from one pool to another. See id. at *14. In essence, TS 23.236 discloses the 

structure and functionality of 2G/3G networks that the 

’166 patent describes as prior art, discussed above. Compare J.A. 1856 with ’166 patent, Fig. 1. Although neither 

TS 23.236 nor S2-073255 alone teaches setting the NRI of 

the P-TMSI as the MME-id, the Board found that the references in combination conveyed that teaching to a relevant artisan. Samsung, 2018 WL 6380662, at *18–19.

Huawei argues that S2-073255 actually teaches away 

from incorporating its MME-id into TS 23.236’s NRI field. 

Huawei points to TS 23.236’s disclosure of an NRI field at 

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most ten bits long. J.A. 1864. Although S2-073255 discloses a seven-bit MME-id (which could fit within 

TS 23.236’s ten-bit NRI field), that disclosure, Huawei 

stresses, is part of an illustration of the need to expand the 

S-TMSI. See J.A. 2103. In describing two potential modifications to the S-TMSI, S2-073255 proposes expanding the 

length of the MME-id to 14 or 24 bits. J.A. 2104. Therefore, Huawei contends, a relevant artisan would have been 

discouraged from using an MME-id of ten bits or fewer and, 

accordingly, would not have considered setting the NRI 

field to the MME-id when a UE sends an access message. 

The Board rejected this argument, and we conclude 

that substantial evidence supports the Board’s finding that 

S2-073255 does not teach away from the combination on 

which the Board relied. As the Board found, S2-073255 explicitly discloses a seven-bit MME-id. Samsung, 2018 WL 

6380662, at *20. Although the reference discloses modifications of S-TMSI that have longer MME-ids, the Board 

found that it does not disclose that the MME-id itself must 

be expanded. Id. Rather, S2-073255 says only that the STMSI should be expanded. J.A. 2103 (“[T]he length of STMSI definitely should be expanded.”). Moreover, the 

Board found, even if a relevant artisan would have understood that the MME-id itself should be expanded, the reference does not discourage expansions (beyond seven) to 

ten bits or fewer. Samsung, 2018 WL 6380662, at *21. Additionally, Huawei’s expert testified that “neither the format nor the location of the MME-id were defined” prior to 

the critical date of the ’166 patent. Ex. 2002 at ¶ 122, Samsung, No. IPR2017-01483, 2018 WL 6380662. Given the 

unsettled nature of the MME-id, the Board could reasonably conclude that two proposals using an MME-id of 14 or

24 bits would not have dissuaded a relevant artisan from 

using a shorter MME-id, which could fit within the ten-bit 

NRI field. 

Huawei further argues that the Board, in finding no 

teaching away, impermissibly relied on modifications of the 

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prior art that were not suggested in any of Samsung’s papers and not supported by the record. In the relevant portion of its analysis, the Board reasoned that there were 

several ways to expand the S-TMSI to increase the network’s user capacity—as S2-073255 sought to do—without 

necessarily expanding the MME-id beyond ten bits. Samsung, 2018 WL 6380662, at *20. This discussion is just one 

among several independent justifications, discussed above, 

for the Board’s finding that the cited references do not 

teach away. Even without this particular support, there is 

substantial-evidence support for the Board’s conclusion. 

Therefore, we need not determine whether the particular 

part of the Board’s reasoning on which Huawei now focuses 

was improper.

Finally, Huawei argues that even if S2-073255 teaches 

an MME-id with ten or fewer bits, the record does not support the Board’s finding that it would have been obvious to 

place that MME-id into the NRI of an access message. But 

Samsung’s expert Dr. Williams testified that “it was widely 

recognized at the time of the invention that the MME-id 

used in LTE [long term evolution] networks was analogous 

to the NRI used in 2G and 3G networks”; consequently, “[i]t 

also would have been the most logical solution because the 

new RAN node and new SGSN were already configured to 

look at the NRI bits of the P-TMSI to derive the old SGSN.” 

J.A. 2597. The Board credited this testimony, relying on 

the same references as Dr. Williams to show that a relevant 

artisan would have understood that the MME-id and NRI 

were “equivalen[t].” Samsung, 2018 WL 6380662, at *18 

(citing J.A. 2018; J.A. 2637). Huawei has not persuaded us 

that the Board’s interpretation of those references is unreasonable.

B

The Board construed “MME information for identifying 

the MME” to mean “any information that can be used to 

identify the MME in an evolved network.” Samsung, 

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2018 WL 6380662, at *7. Huawei argues that the “MME 

information” must include at least the entire MME-id. But 

even under Huawei’s construction, the Board determined

that it would have been obvious to a relevant artisan to incorporate the entirety of S2-073255’s MME-id into the 

P-TMSI—in particular, the NRI portion of the P-TMSI—

taught by TS 23.236. Id. at *18. As discussed above, we 

agree with that determination. Therefore, we need not decide the appropriate claim construction to affirm the determination that claim 1 is unpatentable.

III

For the foregoing reasons, we affirm the Board’s final 

written decision.1

AFFIRMED

1 On November 7, 2019, Huawei filed a letter with 

the court asking us to vacate the Board’s decision and remand for consideration by a different Board panel under 

this court’s decision regarding the Appointments Clause in 

Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 

(Fed. Cir. 2019). We reject this request. Huawei did not 

raise this issue before filing its opening brief or in that 

brief. We see no sound basis for distinguishing this case 

from our precedent deeming the challenge forfeited in such 

circumstances. See Customedia Technologies, LLC v. Dish 

Network Corp., 941 F.3d 1173, 1174 (Fed. Cir. 2019).

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