Case: 19-1497   Document: 61     Page: 1   Filed: 06/04/2020




        NOTE: This disposition is nonprecedential.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, Chi-
 cago, 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 ap-
 paratuses by which a mobile communication device can
 gain access to a 2G/3G network using a temporary identi-
 fier it already has from a 4G network. Samsung Electron-
 ics 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 Ac-
 cessing 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 “leg-
 acy” 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 inter-
 face, which connects the access and core networks. ’166 pa-
 tent, 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 cor-
 responding 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 maintain-
 ing 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 ac-
 cess 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 as-
 signed. 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 rereg-
 ister 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, analo-
 gous 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 com-
 munication 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 SAE-
 TMSIs or S-TMSIs. See ’166 patent, col. 3, lines 21–26.
      The ’166 patent notes that legacy 2G/3G networks can-
 not 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 com-
         prising:
     obtaining, by a User Equipment (UE), a temporary
         identity (ID) allocated by a Mobility
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        Management Entity (MME) in an evolved net-
        work, 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 mes-
        sage;
     sending, by the UE, the access message to a Radio
        Access Network (RAN) node in the 2G/3G net-
        work.
     2. The method of claim 1, wherein the MME in-
         formation 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 Identi-
         fier (NRI) of the first P-TMSI in the access mes-
         sage 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. Sam-
 sung 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 obvious-
 ness over a combination of TS 23.236, a technical specifica-
 tion 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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 6                   HUAWEI TECHNOLOGIES CO., LTD.   v. IANCU



 Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Board added
 claims 12–16 to the proceedings. In its final written deci-
 sion, the Board determined that claims 1–3 and 5 are un-
 patentable for obviousness over a combination of TS 23.236
 and S2-073255 and that claim 4 is unpatentable for obvi-
 ousness 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 construc-
 tion, claim 1 is unpatentable for the same reason (as rele-
 vant 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 re-
 jected 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, pur-
 suant 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 ob-
 viousness 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 er-
 roneously relied on reasoning not supported by the refer-
 ences 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 in-
 corporate the MME-id disclosed in S2-073255 into the NRI
 field taught by TS 23.236. Upholding the Board’s determi-
 nation as to that combination suffices to affirm the Board’s
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 HUAWEI TECHNOLOGIES CO., LTD.     v. IANCU                  7



 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-ev-
 idence 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 Diagnos-
 tics 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 rea-
 sonable fact finder could have arrived at the agency’s deci-
 sion’ and requires examination of the ‘record as a whole,
 taking into account evidence that both justifies and de-
 tracts 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. Intel-
 lectual 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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 8                      HUAWEI TECHNOLOGIES CO., LTD.   v. IANCU



 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 infor-
         mation 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 Identi-
         fier (NRI) of the first P-TMSI in the access mes-
         sage as the MME-id.
 ’166 patent, col. 17, lines 57–64.
      The Board found that S2-073255, which is a 3GPP dis-
 cussion 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 iden-
 tifies 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 net-
 works and the processes by which the SGSNs exchange
 context information when a UE moves from one pool to an-
 other. 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. Com-
 pare 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 ref-
 erences in combination conveyed that teaching to a rele-
 vant 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 dis-
 closes 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 modi-
 fications to the S-TMSI, S2-073255 proposes expanding the
 length of the MME-id to 14 or 24 bits. J.A. 2104. There-
 fore, 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 ex-
 plicitly discloses a seven-bit MME-id. Samsung, 2018 WL
 6380662, at *20. Although the reference discloses modifi-
 cations 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 S-
 TMSI should be expanded. J.A. 2103 (“[T]he length of S-
 TMSI definitely should be expanded.”). Moreover, the
 Board found, even if a relevant artisan would have under-
 stood that the MME-id itself should be expanded, the ref-
 erence does not discourage expansions (beyond seven) to
 ten bits or fewer. Samsung, 2018 WL 6380662, at *21. Ad-
 ditionally, Huawei’s expert testified that “neither the for-
 mat nor the location of the MME-id were defined” prior to
 the critical date of the ’166 patent. Ex. 2002 at ¶ 122, Sam-
 sung, No. IPR2017-01483, 2018 WL 6380662. Given the
 unsettled nature of the MME-id, the Board could reasona-
 bly 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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 10                  HUAWEI TECHNOLOGIES CO., LTD.   v. IANCU



 prior art that were not suggested in any of Samsung’s pa-
 pers and not supported by the record. In the relevant por-
 tion of its analysis, the Board reasoned that there were
 several ways to expand the S-TMSI to increase the net-
 work’s user capacity—as S2-073255 sought to do—without
 necessarily expanding the MME-id beyond ten bits. Sam-
 sung, 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 sup-
 port 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 un-
 reasonable.
                             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 in-
 corporate 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 de-
 cide the appropriate claim construction to affirm the deter-
 mination 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 re-
 mand 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).
