Microsoft Corp v. Global Technologies Inc

1. Case Identification

• Case #: IPR2016-00663
• Patent #: 7,215,752
• Filed: March 2, 2016
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Global Technologies, Inc.
• Challenged Claims: 1, 5, 7, 9, 12, and 21

2. Patent Overview

• Title: Intelligent Switching System For Voice And Data
• Brief Description: The ’752 patent describes a method for computer-based conferencing where data objects are retrieved from a host computer, processed at user sites, and displayed in response to control signals to enable collaboration among multiple participants.

3. Grounds for Unpatentability

Ground 1: Anticipation by Delaney - Claims 1, 5, 7, 9, 12, and 21 are anticipated by Delaney under 35 U.S.C. §102.

• Prior Art Relied Upon: Delaney (Patent 6,061,440).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the challenged claims were not entitled to their asserted priority date from a 1995 application. The petition contended that the challenged claims, filed in a 2004 application, were impermissibly broadened beyond the scope of the parent applications' disclosures, which were strictly limited to voice-centric teleconferencing where a common set of data objects was stored locally at each user site prior to the conference. Because the challenged claims omitted these core limitations, their effective filing date was no earlier than October 31, 2001. Consequently, Delaney, which issued on May 9, 2000, from one of the parent applications, qualified as intervening prior art. Petitioner asserted that Delaney’s specification and claims, while narrower than the challenged claims, disclosed every limitation of the challenged claims, including a method of conferencing, retrieving data from a host, processing it at user sites, and displaying selected data in response to control signals. The dependent claims were mapped to Delaney’s disclosure of various data types (image, video, text) and network connections (Internet).
  • Key Aspects: The central thrust of this ground was a legal argument about priority entitlement under 35 U.S.C. §120, which, if successful, transformed the patent owner’s own earlier patent into anticipating prior art.

Ground 2: Obviousness over Xconf and Scheifler - Claims 1, 5, 7, 9, 12, and 21 are obvious over Xconf in view of Scheifler under §103.

• Prior Art Relied Upon: Xconf (a 1993 article titled "Xconf: A Network-Based Image Conferencing System") and Scheifler (a 1990 reference manual titled "X WINDOW SYSTEM: THE COMPLETE REFERENCE TO XLIB...").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Xconf, a real-time, client-server conferencing system built on the X Windows platform, disclosed nearly all limitations of claim 1. Xconf taught a method of conferencing for collaborating on medical images, retrieving data objects (images) from a central host system before the conference, storing and processing them on local user display servers (user sites), and allowing users to select and interact with the data. The petition asserted that the only element not explicitly detailed in Xconf was the specific mechanism of the "control signal" used to display a selected image. This detail, Petitioner contended, was supplied by Scheifler.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Xconf with Scheifler because Xconf was an application built on the X Windows system, and Scheifler was the authoritative reference manual for that system. Xconf itself cited Scheifler. A POSITA seeking to implement, understand, or modify the Xconf system would have naturally consulted Scheifler to understand the underlying protocols, such as how a client sends a MapWindow request (the control signal) to a server to make a specific window visible on a display.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining the teachings was merely using the standard operating manual (Scheifler) to implement a known application type (Xconf).

Ground 3: Obviousness over Green and Xconf - Claims 1, 5, 7, 9, 12, and 21 are obvious over Green in view of Xconf under §103.

• Prior Art Relied Upon: Green (International Publication No. WO/95/01024) and Xconf (the 1993 article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Green disclosed a general-purpose, hardware-independent conferencing system with a central moderator (host) and distributed participants. Green taught conferencing with various data types (slides, spreadsheets), transmitting messages as control signals to direct conference activities like slide progression, and connecting users into the conference. Petitioner contended that Green taught all elements of claim 1, but to the extent any element was considered weak (e.g., pre-loading data), Xconf supplied the missing detail. Xconf explicitly taught downloading image files to each user site before the conference begins to ensure rapid response times during the session.
  • Motivation to Combine: A POSITA would combine Green with Xconf to solve a problem identified in the art and noted by Green: the challenge of collaborating on data over low-bandwidth systems. Xconf’s method of pre-transmitting data objects before the conference starts directly addressed this problem by minimizing the amount of data that needed to be sent during the live session. A POSITA would have been motivated to apply Xconf’s efficient data handling strategy to Green’s flexible conferencing framework.
  • Expectation of Success: There was a reasonable expectation of success because the combination involved applying a known technique (pre-loading data from Xconf) to improve the performance of a known type of system (the conferencing system of Green), a predictable and well-understood engineering choice.

4. Key Claim Construction Positions

• "Host computer": Petitioner proposed the plain meaning of "One or more computer workstations that serves as the main, central computer in a system of computers interconnected by communication links." This construction was argued to be consistent with the specification and dictionary definitions.
• "Conference": Petitioner proposed the construction "A meeting involving the communication between two or more participants about common information." This was argued to be broader than the term "teleconference" (requiring voice) used in the patent’s parent applications, supporting the argument that the challenged claims were impermissibly broadened and not entitled to the earlier priority date.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 5, 7, 9, 12, and 21 of the ’752 patent as unpatentable.