PTAB

IPR2017-01052

Microsoft Corp v. Mira Advanced Technology Systems Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Contact List With Conversation Point Reminder
  • Brief Description: The ’892 patent discloses a method for a communication device to remind a user of a pre-saved conversation point, or "memo," for a specific contact. The method involves storing the memo data within the contact's entry and automatically displaying an indication of the memo when an incoming or outgoing call occurs with that contact.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-4 and 6-9 over Matsumoto

  • Prior Art Relied Upon: Matsumoto (Patent 7,130,617).
  • Core Argument for this Ground: Petitioner argued that Matsumoto, a single prior art reference, discloses all elements of the challenged claims. The challenge was framed as obviousness under 35 U.S.C. §103 to preempt any argument that certain elements—particularly the steps performed "by the processor"—were not explicitly detailed for every function but would have been inherent or an obvious implementation to a Person of Ordinary Skill in the Art (POSITA).
    • Prior Art Mapping: Petitioner asserted that Matsumoto’s mobile phone is a "communication device" with a "general control unit 104" (processor) and "display unit 108" (display screen). Matsumoto's "table 200" was described as a contact list with fields for telephone number, name, and a "subject of notes," which corresponds to the claimed memo field. Petitioner mapped the claimed method steps for both incoming calls (claim 1) and outgoing calls (claim 6) to Matsumoto’s detailed flowcharts. These charts explicitly show the device receiving a call, checking if notes are recorded for that contact's number, and automatically displaying the notes before proceeding with the call, thereby teaching the claimed sequence of receiving, checking, activating, and causing a display.

Ground 2: Claims 1-10 are obvious over Sony in view of Matsumoto

  • Prior Art Relied Upon: Sony (European Patent Publication No. EP 1739937 A1) and Matsumoto (Patent 7,130,617).
  • Core Argument for this Ground: Petitioner argued that Sony teaches nearly all claimed elements, including the automatic display of a reminder during a call with a specific contact. However, Sony discloses storing its reminders in a separate database that is "coupled" to the phonebook, whereas the ’892 patent claims a memo field integrated directly within the contact list entry itself. Petitioner contended that Matsumoto supplies this specific integrated data structure, and a POSITA would have been motivated to combine the references to arrive at the claimed invention.
    • Prior Art Mapping: Sony was shown to disclose a wireless communication system (e.g., a portable cell phone) with a processor and display that automatically provides a "reminder" upon an incoming or outgoing call with a saved contact. However, Sony’s phonebook (contact list) and "reminder storage 3" (memo storage) are described as separate but linked. Matsumoto was introduced to teach the claimed limitation of an integrated data structure, where its "subject of notes" field is a column within the same table as the contact's name and number. The combination of Sony's overall system with Matsumoto's specific storage method was alleged to render the claims obvious.
    • Motivation to Combine: Petitioner provided three primary motivations for a POSITA to combine the references. First, storing related data in a single integrated table (per Matsumoto) versus separate linked tables (per Sony) were well-known, equivalent design choices with predictable results. Second, a POSITA would combine the references to improve Sony’s system by using Matsumoto’s simpler, integrated database structure, which would be easier to implement and code. Third, because both references solve the same problem (providing call-specific reminders) with the same general solution, it would have been obvious to integrate their respective features.
    • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success. The combination involved substituting one conventional and well-understood database storage technique for another to achieve a predictable result, presenting no significant technical hurdles.

4. Key Claim Construction Positions

  • Petitioner argued for a specific construction of the term "activating" the first contact list entry. Based on the ’892 patent's specification, Petitioner asserted this term should be construed to encompass the entire time period beginning when an incoming call is detected (claim 1) or an outgoing call is dialed (claim 6), and extending through the conduction of the call. This construction was central to mapping the timing of the prior art's note-displaying steps to the limitations of the challenged claims.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention, woven through both grounds, was that performing the claimed method steps "by the processor" was either inherent in the prior art or would have been an obvious implementation. Petitioner argued that references like Matsumoto and Sony describe general control units that control the overall procedures of the phone, and a POSITA would have understood that these processors necessarily perform functions such as handling calls, checking for stored data, and displaying information. This argument was supported by the assertion that the ’892 patent specification itself does not mention a processor or provide any technical detail on its implementation, implying such functionality was within the common knowledge of a POSITA.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10 of the ’892 patent as unpatentable.