Microsoft Corporation v. Mira Advanced Technology Systems, Inc.

1. Case Identification

• Case #: IPR2017-01411
• Patent #: 9,531,657
• Filed: May 10, 2017
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Mira Advanced Technology Systems, Inc..
• Challenged Claims: 1-12

2. Patent Overview

• Title: Contact List With Conversation Point Reminder
• Brief Description: The ’657 patent describes a method for a communication device to remind a user of a conversation point for a future communication. The invention centers on integrating a "memo" field within a contact list entry and automatically displaying an indication related to that memo when a communication, such as a phone call or message, is initiated with the corresponding contact.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 9-12 are obvious over Sony in view of Matsumoto.

• Prior Art Relied Upon: Sony (European Patent Publication 1739937) and Matsumoto (Patent 7,130,617).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Sony discloses nearly all elements of the challenged claims, including a wireless communication device with a phonebook that can associate reminders with contacts and display them when a call is initiated. Sony, however, describes storing these reminders in a separate but "coupled" storage from the primary contact information. Petitioner contended that Matsumoto supplies the single missing element: storing the memo data in an integrated field within the same contact list table as the name and communication address. Matsumoto explicitly teaches a mobile phone with a contact list table that includes distinct fields for a phone number, name, email address, and a "subject of notes" field, which corresponds to the claimed integrated "memo field."
  • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would be motivated to combine these references because they both address the identical problem of providing automated reminders for communications. A POSITA would have recognized that storing related data in a single integrated table (as in Matsumoto) or in separate but linked tables (as in Sony) were well-known, interchangeable database design choices. Petitioner further argued that the ’657 patent’s parent application discloses both storage methods as alternatives, confirming they were known equivalents. A POSITA would combine the teachings to use the simpler, integrated data structure of Matsumoto within the system of Sony, as it would be an obvious design choice with predictable results.
  • Expectation of Success: A POSITA would have a high expectation of success because combining the references merely involved substituting one known, conventional data storage method for another to achieve the same, predictable result of displaying a reminder. The modification was argued to be a simple application of known database principles.

Ground 2 & 3: Claims 5-8 are obvious over Matsumoto in view of Scott or, alternatively, Neilsen.

• Prior Art Relied Upon: Matsumoto (Patent 7,130,617), Scott (Patent 7,822,434), and Neilsen (Application # 2006/0195518).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claims 5-8 build upon independent claim 1 by specifying the communication is a "messaging address" (e.g., email) and the trigger is a request to send a message. While Matsumoto provides the foundational system for displaying reminders for phone calls and includes email addresses in its contact list, it does not explicitly trigger reminders from email initiation. Petitioner asserted that both Scott and Neilsen supply this missing teaching. Scott discloses a handheld device that displays a "pop-up window" reminder not only for phone calls but also when a user initiates an email to a contact. Similarly, Neilsen teaches a generic reminder system where reminders can be linked to various applications, explicitly providing the example of triggering a reminder based on an email address being present in an email application.
  • Motivation to Combine: A POSITA would be motivated to modify Matsumoto's system using the teachings of Scott or Neilsen to extend the reminder functionality from phone calls to email. Since a typical mobile device has a limited number of communication methods (calls, messages, emails), it would be an obvious improvement to apply a useful feature like reminders consistently across them. Scott and Neilsen both demonstrate the utility and technical feasibility of this exact extension. Neilsen, in particular, provided a broad motivation by teaching that reminders could be triggered by events in many different applications, including email.
  • Expectation of Success: Success would be expected because the combination merely applies an existing reminder function (from Matsumoto) to an analogous communication method (email) on the same device, a straightforward modification taught by Scott and Neilsen. The underlying "plumbing" for this feature, such as an email client and contact list with email fields, was already present in Matsumoto's disclosure. Petitioner noted that separate grounds were presented because Scott is §102(e) prior art while Neilsen is §102(b) art.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’657 patent as unpatentable.