Microsoft Corp 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 discloses a method for a communication device to remind a user of a conversation point for a future communication. The method involves storing user-inputted "memo data" in a dedicated field within a contact list entry and automatically displaying an indication of that memo when communication is initiated with the corresponding contact.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sony and Matsumoto - 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 a wireless communication system that performs nearly every step of the challenged claims. Sony’s system stores reminders for contacts in a "phonebook" and automatically displays the relevant reminder when an incoming or outgoing call is detected with that contact. Petitioner contended the only potential difference is that Sony’s preferred embodiment describes storing memo data in a separate storage that is linked to the contact list, whereas claim 1 recites a "memo field" integrated within the contact list entry itself. Petitioner asserted that Matsumoto explicitly teaches this missing feature, disclosing a mobile phone with a single contact list table containing integrated fields for telephone number, name, email address, and "subject of notes" (the claimed memo).
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Matsumoto's integrated data storage structure with Sony’s reminder functionality. The primary motivation was that using a single, integrated table (as in Matsumoto) versus separate but linked tables (as in Sony) were well-known, equivalent design choices for storing related data. A POSITA would have recognized these as predictable solutions to achieve the same goal, making the substitution of Matsumoto's simpler, integrated approach into Sony's system an obvious design choice. Furthermore, because both references address the identical problem with nearly identical solutions, a POSITA would have naturally looked to one to implement or improve the other.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining these known database structures was a routine task with a predictable outcome and presented no technical challenges.

Ground 2/3: Obviousness over Matsumoto, Scott, and/or Neilsen - Claims 5-8 are obvious over Matsumoto in view of Scott or 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 asserted these grounds against dependent claims 5-8, which require the reminder to be triggered by initiating a "messaging" or "email" communication rather than a phone call. Petitioner argued that while Matsumoto teaches all elements of the base independent claim (as described in Ground 1), it only explicitly discloses triggering the reminder display for phone calls, even though its contact list contains email addresses. To supply the email-trigger limitation, Petitioner relied on Scott and Neilsen. Scott was argued to disclose an address book that stores a "preferred language" memo and automatically displays it as a pop-up reminder when a user either places a phone call or initiates an email to that contact. Neilsen was argued to disclose a generic reminder system where reminders can be associated with various applications and triggered by specific parameters, such as a phone number in a call handling application or an email address in an email application.
  • Motivation to Combine: A POSITA would combine the teachings of Scott or Neilsen with Matsumoto to apply Matsumoto's reminder functionality to email. Since Matsumoto's device already included an email application and stored email addresses, extending the reminder feature from phone calls to emails was a logical and predictable improvement. Scott and Neilsen explicitly teach using the same reminder function for both communication types, demonstrating the benefit and obviousness of this extension. The motivation was to improve the device's utility by applying an existing feature to another common communication method already present on the device.
  • Expectation of Success: The combination was a simple substitution of one trigger (an email address) for another (a phone number) to achieve the same, predictable result of displaying a reminder.
  • Key Aspects: Petitioner presented Scott and Neilsen in separate but parallel grounds (Ground 2 and Ground 3) as a legal strategy. While both teach the same technical principle, Scott is §102(e) prior art, whereas Neilsen is §102(b) prior art, providing alternative legal bases for the same obviousness argument.

4. Relief Requested

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