PTAB

IPR2019-00106

Microsoft Corp v. Iron Oak Technologies LLC

Key Events

Petition

petition

Title: System and Method for Remote Patching of Operating Code Located in a Mobile Unit
Brief Description: The ’275 patent describes a system for remotely updating the operating code of mobile units over a wireless network. A central manager host transmits software "patches" to enhance, correct, or replace portions of the existing code, eliminating the need for manual, on-site software installation.

Prior Art Relied Upon: Sugita (Japanese Published Unexamined Patent Application No. 1993-128022).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Sugita disclosed every element of claim 1. Sugita’s system for updating software in mobile terminals included a "base station" (the manager host) that wirelessly transmits update information (a patch message) to multiple "mobile terminals" (the mobile units). Petitioner asserted Sugita taught addressing updates to specific groups or individual terminals, thereby disclosing transmitting a patch to a "first mobile unit but not the second." Further, Petitioner contended that Sugita’s process of copying "part of the software" from a temporary area to the program’s operational area in RAM met the claim limitations of "merging" the patch with existing code and subsequently "switching execution" to that patched code.

Prior Art Relied Upon: Sugita and Burson (Patent 5,550,895).
Core Argument for this Ground:
- Prior Art Mapping: This ground supplements Sugita to the extent its vehicle-mounted terminals are not considered "battery-powered" under Petitioner's proposed claim construction. Burson disclosed a portable telephone handset for wireless networks that is explicitly powered by a battery.
- Motivation to Combine: A POSITA would combine Burson's battery with Sugita's mobile terminal to achieve the predictable result of a truly portable device. The motivations included enabling operation when a vehicle is off without draining the vehicle's battery, allowing the device to be removed from the vehicle, and providing a backup power source.

Prior Art Relied Upon: Sugita and Kirouac (Patent 5,155,847).
Core Argument for this Ground:
- Prior Art Mapping: This ground addresses any potential deficiency in Sugita’s disclosure of "creating a patched operating code by merging." Kirouac described a system for updating remote software by transmitting only "changes or patches" (e.g., line-by-line edits) which are then applied to a copy of the existing program, thereby avoiding a full software replacement.
- Motivation to Combine: A POSITA would integrate Kirouac's efficient patching method into Sugita’s wireless system for several reasons. Key motivations included conserving transmission resources (a stated objective of Sugita), maintaining version control for patches across multiple devices, and ensuring the reliability of software updates through checksums, all of which were taught by Kirouac.
- Expectation of Success: A POSITA would expect success in combining the known software patching techniques of Kirouac with the wireless transmission system of Sugita.

Prior Art Relied Upon: Sugita and Ballard (Australian Patent Application No. 77395/91).
Core Argument for this Ground:
- Prior Art Mapping: This ground addresses any potential deficiency in Sugita regarding the "switch execution" limitation, particularly if it is interpreted to require two separate memories. Ballard disclosed a mobile radiophone with multiple RAMs to store both a current software version and a newly downloaded version, and its microprocessor could "switch" execution between the two.
- Motivation to Combine: A POSITA would be motivated to incorporate Ballard’s dual-RAM architecture into Sugita’s system to enhance reliability. This combination would provide software redundancy, allowing the system to maintain a stable, working version of the software as a backup in case the patched version contained errors or the update process corrupted the memory—a risk explicitly acknowledged by Sugita.
- Expectation of Success: Combining a multiple-memory architecture for software redundancy with a wireless update system was a well-understood design choice, leading to a high expectation of success.

"Mobile Unit": Petitioner proposed this term means a "portable, battery-powered device for use while in motion." This construction was based on the patent’s description of the device being used by surveyors and rescue teams, which Petitioner argued implies portability and an independent power source.
"Current Operating Code": Petitioner proposed this means "operating code currently being executed by the mobile unit." This was based on language in the specification describing the processor executing code located in a specific flash bank.
"Merging the at least one patch with current operating code": Petitioner proposed this means "incorporating the at least one patch into the current operating code, without replacing the current operating code." This construction was intended to draw a distinction between a partial software patch and a full software replacement.
"Manager host is further operable to address...": Petitioner proposed this means the host decides "which specific mobile unit to send the...patch message to before beginning transmission." This construction emphasized the host's capability to selectively target specific devices for updates.

Petitioner argued against discretionary denial under 35 U.S.C. §325(d). Although the examiner had considered Kirouac during prosecution, Petitioner contended that the primary reference, Sugita, was new art not before the examiner. Furthermore, the petition allegedly presented new arguments and evidence regarding Kirouac in combination with other references.
Petitioner argued against discretionary denial under 35 U.S.C. §314(a) by distinguishing its petition from earlier-filed IPRs against the same patent by Samsung. Petitioner asserted it was not the "same petitioner," was not a real-party-in-interest or privy to the Samsung proceedings, and that its own filing was timely relative to litigation involving it.

Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’275 patent as unpatentable.