Microsoft Corp v. Iron Oak Technologies LLC

1. Case Identification

• Case #: IPR2019-00107
• Patent #: 5,966,658
• Filed: October 25, 2018
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Iron Oak Technologies, LLC
• Challenged Claims: 1

2. Patent Overview

• Title: Automated Selection of a Communication Path
• Brief Description: The ’658 patent describes an apparatus, such as a mobile device in a vehicle, that automatically selects an appropriate communication path from a plurality of available paths. The selection is based on accessing a memory that stores multiple ordered lists of communication paths, where each list is associated with a specific communication attribute, such as message priority.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claim 1 is anticipated by Oberlander under 35 U.S.C. §102.

• Prior Art Relied Upon: Oberlander (Patent 5,509,000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oberlander disclosed every limitation of claim 1. Oberlander’s subscriber device, which can be a personal computer or PDA, was identified as the claimed "apparatus." This device includes a RAM ("memory") that stores a Network Mobility Manager (NMM) database. This database contains multiple prioritized lists of network IDs ("plurality of ordered lists of communication paths"), where each list maps a subscriber to networks organized from "most favored" to lower priority. These lists are associated with message-specific priority values contained in an "attributes field" ("each ordered list associated with one of a plurality of communication attributes"). A processor in the subscriber device receives a message ("request for communication") and uses the NMM to automatically select a network from the prioritized list based on the message's priority attribute ("automatically select a communication path").

Ground 2: Obviousness over Oberlander in view of Bamburak - Claim 1 is obvious over Oberlander in view of Bamburak under 35 U.S.C. §103.

• Prior Art Relied Upon: Oberlander (Patent 5,509,000) and Bamburak (Patent 5,832,367).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that even if Oberlander alone was found insufficient, the combination with Bamburak rendered claim 1 obvious. Bamburak taught a method for a communication device to select a service provider using a memory table that explicitly defined multiple lists of communication paths (identified by SOC and SID codes). Each list was associated with a distinct priority value ("communication attribute"). The combination of Oberlander's network selection system with Bamburak's explicit teaching of storing multiple, priority-associated lists in memory would result in the claimed invention.
  • Motivation to Combine: A POSITA would combine Bamburak's more detailed prioritization technique with Oberlander's system to improve network selection for a mobile user. Oberlander disclosed concerns about selecting paths while traveling based on factors like cost and security. Bamburak’s scheme provided a known, flexible method for assigning priority attributes to many communication paths, which would predictably enhance Oberlander's system by allowing for more optimal network selection.
  • Expectation of Success: The combination was a simple arrangement of known elements, each performing its known function, which would predictably result in an improved network selection system.

Ground 3: Obviousness over Dutta in view of Oberlander - Claim 1 is obvious over Dutta in view of Oberlander under §103.

• Prior Art Relied Upon: Dutta (Patent 5,953,319) and Oberlander (Patent 5,509,000).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Dutta as the primary reference. Dutta disclosed an apparatus with an intelligent switching node that automatically selected a communication path from a plurality of options (e.g., satellite vs. terrestrial) based on message characteristics like cost and delivery time. Petitioner argued that while Dutta taught the basic selection apparatus, it did not explicitly disclose storing a "plurality of ordered lists" associated with attributes. Oberlander was argued to supply this missing element, as it taught using an NMM database with organized, prioritized lists of networks corresponding to message priority attributes.
  • Motivation to Combine: A POSITA would be motivated to incorporate Oberlander’s prioritized list structure into Dutta's system. Dutta itself expressed that it is "preferable for a packet data network to take advantage of the best features of multiple transmission paths" based on various characteristic features. Oberlander provided a known method for organizing network paths into prioritized lists to manage such characteristics (e.g., "cost, security, urgency"). A POSITA would therefore implement Oberlander's organized lists into Dutta's memory to better manage the selection factors Dutta identified.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Oberlander with Eriksson (Patent 5,448,750) and/or Burke (Patent 5,406,643), as well as a three-reference combination of Dutta, Oberlander, and Eriksson, but relied on similar design modification theories.

4. Key Claim Construction Positions

• "plurality of ordered lists of communication paths": Petitioner noted that both parties in district court litigation had agreed on the construction: "multiple lists, each list containing multiple communication paths stored in a specified order." Petitioner argued its grounds met this construction.
• "communication attribute": Petitioner proposed the construction "parameter included with the communication request that represents a priority for communication." This was based on intrinsic evidence showing the attribute represents a priority and is part of the request. Petitioner argued this construction was met by the priority values disclosed in the prior art.
• "a memory operable to store a plurality of": Petitioner proposed this term be construed to mean "at least one storage device operable to store multiple." This construction was intended to clarify that the multiple lists do not need to reside on a single storage device.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion under §314(a) to deny institution. It contended that although two other IPRs had been filed against the ’658 patent (by Samsung and Unified Patents), the General Plastic factors favored institution. Petitioner asserted it was not the same petitioner as in the prior cases, it was advancing substantially different grounds based on Oberlander and Dutta as primary references, and it had intervened in the related district court case more recently than the other petitioners were served, justifying the timing of its petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’658 patent as unpatentable.