Microsoft Corp v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00744
• Patent #: 7,167,487
• Filed: March 4, 2019
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-6

2. Patent Overview

• Title: Network With Logic Channels and Transport Channels
• Brief Description: The ’487 patent describes algorithms for selecting Transport Format Combinations (TFCs) in a Universal Mobile Telecommunications System (UMTS) network. The technology focuses on how to map data from logical channels to transport channels while accounting for Quality of Service (QoS) requirements, such as a minimum guaranteed bit rate for a specific logical channel.

3. Grounds for Unpatentability

Ground 1: Obviousness over 3GPP UMTS Standards - Claims 1-6 are obvious over TS25.321, R2-010182, TS25.302, and TS23.107

• Prior Art Relied Upon: TS25.321 (3GPP MAC protocol specification), R2-010182 (3GPP change request for TS25.321), TS25.302 (3GPP physical layer services specification), and TS23.107 (3GPP QoS framework specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these contemporaneous and complementary 3GPP standards taught all limitations of claims 1-6. TS25.321 disclosed the basic UMTS network architecture with logical and transport channels and a TFC selection algorithm based on priorities. However, the purported point of novelty—using a "minimum bit rate criteria"—was expressly taught by R2-010182, a proposed modification to TS25.321 that called for considering a "Minimum Guaranteed bit rate (MinGBr)" during TFC selection. The foundational concepts of QoS, including "Guaranteed bitrate," were provided by TS23.107. Finally, TS25.302 provided necessary details on transport channel attributes, such as transmission time intervals (TTIs) and radio frames, recited in the dependent claims.
  • Motivation to Combine: A POSITA designing a UMTS network would be highly motivated to combine these references as they are all part of the same interoperable 3GPP standard. TS25.321 and TS25.302 described adjacent layers (MAC and physical) of the network architecture and were designed to work together. TS23.107 provided the overarching QoS framework essential for any UMTS implementation. R2-010182 was a publicly available change request that explicitly proposed enhancing the TFC selection algorithm in TS25.321 to improve QoS, providing a clear reason for its adoption.
  • Expectation of Success: A POSITA would have had a high expectation of success because the references were designed as a cohesive standard, and R2-010182 provided specific pseudo-code for implementing the minimum bit rate criterion within the existing TS25.321 framework.

Ground 2: Obviousness over Peisa and TS23.107 - Claims 1 and 2 are obvious over Peisa in view of TS23.107

• Prior Art Relied Upon: Peisa (Patent 6,850,540) and TS23.107 (3GPP QoS framework specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Peisa, which was the primary reference considered during prosecution, disclosed a TFC selection algorithm for a UMTS network that used "guaranteed rate transmission rates" as a criterion. This corresponded to the "minimum bit rate criteria" limitation. Although Peisa did not specify values for this rate, TS23.107 provided the necessary context by defining the "Guaranteed bitrate" QoS attribute for different service classes within the UMTS standard. TS23.107 also defined a "maximum bitrate" attribute, mapping to the limitation in claim 2.
  • Motivation to Combine: A POSITA implementing the UMTS system described in Peisa would have been motivated to consult the official 3GPP UMTS standard for guidance, especially since Peisa explicitly mentioned the ongoing 3GPP standardization process. To implement Peisa's "guaranteed rate," a POSITA would naturally turn to TS23.107, the definitive standard on UMTS QoS, to find appropriate values and definitions for guaranteed and maximum bit rates.
  • Expectation of Success: Success was expected because it merely involved using the standard QoS parameters from TS23.107 to inform the selection algorithm already disclosed in Peisa, requiring no significant modification to Peisa's system.

Ground 3: Obviousness over Peisa, TS23.107, and TS25.302 - Claims 4-6 are obvious over Peisa in view of TS23.107 and TS25.302

• Prior Art Relied Upon: Peisa (Patent 6,850,540), TS23.107 (3GPP QoS framework specification), and TS25.302 (3GPP physical layer services specification).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 2 to address the specific limitations in dependent claims 4-6. Peisa disclosed the overall wireless network with a radio network controller (RNC) and terminals (UEs) as required by claim 4. For the limitations in claim 4 concerning transmission time intervals (TTIs) and radio frames, Petitioner argued that while Peisa taught TTIs, TS25.302 provided the explicit teaching that a TTI is always a multiple of a radio frame (10ms) and that a channel is active when its TTI start coincides with a radio frame start. Claims 5 and 6, relating to MAC and RLC layer functions, were met by Peisa's disclosure of the UMTS layer 2 architecture.
  • Motivation to Combine: The motivation was the same as in Ground 2, with the additional rationale that a POSITA building the UMTS system of Peisa would consult not only the QoS standard (TS23.107) but also the physical layer services standard (TS25.302) for fundamental operational details like frame timing.
  • Expectation of Success: The combination was a predictable integration of complementary standards to implement a known system architecture.

4. Key Claim Construction Positions

• Petitioner proposed that the phrase "a minimum bit rate criteria applicable to the respective logic channel" should be construed as "a criterion that attempts to guarantee a minimum bit rate specified for the respective logic channel."
• This construction was argued to be critical. Petitioner contended that the singular article "a" and the patent's specification supported a single criterion, not multiple criteria. This interpretation was central to Petitioner's argument that the prior art, which taught using a single guaranteed bit rate as a criterion (e.g., from R2-010182 or TS23.107), fully met the claim limitation that was added to overcome prior art during prosecution.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the core prior art and arguments were not previously considered by the USPTO. Specifically, the R2-010182 reference, which expressly taught using a minimum bit rate criterion in TFC selection, was never cited or discussed during prosecution.
• Petitioner also argued that its challenge was not redundant with other pending IPRs filed by third parties against the same patent. It contended that this petition presented art in a different light and relied on distinct combinations, including the key TS23.107 reference, which was not part of the other IPRs.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6 of the ’487 patent as unpatentable under 35 U.S.C. §103.