Microsoft Corporation v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00745
• Patent #: 7,167,487
• Filed: March 4, 2019
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): UNILOC 2017 LLC
• Challenged Claims: 11-13

2. Patent Overview

• Title: Network with Logic Channels and Transport Channels
• Brief Description: The ’487 patent relates to algorithms for selecting transport format combinations (TFCs) in a Universal Mobile Telecommunications System (UMTS) network. The technology involves mapping data from logical channels to transport channels at the Medium Access Control (MAC) layer, with the core of the invention concerning a TFC selection algorithm that uses a "minimum bit rate criteria" to help guarantee Quality of Service (QoS).

3. Grounds for Unpatentability

Ground 1: Obviousness over 3GPP Standards - Claims 11-13 are obvious over TS25.321, R2-010182, TS25.302, and TS23.107

• Prior Art Relied Upon: TS25.321 (a 3GPP MAC protocol specification), R2-010182 (a 3GPP change request), TS25.302 (a 3GPP physical layer services specification), and TS23.107 (a 3GPP QoS framework specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these contemporaneous 3GPP standards, which define the architecture and operation of a UMTS network, rendered the challenged claims obvious. TS25.321 was asserted to teach a MAC-layer TFC selection algorithm based on priorities between logical channels. TS25.302 was cited for defining transport channels and valid TFC sets. TS23.107 provided the overall QoS framework, introducing the concept of a "Guaranteed bitrate" as a key QoS attribute. The primary reference, R2-010182, a change request proposing modifications to TS25.321, was argued to explicitly teach using a "Minimum Guaranteed bit rate" (MinGBr) criterion in the TFC selection algorithm to meet the basic needs of logical channels. Petitioner contended this combination disclosed every limitation, including the allegedly novel "minimum bit rate criteria."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the base standards (TS25.321, TS25.302, and TS23.107) because they are complementary, interdependent specifications for implementing a functional UMTS network. A POSITA would be further motivated to incorporate the teachings of R2-010182 because it was a publicly available change request that explicitly proposed an enhancement to the TS25.321 TFC selection algorithm to improve QoS, a widely understood goal in network design.
  • Expectation of Success: A POSITA would have had a high expectation of success because all references originated from the same 3GPP standards body and were designed to work together. R2-010182 provided a clear, direct proposal for modifying the existing TFC selection algorithm, including example pseudo-code, confirming its feasibility.

Ground 2: Obviousness over Peisa and a 3GPP Standard - Claims 11-13 are obvious over Peisa in view of TS23.107

• Prior Art Relied Upon: Peisa (Patent 6,850,540) and TS23.107 (a 3GPP QoS framework specification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Peisa, which was considered during prosecution, taught a TFC selection algorithm that uses a "Guaranteed Rate for each logical channel" as a key parameter. While the Patent Owner previously distinguished Peisa by arguing it did not teach a "minimum bit rate criteria," Petitioner asserted this distinction was incorrect. Petitioner contended that TS23.107, which was not substantively reviewed by the examiner, provided the missing context by explicitly teaching that a "Guaranteed bitrate" attribute is used to determine the "Minimum resource requirement" for different QoS classes. Thus, combining Peisa’s algorithm with TS23.107’s definition of guaranteed bitrates would arrive at the claimed invention.
  • Motivation to Combine: A POSITA implementing the UMTS network described in Peisa would have been motivated to consult the official 3GPP standards, like TS23.107, for guidance on implementing the QoS parameters that Peisa describes conceptually but does not detail. Peisa itself acknowledged the ongoing UMTS standardization process. As Peisa provided no specific values for its "guaranteed rate," a POSITA would have naturally looked to TS23.107, the relevant QoS standard, to supply those details.
  • Expectation of Success: There would be a reasonable expectation of success because TS23.107 provided the precise definitions and values for the "guaranteed rate" parameter used in Peisa's selection algorithm, requiring no modification to Peisa's underlying method.

4. Key Claim Construction Positions

• "a minimum bit rate criteria applicable to the respective logic channel": Petitioner proposed this phrase should be construed to mean "a criterion that attempts to guarantee a minimum bit rate specified for the respective logic channel." Petitioner argued the use of the singular article "a" and the patent's own description supported interpreting "criteria" as a singular "criterion." This construction was central to arguing that prior art teaching a single guaranteed rate criterion meets the claim limitation, contrary to the distinction made during prosecution.
• "a minimum bit rate obtaining for the respective logic channel": Petitioner argued this phrase from claims 11 and 12 should be construed as interchangeable with "minimum bit rate criteria." Petitioner contended that the terms were used synonymously during prosecution and that a POSITA would find no appreciable difference between them in the context of the ’487 patent.

5. Arguments Regarding Discretionary Denial

• Arguments Against §325(d) Denial: Petitioner argued that discretionary denial under §325(d) would be inappropriate because the examiner never considered the core prior art and arguments presented in the petition. Specifically, the R2-010182 reference was never cited or discussed during prosecution, and the TS23.107 reference, while mentioned in the specification, was not on an IDS and there is no evidence the examiner ever substantively considered its detailed QoS teachings.
• Arguments Against Denial Based on Other Proceedings: Petitioner argued that its petition should be instituted despite other third-party challenges to the same patent. The reasons asserted were that Microsoft's petition was filed before any patent owner response in the other cases, it presented distinct arguments and art combinations (specifically including TS23.107), and Microsoft faced a potential one-year statutory time bar under §315, making this its only opportunity to challenge the patent via inter partes review (IPR).

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 11-13 of Patent 7,167,487 as unpatentable.