Microsoft Corp 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 discloses algorithms for selecting transport format combinations (TFCs) in a Universal Mobile Telecommunications Systems (UMTS) network. The technology involves mapping data from logical channels to transport channels, where the TFC selection algorithm uses a "minimum bit rate criteria" to guarantee a certain Quality of Service (QoS) for each logical channel.

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 for TS25.321), 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 taught every element of the challenged claims. TS25.321 described the base network architecture, including the Medium Access Control (MAC) layer, logical/transport channels, and a TFC selection algorithm based on channel priorities. TS25.302 complemented this by defining physical layer attributes like transport formats and valid TFC sets. While this combination disclosed most claim elements, the purported novelty of the ’487 patent—using a "minimum bit rate criteria"—was explicitly taught by the remaining references. TS23.107 established the overall QoS framework for UMTS, introducing the concept of a "Guaranteed bitrate" to determine "minimum resource requirement." Crucially, R2-010182, a change request for TS25.321, expressly proposed modifying the TFC selection algorithm to incorporate a "Minimum Guaranteed bit rate (MinGBr)" parameter for each logical channel to improve QoS. This directly corresponded to the "minimum bit rate criteria" limitation.
  • Motivation to Combine: A POSITA designing a UMTS network would be highly motivated to combine these references. TS25.321, TS25.302, and TS23.107 are complementary, foundational 3GPP standards that describe different but interconnected layers and functions of the same system. R2-010182 provided an explicit motivation, as it was a proposed enhancement to the very TFC selection algorithm in TS25.321, designed to incorporate the QoS principles from TS23.107 to improve network performance.
  • Expectation of Success: A POSITA would have had a high expectation of success. The references were all part of the same interoperable 3GPP standards framework. R2-010182 provided specific, express teachings, including example pseudo-code, on how to modify the TS25.321 algorithm to incorporate the minimum guaranteed bit rate, removing any significant obstacles to implementation.

Ground 2: Obviousness over Peisa and a 3GPP QoS 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 asserted that Peisa, which was undisputed during prosecution as teaching most claim elements, disclosed a TFC selection algorithm for a UMTS network. Peisa’s algorithm used a "Guaranteed Rate for each logical channel" as a key parameter in its scoring process to select a TFC that meets QoS constraints. This "Guaranteed Rate" directly maps to the claimed "minimum bit rate criteria." To the extent Peisa did not explicitly define this rate as a minimum bit rate, TS23.107 supplied this teaching. TS23.107, the foundational QoS standard for UMTS, explicitly taught that a "guaranteed bit rate" is used to determine the "minimum resource requirement" for different service classes (e.g., conversational, streaming).
  • Motivation to Combine: A POSITA implementing the TFC selection algorithm in Peisa, which explicitly references the UMTS network being standardized by 3GPP, would have been motivated to consult the official 3GPP QoS standard (TS23.107) for guidance. Since Peisa’s algorithm relied on a "Guaranteed Rate" parameter without providing specific examples, the POSITA would naturally look to TS23.107 to understand its implementation and obtain suitable values, which TS23.107 provided in detail.
  • Expectation of Success: The expectation of success was high. The combination merely involved using a value defined in a well-known industry standard (TS23.107) to implement a parameter ("Guaranteed Rate") in a disclosed algorithm (Peisa) operating within the same standardized system (UMTS). No modification to Peisa's algorithm was required.

4. Key Claim Construction Positions

• Petitioner argued for specific constructions of the key phrases that were added during prosecution to overcome prior art.
• "a minimum bit rate criteria applicable to the respective logic channel" (claim 13) and "a minimum bit rate obtaining for the respective logic channel" (claims 11-12): Petitioner argued both phrases should be construed to mean "a criterion that attempts to guarantee a minimum bit rate specified for the respective logic channel." Petitioner contended that the use of the plural "criteria" was a grammatical error, as the specification only ever discussed a single criterion related to minimum bit rate. Further, Petitioner argued that the Patent Owner treated the terms "criteria" and "obtaining" as interchangeable during prosecution, supporting a single, unified construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the core prior art and arguments were not previously considered by the USPTO.
• Specifically, the R2-010182 reference, which provided an explicit teaching of the allegedly novel feature, was never cited or considered during prosecution.
• While the TS23.107 reference was mentioned in the ’487 patent’s specification, it was never submitted on an IDS or substantively considered by the examiner, who therefore lacked the benefit of its detailed teachings on using guaranteed bitrates as minimum resource requirements.
• Petitioner also argued that its petition was not redundant to other third-party petitions challenging the same patent because it presented new obviousness combinations including TS23.107, which the other petitions lacked.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 11-13 of the ’487 patent as unpatentable.