PTAB

IPR2019-01026

Microsoft Corp v. Uniloc 2017 LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: COMMUNICATION SYSTEM
  • Brief Description: The ’049 patent describes a wireless communication system, such as Bluetooth, where a primary station adds an "additional data field" to a standard broadcast message (an inquiry packet) to "piggy-back" a poll for information from a specific secondary station.

3. Grounds for Unpatentability

Ground 1: Obviousness over Larsson, Bluetooth Specification, and RFC826 - Claims 11 and 12 are obvious over Larsson in view of the Bluetooth Specification and RFC826.

  • Prior Art Relied Upon: Larsson (Patent 6,704,293), Bluetooth Specification (Specification of the Bluetooth System, v1.0B, Dec. 1, 1999), and RFC826 (An Ethernet Address Resolution Protocol, Nov. 1982).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged claims. Larsson disclosed the core concept of "piggybacking" a broadcast message, such as an Address Resolution Protocol (ARP) message, onto a "request for route" message (the claimed "inquiry message") in a wireless ad-hoc network like Bluetooth. This piggybacked data is used to poll a destination node. The Bluetooth Specification, the governing standard for the technology Larsson explicitly uses, provided the known structure of Bluetooth packets, including the "plurality of predetermined data fields" arranged according to a protocol. RFC826, the well-known standard for ARP, provided the specific format for the piggybacked ARP message, which constitutes the "additional data field for polling" a secondary station. The secondary station in Larsson determined it was polled by examining the piggybacked data and responded accordingly. For claim 12, Petitioner contended it was obvious that not all inquiry messages would contain piggybacked data, as Larsson taught using indicators to signal the presence of such data, which would be superfluous if all messages contained it.
    • Motivation to Combine: Petitioner asserted a POSITA would combine these references for clear and predictable reasons. Larsson expressly stated its invention was for use in Bluetooth networks, directly motivating a POSITA to consult the official Bluetooth Specification for implementation details like packet structure. Similarly, because Larsson's method involved piggybacking ARP messages, a POSITA would have naturally turned to RFC826, the universally recognized standard for ARP, to ensure the messages were formatted correctly for proper functionality.
    • Expectation of Success: A POSITA would have had a high expectation of success. The combination involved implementing Larsson’s method within the exact network technology (Bluetooth) it was designed for, using the standard protocol (Bluetooth Specification) and the standard message format (RFC826) it explicitly called for. This would predictably result in a functioning system.

Ground 2: Obviousness over 802.11 - Claims 11 and 12 are obvious over the IEEE 802.11 Standard.

  • Prior Art Relied Upon: 802.11 (ANSI/IEEE Std 802.11, 1999 Edition).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the 802.11 standard, on its own, rendered the claims obvious. The standard described an "active scanning" process where a station broadcasts "Probe Request" frames (the claimed "inquiry messages") to discover other stations. These frames have a predetermined format according to the 802.11 protocol. The 802.11 standard specified two types of probe requests. A general broadcast request sought responses from any station. However, to poll a specific secondary station, the standard taught adding an "additional data field"—the Service Set Identifier (SSID) of the targeted station—to the probe request. A receiving station would determine it had been polled by checking if the SSID in the request matched its own and would then respond with its capability information. This process directly mapped to the limitations of claim 11. The existence of both general broadcast probe requests (without a specific SSID) and targeted probe requests (with an SSID) inherently taught the limitation of claim 12, as "not all inquiry messages have an additional data field for polling."

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial despite a pending third-party IPR (IPR2019-00251) and a district court ruling that found the ’049 patent invalid under 35 U.S.C. §101.
  • Distinct Arguments: Petitioner asserted its challenge was not redundant to the other IPR because it relied on different prior art (802.11 and RFC826) and presented Larsson in a different light by focusing on its disclosure of piggybacked ARP messages.
  • Patent Owner Conduct: Petitioner noted that the Patent Owner's strategy of filing infringement suits against numerous defendants in a staggered manner necessitated responsive, and consequently staggered, IPR filings.
  • Risk of Revived Claims: Because the Patent Owner was appealing the district court's §101 invalidity ruling, Petitioner faced a risk that the claims could be revived by the Federal Circuit. This potential revival, coupled with a looming one-year statutory time bar for filing an IPR, made institution necessary to resolve the unpatentability grounds presented.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 11 and 12 of the ’049 patent as unpatentable under 35 U.S.C. §103.