PTAB

IPR2019-01188

Microsoft Corp v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Data Delivery Through Portable Devices
  • Brief Description: The ’891 patent describes a method for broadcasting data in wireless networks, such as Bluetooth. The core concept involves adding an "additional data field" to existing inquiry messages, a technique the patent refers to as "piggy-backing," to transmit broadcast data to other portable devices.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 8, and 14-16 are obvious over Larsson in view of the Bluetooth Specification.

  • Prior Art Relied Upon: Larsson (Patent 6,704,293) and the Bluetooth Specification (v1.0B, Dec. 1, 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Larsson taught the core invention by disclosing a "piggyback" technique for adding broadcast messages (e.g., Address Resolution Protocol messages) to "request for route" (RfR) messages within a Bluetooth ad-hoc network. Petitioner asserted that Larsson’s RfR messages correspond to the claimed "inquiry messages," and its act of piggybacking broadcast messages corresponds to the claimed step of adding an "additional data field carrying broadcast message data." The Bluetooth Specification was cited as providing the well-known underlying protocol details, such as packet structure with "predetermined data fields," that a Person of Ordinary Skill in the Art (POSITA) would have used to implement Larsson's system. For dependent claims, Petitioner argued Larsson taught adding the data at the end of a message (claim 15) and using a "piggyback indicator" or "length indicator" to denote its presence (claim 16).
    • Motivation to Combine: A POSITA would combine these references because Larsson expressly states its invention is designed for use in a "Bluetooth scatternet" and explicitly cites the Bluetooth specification. To implement Larsson's method, a POSITA would have naturally consulted the official Bluetooth Specification to supply standard implementation details (e.g., packet formats, address structures) that were not fully described in Larsson itself.
    • Expectation of Success: The combination would predictably have resulted in a system compliant with the Bluetooth protocol, fully capable of communicating and performing the route discovery functions as intended by Larsson.

Ground 2: Claims 1-3, 8, and 14-16 are obvious over 802.11.

  • Prior Art Relied Upon: The 802.11 Standard (ANSI/IEEE Std 802.11, 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that the 802.11 standard's "active scanning" process for network discovery meets all limitations of the challenged claims. In this process, a station (a "portable communications device") broadcasts "Probe Request" frames, which function as the claimed "inquiry messages." To create a "targeted" probe request for a specific network, the 802.11 standard teaches adding an additional data field—the Service Set Identifier (SSID) of the target network—to the standard probe request frame. Other suitably configured devices receive this broadcast message and "read the broadcast data from said additional data field" by checking the SSID to determine if they should respond. For dependent claims, Petitioner argued the 802.11 frame format inherently adds this data field at the end of the message body (claim 15) and uses a "Length" field to indicate the presence or absence of the SSID data (claim 16).
    • Motivation to Combine (for §103 grounds): This is a single-reference obviousness ground. A POSITA implementing the 802.11 standard would have been motivated to use the standard's own disclosed mechanism for targeted probe requests, which involves adding an SSID to a standard broadcast probe request, to achieve the predictable result of polling a specific network or device.
    • Expectation of Success: A POSITA would have had a high expectation of success, as this functionality is a prescribed part of the 802.11 standard for establishing network communications.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) or §325(d) based on a co-pending third-party IPR against the same patent. Petitioner asserted its petition was not redundant because it challenges additional claims not present in the other IPR, relies on different primary prior art references, and was filed well before any patent owner response in the other proceeding. Petitioner also argued that the Patent Owner’s litigation strategy of suing numerous defendants in a staggered fashion necessitates such serial IPR filings.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 8, and 14-16 as unpatentable.