Microsoft Corp v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-01251
• Patent #: 8,613,110
• Filed: June 25, 2019
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Uniloc USA Inc.
• Challenged Claims: 1, 2, and 6

2. Patent Overview

• Title: Software Piracy Prevention Through Remote Enforcement of an Activation Threshold
• Brief Description: The ’110 patent relates to a method for preventing software piracy by requiring a user to obtain a unique activation code from a remote service system. The system tracks the number of activation attempts associated with a unique software identification code and prohibits further activations after a predetermined threshold is met.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Schoch in view of Wyman.

• Prior Art Relied Upon: Schoch (Patent 6,460,140) and Wyman (Patent 5,260,999).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schoch taught an online software activation system using a unique "validation number" to combat piracy but was vague on the specific mechanism for limiting activations. Wyman taught a "consumptive" license management system that tracks and decrements available "license units" upon each use request, prohibiting further use once the units are exhausted. The combination allegedly met the limitations of claim 1 by using Schoch's validation number as the unique ID and applying Wyman's consumptive license model to update a count of activation attempts upon receipt of a request. The combined system would transmit an activation code when the count is below a threshold and effectively blacklist the ID by refusing to issue more codes once the threshold is met.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Wyman's well-known license tracking and enforcement methods with Schoch's activation system to implement the activation limits that Schoch explicitly contemplated but did not detail. Applying Wyman's specific usage-counting mechanism to Schoch's system was presented as a straightforward solution to a known problem.
  • Expectation of Success: The combination involved applying a known technique (Wyman's usage counting) to a known system ready for improvement (Schoch), which would have yielded predictable results in managing software activations.

Ground 2: Claim 6 is obvious over Schoch in view of Wyman and Carter.

• Prior Art Relied Upon: Schoch (’140 patent), Wyman (’999 patent), and Carter (Patent 6,219,652).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Schoch-Wyman combination to address the additional limitation of dependent claim 6, which requires "transmitting a notification... to a registered user" when the activation limit is reached. Petitioner asserted that Carter taught a system for authenticating software licenses that could notify a registered user (e.g., by email) if an invalid service request was made using their software's unique serial number.
  • Motivation to Combine: A POSITA would be motivated to add Carter's notification functionality to the Schoch-Wyman system. When the base system detected that activation attempts exceeded the predetermined limit (an invalid request), adding Carter's teaching would provide the clear benefit of alerting the registered user to potential key compromise or simply informing them that their license was exhausted. This would be a predictable and valuable improvement for security and user experience.

Ground 3: Claims 1 and 2 are obvious over Schoch in view of Wyman and Massarani.

• Prior Art Relied Upon: Schoch (’140 patent), Wyman (’999 patent), and Massarani (Patent 6,336,117).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Massarani to the base combination to provide an alternative or strengthening argument for the "blacklisting" limitations, particularly claim 2's requirement to "determin[e]... whether the unique identification code is blacklisted before updating the number of activation attempts." Massarani taught using a pre-compiled, server-side blacklist to efficiently block access to content (e.g., in a search engine) by first checking the list before performing further processing.
  • Motivation to Combine: A POSITA would incorporate Massarani's efficient server-side blacklist into the Schoch-Wyman system to improve performance. This would allow the remote server to first check a simple list of exhausted validation numbers before performing the more computationally intensive task of retrieving and updating the activation count for a given ID. This directly addresses claim 2 and provides a clear efficiency benefit that would have been obvious to implement.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 1, 2, and 6 based on combinations including Clark (Patent 6,343,280), which taught password-based encryption of a license identifier, as well as various four- and five-way combinations of Schoch, Wyman, Massarani, Carter, and Clark.

4. Key Claim Construction Positions

• Petitioner addressed the claim term "attempt," which was central to its obviousness arguments. It adopted the Board's construction from a prior inter partes review (IPR) involving a related patent, arguing the term's plain meaning includes "all attempts regardless of whether an attempt is successful or unsuccessful." This construction was asserted to be critical, as the proposed prior art combination (specifically Wyman) teaches counting activation requests upon receipt, before the ultimate success or failure of the activation is determined.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be inappropriate. The core reason provided was that the prior art references and combinations asserted in this petition—including Wyman, Carter, Massarani, and Clark—were not raised or considered in a prior IPR (IPR2017-00301) on a related patent. Therefore, Petitioner contended that the Board had not previously evaluated the merits of these specific invalidity challenges.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, and 6 of Patent 8,613,110 as unpatentable.