PTAB

IPR2019-01470

Microsoft Corp v. Uniloc 2017 LLC

Key Events

Petition

petition Intelligence

Title: Anti-Theft Protection for a Radiotelephony Device
Brief Description: The ’654 patent describes an anti-theft system for a mobile radiotelephony device that is linked to a specific user identification module (e.g., a SIM card). The system prevents normal operation of the device after a predefined period of inactivity, which can only be resumed by supplying a specific deblocking code.

Prior Art Relied Upon: Nokia 9000i Communicator Owner's Manual ("Nokia Manual") and Barvesten (Patent 5,940,773).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued the Nokia Manual discloses the core functionality of claim 1. Its "Autolock" feature blocks device operation (the "blocking means") after a user-defined period of inactivity (the "timing means") and requires a lock code to resume normal operation (the "deblocking means"). To meet the "linked user identification module" limitation, Petitioner cited Barvesten, which teaches storing an identifier (IMSI code) from a SIM card in the phone's memory and comparing the stored code with that of any inserted SIM card to verify authorization.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings because both references were aimed at improving mobile phone security. A POSITA would enhance the security of the Nokia device by incorporating Barvesten’s more robust method for linking a specific SIM card to the device, creating a commercially desirable, layered security solution.
- Expectation of Success: The integration of these known and complementary security technologies would have been straightforward with predictable results.

Prior Art Relied Upon: Nokia Manual, Barvesten (Patent 5,940,773), and Martino (Patent 5,987,103).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon Ground 1 to address the "connecting means" and "connection means" limitations of dependent claims 5 and 6. Petitioner contended that if these terms required an explicit data bus structure, Martino supplied this teaching. Martino discloses a telephone device that uses a conventional data bus to interconnect a microprocessor, memory, and a card reader, which corresponds to the structure implied by the ’654 patent.
- Motivation to Combine: A POSITA implementing the security features of the Nokia Manual and Barvesten would have found it obvious to use a standard data bus, as taught by Martino, to connect the necessary components. This represented a practical, efficient, and conventional design choice for mobile devices at the time.
- Expectation of Success: Using a standard data bus to connect components like a microprocessor and card reader was a routine design task with a high expectation of success.

Prior Art Relied Upon: Barvesten (Patent 5,940,773) and Schultz ("Communication Device Inactivity Password Lock," Nov. 1996).
Core Argument for this Ground:
- Prior Art Mapping: This ground presented an alternative combination for the independent claims. Petitioner argued Barvesten provided the foundational device with SIM-linking security. Schultz was added to teach the inactivity-based locking feature. Schultz explicitly discloses a security feature where a communication device enters a "locked" mode after a preprogrammed period of inactivity, which is reset by any "physical input" from the user.
- Motivation to Combine: A POSITA would combine these references to add another layer of security to the Barvesten device. Adding Schultz's inactivity lock would protect the device if it were stolen while already unlocked. This combination also offered improved power efficiency, as components could enter a "sleep" state during inactivity.
- Expectation of Success: The combination was presented as a straightforward integration of two complementary security concepts for mobile devices.
Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 5 and 6 based on the combination of Barvesten, Schultz, and Martino, mirroring the logic of Ground 2.

Petitioner argued that claims 1-9 likely recite means-plus-function limitations under 35 U.S.C. §112(6) and proposed constructions based on the specification. Key proposed constructions included:
- "blocking means" (claim 1): Construed as the corresponding structure for preventing normal operation after inactivity, such as a microprocessor configured with software to implement a lock state.
- "timing means" (claim 1): Construed as the structure for activating the block after a defined inactive period, such as a timer function executed by the microprocessor.
- "deblocking means" (claim 1): Construed as the structure for permitting normal operation upon supply of a valid code, such as software for receiving and verifying a user-entered PIN or lock code.

Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the primary prior art references relied upon (Nokia Manual, Barvesten, and Schultz) were not substantively considered by the examiner during prosecution, even though some were listed on an Information Disclosure Statement (IDS).
Petitioner further argued that the petition should be instituted despite other third-party IPRs filed against the same patent (by Samsung). It contended that its petition was not redundant because it presented different prior art combinations and arguments and was filed promptly after Microsoft was sued by the Patent Owner, reflecting a distinct controversy.

Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of Patent 6,836,654 as unpatentable.