Microsoft Corp v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-01471
• Patent #: 6,836,654
• Filed: August 9, 2019
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 10-20

2. Patent Overview

• Title: Anti-Theft Protection for a Radiotelephony Device
• Brief Description: The ’654 patent discloses a method for protecting a mobile radiotelephony device against theft by linking it to a specific user identification module (e.g., a SIM card). The method involves preventing the device's normal operation if it detects a predefined period of inactivity, requiring a "deblocking code" to resume functionality.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nokia Manual and Barvesten - Claims 10-20 are obvious over the Nokia Manual in view of Barvesten.

• Prior Art Relied Upon: Nokia 9000i Owner’s Manual (“Nokia Manual”) and Barvesten (Patent 5,940,773).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Nokia Manual, for the Nokia 9000i Communicator, taught all key limitations of independent claim 10. Specifically, it disclosed a "SIM change security" feature that verified if the SIM card was linked to the device and an "Autolock" feature that locked the device after a user-defined period of inactivity. Petitioner contended that Barvesten cured any alleged deficiency in the Nokia Manual's teaching of "linking" a user identification module to the device. Barvesten explicitly taught storing a user identification code (IMSI) from a SIM card in the device's memory and comparing the stored code with that of any inserted SIM card to verify it is an authorized module. This combination, Petitioner asserted, rendered the method of claim 10 obvious. Dependent claims were allegedly met by additional teachings, such as entering a lock code to deblock the device (claim 11) and storing a PIN on the device (claim 15).
  • Motivation to Combine: A POSITA would combine the references to improve the overall security of a mobile device. Both references were directed at mobile device security. A POSITA would have been motivated to integrate Barvesten’s robust method for linking a SIM card to a device with the Nokia Manual’s user-friendly inactivity lock feature to create a more secure product.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the teachings involved integrating known software features (inactivity timers, code comparison) with standard hardware components (SIM cards, device memory) common in mobile phones at the time.

Ground 2: Obviousness over Barvesten and Schultz - Claims 10-20 are obvious over Barvesten in view of Schultz.

• Prior Art Relied Upon: Barvesten (Patent 5,940,773) and Schultz (a 1996 Motorola technical paper titled “Communication Device Inactivity Password Lock”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barvesten taught the core concept of linking a mobile device to a user identification module (a SIM card) by storing the module's IMSI code on the device for verification upon activation. Petitioner asserted that Schultz explicitly taught the missing element: an improvement to existing password lock features where a device becomes locked after a "preprogrammed period of time" of inactivity, similar to computer screen-locking programs. The combination of Barvesten's device-to-SIM linking mechanism with Schultz's inactivity-based locking feature allegedly rendered claim 10 obvious.
  • Motivation to Combine: A POSITA would combine the references to address different security vulnerabilities. Barvesten protected against unauthorized SIM card use, while Schultz protected against an authorized user leaving an unlocked device unattended. Adding Schultz's inactivity lock to Barvesten's system was a logical step to create a more comprehensive security solution, a goal shared by both references. Schultz's teachings also provided efficiency benefits, such as saving battery power by placing the screen and other components in a "sleep" mode.
  • Expectation of Success: The combination was argued to be straightforward and predictable. Integrating a software-based inactivity timer as taught by Schultz into the security framework of a device like that described in Barvesten would have required only ordinary skill.

4. Key Claim Construction Positions

• deblocking code / debugging code: Petitioner contended that these two terms, used in different claims, should be construed as interchangeable. The prosecution history allegedly showed that "deblocking code" was used to amend claims that originally recited "debugging code." Petitioner argued the terms should be interpreted to mean a string of characters, such as a PIN code, that can be entered to return the device to normal operation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the core prior art references (Nokia Manual, Barvesten, and Schultz) were not substantively considered by the Examiner during the original prosecution. Although Barvesten and Schultz were listed on an IDS, Petitioner asserted there was no evidence the Examiner reviewed their specific teachings, which are central to the invalidity grounds.
• Petitioner also argued that its petition should be considered despite other third-party petitions challenging the same patent (filed by Samsung). Petitioner stated that it developed its grounds independently, filed promptly after being sued, and presented different prior art combinations and arguments than those in the Samsung petitions.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 10-20 of the ’654 patent as unpatentable.