PTAB

IPR2019-01516

Microsoft Corp v. Mimzi LLC

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1. Case Identification

2. Patent Overview

  • Title: Phone Assisted ‘Photographic Memory’
  • Brief Description: The ’981 patent discloses a system and method where a mobile device user submits a spoken request, which is converted to a transcript. The system searches a social network database using the transcript and associated metadata, such as the user’s location, to retrieve information records, which are then ranked and presented to the user.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 10 are obvious over Wu and Evermann.

  • Prior Art Relied Upon: Wu (Patent 7,895,177) and Evermann (Application # 2008/0153465).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wu discloses a system for presenting social-network-provided information to a mobile user from a database of user-submitted reviews. The system in Wu searches this database using a user's text request and location information to find and present ranked results. Petitioner contended that Evermann remedies Wu's lack of voice input by teaching a voice-mediated search application for mobile devices. Evermann explicitly teaches receiving a "spoken request" and collecting associated metadata, including the user's geographical location, for use in a search. The combination of Wu's social search backend with Evermann's voice-enabled frontend was alleged to teach all limitations of independent claims 1 and 10.
    • Motivation to Combine: A POSITA would combine Wu with Evermann to improve the user experience on mobile devices. Evermann expressly states that using small keypads for text entry is "cumbersome," providing a clear reason to replace the text-based input of Wu's system with Evermann's more convenient voice-based method.
    • Expectation of Success: Petitioner asserted that because commercial speech recognition technology was widely available at the time of the invention, a POSITA would have had a high expectation of successfully integrating Evermann’s voice functionality into Wu’s system.

Ground 2: Claims 1, 4-16, and 18-19 are obvious over Wu, Evermann, Davis, and Burke.

  • Prior Art Relied Upon: Wu (Patent 7,895,177), Evermann (’465 application), Davis (Building Research Tools with Google for Dummies (2005)), and Burke (Application # 2008/0065617).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 1 by adding Davis and Burke to address a potentially narrow interpretation of "transcript" as a structured, persistently stored document. Petitioner argued that Davis teaches encapsulating search queries within structured XML documents for transmission via standard web protocols like SOAP. Burke, in turn, discloses persistently storing search queries in a server-side "query log" to be searched later, improving efficiency by avoiding redundant searches. The combination allegedly teaches generating a transcript of the spoken request as a structured XML document (per Davis) and storing it in a persistent, searchable log (per Burke). Additionally, Davis was cited for teaching ranking search results based on physical distance and displaying results on a spatial map, addressing limitations in several dependent claims.
    • Motivation to Combine: A POSITA would combine Davis with the Wu/Evermann system to leverage the known benefits of XML, such as improved data structure, interoperability, and flexibility for handling complex queries containing both text and metadata. A POSITA would then add Burke’s query log functionality to achieve performance benefits by caching and reusing search results for frequently repeated queries.

Ground 3: Claims 1-19 are obvious over Wu, Evermann, Davis, Burke, and Buyukkokten.

  • Prior Art Relied Upon: Wu (Patent 7,895,177), Evermann (’465 application), Davis (Building Research Tools with Google for Dummies (2005)), Burke (’617 application), and Buyukkokten (Application # 2005/0159998).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 2 by adding Buyukkokten to address a narrow interpretation of "social network ranking factor" that requires ranking based on attributes of the information's author. Petitioner contended that Buyukkokten discloses a method for users to rate members of their social network on attributes such as "trustworthiness" (credibility) and how "trendy or popular" they are. These ratings could then be used to weight interactions within the social network. Petitioner argued that applying Buyukkokten's author-attribute ratings as a ranking factor for the social network reviews in Wu would render obvious the limitations in independent and dependent claims that require ranking based on social network credibility or popularity.
    • Motivation to Combine: Wu itself suggests that users seek opinions from trusted friends within their social network. A POSITA would have been motivated to incorporate Buyukkokten’s system to quantify these attributes of trust and popularity for review authors. This would improve the ranking relevance in Wu's system by prioritizing reviews from more credible or popular members of the user's social network, directly aligning with the user's presumed preference.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d) and §314(a), asserting that the petition presented new prior art and arguments not previously considered during prosecution. Petitioner also contended that while this was the third IPR filed against the ’981 patent, it was a direct result of the Patent Owner’s litigation campaign against the present Petitioners, which was initiated months after suits against the petitioners in the prior IPRs. The petition asserted that it used a different primary reference (Wu) than the other IPRs and was filed before any patent owner preliminary response in those proceedings.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’981 patent as unpatentable.