Microsoft Corp v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2020-00023
• Patent #: 6,467,088
• Filed: October 11, 2019
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-4, 6-14, and 16-21

2. Patent Overview

• Title: Reconfiguration Manager for Controlling Upgrades of Electronic Devices
• Brief Description: The ’088 patent discloses a system for managing software or hardware component upgrades on an electronic device. The system determines whether to approve an upgrade by comparing the requested component and other existing components against stored lists of "known acceptable configurations" and "known unacceptable configurations."

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-14, and 16-21 are obvious over Apfel in view of Lillich and Todd.

• Prior Art Relied Upon: Apfel (Patent 5,974,454), Lillich (Patent 5,613,101), and Todd (Patent 5,867,714).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that independent claims 1, 11, and 21 are rendered obvious by the combination. Apfel was asserted to teach a base system for requesting and providing software updates over a network, including sending configuration information from a client computer to a server. However, Petitioner argued Apfel only implicitly suggested checking configurations. Lillich was cited to explicitly teach comparing a proposed configuration against a list of known acceptable configurations (e.g., compatibility ranges) to verify compatibility. Todd was cited to explicitly teach comparing a proposed configuration against a list of known unacceptable configurations (e.g., a database of known conflicts) to avoid system faults. The combination of these references allegedly taught all limitations of the independent claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve the network-based update system of Apfel. Incorporating Lillich’s teaching of verifying compatibility and Todd’s teaching of identifying known conflicts would have been a commonsense, complementary approach to make Apfel’s update process more robust and reliable, ensuring that an update does not render the system inoperative.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the teachings, as it involved applying known techniques for ensuring system stability (compatibility and conflict checking) to a known update process.

Ground 2: Claims 9 and 19 are obvious over Apfel in view of Lillich, Todd, and Pedrizetti.

• Prior Art Relied Upon: Apfel (Patent 5,974,454), Lillich (Patent 5,613,101), Todd (Patent 5,867,714), and Pedrizetti (Patent 6,151,708).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically addressed dependent claims 9 and 19, which require a reconfiguration request for an upgrade of "at least one of a software component and a hardware component." While the base combination of Apfel, Lillich, and Todd taught the core comparison method, Pedrizetti was added to explicitly teach a system for updating both software and/or hardware modules over a network. Pedrizetti disclosed treating hardware and software updates distinctly but within the same update framework.
  • Motivation to Combine: A POSITA, seeking to improve the update system of Apfel/Lillich/Todd, would look to Pedrizetti for its teachings on efficiently managing both hardware and software updates. It would have been obvious to extend the configuration-checking system to include hardware components, as software updates often have hardware dependencies.
  • Expectation of Success: Integrating Pedrizetti's teachings would have been a predictable extension of the combined system's functionality, as it applied the same update-and-check logic to a different but related type of component (hardware).

• Additional Grounds: Petitioner asserted alternative grounds (Grounds 3 and 4) in the event the Board adopted a broader, disjunctive claim construction. Ground 3 argued claims 1-3, 9-13, and 19-21 are obvious over Apfel in view of Lillich (addressing only acceptable configurations). Ground 4 argued claims 1, 3, 4, 6-11, 13, 14, and 16-21 are obvious over Apfel in view of Todd (addressing only unacceptable configurations).

4. Key Claim Construction Positions

• “at least one of [a list of known acceptable configurations]... and a list of known unacceptable configurations”: This phrase, central to all independent claims, was a key point of contention. Petitioner argued for a conjunctive reading, meaning the plain language requires comparing the proposed update against both a list of acceptable configurations and a list of unacceptable configurations. This interpretation formed the basis for its primary grounds of unpatentability. Petitioner provided alternative grounds in case the Board interpreted the phrase disjunctively (i.e., requiring a comparison to one list or the other, but not necessarily both).
• “list”: Petitioner proposed this term encompasses "any stored representation of information indicative of component compatibility," consistent with the patent’s specification and a construction adopted by the Board in a prior IPR on the same patent.
• “known”: Petitioner adopted the Patent Owner’s prior implied construction that "known" means "previously determined."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and §325(d) would be inappropriate despite a previous IPR petition filed by Apple Inc. against the same patent (IPR2019-00056), which was denied institution.
• Timing: Petitioner asserted it was not served with the infringement complaint until after the denial decision in the Apple IPR, meaning it was not involved in, and could not join, the prior proceeding. Petitioner argued that the serial nature of the litigation was a tactical choice by the Patent Owner.
• Substantive Differences: Petitioner contended that its petition relied on "entirely different art" and "substantively different" arguments from those in the Apple IPR. It argued the new prior art combinations (Apfel/Lillich/Todd) directly address the deficiencies the Board identified in the Apple petition, specifically by explicitly teaching the comparison to lists of both "known acceptable" and "known unacceptable" configurations.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-14, and 16-21 of the ’088 patent as unpatentable under 35 U.S.C. §103.