Salesforcecom Inc v. WSOU Investments LLC

1. Case Identification

• Case #: IPR2022-00154
• Patent #: 8,369,827
• Filed: November 8, 2021
• Petitioner(s): Salesforce.com, Inc.
• Patent Owner(s): WSOU Investments, LLC d/b/a Brazos Licensing and Development
• Challenged Claims: 1-8, 14-21

2. Patent Overview

• Title: Method of Determining a Unique Subscriber from an Arbitrary Set of Subscriber Attributes
• Brief Description: The ’827 patent discloses a method performed by a Subscriber Profile Repository (SPR) for managing telecommunications subscriber data. The method uses a set of subscription identifiers to search for and determine a unique subscriber record from a database, including functionality for using a local cache to improve search efficiency.

3. Grounds for Unpatentability

Ground 1: Obviousness over Feyerabend and 3GPP - Claims 1-4, 6, 8, 14-17, 19, and 21

• Prior Art Relied Upon: Feyerabend (Patent 7,123,626) and 3GPP TS 29.212 version 8.3.0 (“3GPP”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the 3GPP standard, which the ’827 patent acknowledges as a foundational framework, explicitly discloses the claimed Subscriber Profile Repository (SPR). Feyerabend taught the remaining functional components of claim 1, including a method for determining a unique subscriber record from a set of subscription identifiers. Specifically, Feyerabend described using a subscriber's IP address (a subscription identifier) to look up and assemble a unique subscriber identity (e.g., an IMSI), thereby matching various identifiers to a single, unique record. For dependent claims, Feyerabend taught using a local buffer (a "subscriber record cache") to store subscriber information, querying this buffer first, and if no match is found, querying a main database ("address conversion node"), which meets the limitations of claims 2-4. Feyerabend also disclosed returning a "negative acknowledgement" (an error message) when an identity is not found, satisfying claim 6.
  • Motivation to Combine: A POSITA would combine Feyerabend's specific subscriber identification methods with the standardized 3GPP framework to improve efficiency and leverage existing IP-based infrastructure. Since both references operate in the same field of IP networking in mobile communications and aim to solve similar data management problems, the combination would have been a natural and predictable solution.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Feyerabend described a system (subscriber profile database and look-up modules) that is functionally analogous to the SPR in 3GPP, making the integration of Feyerabend’s search techniques into the 3GPP framework straightforward.

Ground 2: Obviousness over Feyerabend, 3GPP, and Zhang - Claims 2-5 and 15-18

• Prior Art Relied Upon: Feyerabend (Patent 7,123,626), 3GPP TS 29.212 (v8.3.0), and Zhang (Patent 6,810,259).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground augmented the Feyerabend/3GPP combination with Zhang’s teachings on managing distributed databases with local caches. Petitioner asserted that Zhang provided a more detailed disclosure of using local cache databases to quickly obtain subscriber information and a central database for all other information, reinforcing the caching limitations in claims 2-4 and 15-18. Specifically, Zhang taught searching a local cache first and, if a profile is not found, retrieving it from a central database. Zhang further taught clearing the local cache when a change to the subscriber record database occurs (e.g., a node is withdrawn), which directly maps to the limitation of claim 5.
  • Motivation to Combine: A POSITA would combine Zhang’s robust caching techniques with the Feyerabend/3GPP system to further decrease data delivery time. Zhang’s detailed description of a local caching system would be seen as an advantageous implementation for the buffer described in Feyerabend, making the system faster and more responsive.
  • Expectation of Success: The combination was asserted to be predictable because all three references relate to managing subscriber information in mobile networks using distributed databases and caching. Integrating Zhang's established caching methods into the Feyerabend/3GPP framework would have been a well-understood design choice.

Ground 3: Obviousness over Feyerabend, 3GPP, and Bland - Claims 7 and 20

• Prior Art Relied Upon: Feyerabend (Patent 7,123,626), 3GPP TS 29.212 (v8.3.0), and Bland (Application # 2011/0125807).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Bland to the core Feyerabend/3GPP combination to teach the specific error-handling scenario of claims 7 and 20. While Feyerabend taught sending an error message when no subscriber record is found, Bland taught handling errors that arise when multiple subscribers are identified (i.e., a shared IMSI). Bland disclosed that when a provisioning client determines an IMSI is shared, the request should be rejected, which a POSITA would understand as a form of error handling that could include returning an error message.
  • Motivation to Combine: A POSITA would modify the error response mechanism of Feyerabend with the multiple-record error handling taught by Bland to make the system more robust and capable of handling common, predictable error scenarios in subscriber databases. Recognizing and flagging multiple matches is a necessary function for a reliable database search protocol.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as both Feyerabend and Bland described similar error response mechanisms for different but related data management problems. Modifying Feyerabend’s system to include Bland’s error scenario would be a trivial implementation and a mere design choice.

4. Key Claim Construction Positions

• Petitioner argued that the term “Subscriber Profile Repository SPR” should be construed according to the 3GPP standard as “a logical entity containing all subscriber/subscription related information needed for subscription-based policies and Policy and Charging Control rules as defined by the 3GPP standard.”
• Petitioner also contended that the preamble of claim 1 is limiting. However, Petitioner maintained that the challenged claims are unpatentable under either its proposed construction or the Patent Owner’s proposed plain and ordinary meaning.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was inappropriate. It stipulated that if the IPR is instituted, it would not pursue the same invalidity grounds in the parallel district court litigation. Petitioner also noted that this petition challenges more claims than are at issue in the litigation and that the district court had invested minimal resources in the case.
• Petitioner further argued against denial under §325(d), stating that the primary prior art references (Feyerabend, Zhang, Bland) were never considered during prosecution. It asserted the new art was not cumulative because the examiner did not substantively consider any art and issued no rejections during the original prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 14-21 of the ’827 patent as unpatentable.