Microsoft Corp v. Lemko Corp

1. Case Identification

• Case #: IPR2023-00529
• Patent #: 7,653,414
• Filed: February 15, 2023
• Petitioner(s): Microsoft Corporation and Affirmed Networks, Inc.
• Patent Owner(s): Lemko Corporation
• Challenged Claims: 1-8, 11-16, and 21

2. Patent Overview

• Title: Distributed Mobile Architecture
• Brief Description: The ’414 patent relates to telecommunication systems featuring a distributed mobile architecture (DMA). The core technology involves a DMA server that integrates the functions of a conventional base station controller (BSC) and mobile switching center (MSC) into a single enclosure to reduce deployment costs and manage call routing between subscribers across multiple interconnected DMA systems.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-8 over Mauer in view of Waylett

• Prior Art Relied Upon: Mauer (Patent 7,395,085) and Waylett (Patent 8,184,603).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mauer discloses the core method of claim 1 by teaching a telecommunication system with multiple distinct networks (a WWAN and a WLAN) that correspond to the claimed first and second DMA systems. Mauer’s method involves attempting to establish a call on the first network, and if the mobile station is inaccessible, attempting connection on the second network. If the subscriber is unavailable on both, Mauer teaches routing the call to an alternate option, such as an external voicemail server. Petitioner asserted that Mauer’s use of a Home Location Register (HLR) and Visitor Location Register (VLR) for the first network maps to the claimed step of determining a subscriber’s location.
  • Motivation to Combine: Petitioner contended that Waylett discloses a "Network-In-a-Box" (NIB), a compact, single-enclosure device combining MSC and BSC functionalities to create an inexpensive wireless network solution. A person of ordinary skill in the art (POSITA) would combine Waylett’s cost-effective NIB into Mauer’s multi-network architecture to reduce the cost, size, and complexity of deploying the separate systems described by Mauer. This combination would make Mauer’s system cheaper and faster to deploy. The use of Waylett's "configuration table" within its RADIUS server was argued to supply the functionality of the claimed Community Location Register (CLR) for locating subscribers across different networks.
  • Expectation of Success: A POSITA would have a high expectation of success because both Mauer and Waylett describe systems based on common wireless standards (e.g., GSM) and components (MSC, BSC, HLRs), making Waylett’s NIB directly compatible with Mauer’s network architecture.

Ground 2: Obviousness of Claims 11-16 and 21 over Waylett in view of Mauer

• Prior Art Relied Upon: Waylett (Patent 8,184,603) and Mauer (Patent 7,395,085).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Waylett’s NIB provides the basis for the system of independent claim 11. The NIB is a self-contained DMA system within a single housing that includes a base transceiver station, computer-readable medium, and modules for authentication, authorization, and accounting (AAA), as well as an HLR and VLR. This structure was argued to mirror the DMA system described in the ’414 patent.
  • Motivation to Combine: A POSITA would be motivated to create a larger, distributed network by deploying multiple Waylett NIBs and incorporating Mauer’s call-handling logic to manage communications between them. Mauer provides the method for routing calls when a subscriber moves between different network coverage areas (i.e., between different NIBs). This combination leverages Waylett’s inexpensive hardware with Mauer’s intelligent inter-system routing to create a scalable and robust network. The motivation is to extend Waylett’s standalone box into a fully distributed system, addressing the problem of subscriber roaming and handoff, a problem Mauer explicitly addresses.
  • Expectation of Success: Success was expected because Waylett's NIB is presented as a complete, standard-compliant network building block. Implementing Mauer’s control logic to manage a network of these blocks would be a predictable application of known networking principles.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) is unwarranted. They stipulated that, should the Board institute review, they will not pursue in the parallel district court litigation the same grounds raised in the petition or any other grounds that reasonably could have been raised. This stipulation aligns with the USPTO Director's interim guidance on Fintiv factors.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 11-16, and 21 of the ’414 patent as unpatentable.