PTAB

IPR2023-00570

Microsoft Corporation v. Lemko Corp.

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1. Case Identification

2. Patent Overview

  • Title: Distributed Mobile Architecture
  • Brief Description: The ’980 patent describes a method for routing a mobile device call using a distributed mobile architecture (DMA). The system uses a DMA server and a DMA gateway (DMAG) to handle calls, particularly when a destination device is outside the immediate wireless coverage area of the initial server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Waylett and POSITA Knowledge - Claims 1-4, 6, and 8 are obvious over Waylett in view of the knowledge of a POSITA.

  • Prior Art Relied Upon: Waylett (Patent 8,184,603) and the general knowledge of a Person of Ordinary Skill in the Art (POSITA).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Waylett, which was not considered during the original prosecution, discloses all elements of the challenged claims. Waylett teaches a "Network-In-a-Box" (NIB) system for providing inexpensive communication in underserved areas, which Petitioner contended is analogous to the claimed “distributed mobile architecture (DMA) server.” The NIB includes a base transceiver station (BTS) interface for receiving calls from a mobile device, mapping directly to the limitations of independent claim 1.
    • Petitioner further asserted that Waylett’s disclosed wireless local area network (WLAN), which connects to the NIB, performs the functions of the claimed “distributed mobile architecture gateway (DMAG).” Waylett’s "Identity Module," which stores user identifiers and security information, was equated with the claimed "registration data stored at the first DMA server." Petitioner argued that this data in Waylett is used to determine that the WLAN supports communication with a destination device (UE 230), satisfying the "determining" step of claim 1.
    • The claim limitation requiring the DMAG to be coupled to a "plurality of DMA servers" was argued to be obvious over Waylett's explicit teaching that its system can include multiple NIBs connected to a WLAN. This configuration is disclosed in Waylett’s Figure 11.
    • Finally, Petitioner contended that Waylett discloses converting voice to packet data. Waylett teaches that its WLAN is adapted for voice communication over packet-based networks (like IEEE 802.11) and can include a VoIP program, rendering the "converting" and "routing" steps of claim 1 obvious to a POSITA.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that a POSITA would be motivated to implement the teachings of Waylett to create the claimed invention for several reasons explicitly stated in the reference. A POSITA would connect multiple NIBs (DMA servers) to a single WLAN (DMAG) to "distribute HLR and registration and authentication loads" and "to provide wireless or cellular type communication via a WLAN over an extended service area." Furthermore, Petitioner argued a POSITA would be motivated to integrate Waylett’s separate Identity Module into the NIB's memory as a matter of simple design choice to reduce cost, hardware, and processing delays, as Waylett itself suggests combining its HLR with the NIB.
    • Expectation of Success (for §103 grounds): Petitioner contended that a POSITA would have a reasonable expectation of success because combining the elements as taught by Waylett would involve the application of known technologies (e.g., VoIP, packet-based networks, distributed servers) to achieve predictable results, such as load distribution and expanded network coverage.
    • Key Aspects: The core of the challenge rested on the argument that Waylett’s NIB architecture is a direct structural and functional equivalent to the ’980 patent’s DMA system, and that scaling this architecture by adding multiple NIBs was an explicit, motivated teaching within Waylett itself.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under §314(a) based on the parallel district court proceeding (Lemko Corporation v. Microsoft Corporation, N.D. Tex.).
  • Petitioner stipulated that if the IPR is instituted, it will not pursue in the parallel district court proceeding the same grounds raised in the petition or any other grounds that it reasonably could have raised. Petitioner asserted that this stipulation aligns with the USPTO Director's interim guidance, which states the PTAB will not discretionarily deny institution under such circumstances.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and enter a final written decision finding claims 1-4, 6, and 8 of the ’980 patent unpatentable.