Microsoft Corp v. Lemko Corp

1. Case Identification

• Case #: IPR2023-00570
• Patent #: 9,191,980
• Filed: February 15, 2023
• Petitioner(s): Microsoft Corporation and Affirmed Networks, Inc.
• Patent Owner(s): Lemko Corporation
• Challenged Claims: 1-4, 6, and 8

2. Patent Overview

• Title: Distributed Mobile Architecture Call Routing
• Brief Description: The ’980 patent describes a method for routing a mobile device call in a distributed mobile architecture (DMA). The system uses a DMA server and a DMA gateway (DMAG) to handle calls, particularly for destination devices outside the immediate wireless coverage area of the initial server, aiming to provide less expensive telephony services in areas like rural communities.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6, and 8 are obvious over Waylett in view of the knowledge of a Person of Ordinary Skill in the Art (POSITA).

• Prior Art Relied Upon: Waylett (Patent 8,184,603).
• Core Argument for this Ground: Petitioner asserted that Waylett, which was never considered during prosecution, discloses or renders obvious every limitation of the challenged claims. Petitioner contended that Waylett was directed to the same problem as the ’980 patent: providing inexpensive communication systems for underserved communities.
  • Prior Art Mapping: Petitioner argued that the key components of claim 1 map directly to Waylett's disclosures.
    • The claimed "distributed mobile architecture (DMA) server" corresponds to Waylett’s "Network-In-a-Box" (NIB), which integrates a mobile switching center (MSC), base station controller (BSC), and base transceiver station (BTS) in a single unit.
    • The claimed "distributed mobile architecture gateway (DMAG)" corresponds to Waylett’s Wireless Local Area Network (WLAN), which connects to the NIB and facilitates communication with user equipment.
    • The requirement for "registration data stored at the first DMA server" is met by Waylett’s "Identity Module," which is coupled to the NIB and stores subscriber identifiers and security information. Petitioner argued a POSITA would find it obvious to integrate this module directly into the NIB’s memory to reduce cost and improve performance.
    • The limitation that the "DMAG is communicatively coupled to a plurality of DMA servers" is taught by Waylett’s disclosure of using multiple NIBs connected to a WLAN.
    • The steps of "converting first voice information... to first packet data" and "routing the first packet data... via the first DMAG" are rendered obvious by Waylett’s WLAN, which is adapted to enable voice-over-IP (VoIP) and includes packet-based network protocols (e.g., IEEE 802.11). A POSITA would have understood that routing voice over such a network necessarily involves converting voice to packets and routing them.
  • Motivation to Combine: The primary motivations asserted were not for combining distinct references, but for making obvious modifications to Waylett's system. A POSITA would combine Waylett's Identity Module with its NIB to reduce hardware costs, connections, and access delays. Further, a POSITA would connect multiple NIBs to a single WLAN, as explicitly taught by Waylett, to achieve known benefits such as extending service area, avoiding tolls, and distributing registration and authentication loads across the network.
  • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success in making these modifications. Combining the Identity Module with the NIB was described as a "simple matter of design choice," and linking multiple NIBs to a WLAN was a configuration Waylett described as "particularly suitable" for enterprises, with predictable and beneficial results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) is unwarranted due to a parallel district court proceeding. To avoid a denial based on the Fintiv factors, Petitioner stipulated that, if the inter partes review (IPR) is instituted, it will not pursue in the parallel litigation the same grounds raised in the petition or any other grounds that it could have reasonably raised. Petitioner asserted that this stipulation aligns with USPTO guidance and removes the basis for discretionary denial.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-4, 6, and 8 of the ’980 patent as unpatentable.