Microsoft Corp v. Softex LLC

1. Case Identification

• Case #: IPR2023-01185
• Patent #: 8,506,649
• Filed: July 11, 2023
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Softex, LLC
• Challenged Claims: 1-25

2. Patent Overview

• Title: Electronic Device Security and Tracking System and Method
• Brief Description: The ’649 patent discloses a system for securing and tracking a mobile electronic device. The system uses a security application on the device that periodically communicates with a server to check if the device has been reported stolen and, if so, performs responsive actions such as disabling the device or backing up user data.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7-13, 15-21, and 23-25 are Anticipated and/or Obvious Over Andrews

• Prior Art Relied Upon: Andrews (WO 2001/084455).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Andrews discloses a security system for portable computing devices that anticipates or renders obvious every limitation of the challenged claims. Andrews teaches a client device with security software that registers with a host computer (server) and periodically "checks in" to receive a status report (e.g., NORMAL, STOLEN). If the device is reported missing, the server instructs the client to take responsive actions, such as locking the device ("LOCK-UP DEVICE"), copying user data to the server ("RETRIEVE FILE"), and deleting user data ("DELETE FILE"). Petitioner contended that Andrews also discloses the claimed memory structure, teaching that the security software can be stored in non-volatile ROM (a "system area that cannot be modified by the user") while user files reside on a changeable hard drive.
  • Key Aspects: This ground established Andrews as a primary reference that allegedly teaches the core functionality of the claimed invention, including the client-server architecture, periodic communication, and responsive security actions.

Ground 2: Claims 1-5, 7-13, 15-21, and 23-25 are Obvious over Andrews in view of Bonnett

• Prior Art Relied Upon: Andrews (WO 2001/084455) and Bonnett (Application # 2003/0051090).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that to the extent Andrews does not explicitly disclose the claimed memory area limitations, Bonnett provides the missing elements. Bonnett teaches a memory management technique for securely storing programs by partitioning memory into a user-accessible "open partition" and a user-inaccessible "hidden partition." Storing a program in the hidden partition prevents a user from deleting or corrupting it, thereby improving device reliability.
  • Motivation to Combine: A POSITA would combine Bonnett’s memory partitioning with Andrews’ security system for the express purpose of enhancing security. Storing Andrews’ security software in Bonnett’s "hidden partition" would directly serve Andrews' goal of resisting user tampering and preventing a thief from disabling the tracking software. This combination was presented as a predictable solution to a known problem in the field.
  • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success, as the combination would only require identifying a suitable non-volatile memory in the Andrews device and applying Bonnett's routine teachings to create a hidden partition to store the security software.

Ground 3: Claims 1-5, 7-13, 15-21, and 23-25 are Obvious over Andrews in view of Cotichini

• Prior Art Relied Upon: Andrews (WO 2001/084455) and Cotichini (WO 1998/043151).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented Cotichini as an alternative to Bonnett for teaching the claimed memory limitations. Cotichini discloses a "well-known" security agent for tracking stolen devices that is "secretly and transparently embedded" in software, firmware, or hardware (e.g., a modem's Flash ROM or the system ROM). Cotichini’s agent is designed to evade detection and resist modification through "deflection methods" that prevent unauthorized reads or writes to its location.
  • Motivation to Combine: A POSITA would be motivated to implement Andrews' security software using Cotichini’s techniques to make it more surreptitious and robust against circumvention. Cotichini expressly teaches using its memory-protection techniques in a security system for portable electronics, providing a direct reason to apply them to Andrews' analogous system to increase the likelihood of recovering a stolen device.
  • Expectation of Success: Success would be expected because Cotichini provides multiple, conventional ways to install a hidden agent (e.g., in ROM, on a modem) that are fully compatible with the components disclosed in Andrews. Implementing Andrews’s software as a "Modem Agent" per Cotichini would be a straightforward integration for a POSITA.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1D) against claims 6, 8, 14-16, and 22-25 based on Andrews, Cotichini, and Hayward (UK Application # GB2369205A). This ground primarily argued that Hayward teaches using undetectable SMS messages for communication in a device security system, a known technique a POSITA would have been motivated to incorporate for stealthier operation.

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued against denial under §325(d), stating that the petition raises new patentability questions. It was asserted that the primary references Andrews and Hayward were never before the examiner, and while Bonnett and Cotichini were cited in an IDS, they were never substantively discussed or applied in a rejection. Therefore, the specific combinations and arguments presented in the petition were not previously considered by the USPTO.
• Fintiv Arguments (§314a): Petitioner contended that discretionary denial under Fintiv is inappropriate because parallel district court proceedings are highly unlikely to reach trial before the projected Final Written Decision (FWD) date. Citing the mean time-to-trial statistics for the relevant districts and the current procedural posture of the cases, Petitioner projected that any trial would occur months after the IPR would conclude.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-25 of the ’649 patent as unpatentable.