Microsoft Corp v. InterDigital Patent Holdings Inc

1. Case Identification

• Case #: IPR2024-00538
• Patent #: 9,173,054
• Filed: February 9, 2024
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): InterDigital Patent Holdings, Inc.
• Challenged Claims: 1, 3-10, 12, 14-15, 21, 23, 25-32, 34, 36-37, 43, 46-47, 49-50

2. Patent Overview

• Title: Data Transfer Between Wireless Devices
• Brief Description: The ’054 patent describes methods and systems for transferring data between wireless devices. The claimed invention involves using a first wireless protocol (Bluetooth) to detect a nearby device and a second, different wireless protocol (WiFi) to transfer selected media to that device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-9, 12, 14-15, 21, 23, 26-31, 34, 36-37, 43, 46-47, and 49-50 are anticipated by Forutanpour and related claims are obvious over Forutanpour.

• Prior Art Relied Upon: Forutanpour (Application # 2011/0083111).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Forutanpour, an intervening prior art reference made available by the ’054 patent’s correct effective filing date of April 11, 2014, discloses all limitations of the challenged claims. Forutanpour teaches a method for sharing media between mobile devices by first using a low-power protocol like Bluetooth to discover nearby devices. After a user selects media and a target device via touchscreen gestures (e.g., a tap and flick), the system sends a request to transfer and, upon receiving acceptance, transfers the file using a different, higher-speed protocol, such as a direct WiFi link. This process maps directly to the independent claims’ limitations of detecting over Bluetooth, selecting a target, sending a transfer message, receiving an acceptance, and transferring over WiFi.
  • Motivation to Combine (for §103 grounds): For claims not fully anticipated, Petitioner argued that any minor differences would have been obvious modifications. For instance, using a Service Discovery Protocol (SDP) for Bluetooth discovery (claim 10) was a standard and inherent part of how Bluetooth operated to find like-equipped devices.
  • Expectation of Success (for §103 grounds): A person of ordinary skill in the art (POSITA) would have a high expectation of success in implementing Forutanpour’s teachings, as the reference provides a detailed methodology for combining known wireless technologies for their respective strengths—Bluetooth for low-power discovery and WiFi for high-speed transfer.

Ground 2: Claims 3 and 25 are obvious over Forutanpour in view of Hinckley.

• Prior Art Relied Upon: Forutanpour (Application # 2011/0083111) and Hinckley (Application # 2007/0191028).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims 3 and 25, which add the limitation of displaying the progress of the data transfer. Petitioner argued Forutanpour teaches the core method, and Hinckley explicitly discloses displaying a "progress bar" to give the user "feedback on the transfer."
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hinckley’s progress bar with Forutanpour’s file transfer system to improve usability. Providing visual feedback on the status of a data transfer was a well-known and conventional feature that allowed users to know when the transfer was complete or if it had failed.
  • Expectation of Success (for §103 grounds): Implementing a progress bar required only elementary programming and was a ubiquitous feature in file transfer applications at the time, ensuring a reasonable expectation of success.
• Additional Grounds: Petitioner asserted additional obviousness challenges for specific dependent claims, including combining Forutanpour with Hoddie (WO 2005/1072895) for determining device compatibility (claims 12 and 34) and with Heinonen (Application # 2005/0281237) to confirm the use of a service discovery protocol (claims 10 and 32).

4. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date: The central technical and legal contention of the petition is that the challenged claims of the ’054 patent are not entitled to the earlier priority dates of their ancestor applications. Petitioner argued that the parent and grandparent applications fail to provide adequate written description support under 35 U.S.C. §112 for the claimed method of using one protocol (Bluetooth) for discovery and a different protocol (WiFi) for data transfer. The ancestor applications only mention Bluetooth and WiFi as part of a long list of possible technologies a device might support, without disclosing the specific two-step, two-protocol method later claimed. This lack of support breaks the priority chain, making the effective filing date April 11, 2014, and rendering Forutanpour (published 2011) a valid prior art reference.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv) and §325(d). The Fintiv factors weighed against denial because the parallel district court case was in its early stages with no trial date set. Arguments against General Plastic denial were based on this being a parallel, not serial, petition, filed shortly after a first petition that assumed an earlier filing date. Petitioner contended this petition presents materially different arguments and prior art (Forutanpour) that could not have been raised in the first petition, and that resolving the critical filing date issue serves the public interest in improving patent quality.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-10, 12, 14-15, 21, 23, 25-32, 34, 36-37, 43, 46-47, and 49-50 of the ’054 patent as unpatentable.