Iron Oak Technologies, LLC v. Microsoft Corporation

CourtCourt of Appeals for the Federal Circuit
DecidedMay 24, 2021
Docket20-1701
StatusUnpublished

This text of Iron Oak Technologies, LLC v. Microsoft Corporation (Iron Oak Technologies, LLC v. Microsoft Corporation) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Iron Oak Technologies, LLC v. Microsoft Corporation, (Fed. Cir. 2021).

Opinion

Case: 20-1701 Document: 54 Page: 1 Filed: 05/24/2021

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IRON OAK TECHNOLOGIES, LLC, Appellant

v.

MICROSOFT CORPORATION, SAMSUNG ELECTRONICS CO., LTD., GOOGLE LLC, Appellees ______________________

2020-1701, 2020-1706, 2020-1707 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2018- 01552, IPR2018-01553, IPR2019-00106. ______________________

Decided: May 24, 2021 ______________________

ALBERT BERTON DEAVER, JR., McAughan Deaver PLLC, Houston, TX, for appellant. Also represented by ROBERT JAMES MCAUGHAN, JR.

RICHARD ALAN CEDEROTH, Sidley Austin LLP, Chicago, IL, for appellee Microsoft Corporation. Also represented by SCOTT BORDER, JOSEPH A. MICALLEF, Washington, DC.

JOSEPH PALYS, Paul Hastings LLP, Washington, DC, Case: 20-1701 Document: 54 Page: 2 Filed: 05/24/2021

for appellee Samsung Electronics Co., Ltd. Also repre- sented by PHILLIP W. CITROEN, STEPHEN BLAKE KINNAIRD, NAVEEN MODI, ANDERSON TO.

MATTHEW A. SMITH, Smith Baluch LLP, Menlo Park, CA, for appellee Google LLC. Also represented by ANDREW BALUCH, Washington, DC. ______________________

Before LOURIE, MAYER, and O’MALLEY, Circuit Judges. O’MALLEY, Circuit Judge. Iron Oak Technologies, LLC appeals from three final written decisions of the Patent Trial and Appeal Board (“Board”), each holding claim 1 of U.S. Patent No. 5,699,275 (“the ’275 patent”) unpatentable over the prior art. Microsoft Corp. v. Iron Oak Techs., LLC, No. IPR2019- 00106, 2020 WL 633707 (P.T.A.B. Feb. 7, 2020); Samsung Elecs. Co. v. Iron Oak Techs., LLC (Samsung I), No. IPR2018-01552, 2020 WL 633816 (P.T.A.B. Feb. 7, 2020); Samsung Elecs. Co. v. Iron Oak Techs., LLC (Samsung II), No. IPR2018-01553, 2020 WL 633822 (P.T.A.B. Feb. 7, 2020). For the reasons explained below, we affirm as to all three decisions. I. BACKGROUND The ’275 patent is entitled “System and Method for Re- mote Patching of Operating Code Located in a Mobile Unit.” ’275 patent, at [54]. According to its specification, software suppliers and other sellers of computer systems often need to correct or upgrade the existing software that their customers use. Id. at col. 1, ll. 13–15. But common methods of doing so in the prior art had several disad- vantages. Id. at col. 1, ll. 15–23. Distributing floppy disks, for instance, was time-consuming and forced customers to use old software while waiting for updates. Id. at col. 1, ll. 17–20. Providing modem support to manually upgrade software was also time-consuming, as well as expensive Case: 20-1701 Document: 54 Page: 3 Filed: 05/24/2021

IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 3

and prone to human error. Id. at col. 1, ll. 20–23. And a third prior art solution described in the specification pro- vided patches only to remote systems at fixed locations over a single, continuous, interactive, and bidirectional commu- nication link. See id. at col. 1, ll. 29–42. To substantially reduce or eliminate the disadvantages of prior art systems and methods for updating software, the ’275 patent provides a system for remote patching of oper- ating code located in a mobile unit. Id. at col. 1, ll. 46–53. One embodiment of the system includes a communication network, a manager host, and several mobile units. Id. at col. 2, ll. 60–65; col. 3, ll. 10–11, 17–23. To enhance or cor- rect a mobile unit’s current operating code, the manager host can transmit a patch file that defines one or more patches in a set of discrete patch messages that are suita- bly sized for transmission through the communication net- work. Id. at col. 3, ll. 42–44, 57–62. On receipt of the patch messages, a mobile unit can verify them, merge the defined patches with its current operating code, and switch execu- tion to the patched operating code. Id. at col. 3, ll. 63–66. According to the ’275 patent, the manager host can ad- dress patch messages to mobile units as appropriate for the patch file, including “to one of the mobile units, to all of the mobile units, or to a group of mobile units.” Id. at col. 5, ll. 15–19; see id. at col. 3, ll. 61–62; col. 4, ll. 12–20. For in- stance, one embodiment groups five mobile units into a pair and a trio, and the specification explains that the manager host can address a patch message to only the group of two mobile units. See id. at col. 3, ll. 17–23; col. 5, ll. 20–25. By doing so, the pair of mobile units can have a different ver- sion of operating code than the trio of mobile units. Id. at col. 4, ll. 11–20. The ’275 patent also provides a method for remote patching of operating code located in a mobile unit. Id. at col. 1, ll. 62–63. According to one embodiment of the method, as depicted by the flowchart of Figure 5, a mobile Case: 20-1701 Document: 54 Page: 4 Filed: 05/24/2021

unit receives an initial patch message that includes a soft- ware version. Id. at col. 10, ll. 22–24, 33–34. The mobile unit then compares the software version of the initial patch message to the software version of its current operating code. Id. at col. 10, ll. 36–40. If the operating code’s version is appropriate for the patch, the mobile unit proceeds to, inter alia, check the validity of the message, create patched operating code, and switch execution to the patched oper- ating code. See id. at col. 10, l. 46–col. 11, l. 42. But, if the operating code’s version is not appropriate for the patch, the mobile unit transmits an error message, e.g., to the manager host. Id. at col. 10, ll. 42–45. The ’275 patent contains numerous system and method claims. Only independent claim 1 is at issue on appeal: A system for remote patching of operating code lo- cated in a mobile unit, comprising: a manager host operable to initiate transmission through a wireless communication network of at least one discrete patch message defining at least one patch; a first mobile unit operable to receive the at least one discrete patch message, the first mobile unit further operable to create patched operating code by merging the at least one patch with current op- erating code located in the first mobile unit and to switch execution to the patched operating code; and a second mobile unit operable to receive the at least one discrete patch message, the second mobile unit further operable to create patched operating code by merging the at least one patch with current op- erating code located in the second mobile unit and to switch execution to the patched operating code; and wherein the manager host is further operable to ad- dress the at least one discrete patch message such Case: 20-1701 Document: 54 Page: 5 Filed: 05/24/2021

IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 5

that the at least one discrete patch message is transmitted to the first mobile unit but not to the second mobile unit. Id. at col. 13, ll. 32–53. Although not directly at issue on appeal, dependent claim 14 recites: “[t]he system of claim 1, wherein the manager host is further operable to address the at least one discrete patch message such that the at least one discrete patch message is transmitted to the first mobile unit and to the second mobile unit.” Id. at col. 14, ll. 22–26. Only one prior art reference is necessary to resolve these appeals: Japanese Patent Application No. 05-128022 (“Sugita”). 1 Sugita describes a method of updating soft- ware on multiple mobile communications terminals using wireless communication. See J.A. 390 (¶ 12). Sugita’s method has an initial stage and a final stage. See id. In the initial stage, updates of mobile communications termi- nals occur “in group units.” Id.

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Iron Oak Technologies, LLC v. Microsoft Corporation, Counsel Stack Legal Research, https://law.counselstack.com/opinion/iron-oak-technologies-llc-v-microsoft-corporation-cafc-2021.