CAFC issues mixed decision in Microsoft vs. IPA
The outcome of Microsoft vs. IPA
Microsoft and IPA both appeal. As to Microsoft’s appeals: We affirm the Board’s determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent; but we reverse certain Board findings regarding claims 8–10, 63, and 86– 89 of the ’115 patent and claims 10–11 and 28 of the ’560 patent, and we remand for any further proceedings that may be necessary and appropriate to address those claims. As to IPA’s appeals (including cross-appeals): We affirm all of the Board’s determinations challenged here by IPA.
The legal standards:
Microsoft presents five arguments on appeal. We review the Board’s legal conclusions (including claim constructions based solely on intrinsic evidence) de novo and its factual findings (including those concerning the prior art’s teachings and the motivation to combine) for substantial-evidence support. Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018); Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015). Substantial evidence exists if “‘a reasonable fact finder could have arrived at the agency’s decision’” in light of the record as a whole. Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review the Board’s judgments concerning what arguments have been adequately presented in a petition and other pleadings for abuse of discretion. See Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018); Altaire Pharms., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274, 1284 (Fed. Cir. 2018), remand order modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018); Intelligent Bio-Systems, 821 F.3d at 1367; see also MModal LLC v. Nuance Commc’ns, Inc., 846 F. App’x 900, 906 (Fed. Cir. 2021). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Intelligent BioSystems, 821 F.3d at 1367 (citation omitted).
First argument of Microsoft
Microsoft’s first argument on appeal is that, for claims 8–10 and 63 of the ’115 patent and for claim 28 of the ’560 patent, the Board erred in finding that Microsoft had not proven how or why Kiss and FIPA97 would have been combined by a relevant artisan. Microsoft Opening Br. 49–57. Claims 8 and 9 of the ’115 patent, which are representative for purposes of this issue, read: 8. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one trigger declaration for one active agent. 9. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one task declaration, and process characteristics for each active agent. ’115 patent, col. 30, lines 10–16 (emphases added). For context, the undisputed interpretation of “trigger” adopted by the Board is “a general mechanism for requesting some action be taken when one or more conditions is met.” Microsoft Corp. v. IPA Techs. Inc., No. IPR2019-00810, 2020 WL 6110974, at *50 (P.T.A.B. Oct. 15, 2020) (IPR810 Decision)
(...) Concerning how Kiss and FIPA97’s registries would be combined, Microsoft presented evidence, with little elaboration for what Microsoft said a skilled artisan would know how to do. See, e.g., J.A. 1423–26; J.A. 7227–29, 7240 (Lieberman Decl. ¶¶ 217–19, 228). IPA’s response, which focused almost entirely on the why questionb, was at most a simple, unelaborated assertion that Microsoft’s evidence as to how was not enough, with no identification at all of what necessary details were missing. See, e.g., J.A. 1865–67 (objecting to why, not how, the combination would be made); J.A. 4846–48 (making single-sentence assertion about the how issue); J.A. 12861 (Medvidovic Decl. ¶ 261) (same). The Board, for its part, did not meaningfully address the how issue separately from the why issue. It did not identify any concrete unanswered questions about how to achieve the combination (which is not a matter of bodily incorporation, but of combining the features required to arrive at the claim). It did not even say whether the combination required more than simply adding one more field to Kiss’s registry data structure. In these circumstances, we see no basis for a reasonable determination rejecting Microsoft’s evidence of why and how the combination at issue would be made. Accordingly, we reverse the Board’s finding that Microsoft has not persuasively shown how or why Kiss and FIPA97 would have been combined to generate the subject matter of claims 8– 10 and 63 of the ’115 patent and claim 28 of the ’560 patent.
Second argument of Microsoft
Microsoft’s second argument on appeal is that, for claims 29–47 of the ’115 patent, the Board erred in finding the petition insufficient. Microsoft Opening Br. 57–64. Claim 29, which is representative for this issue, is reproduced below, as is claim 1, (...)
We affirm the Board’s determination that Microsoft insufficiently pleaded the unpatentability of claims 29–47. Microsoft’s petition did not grapple with the claim 29 language, simply stating “Kiss/FIPA97 satisfies this claim for the reasons stated in” the section pertaining to the claim 1 limitation “constructing a goal satisfaction plan.” J.A. 1464. That statement is true, however, only if there are no differences between the claims that might affect the Kiss and FIPA97 combination’s disclosure. Yet that central, necessary premise is one that Microsoft wholly failed to defend in its petition, even though there are potentially meaningful differences in claim language that warrant discussion
Of note
The Board’s failure to consider Microsoft’s discussion of the claim 86 preamble, which expressly fills the hole the Board identified in the petition, and the Board’s resulting misapprehension of the purpose of the cross-reference, was error. Although IPA relies on Microsoft Corp. v. FG SRC, LLC, to argue otherwise, see IPA Opening & Response Br. 72–74, that case does not help IPA because it involved something quite different from this case—a Board refusal to “deduce the existence of an obviousness argument from within [a petition’s] anticipation argument,” 860 F. App’x 708, 713 (Fed. Cir. 2021).
Of Microsoft's fifth argument
We affirm that determination, and thus we do not reach the parties’ dispute concerning the proper construction of “computer process.” We need not address whether Microsoft’s petition was adequate because it was readily apparent how FIPA97’s Figure 2 meets the claim requirement that each of the plurality of agent registries is resident within a separate computer process. This is so because Microsoft’s opening brief in this court provided no coherent explanation of why this part of the Board’s decision was incorrect. See Microsoft Opening Br. 76–79. Its effort to do so with a new explanation in its reply brief was too late. See Microsoft Response & Reply Br. 17–18; Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1564 (Fed. Cir. 1996) (“A reply brief, which should ‘reply to the brief of the appellee,’ is not the appropriate place to raise, for the first time, an issue for appellate review.” (quoting Fed. R. App. P. 28(c))). For those reasons, we affirm the Board’s unpatentability determinations for claims 50–51 and 53–55 of the ’560 patent in IPR2019-00836.
Microsoft and IPA both appeal. As to Microsoft’s appeals: We affirm the Board’s determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent; but we reverse certain Board findings regarding claims 8–10, 63, and 86– 89 of the ’115 patent and claims 10–11 and 28 of the ’560 patent, and we remand for any further proceedings that may be necessary and appropriate to address those claims. As to IPA’s appeals (including cross-appeals): We affirm all of the Board’s determinations challenged here by IPA.
The legal standards:
Microsoft presents five arguments on appeal. We review the Board’s legal conclusions (including claim constructions based solely on intrinsic evidence) de novo and its factual findings (including those concerning the prior art’s teachings and the motivation to combine) for substantial-evidence support. Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018); Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015). Substantial evidence exists if “‘a reasonable fact finder could have arrived at the agency’s decision’” in light of the record as a whole. Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review the Board’s judgments concerning what arguments have been adequately presented in a petition and other pleadings for abuse of discretion. See Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018); Altaire Pharms., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274, 1284 (Fed. Cir. 2018), remand order modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018); Intelligent Bio-Systems, 821 F.3d at 1367; see also MModal LLC v. Nuance Commc’ns, Inc., 846 F. App’x 900, 906 (Fed. Cir. 2021). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Intelligent BioSystems, 821 F.3d at 1367 (citation omitted).
First argument of Microsoft
Microsoft’s first argument on appeal is that, for claims 8–10 and 63 of the ’115 patent and for claim 28 of the ’560 patent, the Board erred in finding that Microsoft had not proven how or why Kiss and FIPA97 would have been combined by a relevant artisan. Microsoft Opening Br. 49–57. Claims 8 and 9 of the ’115 patent, which are representative for purposes of this issue, read: 8. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one trigger declaration for one active agent. 9. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one task declaration, and process characteristics for each active agent. ’115 patent, col. 30, lines 10–16 (emphases added). For context, the undisputed interpretation of “trigger” adopted by the Board is “a general mechanism for requesting some action be taken when one or more conditions is met.” Microsoft Corp. v. IPA Techs. Inc., No. IPR2019-00810, 2020 WL 6110974, at *50 (P.T.A.B. Oct. 15, 2020) (IPR810 Decision)
(...) Concerning how Kiss and FIPA97’s registries would be combined, Microsoft presented evidence, with little elaboration for what Microsoft said a skilled artisan would know how to do. See, e.g., J.A. 1423–26; J.A. 7227–29, 7240 (Lieberman Decl. ¶¶ 217–19, 228). IPA’s response, which focused almost entirely on the why questionb, was at most a simple, unelaborated assertion that Microsoft’s evidence as to how was not enough, with no identification at all of what necessary details were missing. See, e.g., J.A. 1865–67 (objecting to why, not how, the combination would be made); J.A. 4846–48 (making single-sentence assertion about the how issue); J.A. 12861 (Medvidovic Decl. ¶ 261) (same). The Board, for its part, did not meaningfully address the how issue separately from the why issue. It did not identify any concrete unanswered questions about how to achieve the combination (which is not a matter of bodily incorporation, but of combining the features required to arrive at the claim). It did not even say whether the combination required more than simply adding one more field to Kiss’s registry data structure. In these circumstances, we see no basis for a reasonable determination rejecting Microsoft’s evidence of why and how the combination at issue would be made. Accordingly, we reverse the Board’s finding that Microsoft has not persuasively shown how or why Kiss and FIPA97 would have been combined to generate the subject matter of claims 8– 10 and 63 of the ’115 patent and claim 28 of the ’560 patent.
Second argument of Microsoft
Microsoft’s second argument on appeal is that, for claims 29–47 of the ’115 patent, the Board erred in finding the petition insufficient. Microsoft Opening Br. 57–64. Claim 29, which is representative for this issue, is reproduced below, as is claim 1, (...)
We affirm the Board’s determination that Microsoft insufficiently pleaded the unpatentability of claims 29–47. Microsoft’s petition did not grapple with the claim 29 language, simply stating “Kiss/FIPA97 satisfies this claim for the reasons stated in” the section pertaining to the claim 1 limitation “constructing a goal satisfaction plan.” J.A. 1464. That statement is true, however, only if there are no differences between the claims that might affect the Kiss and FIPA97 combination’s disclosure. Yet that central, necessary premise is one that Microsoft wholly failed to defend in its petition, even though there are potentially meaningful differences in claim language that warrant discussion
Of note
The Board’s failure to consider Microsoft’s discussion of the claim 86 preamble, which expressly fills the hole the Board identified in the petition, and the Board’s resulting misapprehension of the purpose of the cross-reference, was error. Although IPA relies on Microsoft Corp. v. FG SRC, LLC, to argue otherwise, see IPA Opening & Response Br. 72–74, that case does not help IPA because it involved something quite different from this case—a Board refusal to “deduce the existence of an obviousness argument from within [a petition’s] anticipation argument,” 860 F. App’x 708, 713 (Fed. Cir. 2021).
Of Microsoft's fifth argument
We affirm that determination, and thus we do not reach the parties’ dispute concerning the proper construction of “computer process.” We need not address whether Microsoft’s petition was adequate because it was readily apparent how FIPA97’s Figure 2 meets the claim requirement that each of the plurality of agent registries is resident within a separate computer process. This is so because Microsoft’s opening brief in this court provided no coherent explanation of why this part of the Board’s decision was incorrect. See Microsoft Opening Br. 76–79. Its effort to do so with a new explanation in its reply brief was too late. See Microsoft Response & Reply Br. 17–18; Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1564 (Fed. Cir. 1996) (“A reply brief, which should ‘reply to the brief of the appellee,’ is not the appropriate place to raise, for the first time, an issue for appellate review.” (quoting Fed. R. App. P. 28(c))). For those reasons, we affirm the Board’s unpatentability determinations for claims 50–51 and 53–55 of the ’560 patent in IPR2019-00836.
posted by Lawrence B. Ebert at 6:11 PM
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