Saturday, June 19, 2021

Microsoft loses in FG matter

The outcome was that Microsoft lost:

Microsoft Corporation (“Microsoft”) appeals from a final written decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that Microsoft failed to demonstrate that claims 18–25 of U.S. Patent 6,434,687 (“the ’687 patent”) were unpatentable. See Microsoft Corp. v. FG SRC LLC, No. IPR2018-01594, 2020 WL 1818685 (P.T.A.B. Apr. 9, 2020) (“Decision”). We affirm

Of note:

While we agree with Microsoft that the Board implicitly construed the selecting and transmitting limitations to require a current user, we disagree that the Board’s construction was erroneous. We begin with the claim language itself. FG contends that the preamble of claim 18, which recites “a process of accelerating access time of a remote computer to an internet site,” supports the Board’s construction because accessing an internet site is inherently performed by a single user. Appellee’s Br. 32. But we need not resort to the preamble or determine whether or not it is limiting to resolve the parties’ dispute. The body of claim 18 recites, among other things, transmitting N data elements from a remote computer to a server, selecting content of an internet site in response to the data elements, and transmitting the content to the remote computer. While claim 18 does not expressly recite that the selecting of web site content is performed immediately or for a current user, it does require that the selection is performed “in response to” the transmission of the data elements to the server. The requirement that the content selection is in response to the transmission of the data elements implies that the selection of web site content is triggered by the transmission of data and that both steps are performed as part of a single transaction—that is, by a single user. In contrast, Microsoft’s proposed construction would encompass a system (such as Obelix) in which data are collected during one phase from a first set of users and then stored for an indeterminate period of time until a later user initiates a search. In that case, the selection of web site content would not be “in response to” the transmission of the data, but in response to the separate event of a second user requesting web site content. As such, Microsoft’s proposed construction is too broad because it does not account for all the language of the claim. The written description accords with this understanding of the selecting limitation

Because we conclude that the Board did not err in determining that the selecting limitation of claim 18 requires the selection of data for a current user, and because Microsoft does not argue that Obelix discloses the selecting limitation under the Board’s construction, we need not consider whether Obelix discloses the selecting and transmitting limitations under Microsoft’s proposed construction.


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