IP Law Daily, PATENT—Fed. Cir.: PTAB decisions finding software architecture patent claims challenged by Microsoft largely affirmed, (Apr 1, 2022)
Law Firms Mentioned:Sidley Austin LLP | Skiermont Derby LLP
Organizations Mentioned:IPA Technologies Inc. | Microsoft | Microsoft Corp. | Sidley Austin, LLP | Skiermont Derby, LLP
By Kevin M. Finson, J.D.
Inter partes review findings of obviousness in patent claims related to software architecture for electronic agents were largely affirmed because they were supported by substantial evidence.
Patent Trial and Appeal Board decisions invalidating for obviousness several claims of two patents challenged by Microsoft in eight inter partes review proceedings were largely supported by substantial evidence, the U.S. Court of Appeals for the Federal Circuit has held. Reversal was required in a few instances shere the Board erred in its analysis of motivation to combine and claim construction (Microsoft Corp. v. IPA Technologies Inc., April 1, 2022, Taranto, R.).
IPA Technologies, Inc., (IPA) was the owner of U.S. Patents Nos. 6,851,115 (the ’115 patent) and 7,069,560 (the ’560 patent), both of which shared a specification and were directed toward a software-based architecture for communication among electronic agents. Microsoft Corporation challenged various claims under both patents in eight separate inter partes review petitions. The Patent Trial and Appeal Board instituted review and held that all challenged claims with the exception of claims 8–10, 29–47, 63, and 86–89 of the ’115 patent and claims 10–11, 28, 50–51, and 53–55 of the ’560 patent were unpatentable for obviousness. Both parties appealed. The Federal Circuit discussed five issues raised by Microsoft and only noted that it found the remaining arguments unconvincing.
Motivation to combine. With regard to claims 8–10 and 63 of the ’115 patent and for claim 28 of the ’560 patent, Microsoft argued that the Board erred by finding that Microsoft had no shown how or why two prior art references would have been combined by a skilled artisan. The court held that the Board’s decision was not supported by substantial evidence; Microsoft had introduced expert testimony showing both how and why the prior art references would be combined, and that expert’s testimony had been credited by the Board elsewhere in its decision. Finding no basis for the Board’s determination, the Federal Circuit reversed.
Sufficiency of petition. With regard to claims 29–47 of the ’115 patent, Microsoft argued that the Board erred in finding its petition insufficient. Microsoft had stated that a prior art reference satisfied the relevant claims “for the reasons stated in” a previous section of its argument. That previous section addressed different, but similar claims, and Microsoft failed to explain why it believed there were no significant differences between the two claims that contained different wording. As a result, the court affirmed the Board’s finding that Microsoft had failed to show obviousness.
With regard to claims 86–89 of the ’115 patent, Microsoft made the same argument and had made a similar reference to discussion of an earlier claim in its argument. On these claims, however, the court held that the Board abused its discretion because Microsoft had actually addressed the missing information in its preamble to claim 86; it did not rely solely on the cross-reference to another claim. The Federal Circuit accordingly reversed the obviousness finding on these claims.
Claim construction. With regard to claims 10 and 11 of the ’560 patent, Microsoft argued that the Board erred by implicitly construing “advisory suggestions” to mean advice parameters which were guidance, exclusive of constraints, while Microsoft argued that the term was taught by prior art to mean advice parameters inclusive of restraints. After noting that this was not a case of ordinary meaning and that neither party introduced any basis for construction outside of the patent itself, the Federal Circuit found that Microsoft’s construction was the fairest interpretation of the way the language was used in the specification and reversed the decisions which relied on the Board’s construction.
Claims 50–51 and 53–55. With regard to these claims of the ’560 patent, Microsoft raised some issues of claim construction, but the court did not reach that argument because it held that Microsoft’s opening brief before the Federal Circuit “provided no coherent explanation of why this part of the Board’s decision was incorrect.” The Federal Circuit affirmed the Board’s decision on these claims.
Attorneys: Richard Alan Cederoth (Sidley Austin LLP) for Microsoft Corp. Paul Skiermont (Skiermont Derby LLP) for IPA Technologies Inc.
Companies: Microsoft Corp.; IPA Technologies Inc.
Cases: Patent FedCirNews GCNNews