FC panel finds MSFT’s IPR obviousness arguments lack particularity and affirms Board claim construction and no anticipation finding

Microsoft Corp. v. FG SRC, LLC

Docket No. 2020-1928 (IPR2018-01594) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1928.OPINION.6-17-2021_1792142.pdf) (Non-precedential)

LOURIE, PROST, O’MALLEY

June 17, 2021

Brief Summary:  PTAB decision finding MSFT failed to show FG’s claims to be unpatentable affirmed. Summary:  MSFT appealed PTAB (“Board”) decision that the claims of FG’s US 6,434,687 directed to methods for accelerating web site access and processing using reconfigurable servers were not shown to be unpatentable for anticipation by a white paper (“Obelix”) or obvious over Obelix in view of the Skillen patent (US 6,098,065).  The ‘687 patent “explains that a conventional server with conventional processing elements processes data serially, such that N processing iterations are required to process N elements of data” and that “reconfigurable servers can process data in parallel, and N data elements can therefore be processed in a single iteration, reducing processing time considerably”.  In this appeal, MSFT argued that the Board erred in finding ‘687 claim 18 not to be anticipated or obvious by Obelix or Obelix/Skillen because it “erred in implicitly construing the selecting and transmitting limitations to require a current user” (“the claim was shown to be anticipated absent that requirement”) and failed to address its obviousness arguments.  The FC panel reviewed the Board decision for an abuse of discretion (“clearly unreasonable, arbitrary, or fanciful”, “erroneous conclusion of law”, “clearly erroneous fact finding”, or “no evidence on which the Board could rationally base its decision” (Ericsson, FC 2018).  MSFT argued its petition explained its obviousness challenge specific to ‘687 claim 18 as it referred to reasons “‘set forth above’ with respect to claim 2 under the same heading” and its expert declaration.  The FC panel wrote that “Microsoft argues that the Board should have understood the statement to refer to the reasons set forth way above (34 pages above, in fact) with respect to claim 2, in a completely different and unrelated section”, and that the expert declaration also referred to that section.  It concluded that the Board did not “abuse[] its discretion in declining to interpret Microsoft’s petition as challenging claim 18 over Obelix and Skillen based on such tenuous connections in Microsoft’s petition” (“there is no plausible argument…based on obviousness over Obelix and Skillen with any particularity whatsoever”) as “the petitioner is the ‘master of its complaint’” (SAS, US 2018; Intelligent Bio-Systems, FC 2016 (“identify ‘with particularity’ the ‘evidence’”)).  The FC panel reviewed the Board’s claim construction de novo as it was based only on intrinsic evidence (Shire, FC 2015) and the plain and ordinary meaning standard under Phillips (FC 2005) “[b]ecause the ‘687 patent has expired”, finding MSFT’s proposed construction to be “too broad because it does not account for all the language of the claim” and “[t]he written description accords with [the Board’s] understanding of the selecting limitation.”   The Board decision was therefore affirmed.

This entry was posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.