Microsoft Corp. v. Uniloc 2017 LLC
Docket No. 2021-2039 (IPR2020-00023) (https://cafc.uscourts.gov/opinions-orders/21-2039.OPINION.10-20-2022_2021742.pdf) (Non-Precedential)
LOURIE, DYK, HUGHES
October 20, 2022
Brief Summary: Board decision finding claims not obvious vacated and remanded for lack of substantial evidence (contradictory conclusions, claimed steps do not require certain order).
Summary: Microsoft (MSFT) appealed USPTO Board IPR decision finding it did not show the challenged claims of Uniloc’s US 6,467,088 directed to techniques for updating electronic devices (e.g., assess compatibility) unpatentable for obviousness. The claims are directed to “[a] processor-implemented method for controlling the reconfiguration of an electronic device” by “receiving information” about the device, “determining at least one device component required”, “comparing” the information and component”, and “generating information” approving or denying reconfiguration. The FC panel reviewed the Board’s “ultimate conclusion of obviousness de novo and ‘the Board’s factual findings underlying those determinations for substantial evidence’” (In re Ethicon, FC 2017). It explained that “[t]he dispositive issue here was whether a prior art reference, Apfel (U.S. Patent No. 5,974,454), performs the claimed ‘comparing’ step”, which the Board found did not. The FC panel found that the Board erred “because it overlooked a passage that specifically discloses assessing the compatibility of available upgrades” (e.g., “even if an upgrade is available, it should not be downloaded if the computer 20 already has the upgrade or if the upgrade is somehow incompatible with computer 20”). Even though the Board did cite that section of Apfel, the FC panel found that it “failed to explain why this passage from Apfel did not disclose the required compatibility check” and its “description of this passage contradicts its conclusion”. It also found “the Board’s conclusion that Apfel does not teach a comparing step appears to be contradicted by other Apfel passages that it considered”, even though those passages do not “explicitly refer to a compatibility check.” The FC panel also found that the Board “erred when it concluded that Apfel did not disclose the comparing step because it did not perform the determining and comparing steps in a certain order required by the disputed claims”. The FC panel agreed with MSFT “that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order” while “[n]othing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board” (Teva, US 2015; Interactive Gift Express, FC 2001 and Mformation Techs., FC 2014 (“A claim requires an ordering, when steps of a method actually recite an order, or when claim language, as a matter of logic, requires that the steps be performed in the order written.”)) Uniloc argued the claims require “an order for performing the claim steps” “as a matter of logic” as “the component (i.e., newer version) must be determined before it can be compared” and “the receiving step would need to occur prior to the determining step”. “[T]he Board’s construction”, however, improperly “requires that receiving and determining steps to occur in a reverse order” and MSFT pointed to ‘088 “examples where a reconfiguration manager performs the determining step after the comparing step”. The Board’s construction was therefore reversed.