December 8, 2017Blog

Federal Circuit Remands Patents Back to Board for Further Proceedings Regarding Challenges to Patents' Validity Based on Anticipation and Obviousness

In a nonprecedential decision, the Federal Circuit ruled that the Patent Trial and Appeal Board had (1) failed to address a specific anticipation argument raised by a petitioner and (2) failed to provide adequate reasoning to support a decision on obviousness. Therefore, the Federal Circuit vacated the Board’s decisions on invalidity based on anticipation and obviousness and remanded the matter for further proceedings on those issues. The Federal Circuit reached that ruling while nonetheless affirming the Board’s claim constructions.

Microsoft Corporation v. Parallel Networks Licensing, LLC, stems from two consolidated inter partes reviews that Microsoft and IBM initiated after they were sued by Parallel Networks for infringement of two of Parallel Networks’ patents. Nos. 2016-2515, 2016-2517, 2016-2518, 2016-2519, 2016-2642, 2016-2644, 2016-2645, 2016-2646, slip op. at 5-6 (Fed. Cir. Dec. 1, 2017). The patents-in-suit, referred to as the “Parallel Patents,” “describe and claim systems for managing the handling of requests for World Wide Web pages having dynamic (changing) content.” Id. at 2. More specifically, “[t]he Parallel Patents address the problem of processing numerous dynamic Web page generation requests using a partitioned architecture,” including “a Web server, interceptor, dispatcher, and multiple page services.” Id. at 3. To address the problem at hand, the Parallel Patents claim a basic method where “(1) a Web page request is sent to a Web server; (2) the request is intercepted; (3) an appropriate page server to process the request is determined; and (4) the request is routed to the appropriate page server.” Id.

In challenging the validity of the Parallel Patents, the Board focused on the 1995 publication SWEB: Towards a Scalable World Wide Web Server on Multicomputers, referred to as SWEB, that discloses a “‘scalable Web server’ implemented on a ‘cluster of workstations and parallel machines’ for the efficient processing of relatively large numbers of simultaneous Web page requests.” Id. at 7. SWEB taught the use of URL redirection if one server would better handle the Web page request than another server. Id. at 7-8. In addition to using URL redirection SWEB explained another option: “where a server other than the initially contacted one would be better for serving the client at the time, the best situation would be to modify the UNIX sockets package so that the initially contacted server sends the request directly to the desired Web server” as opposed to involving the client in initiating contact with the second server as happens when using URL redirection. Id. at 8.

On appeal, Microsoft argued that the Board had erroneously changed the claim construction of the word “request” as used by the Parallel Patents. Id. at 9. The Board had found that “each time the client computer sends a message asking for a Web page, it has made a new request.” Id. at 10. Microsoft’s core complaint was that the Board had construed request with an improper focus on the act of asking or requesting and not on what was being requested. In other words, according to Microsoft, even if a computer makes multiple requests, so long as it was for the same information it should be considered a single “request.” Id. The Federal Circuit agreed with the Board’s construction, finding that the “patent concerns computers sending out communications that other machines must process, with both the sending and processing requiring expenditure of precious time and scarce resources” and thus, it made more sense that “request” denotes “each discrete act of communicating” not “discrete utterances when they convey the same content.” Id. at 10-11.

Despite affirming the Board’s claims construction, the Federal Circuit went on to vacate the Board’s decision that the Parallel Patents’ claims were not anticipated by SWEB nor were they obvious in light of a modification of SWEB’s URL redirection. Regarding anticipation, the Federal Circuit pointed out that while the Board had properly found that SWEB’s URL redirection method failed to anticipate the challenged claims of the Parallel Patents, the Board had failed to address Microsoft’s argument that the challenged claims of the Parallel Patens were anticipated by the UNIX sockets modification method also found in SWEB. Id. at 11. According to the Federal Circuit, Microsoft had “clearly argued UNIX socket modification as an alternative ground for anticipation of the Parallel Patents’ routing limitation” but the Board did not even address the alternative ground nor had the Board found that Microsoft waived its alternative argument. Id. at 13. Thus, the Federal Circuit vacated the rejection of anticipation in part and remanded for the Board to consider the issue of anticipation by SWEB’s disclosure of modifying the UNIX sockets package. Id.

With respect to obviousness, the Board had found that “Microsoft and its expert had not articulated a sufficient reason why a person of ordinary skill in the art would have modified SWEB to include the request forwarding.” Id. at 14. The Federal Circuit disagreed and found that the Board had provided insufficient explanation to justify rejecting Microsoft’s obviousness challenge on this point. Id. In reaching its decision to vacate the Board’s decision to deny Microsoft’s obviousness challenge, the Federal Circuit quoted two full pages from Microsoft’s expert and explained that the Board’s reasoning had been inadequate because it had failed to address numerous of the expert’s statements, all of which were found to be “amply supported by references of record.” Id. at 16-18. Accordingly, the case was remanded so the Board could reconsider Microsoft’s anticipation and obviousness challenges in a manner consistent with the Federal Circuit’s opinion.

This Federal Circuit opinion demonstrates that even after a proper claims construction, the entity determining whether claims are anticipated or obvious must go through each raised argument and specifically address supported expert statements before denying such challenges.


Other Notable Decisions – Week Ending November 3, 2017

AIP Acquisition LLC v. Cisco Systems, Inc., No. 2016-2371 (Fed. Cir. Nov. 30, 2017) (nonprecedential):  In AIP Acquisition, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision invalidating as obvious that patent-in-suit in light of the broad scope given to the terms “internet protocol” and “Internet protocol.” In affirming the Board’s decision, the Federal Circuit noted that “[t]he patent applicant could have claimed a specific protocol, such as the IP of TCP/IP, perhaps by capitalizing the ‘i’ in ‘internet’ and the ‘p’ in ‘protocol’ in both claims or, more definitively, by reciting the ‘Internet Protocol of TCP/IP” but the applicant had not done that and so “the use of lowercase letters suggest that “I/internet protocol’ is not confined to any particular protocol.” Finally, the Federal Circuit reasoned that “the specification does not define “‘I/internet protocol’ as the IP of TCP/IP, and we decline to commit one of the cardinal sins of patent law – reading a limitation from the written description into the claims.”

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