- Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.
RulingsFinal written decision- BurdenMixed
“Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentablePTAB · Jan 29, 2015 · IPR2013-00481 · APJ Barbara A Parvis · IPR · Final written decision
Claims 12 and 22 are unpatentable over Fox Thesis, Fox SMART, and Envision under § 103; claim 21 was not shown unpatentable because the art did not teach deriving actual cluster links from generated candidate …
RulingsFinal written decision- BurdenMixed
“The claim chart persuasively reads all elements of each of claims 12 and 22 onto the teachings of Fox Thesis, Fox SMART, and Envision, taken together. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we have also considered, Petitioner has shown by a preponderance of the evidence that claims 12 and 22 of the ’571 Patent are unpatentable, under 35 U.S.C. § 103, as they would have been obvious over the combination of Fox Thesis, Fox SMART, and Envision. Petitioner, however, has not shown by a preponderance of the evidence that claim 21 of the ’571 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over the combination of Fox Thesis, Fox SMART, and Envision. 1.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“As taught in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify a teaching in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART teaches a subset, which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1032 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as teaching deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as teaching that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 21 of deriving a subset of the already generated candidate cluster links. In light of the Declaration by Patent Owner’s Declarant, Dr. Jacobs, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Fox Thesis, Fox SMART, and Envision teaches deriving actual cluster links. For the foregoing reasons, Petitioner has not established that claim 21 of the ’571 Patent is unpatentable, under 35 U.S.C. § 103, as obvious over the combination of Fox Thesis, Fox SMART, and Envision.” slip op. at 27
- ExcludeMotion to exclude, deniedDenied
“Owner contends that the Reply Fox Declaration should be excluded in accordance with Federal Rule of Evidence (“FRE”) 702. Paper 44, 1. In particular, Patent Owner contends that the Reply Fox Declaration should be excluded because FRE 702 precludes admission of expert testimony unless “the testimony is based on sufficient facts or data, the testimony is the product of reliable principles and methods, and the expert has reliably applied the principles and methods to the facts of the case.” Id. With regard to this objection, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection properly goes to the weight to be given to Dr. Fox’s testimony, and not to its admissibility. It is within our discretion to assign the appropriate weight to the testimony offered by Dr. Fox. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). When weighing evidence, we are capable of determining whether the prior art references render obvious the challenged claims without being confused, misled or prejudiced by Dr. Fox’s testimony.” slip op. at 32
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Claim 21 recites a method of displaying information about a network, which includes a determination regarding hyperjump data. As explained in the ’571 Patent specification, exemplary hyperjump data includes hyperjump links, which connect web pages, web sites, and documents on the web. Ex. 1001, 48:37–39. The specification of the ’571 Patent states that a link is a “relationship between two nodes.” Id. at 13:5–6. The ’571 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:9–12. As described in the ’571 Patent specification, a link is represented in data stored in a computer. We, therefore, construe “cluster links” in light of the specification of the ’571 Patent to mean relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes. 4. “indirect relationships” and “indirect reference” The term “indirect relationships” is recited in claim 12 and the term “indirect reference” is recited in claim 22. As discussed above, the terms “link” and “relationship” are used interchangeably in the ’571 Patent specification. For the reasons discussed above, therefore, we construe “indirect relationships” to mean indirect relationships that are represented in data stored in a computer. For these same reasons, we construct “indirect reference” to mean an indirect reference that is represented in data stored in a computer.” slip op. at 9
Patent outcomesUS 6,233,571 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,233,571
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.