• Microsoft Corporation v. Proxyconn, Inc.All claims unpatentable
  PTAB · Dec 9, 2015 · IPR2012-00026 · APJ Thomas L Giannetti · IPR · Remand

  On remand, claims 1, 3, 6, 7, 9, 10, 22, and 23 are unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.

  RulingsRemand decision

  • RemandOther

    “permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Finally, we note that persuasive evidence of a rationale to combine DRP and Mattis is found in the Long Declaration. IPR2013-00109, Ex. 1013, 10–16. Proxyconn does not challenge this evidence. We, therefore, conclude that, taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 6, 7, and 9 of the ʼ717 patent would have been obvious over DRP and Mattis and are not patentable.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Unpatentable

    “Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device.” slip op. at 17

  Patent outcomesUS 6,757,717 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,717
• Microsoft Corporation v. Proxyconn, Inc.All claims unpatentable
  PTAB · Dec 9, 2015 · IPR2013-00109 · APJ Thomas L Giannetti · IPR · Remand

  On remand, the Board held claims 1, 3, 6, 7, 9, 10, 22, and 23 unpatentable: claims 1, 3, 6, 7, 9, and 10 as obvious, and claims 22 and 23 as anticipated.

  RulingsRemand decision

  • RemandDecided for petitioner

    “permitted to consider the merits of Microsoft’s reasserted challenges on remand. First and foremost, the Federal Circuit remanded the case to the Board “for proceedings consistent with this opinion.” 789 F.3d at 1295. We do not interpret the Federal Circuit’s decision as requiring us to enter judgment for Proxyconn. Had this been the court’s intent, it could have done so. See 28 U.S.C. § 2106 (authorizing appellate courts to “affirm, modify, vacate, set aside or reverse” and remand). As the Federal Circuit recently stated regarding another remand to the Board: “The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice. 37 C.F.R. § 42.5(a).” Ariosa Diagnostics v. Verinata Health, Inc., Nos. 2015-1215, 2015-1226, 2015 WL 7148267, at *8 (Fed. Cir. Nov. 16, 2015). We also are not persuaded by Proxyconn’s argument that reconsidering the merits of the case in light of the Federal Circuit’s claim constructions results in unfairness or a “denial of due process.” PO Remand Br. 2. The guidance on claim construction provided by the Federal Circuit was based on claim constructions proposed by Proxyconn during the trial. See PO Resp. 11–16. For this reason, the suggestions that the claim constructions are “new,” or that Proxyconn was never permitted to address them, are unavailing. PO Remand Br. 2.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Based on the foregoing, we are persuaded that consistent with the Federal Circuit’s guidance, Mattis discloses a gateway and caching computer connected between “two other computers” as recited in claims 6, 7, and 9. Pet. Remand Br. 5 (identifying Mattis’ proxy server 30 and computer system 1100 as examples of the gateway, and citing IPR2013- 00109, Ex. 1004, Figs. 1–2, and 11, col. 1, l. 14–col. 2, l. 14, col. 9, l. 65– col. 10, l. 10, col. 27, l. 50–col. 28, l. 2, col. 37, ll. 26–31, and col. 37, ll. 42– 45). We are persuaded, therefore, that the Federal Circuit’s instruction that the gateway be separate from the “other” computers recited in the claims is met by the combination of Mattis and DRP.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Unpatentable

    “dispute this assertion. Instead, Proxyconn asserts that it should prevail simply because the Board’s decision was based on a “rejected claim construction.” PO Remand Br. 8. We are not persuaded by this argument. Instead, we are persuaded that Perlman meets the “receiver” and “sender” limitations of the claims, even under Proxyconn’s construction of “sender/computer” and “receiver/computer.” Perlman discusses an illustrative network embodiment using routers. See supra. A router is an intermediary device and, under Proxyconn’s construction, might not be considered a “sender” or “receiver.”7 Nevertheless, we agree with Microsoft that the disclosure of Perlman is not confined to networks using routers, but expressly applies to “any type of distributed system requiring efficient synchronization of the contents of data bases stored on nodes of a computer network.” Pet. Remand Br. 8; Ex. 1003, col. 8, ll. 57–60. Perlman’s express disclosure of nodes is referred to in Microsoft’s Petition at pages 32–33, 35, 37, and 39. And Proxyconn’s Patent Owner Response states, “Perlman discloses a sending node that broadcasts a database identifier to a plurality of receiver nodes, and updates the receiver nodes so that all of the nodes are synchronized.” PO Resp. 29.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are not persuaded by this argument because it ignores the Pentium II implementation in Santos. We are, instead, persuaded that the use of a Pentium II computer to implement the decompressor as described in Santos meets Proxyconn’s construction of “receiver/computer,” and is consistent with the Federal Circuit’s guidance. For the reasons discussed supra, we determine that the decompressor machine in Santos’s Pentium II implementation is not an intermediary device. Proxyconn contends that “at no point” did Microsoft attempt to show that Santos had a “receiver/computer” without intermediaries. PO Remand Br. 13. This argument is unavailing. Microsoft contended in its claim charts accompanying the Petition that Santos provided such a receiver/computer. As stated in the claim charts: “Receiver implementation is an ‘Intel-based PentiumII’ computer running Linux Operating system (Santos § 3.4, ¶ 1).” Ex. 1001, 6. We, therefore, conclude that taking into account the Federal Circuit’s decision, Microsoft has demonstrated that claims 22 and 23 of the ʼ717 patent are anticipated by Santos.” slip op. at 17

  Patent outcomesUS 6,757,717 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,757,717

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