Case: 14-1542 Document: 53-2 Page: 1 Filed: 06/16/2015
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MICROSOFT CORPORATION,
`Appellant
`
`v.
`
`PROXYCONN, INC.,
`Cross-Appellant
`
`v.
`
`MICHELLE K. LEE, DIRECTOR, U.S. PATENT AND
`TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2014-1542, -1543
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in No.
`IPR2012-00026, IPR2013-00109.
`______________________
`
`Decided: June 16, 2015
`______________________
`
`JOHN D. VANDENBERG, Klarquist Sparkman, LLP,
`Portland, OR, argued for appellant. Also represented by
`STEPHEN J. JONCUS, CARLA TODENHAGEN.
`
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` MICROSOFT CORPORATION v. PROXYCONN, INC.
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`BRYAN K. WHEELOCK, Harness, Dickey & Pierce, PLC,
`St. Louis, MO, argued for cross-appellant. Also represent-
`ed by MATTHEW L. CUTLER.
`
`NATHAN K. KELLY, United States Patent and Trade-
`mark Office, Office of the Solicitor, Alexandria, VA, for
`intervenor. Also represented by ROBERT J. MCMANUS,
`SCOTT WEIDENFELLER.
`
`
`______________________
`
`
`
`Before PROST, Chief Judge, LOURIE, Circuit Judge, and
`GILSTRAP, District Judge.∗
`
`PROST, Chief Judge.
`This appeal arises from the inter partes review
`(“IPR”) of U.S. Patent No. 6,757,717 (“’717 patent”) owned
`by Proxyconn, Inc. (“Proxyconn”). The United States
`Patent and Trademark Office, Patent Trial and Appeal
`Board (“Board”) concluded that all of the challenged
`claims except claim 24 were unpatentable as anticipated
`under 35 U.S.C. § 102 alone or additionally as obvious
`under 35 U.S.C. § 103. See Microsoft Corp. v. Proxyconn,
`Inc., IPR2012-00026 and IPR2013-00109, Paper No. 73
`(PTAB Feb. 19, 2014) (“Board Decision”). Microsoft
`Corporation (“Microsoft”) appeals the Board’s determina-
`tion that claim 24 is patentable. Proxyconn cross-appeals,
`challenging the Board’s use of the broadest reasonable
`interpretation standard of claim construction during
`IPRs, its unpatentability determinations, and its denial of
`Proxyconn’s motion to amend. Then–Deputy Director,
`now Director, of the United States Patent and Trademark
`
`
`∗ Honorable Rodney Gilstrap, District Judge, Unit-
`ed States District Court for the Eastern District of Texas,
`sitting by designation.
`
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`MICROSOFT CORPORATION v. PROXYCONN, INC.
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`3
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`Office (“Director”) intervened for the limited purpose of
`addressing the Board’s use of the broadest reasonable
`interpretation standard and its denial of Proxyconn’s
`motion to amend. For the reasons stated below, we
`affirm-in-part, reverse-in-part, and vacate-in-part and
`remand for proceedings consistent with this opinion.
`BACKGROUND
`The ’717 patent relates to a system for increasing the
`speed of data access in a packet-switched network. ’717
`patent col. 1 ll. 12–15. The invention makes use of “digi-
`tal digests” that act as short digital fingerprints for the
`content of their corresponding documents. Id. at col. 2 ll.
`9–13. By communicating the smaller digital digests in
`place of the documents themselves, the invention reduces
`the redundant transmission of data throughout the net-
`work. Id. at col. 2 ll. 17–25.
`The ’717 patent discloses several embodiments. The
`most basic embodiment is depicted in Figure 4, shown
`below.
`
`
`
`In this embodiment, the receiver/computer (46) sends a
`request for data to the sender/computer (42). The send-
`er/computer calculates a digital digest on the data stored
`in its memory and transmits the digest to the receiv-
`er/computer. The receiver/computer then searches its
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`own memory for data with the same digest. If it finds
`such data, it uses that data as if it were received from the
`sender/computer and issues a positive indication signal to
`the sender/computer, completing the transaction. If the
`receiver/computer does not find such data, it sends a
`negative indication to the sender/computer, prompting the
`sender/computer to transmit the actual data to the receiv-
`er/computer. Id. at col. 7 ll. 18–36, 51–67.
`In another embodiment, depicted in Figure 11 shown
`below, the network additionally interposes intermediar-
`ies, such as a gateway computer and a caching computer,
`between the sender/computer and receiver/computer.
`
`
`
`
`
`In this embodiment, the gateway (60) intercepts a digital
`digest sent from the sender/computer (42) to the receiv-
`er/computer (46), saves it in its memory, and passes it
`unchanged to the receiver/computer. If the gateway then
`intercepts a negative signal from the receiver/computer,
`the caching computer (62) searches for data with the same
`digital digest in its network cache memory. If that digest
`is found, the gateway sends the data to the receiv-
`er/computer, changes the indication signal to positive, and
`then passes the indication signal on to the send-
`er/computer. Id. at col. 8 l. 57–col. 9 l. 24.
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`The ’717 patent concludes with 34 claims directed to
`systems and methods for increasing data access in a
`packet-switched network.
`Microsoft filed two separate IPR petitions on the ’717
`patent, each challenging different claims. The Board
`joined the two proceedings and granted review of certain
`of Microsoft’s challenges to the patentability of claims 1,
`3, 6, 7, 9–12, 14, and 22–24. During the proceedings,
`Proxyconn filed a motion to amend, seeking to substitute
`(among others) new claims 35 and 36 for claims 1 and 3,
`respectively. In its final written decision, the Board
`determined that claims 1, 3, 6, 7, 9–12, 14, 22, and 23
`were unpatentable under § 102, that claims 1, 3, and 10
`were additionally unpatentable under § 103, but that
`claim 24 had not been shown to be unpatentable. The
`Board also denied Proxyconn’s motion to amend, conclud-
`ing, inter alia, that Proxyconn did not meet its burden of
`establishing that it was entitled to the amended claims,
`and rejecting Proxyconn’s argument that it did not need
`to establish patentability over a reference that was not
`part of the original bases of unpatentability for which
`review of claims 1 and 3 was instituted.
`Both parties appealed from the Board’s decision, and
`the Director intervened. We have jurisdiction under 28
`U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`As a general matter, we review the Board’s conclu-
`sions of law de novo and its findings of fact for substantial
`evidence. See In re Gartside, 203 F.3d 1305, 1316 (Fed.
`Cir. 2000). In Teva Pharmaceuticals U.S.A., Inc. v.
`Sandoz, Inc., 135 S. Ct. 831 (2015), the Supreme Court
`clarified the standards of review for claim construction.
`Pursuant to Teva’s framework and our review of Board
`determinations, we review the Board’s ultimate claim
`constructions de novo and its underlying factual determi-
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`nations involving extrinsic evidence for substantial evi-
`dence. See Teva, 135 S. Ct. at 841–42.
`In this case, because the intrinsic record fully deter-
`mines the proper construction, we review the Board’s
`claim constructions de novo. Teva, 135 S. Ct. at 840–42.
`To the extent the Board considered extrinsic evidence
`when construing the claims, we need not consider the
`Board’s findings on that evidence because the intrinsic
`record is clear. See Phillips v. AWH Corp., 415 F.3d 1303,
`1318 (Fed. Cir. 2005) (en banc).
`I
`Proxyconn’s threshold challenge to the Board’s actions
`is that the broadest reasonable interpretation standard of
`claim construction should not apply during IPRs. Proxy-
`conn argues that the U.S. Patent and Trademark Office
`(“PTO”) exceeded its authority in promulgating 37 C.F.R.
`§ 42.100(b), and that the broadest reasonable interpreta-
`tion is inappropriate during IPRs in light of the patentee’s
`limited ability to amend its claims.
`Proxyconn’s argument is foreclosed by our decision in
`In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir.
`2015), rendered after the briefing in this case began. In
`Cuozzo, this court held that the broadest reasonable
`interpretation standard in IPRs “was properly adopted by
`PTO regulation.” Id. at 1282. Because we are bound by
`the decision in Cuozzo, we must therefore reject Proxy-
`conn’s argument that the Board legally erred in using the
`broadest reasonable interpretation standard during IPRs.
`That is not to say, however, that the Board may con-
`strue claims during IPR so broadly that its constructions
`are unreasonable under general claim construction prin-
`ciples. As we have explained in other contexts, “[t]he
`protocol of giving claims their broadest reasonable inter-
`pretation . . . does not include giving claims a legally
`incorrect interpretation.” In re Skvorecz, 580 F.3d 1262,
`
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`1267 (Fed. Cir. 2009); see also In re Suitco Surface, Inc.,
`603 F.3d 1255, 1260 (Fed. Cir. 2010) (“The broadest-
`construction rubric coupled with the term ‘comprising’
`does not give the PTO an unfettered license to interpret
`claims to embrace anything remotely related to the
`claimed invention.”). Rather, “claims should always be
`read in light of the specification and teachings in the
`underlying patent.” Suitco, 603 F.3d at 1260. The PTO
`should also consult the patent’s prosecution history in
`proceedings in which the patent has been brought back to
`the agency for a second review. See Tempo Lighting Inc.
`v. Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). Even
`under the broadest reasonable interpretation, the Board’s
`construction “cannot be divorced from the specification
`and the record evidence,” In re NTP, Inc., 654 F.3d 1279,
`1288 (Fed. Cir. 2011), and “must be consistent with the
`one that those skilled in the art would reach,” In re Cor-
`tright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). A construc-
`tion that is “unreasonably broad” and which does not
`“reasonably reflect the plain language and disclosure” will
`not pass muster. Suitco, 603 F.3d at 1260.
`With these principles in mind, we now turn to the
`three claim constructions challenged by the parties in this
`appeal.
`
`II
`A
`Proxyconn challenges the Board’s construction of the
`phrase “gateway . . . connected to said packet-switched
`network in such a way that network packets sent between
`at least two other computers” recited in claim 6, and
`incorporated into dependent claims 7 and 9. Representa-
`tive claim 6 reads:
`6. A system for data access in a packet-switched
`network, comprising:
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`a gateway including an operating unit, a memory
`and a processor connected to said packet-switched
`network in such a way that network packets sent
`between at least two other computers pass through
`it;
`a caching computer connected to said gateway
`through a fast local network, wherein said caching
`computer includes an operating unit, a first
`memory, a permanent storage memory and a pro-
`cessor;
`said caching computer further including a net-
`work cache memory in its permanent storage
`memory, means for a digital digest and means for
`comparison between a digital digest on data in its
`network cache memory and a digital digest re-
`ceived from said packet-switched network through
`said gateway.
`’717 patent col. 10 l. 64–col. 11 l. 12 (emphases added).
`Before the Board, Proxyconn contended that the term
`“two other computers” referred only to the send-
`er/computer and the receiver/computer. Microsoft con-
`tended that there was no limitation on the phrase “two
`other computers,” and that those two other computers
`could be any two computers connected on the network to
`the gateway, including the caching computer. The Board
`agreed with Microsoft, concluding that the “two other
`computers” were not limited just to the sender/computer
`and the receiver/computer. The Board then concluded
`that claims 6, 7, and 9 were anticipated by the “DRP”
`reference.
`The Board erred in concluding that the “two other
`computers” could include the caching computer. Begin-
`ning with the language of the claims, claim 6 recites a
`system comprising a gateway, a caching computer, and
`“two other computers.” ’717 patent col. 10 l. 54–col. 11 l.
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`12. Not only are the “two other computers” recited inde-
`pendently from, and in addition to, the gateway and
`caching computers, the word “other” denotes a further
`level of distinction between those two computers and the
`specific gateway and caching computers recited separately
`in the claim.
`The specification confirms that the phrase “two other
`computers” is limited to the sender/receiver and comput-
`er/receiver. Other than in claim 6 itself, the phrase “two
`other computers” is used three times in the specification,
`each time as part of the embodiment containing the
`gateway and caching computer intermediaries. Id. at col.
`2 ll. 43–57, col. 3 ll. 12–26, col. 8 l. 57–col. 9 l. 9. And in
`each instance where it is used, the phrase “two other
`computers” describes components that are separate and
`distinct from the gateway and the caching computer. Id.
`For example, the specification states: “Gateway 60 is
`connected to a wide-area packet-switched network in such
`a way that network packets sent between at least two
`other computers 42 and 46 pass through the gateway 60.
`The caching computer 62 uses a part of its permanent
`storage memory for network cache memory 66.” Id. at col.
`8 l. 64–col. 9 l. 1 (emphases added). As shown in refer-
`enced Figure 11, the “two other computers 42 and 46” in
`this passage are the sender/computer and receiv-
`er/computer, respectively. Read together with labeled
`Figure 11, this portion of the specification makes clear
`that the gateway, the caching computer, and the “two
`other computers” are each separate and distinct compo-
`nents of the overall system. The Board’s construction,
`which expands the “two other computers 42 and 46” to
`include the separately identified caching computer, is
`unreasonably broad in light of the language of the claims
`and specification.
`Because the Board’s determination that claims 6, 7,
`and 9 were unpatentable was based on an unreasonably
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`broad construction of the term “gateway . . . between at
`least two other computers,” we vacate the Board’s find-
`ings of unpatentability of claims 6, 7, and 9 and remand
`for proceedings consistent with this opinion.
`B
`Along similar lines, Proxyconn also challenges the
`Board’s construction of the terms “sender/computer” and
`“receiver/computer” in independent claims 1, 10, and 22,
`and incorporated into dependent claims 3 and 23. Repre-
`sentative claim 1 reads:
`1. A system for data access in a packet-switched
`network, comprising:
`a sender/computer including an operating unit, a
`first memory, a permanent storage memory and a
`processor and a remote receiver/computer includ-
`ing an operating unit, a first memory, a perma-
`nent storage memory and a processor, said
`sender/computer and said
`receiver/computer
`communicating through said network;
`said sender/computer further including means for
`creating digital digests on data;
`said receiver/computer further including a net-
`work cache memory and means for creating digi-
`tal digests on data in said network cache memory;
`and
`said receiver/computer including means for com-
`parison between digital digests.
`’717 patent col. 10 ll. 31–45 (emphases added).
`The Board construed “sender/computer” to mean a
`computer that sends data and “receiver/computer” to
`mean a computer that receives data, and further deter-
`mined that both terms were broad enough to encompass
`intermediaries. The Board then concluded that claims 1,
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`3, 10, 22, and 23 were anticipated by the “Santos” refer-
`ence and that claims 1, 3, and 10 were additionally ren-
`dered obvious by the “Yohe” and “Perlman” references.
`Proxyconn argues on appeal, as it did before the Board,
`that the terms “sender/computer” and “receiver/computer”
`should be limited to just those two computers; they should
`not be construed as encompassing the separate interme-
`diary gateway and caching computers. Microsoft disa-
`grees, arguing that the ’717 patent does not limit either
`term to a single machine or a single function.
`The Board erred in concluding that the terms “send-
`er/computer” and “receiver/computer” were broad enough
`to include the intermediary gateway and caching comput-
`ers for similar reasons as explained above. The language
`of the specification consistently refers to the send-
`er/computer, receiver/computer, gateway, and caching
`computers as separate and independent components of an
`overall system. The figures of the ’717 patent separately
`identify and number each component of the system. And
`nowhere does the ’717 patent indicate that the gateway
`and caching computer are the same as, or can be sub-
`sumed within,
`the
`sender/computer and
`receiv-
`er/computer.
`It is true, as Microsoft and the Board point out, that
`Figure 4 describes a system wherein the receiv-
`er/computer can perform its own caching, calculating, and
`comparing functions. See ’717 patent col. 7 ll. 27–37. But
`the mere fact that the receiver/computer can perform
`those functions in the invention’s most basic embodiment
`does not mean that the claim term “receiver/computer” is
`the same as, or is broad enough to include, the separately
`identified “gateway” and “caching computer” that are
`associated only with the invention’s more complicated
`Figure 11 embodiment. To the contrary, each time the
`terms “gateway” and “caching computer” are used in the
`’717 patent, they are differentiated from the “send-
`er/computer” and “receiver/computer.”
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`The Board’s reliance on the specification’s statement
`that the gateway may be “integrally formed with the
`caching computer,” id. at col. 9 ll. 6–8, is misplaced. The
`cited sentence merely explains that the gateway and the
`caching computer can be integrated together; it says
`nothing about integration of those intermediaries with
`the sender/computer and receiver/computer. Nor was the
`Board correct in basing its constructions on an observa-
`tion that the described computers may or may not be
`located in separate housings. The patent does not use the
`word housing at all, much less give any indication that
`the proper construction of “sender/computer” and “receiv-
`er/computer” depends on the physical location of the
`claimed computers. Stated simply, the Board’s construc-
`tion of “sender/computer” and “receiver/computer” to
`include the intermediary gateway and caching computers
`does not reasonably reflect the language and disclosure of
`the ’717 patent.
`Because the Board’s determination that claims 1, 3,
`10, 22, and 23 were unpatentable was based on an unrea-
`sonably broad
`construction of
`the
`terms
`“send-
`er/computer” and “receiver/computer,” we vacate the
`Board’s findings of unpatentability of claims 1, 3, 10, 22,
`and 23 and remand for proceedings consistent with this
`opinion.
`
`C
`For its part, Microsoft challenges the Board’s con-
`struction of the phrase “searching for data with the same
`digital digest in said network cache memory” in inde-
`pendent claim 22, and incorporated in dependent claim
`24. Claim 22 reads:
`22. A method for increased data access performed
`by a receiver/computer in a packet-switched net-
`work, said receiver/computer including an operat-
`ing unit, a first memory, a permanent storage
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`memory, a processor and a network cache
`memory, said method comprising the steps of:
`receiving a message containing a digital digest
`from said network;
`searching for data with the same digital digest in
`said network cache memory,
`if data having the same digital digest as the digi-
`tal digest received is not uncovered, forming a
`negative indication signal and transmitting it
`back through said network; and
`creating a digital digest for data received from
`said network cache memory.
`’717 patent col. 12 ll. 30–45 (emphasis added). Claim 24
`adds an additional requirement that is not at issue in this
`appeal.
`Before the Board, Microsoft contended that the ’717
`patent equates “search” with “check for,” and that the
`searching step of claim 22 means comparing only two
`individual digest values against one another to determine
`whether they match. Proxyconn contended that the
`searching step instead means identifying, from among a
`set of data objects, a data object with the matching digital
`digest. The Board agreed with Proxyconn, concluding
`that the searching step required the ability to identify a
`particular data object with the same digital digest from a
`set of potentially many data objects stored in the network
`cache memory. The Board then concluded that claim 24,
`which depends from claim 22, was not rendered invalid by
`the Yohe and/or Perlman references.
`The Board correctly construed the phrase “searching
`for data with the same digital digest in said network
`cache memory.” Although the word “searching” is not
`defined in the ’717 patent, it is used several times
`throughout the specification. For example, the ’717
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`patent states that the receiver/computer “searches its
`network cache memory 48 for data with the same digest.”
`’717 patent col. 7 ll. 56–57. This sentence makes clear
`that the action of “searching” is performed on the entire
`network cache memory, not just on a single data object.
`The patent further explains that the action of “searching”
`can be performed on multiple, different memory storages:
`the “receiver/computer 46 may search not only in its
`network cache memory 48, but also in predefined loca-
`tions in its permanent storage memory.” Id. at col. 8 ll.
`50–53. Not only does the specification use the term
`“searching” to mean checking amongst a set of data ob-
`jects, it also uses the term “searching” in a way that is
`distinct from the term “comparing,” the latter of which is
`used to describe the action of checking one digital digest
`against another: “The receiver/computer also has compar-
`ison means 54 for comparing between such a calculated
`digital digest and a digital digest received from the net-
`work.” Id. at col. 7 ll. 34–37. Microsoft’s proposed con-
`struction, which would essentially equate “searching”
`with “comparing,” would render the additional “compar-
`ing” language in the specification meaningless.
`On appeal, Microsoft argues that Figure 5, which uses
`the term “check for,” supports its construction. Even if
`Microsoft is correct that Figure 5’s “check for” language
`corresponds to the “searching” step, Microsoft has not
`explained why “check for” means something other than
`looking among a set of data objects. Indeed, other figures
`in the patent use the words “search for” and “look for” to
`describe the searching step. See Figs. 8, 12, 15. Mi-
`crosoft’s reliance on Figure 5 is therefore misplaced.
`Microsoft additionally argues that the Board’s con-
`struction is wrong because it would not make sense for
`the receiver/computer to compare a digest for a target
`data object (e.g., a legal brief) to digests of data objects
`unrelated to that target data object (e.g., a lunch menu).
`According to Microsoft, “the patent’s algorithm requires
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`only a single digest-to-digest comparison operation.”
`Appellant’s Br. 9, ECF No. 19. But this argument suffers
`from the same flaw described above: “comparing” is not
`the same as “searching.” Microsoft acknowledges this
`point in its brief, stating: “the ‘search’ for a matching data
`object ends with a comparison between a single pair of
`digests.’” Id. at 10. While it may true that the searching
`process ends with the comparison between the two target
`data objects, neither the claims nor specification limit the
`“searching” step to that final comparison. Based on the
`clear language of the specification, the Board was correct
`in concluding that the broadest reasonable interpretation
`of “searching for data with the same digital digest in said
`network cache memory” includes searching in a set of
`potentially many data objects.1
`On appeal, Microsoft’s only argument for reversing
`the Board’s determination on claim 24 is that the Board’s
`construction of claim 22’s “searching” limitation was
`wrong. Because we agree with the Board’s construction,
`and because Microsoft does not alternatively argue that
`claim 24 is unpatentable even under the correct construc-
`tion, we affirm the Board’s determination that claim 24 is
`patentable.
`
`III
`Having vacated and remanded the Board’s patentabil-
`ity determinations with respect to claims 1, 3, 6, 7, 9–10,
`22, and 23, and affirmed the Board’s patentability deter-
`mination with respect to claim 24, the only patentability
`determinations left for us to address are those relating to
`claims 11, 12, and 14.
`
`
`1 We would reach the same result if we were to ap-
`ply the traditional claim construction framework set forth
`in Phillips, 415 F.3d 1303.
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` MICROSOFT CORPORATION v. PROXYCONN, INC.
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`The Board concluded that claims 11, 12, and 14 were
`anticipated by the DRP reference. DRP describes a
`protocol for the efficient replication of data over the
`internet. DRP explains that the inefficiency of download-
`ing the same data more than once can be avoided through
`the use of “content identifiers” uniquely associated with
`individual pieces of data. The content identifiers are
`compiled into an index, which serves as a snapshot of the
`state of a set of files at any given time, and which is
`retrieved by a client using a normal “GET” request. After
`a client’s initial data download, a client can update con-
`tent by downloading a new version of the index and
`comparing it against the previous versions of the index.
`Because each file entry in the index has a content identi-
`fier, the client can determine which files have changed
`and thus need to be downloaded in order to bring the
`client up to date.
`On appeal, Proxyconn argues that DRP does not dis-
`close “receiving a response signal” recited in independent
`claim 11, and incorporated into dependent claims 12 and
`14. Representative claim 11 reads:
`11. A method performed by a sender/computer in
`a packet-switched network for increasing data ac-
`cess, said sender/computer including an operating
`unit, a first memory, a permanent storage
`memory and a processor and said send-
`er/computer being operative to transmit data to a
`receiver/computer, the method comprising the
`steps of:
`creating and transmitting a digital digest of said
`data from said sender/computer to said receiv-
`er/computer;
`receiving a response signal from said receiv-
`er/computer at said sender/computer, said re-
`sponse signal containing a positive, partial or
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`17
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`negative indication signal for said digital digest,
`and
`if a negative indication signal is received, trans-
`mitting said data from said sender/computer to
`said receiver/computer.
`’717 patent col. 11 ll. 34–48 (emphasis added).
`In particular, Proxyconn argues that because the DRP
`protocol is client-driven (e.g., because DRP’s client deter-
`mines which files it needs to download to bring itself up to
`date), there is no disclosure that DRP’s server “under-
`stands whether the files downloaded by the client are
`related to an index previously downloaded by the client,
`or not.” Cross-Appellant’s Br. 55, ECF No. 22. According
`to Proxyconn, “the file download by the client is not linked
`to a prior index download, and therefore CANNOT be
`considered a ‘response’” as required by claim 11. Id.
`Proxyconn’s argument fails for the simple reason that
`nothing in claim 11 requires that the sender/computer
`“understand” whether a request
`from the receiv-
`er/computer is correlated with a previous transmission.
`As Microsoft points out, once the receiver/computer in the
`’717 patent is unable to find a matching digital digest and
`sends a negative indication to the sender/computer, “all
`that’s needed from the server is to transmit the desired
`file, whether or not it ‘understands’ what led the receiver
`to send that negative indication.” Appellant’s Resp. and
`Reply Br. 22, ECF No. 28.
`We agree with the Board that the download requests
`that DRP’s client sends to the server after receiving the
`index from the server and comparing it to the local index
`meets the “receiving a response signal” limitation of claim
`11. As the Board explained, the DRP client either sends a
`GET request (when none of the content identifiers are up
`to date), a differential GET request (when some, but not
`all, of the content identifiers are up to date), or no request
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`(when all content identifiers are up to date). These three
`types of requests correspond to the “response signal
`containing a positive, partial, or negative indication
`signal” recited in claim 11. For these reasons, we con-
`clude that the Board did not err in concluding that DRP
`anticipates claims 11, 12, and 14 of the ’717 patent.
`IV
`Finally, Proxyconn challenges the Board’s denial of its
`motion to amend claims 1 and 3.2 Before reaching the
`merits of Proxyconn’s arguments, we first discuss the
`legal framework governing amendments during IPRs.
`A
`Through enactment of the America Invents Act
`(“AIA”), Congress created the new IPR proceeding for the
`purpose of “providing quick and cost effective alternatives
`to litigation.” H.R. Rep. No. 112-98, pt. 1, at 48 (2011),
`2011 U.S.C.C.A.N. 67, 78. The AIA conveys certain
`authority to the PTO to “prescribe regulations” “governing
`inter partes review” and to “set[] forth standards and
`procedures for allowing the patent owner to move to
`amend the patent.” 35 U.S.C. § 316(a)(4), (a)(9). With
`respect to amendments in particular, the statute provides
`that “the patent owner may file 1 motion to amend the
`patent” and that such amendment “may not enlarge the
`scope of the claims of the patent or introduce new matter.”
`Id. § 316(d)(1), (d)(3). The statute also provides that the
`Director shall, upon final determination, “incorporate[] in
`the patent . . . any new or amended claim determined to
`be patentable.” Id. § 318(b).
`
`2 Proxyconn’s motion sought to amend a number of
`other claims as well. But because Proxyconn’s appeal
`challenges only the Board’s denial of its motion with
`respect to claims 1 and 3, we review the Board’s actions
`regarding these two claims only.
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`19
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`Relying on the authority granted by the AIA, the PTO
`has promulgated two regulations that are relevant to this
`appeal. First is 37 C.F.R. § 42.20, which applies genera