Trials @uspto. gov
`571-272-7822
`
`Paper 35
`Date: July 28, 2023
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`Vv.
`
`UNILOC2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`Before MIRIAM L. QUINN, AMANDAF. WIEKERand
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`RAEVSKY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 114, 318
`
`
`571-272-7822
`
`Paper 35
`Date: July 28, 2023
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`Vv.
`
`UNILOC2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`Before MIRIAM L. QUINN, AMANDAF. WIEKERand
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`RAEVSKY,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 114, 318
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`I.
`
`INTRODUCTION
`
`This case is on remand from the United States Court of Appeals for
`
`the Federal Circuit to addressthe patentability of claims 1—4, 6-14, and
`
`16-21 of U.S. Patent No. 6,467,088 B1 (“the ’088 patent’’), owned by
`
`Uniloc 2017 LLC (“Patent Owner”). Microsoft Corp. v. Uniloc 2017 LLC,
`
`No. 2021-2039 (Fed. Cir. Oct. 20, 2022) (nonprecedential).
`
`For the reasons discussed below, we determinethat Petitioner has
`
`provenby a preponderanceofthe evidencethat claims 1—4, 6-14, and
`
`16—21 of the ’088 patent are unpatentable.
`
`Il. BACKGROUND
`
`A. The ’088 Patent and Illustrative Claim
`
`The ’088 patentis directed to techniques for upgrading or
`
`reconfiguring software and/or hardware componentsin electronic devices.
`
`Ex. 1001, 1:6—9. According to the ’088 patent, prior art software update
`
`techniquesfail to avoid potential conflicts and thus ensure compatibility
`
`becausethey do not accountfor interdependenciesof the resources required
`
`by the desktopsor thefiles resident in the remote devices.
`
`/d. at 1:41—45,
`
`1:52—56, 1:65—2:3, 2:10—-14.
`
`The ’088 patent solves this problem by providingalist or listing that
`
`indicates “whichof a set of software components supported by [a
`
`reconfiguration] manager 10 are knownto work well together or are
`
`otherwise compatible.” Jd. at3:36—42. For instance, Figure 1 of the 088
`
`patent, reproduced below,illustrates reconfiguration manager10 that
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
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`“includesa listing 16 of known configurations, and a repository 18 of
`
`software components.” /d. at 3:27-29.
`
`REQUEST
`
`RECONAIGURATION MANAGER
`__KNGWNCONFIGURATIONS
`Wen
`Lo
`
`£
`
`—
`
`ORVIREX
`
`140
`
`RN RN. a LZ
`
`:
`
`RESPONSE
`oes »
`
`v20.
`
`“e
`
`REPOSITORY
`OF SW
`COMPONENTS
`
`FR {te KNOWN BAD CONFIG.
`
`KNOWN GOOD CONFIG.
`
`Figure | illustrates reconfiguration manager 10 interacting with
`
`electronic device 12, also referred to as “Device X.” Jd. at 3:14—-16. When
`
`reconfiguration manager10 receives a request for an upgrade from
`
`Device X, the request indicates that the device wants to upgrade to
`
`version 2.0 of software component A and includesa list of the components
`
`currently on the device,1.e., version 1.1 of componentA,version 2.0 of
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`componentC,and version 2.3 of component B.
`
`/d. at 4:12—19.!
`
`Reconfiguration manager 10 processes the request, and if appropriate,
`
`delivers the requested version 2.0 of software component A.
`
`/d. at 4:22—26.
`
`Processing the request involves generating a potential upgrade configuration
`
`that will satisfy the received request, and searching through a set of known
`
`“bad” configurations.
`
`/d. at 4:62—66. A known “bad”configuration is
`
`indicated in Figure 1 as a dashed line between componentsthatare not
`
`compatible. Jd. at3:58-61. For example, “[t|he pair including version 1.8
`
`of component A and version 1.0 of component C is an example of a known
`
`bad configuration.” /d. at 3:61-63.
`
`If the upgrade configuration correspondsto a bad configuration, the
`
`reconfiguration manager“attempts to find a set or sets of potential upgrade
`
`configurations from a set of known good configurations.” Jd. at 4:67—5:3.
`
`A known “good”configuration is indicated in Figure 1 by a solid line
`
`between a given pair of components indicating that the components work
`
`well together or are otherwise compatible.
`
`/d. at 3:52—55.
`
`Challenged claim 1, reproduced below,is illustrative of the
`
`challenged claims:
`
`' Although Fig. 1 depicts device 12 having three versions of software
`component A (labels 14A—C), the description of Fig. 1 indicates these are
`different versions of componentsA, B, and C, respectively. Ex. 1001, 3:20—
`24.
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`1. A processor-implemented methodfor controlling the
`reconfiguration of an electronic device, the method comprising
`the stepsof:
`receiving information representative of a reconfiguration
`requestrelating to the electronic device;
`determiningat least one device componentrequired to
`implement the reconfiguration request;
`comparing the determined componentand information
`specifying at least one additional componentcurrently
`implemented in the electronic device with at least one of a
`list of known acceptable configurations for the electronic
`device and a list of known unacceptable configurations for
`the electronic device; and
`generating information indicative of an approvalor a denial of
`the reconfiguration request basedatleast in part on the
`result of the comparingstep.
`
`Ex. 1001, 6:43-59. Werefer to the steps of claim 1 as the receiving step,
`
`the determining step, the comparing step, and the generating step,
`
`respectively.
`
`B. Trial Background
`
`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.’’)
`
`requesting interpartes review of claims 1—4, 6-14, and 16-21 of the
`
`°088 patent. The Petition asserts that the claims are unpatentable on the
`
`following grounds (Pet. 3—4), which are supported by a declaration by John
`
`Villasenor (Ex. 1003):
`
`
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`IPR2020-00023
`Patent 6,467,088 B1
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`
`
`1-4, 6-14, 16-21 § 103|Apfel,3 Lillich,4 Todd>
`
`§ 103|Apfel, Lillich, Todd, Pedrizetti®
`1—3, 9-13, 19-21
`§ 103
`Apfel, Lillich
`1, 3,4, 6-11, 13,
`14, 16-21
`§ 103
`Apfel, Todd
`
`Weinstituted review onall grounds presented. Paper 7 (“Institution
`
`Decision”). During the trial, Patent Ownerfiled a Patent Owner Response
`
`(Paper 10, “PO Resp.”) but did not submit expert testimony. Petitioner then
`
`filed a Reply (Paper 11), accompanied by a second declaration by John
`
`Villasenor (Ex. 1016). Patent Ownerthen filed a Sur-Reply (Paper13,
`
`“Sur-Reply”). We heard oral argument on January 15, 2021, a transcript of
`
`which appearsin the record (Paper 19).
`
`C. Final Written Decisionand Federal CircuitAppeal
`
`Weissued a Final Written Decision determining that Petitioner had
`
`not proven by a preponderanceof evidence that claims 1—4, 6—14, and
`
`16-21 are unpatentable. Paper 20 at 32—33 (“Final Decision” or “Final
`
`? The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285-88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`The ’088 patent wasfiled June 30, 1999, so we apply pre-AIA§ 103.
`Ex. 1001, code (22).
`3 U.S. Patent No. 5,974,454, filed as Exhibit 1004.
`4U.S. Patent No. 5,613,101, filed as Exhibit 1005.
`> U.S. Patent No. 5,867,714, filed as Exhibit 1006.
`© U.S. Patent No. 6,151,708, filed as Exhibit 1007.
`
`
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`IPR2020-00023
`Patent 6,467,088 B1
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`Dec.”). Petitioner filed a Notice of Appeal of the Final Decision with the
`
`United States Court of Appeals for the Federal Circuit. Paper 21.
`
`On October 20, 2022, the Federal Circuit issued a decision in the
`
`appeal vacating our Final Decisionasto all challenged claims and
`
`remandingfor further proceedings. Microsoft, slip. op. at 7. The Federal
`
`Circuit also reversed the Board’s “apparent construction”that “narrow[ed]
`
`the determining and comparingsteps to a certain order.” Jd.
`
`The Federal Circuit issued its mandate on November28, 2022.
`
`D. Remand Proceedings
`
`After the Federal Circuit mandate issued, the parties proposed a
`
`procedure and schedule on remand. Paper 24, 2. Subsequently, we issued
`
`an order with a remand briefing schedule permitting the parties to address
`
`the impact of the Federal Circuit’s opinion but not permitting the parties to
`
`mtroduce new evidence.
`
`/d. The parties thenfiled the following briefing:
`
`Petitioner’s RemandBrief (Paper 32, “Pet. Remand Br.”’), Patent Owner’s
`
`Remand Brief (Paper 31, “PO Remand Br.”), Petitioner’s Remand Response
`
`(Paper 34, “Pet. Remand Resp. Br.”), and Patent Owner’s Remand Reply
`
`(Paper 33, “PO Remand Reply Br.”).
`
`A. Principle ofLaw
`
`Ill. ANALYSIS
`
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc. , 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). A claim is unpatentable as obviousif “the differences between the
`
`
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`IPR2020-00023
`Patent 6,467,088 B1
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`subject matter sought to be patented andthe prior art are such that the
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`subject matter as a whole would have been obviousat the time the invention
`
`was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`
`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
`
`on underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences betweenthe prior art and the claims; (3) the
`
`level of skill in the art; and (4) whenin evidence, objective indicia of
`
`nonobviousness.’ See Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966). We apply these principles to the Petition’s challenges.
`
`B. Level of Ordinary Skillin the Art
`
`Weapply the following assessmentofthe level of ordinary skill in the
`
`art: a person of ordinary skill in the art (“POSITA”) “would have had a
`
`Bachelor’s Degree in Electrical Engineering, ComputerScience,ora related
`
`subject, and one or more years of experience working with configuring
`
`hardware and software componentsin electronic devices,” and “[I]ess work
`
`experience may be compensated bya higher level of education, suchas a
`
`Master’s Degree, and vice versa.” Final Dec. 7-8.
`
`C. Claim Construction
`
`In an interpartes review proceeding, a claim of a patent is construed
`
`using the samestandard used in federaldistrict court, “mcluding construing
`
`the claim in accordance with the ordinary and customary meaningof[the]
`
`’ The parties have not provided any such evidencein this proceeding.
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`claim as understood by oneof ordinary skill in the art and the prosecution
`
`history pertaining to the patent.” 37 C.F.R. §42.100(b) (2019).
`
`There are no claim construction issues on remand. Weapply the
`
`Federal Circuit’s instruction that we must avoid “narrow|ing] the
`
`determining and comparingstepsto a certain order.” Microsoft, slip. op.
`
`at 7.
`
`D. Asserted Obviousness overApfel, Lillich, and Todd
`
`Petitioner contends, inter alia, that clams 1-4, 6-14, and 16-21
`
`would have been obviousover the combination of Apfel, Lillich, and Todd.
`
`Pet. 32-64; see also infra Section III.E (addressing the combination of
`
`Apfel, Lilich, Todd, and Pedrizetti). In the alternative, Petitioner argues
`
`that (1) claims 1—3, 9-13, and 19—21 would have been obviousover Apfel
`
`and Lillich (Ground 3), or that (2) claims 1, 3, 4, 6-11, 13, 14, and 16-21
`
`would have been obvious over Apfel and Todd (Ground 4). Jd. at 69-72.
`
`Before addressing the merits of Grounds | and 2, wefirst address the
`
`Petition’s alternative grounds.
`
`Claim | recites in part,
`
`comparing the determined componentand information
`specifying at least one additional componentcurrently
`implementedin the electronic device with at least one of a list
`of known acceptable configurations for the electronic device
`and a list of known unacceptable configurationsfor the
`electronic device.
`
`Ex. 1001, 6:51—56 (emphasis added). Similar limitations are found in
`
`independent clams 11 and21.
`
`/d. at 7:56—62, 8:57—62. In our Final
`
`Decision, we observedthat Petitioner arguesthis limitation requires a
`
`
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`IPR2020-00023
`Patent 6,467,088 B1
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`comparison with bothalist of known acceptable configurations anda list of
`
`knownunacceptable configurations, because ofthe claim’s conjunctive “at
`
`least one of.” Final Dec. 28 (citing Pet. 23—25). The Petition’s two
`
`alternative grounds addressa potential disjunctive construction of this
`
`limitation, “namely as covering only a comparisonto “a list of known
`
`acceptable configurations’ or a comparisonto ‘a list of known unacceptable
`
`configurations.’” Pet. 70.
`
`Our Final Decision did not addressthese alternative grounds because
`
`Petitioner’s conjunctive interpretation was “undisputed on the full record.”
`
`Final Dec. 28. This interpretation remains undisputed on remand. See
`
`generally PO Remand Br. Thus, we only address Petitioner’s ground
`
`alleging unpatentability of claims 1-4, 6-14, and 16—21 over the
`
`combination of Apfel, Lillich, and Todd and do notreachPetitioner’s
`
`alternative grounds.
`
`I. Overview ofApfel
`
`Apfel is concerned with “[i]nstalling and updating a software program
`
`module component.” Ex. 1004, code (57). In particular, Apfel describes a
`
`system for automatically updating a software program module component
`
`stored on a computer, as shown in Figure 3 reproduced below.
`
`10
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`COMPUTER
`
`20
`
`Figure 3 of Apfel illustrates a system including computer 20, database
`
`server 80a, and package server 80b.
`
`/d. at 6:36—37. Computer 20 requests
`
`an upgrade by sending query 100 to databaseserver 80a.
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`/d. at 6:39—40. If
`
`an upgradeis available, then database server 80a will send back response
`
`105 that includes the Uniform Resource Locator (URL)of the upgrade
`
`package. Id. at 6:63—65. After computer 20 receives response 105 including
`
`the URLof the upgrade package, computer 20 will send query 110 to
`
`package server 80b at the URLof the update package. Id. at 7:4—8.
`
`Package server 80b will send update package 115 to computer 20, and
`
`computer 20 will then install the update package 115.
`
`/d. at 7:83-10. The
`
`servers are responsible for assessing whether an upgradeis available and
`
`whetherit should be downloaded basedon the information sent by computer
`
`20. Id. at 7:13—-16.
`
`11
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`2. Overview ofLillich
`
`Lillich describes a “method and apparatusfor verifying compatibility
`
`between componentsof a system[,] which share a client-provider
`
`relationship.” Ex. 1005, code (57). Figure 1 of Lillich is reproduced below.
`
`Figure 1 of Lillich is a symbolic, simplified block diagram of
`
`system 30.
`
`/d. at 5:28. As shown in Figure 1, “[s]ystem 30 may be
`
`hardware, software, or a combination thereof, and includes client 32 and
`
`provider 34 connected by .. . connector 36 such that information from the
`
`client and provider can be compared.” /d. at 6:7—-10. Lillich further
`
`describes a connector for connecting, at runtime,the client to the
`
`implementation provider to determine compatibility between the client and
`
`the implementation provider. Jd. at 4:28-32. “Compatibility checksare
`
`performed between aclient and available versionsof the provider(s),
`
`implementation providers, with whichit has been linked.” /d. at 4:32—35.
`
`12
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`IPR2020-00023
`Patent 6,467,088 B1
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`3. Overview ofTodd
`
`Todd describes “a system for detecting and avoiding faults stemming
`
`from conflicts in hardware and/or software configurations in a computer
`
`system.” Ex. 1006, code (57). Figure 1 of Todd is reproduced below.
`
`FIG. 1
`
`100
`
`
`130 REMOTE BATA SOURCE)
`
`|
`
`REGISTRATION
`
`DATABASE
`
`132
`
`&
` ‘i
`
`|
`
`
`
`|
`||
`
`MEMORY |
`
`118
`DEVICE
`
`_____ FOoMeunicaTions |
`
`CIRCUITRY
`
`PROCESSING
`$20
`1 CIRCUITRY
`eee _
`ae
`
`dt CONFIGURATION
`‘ DETECTION CIRCUITRY
`18
`\
`pe
`EoTIONGROUT
`NONWOLATILE
`MEMORY
`
`
`a
`
`oop eeeeeeennetttnenennn
`
`S10 (GOMPLUTER SYSTEM}
`
`In Figure 1 of Todd, system 100 includes computer system 110 and
`
`remote data source 130. Computer system 110 includes configuration
`
`detection circuitry 120 responsible for obtaining data pertainingto atleast a
`
`portion of the current hardware and software configuration of computer
`
`13
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`system 110.
`
`/d. at 6:42—46. Configuration detection circuitry 120
`
`determines the hardware and software configuration automatically by
`
`polling hardware components and cataloging software componentsto create
`
`a list of current configuration data setting forth the componentsthat
`
`comprise computer system 110. Jd. at 6:50—55. Remote data source 130
`
`contains a database of software revisions that may be communicated to
`
`computer system 110 as a function ofits current configuration data. Id. at
`
`12:1—8. Diagnostic and analytic processes within remote data source 130
`
`analyze the current configuration data of computer system 110 to identify
`
`conflicts.
`
`Id.
`
`4. Independent Claim 1
`
`a. Pre-appeal Final Written Decision
`
`In the Final Decision, we determined that the combination of Apfel,
`
`Lillich, and Todddoesnot disclose or suggest the comparing step of the
`
`independent claims. Final Dec. 15—26. We reasonedthat although “Apfel’s
`
`database server does perform a comparison,”this comparisonis “between
`
`the information presented in the query andthe lookup table,” so there is no
`
`“determined component’ in Apfel’s query.” Jd. at 18. We further found
`
`that “Apfel lacks detail sufficient to explain that the database lookup
`
`involves further comparing the resulting newer version componentwith the
`
`query informationthat identifies currently installed components... witha
`
`knownlist of acceptable configurations.” /d. at 19. We also found that
`
`Apfel does not inherently or implicitly disclose this comparison.
`
`/d. at 20,
`
`23—26. We further determined that Petitioner’s reliance on Lillich does not
`
`14
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`IPR2020-00023
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`cure Apfel’s deficiency because Petitioner does not rely on Lillich “for
`
`teaching the comparisonthat includes the (a) determined component.” /d. at
`
`27. Accordingly, we determinedthat Petitioner had not proven the
`
`unpatentability of claims 1—3, 6, 7, 12—14, 16-18, and 20 by a
`
`preponderance of evidence.
`
`/d. at 29.
`
`b. Federal Circuit Decision
`
`The Federal Circuit found that the Board’s conclusion that Apfel did
`
`not disclose the comparingstep lacked substantial evidence. Microsoft, slip
`
`op. at 3. The court determined that the Board “erred in its factual finding
`
`regarding Apfel because it overlooked a passagethat specifically discloses
`
`assessing the compatibility of available upgrades.” Jd. at 3-4. This passage
`
`of Apfelstates:
`
`The servers are responsible for assessing whether an upgradeis
`available and whether it should be downloadedbased on the
`information sent by computer 20. For example, evenif an
`upgradeis available, it should not be downloadedif the
`computer20 already has the upgradeorif the upgradeis
`somehow incompatible with computer20.
`
`Id. (quoting Ex. 1004, 7:13—19). The court found that the Board’s
`
`description of this passage, that “Apfel would not allow the downloadof a
`99 6¢
`
`version . .. that 1s incompatible with computer 20,”
`
`“contradictsits
`
`conclusion that “Apfel’s database lookup only determinesthat a new
`
`upgrade is available—notthat there is a known compatible upgrade
`
`available.’” /d. at 4 (citing Final Dec. 16-17).
`
`15
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`The court further found that the following Apfel passage also appears
`
`to contradict the Board’s conclusion that Apfel does not disclose a
`
`comparingstep:
`
`At decision step 427, it is determined whetherthere is an
`upgrade package for the Web Authorng Components program
`module. In the exemplary embodiment, the database server 80a
`uses the information received in the HTTP queryat step 415 to
`determine if an upgrade packageis available, suchas by a
`database lookup. Different update packages may be provided
`for different version combinations, different operating systems,
`and different languages. Thus, the database server 80a
`maintains a database of upgrade packagesand corresponding
`configurations which should result in their download.
`
`Id. at 4—5 (citing Ex. 1004, 9:30-40). The Federal Circuit explained that this
`
`passage, “although not explicitly referrmg to a compatibility check,
`
`recognizesthat different update packages correspond, for example, to
`
`different operating systems, andthat a database of the different
`
`configurations is maintamed to guide downloads.” /d. at4. The court
`
`focused on the following sentence from this passage—“[d]ifferent update
`
`packages maybe provided for different version combinations, different
`
`operating systems, and different languages.” /d. at 5 (citing Ex. 1004, 9:36—
`
`38). This passage, according to the court, “suggests a form of compatibility
`
`assessmentto find the correct upgrade package.” Id.
`
`The court further stated that “[t]he Board also erred when it concluded
`
`that Apfel did not disclose the comparing step because [Apfel] did not
`
`perform the determining and comparingsteps in a certain order required by
`
`the disputed claims.” /d. (citing Final Dec. 18—19, 21). The court foundthat
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`16
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`“the Board misconstruedthe claims to require .
`
`.
`
`. two separate acts in a
`
`certain order.” Jd. at 5—6. Instead, the court found that “the claim cannot
`
`require that the steps be performed in the orderwritten, but rather allows for
`
`the determining and comparing steps to be part of a single process.” Jd. at 7.
`
`This is because “[a]ny construction that would narrow the determining and
`
`comparing steps to a certain orderis not supportedby either the claim
`
`language or the specification.” Jd. Thus, the court reversed the Board’s
`
`“apparent construction.” Id.
`
`The court concluded, “[b]ecause the Board erred in concluding that
`
`Apfel does not perform the claimed ‘comparing’ step and implicitly relied
`
`on an improperclaim construction, we vacate the Board’s decision and
`
`remandfor further proceedings consistent with this opinion.” Jd.
`
`c. Disputed Issues on Remand
`
`On remand,the parties addressthe following issues: whether Apfel
`
`discloses the comparing step, and whetherPetitionerset forth a sufficient
`
`rationale to combine the references. Wepresent ouranalysis of claim 1 in
`
`the orderof the recited limitations, beginning with the receivingstep.
`
`(1) Receiving step
`
`Claim 1 requires receiving information representative of a
`
`reconfiguration requestrelating to the electronic device. Petitioner asserts
`
`that Apfel teachesthis receiving step becauseit describes a “database server
`
`receiving a reconfiguration (upgrade) request for software resident on a
`
`computer, whichincludes the information necessary to determine whether an
`
`17
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`appropriate upgradeis available.” Pet. 35-37. We agree that Apfel teaches
`
`this limitation.
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`Apfel teaches that the computer sends a query to the databaseserver.
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`Ex. 1004, 6:38-40. This query, Apfel states, “includesall the information
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`regarding computer20 that the database server 80a needs to determineif an
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`upgradeis available and,if an upgradeis available, to determine the location
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`of the upgrade package.” Id. 6:49-53. More specifically, Apfel describes
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`the HTTP query as including information suchasthe version of the program
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`module componentto be upgraded,the platform that the program module
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`componentis running on, and the language of the program module
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`component.
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`/d. at 2:27—35,9:1—9. Thus, the database server receives from
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`the computer a communication, specifically an HTTP query, which
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`constitutes the recited “reconfiguration request”that relates to the computer
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`as it provides specific information about the configuration of the computer,
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`such as the platform the software is running on and the language of the
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`program. This query is representative of a “reconfiguration request” because
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`based onits content, the server is configured to determine whether an
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`upgradeis available for that computer,1.e., the computer’s configuration
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`would be updated. Patent Ownerpresents no argument regarding the
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`receiving step. See generally PO Resp.
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`Wedeterminethat Petitioner has shownbya preponderanceofthe
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`evidence that Apfel teachesthe receiving step.
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`18
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`IPR2020-00023
`Patent 6,467,088 B1
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`(2) Determining step
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`The claim requires determining at least one device component
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`required to implementthe reconfiguration request. Petitioner relies on Apfel
`
`as teachingthis limitation because the Apfel database server uses the
`
`received HTTP request from the previousstep to perform a database lookup
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`to determine if an upgrade packageis available. Pet. 37-38; Ex. 1004,
`
`6:49—53, 8:53-55, 9:30-35. We agree that Apfel teaches the determining
`
`step. Apfel’s database server uses the information received in the HTTP
`
`query to determine if an upgrade package is available using the database
`
`lookup. Ex. 1004, 9:30—-35. Thus, Apfel determines the device component
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`required to implementthe reconfiguration request because the lookupresults
`
`in identifying an available upgrade package. Patent Ownerpresents no
`
`argument regarding the determining step. See generally PO Resp.
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`Wedeterminethat Petitioner has shown by a preponderanceof the
`
`evidence that Apfel teaches the determiningstep.
`
`(3) Comparing step
`
`Asnoted above, Petitioner argues that duringtrial, the parties only
`
`disputed whetherthe prior art satisfied the clammed comparingstep, and the
`
`Federal Circuit answered that question in the affirmative. Pet. Remand Br.
`
`1-4. Petitioner highlights the court’s statementthat “[t]he Board found that
`
`Apfel did not disclose the comparing step. That conclusion lacks substantial
`
`evidence.” Jd. at3. Petitioner further highlights the court’s statements that
`
`Apfel, at column 9, lines 30—40,“suggests a form of compatibility
`
`19
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`IPR2020-00023
`Patent 6,467,088 B1
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`assessment”and that Apfel, at column7, lines 13-19, “specifically
`
`references incompatibility,” thus “render[ing] the Board’s conclusion that
`
`Apfel does not disclose a compatibility check lacking in substantial
`
`evidence.” Jd. Petitioner adds, “[g]iven the Federal Circuit’s finding that
`
`Apfel discloses the claimed ‘comparing,’ the only issue on remandis
`
`whetherthe priorart satisfies the other claimed elements.” /d. at 4.
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`Petitioner argues that, because Patent Ownerdid not challenge those other
`
`elements duringtrial, the Board should find for Petitioner for the reasonsset
`
`forth in the Petition, consistent with the Board’s findings in the Institution
`
`Decision.
`
`Id.
`
`Patent Owner contendsthat the court’s determination that Apfel
`
`requires a comparing step does not require that the comparing step include
`
`the recited “information specifying at least one additional component.”
`
`PO Remand Br. 2. According to Patent Owner, a proper reading of Apfel
`
`showsthat the first passage relied upon bythe court, see Ex. 1004, 7:13—19,
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`provides a high-level overview of a two-assessmentprocess.
`
`/d. Patent
`
`Ownerarguesthat these two assessments are (1) a determination of whether
`
`an upgradeis available, and (2) an assessment of the compatibility of the
`
`determined upgrade.
`
`/d. Patent Owner contendsthat the second passage
`
`relied uponbythe court, see Ex. 1004, 9:30—40, provides a detailed
`
`explanation of the first assessment. Id. According to Patent Owner,“[t]he
`
`second assessmentof [Ex. 1004, 7:13—19] makesclear that a compatibility
`
`determination is distinct from determiming an upgrade, thus demonstrating
`
`that the second passage does not include a compatibility determination.” Jd.
`
`20
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`
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`IPR2020-00023
`Patent 6,467,088 B1
`
`at 2-3. Thus, Patent Owner contendsthat Apfel provides no “indication of
`
`the information or determination involved in the compatibility
`
`determination, demonstrating that Apfel utterly fails to disclose the
`
`comparingrecitations of the independent claims.” /d. at 3.
`
`Petitioner respondsthat “[t]he Court did not remandfor the Board to
`
`overturn the Court’s determination that Apfel teaches the ‘comparing’ step,”
`
`yet that is what Patent Owner’s remand briefrequests. Pet. Remand Resp.
`
`Br. 1. Petitioner contendsthat “the mandate rule forecloses reconsideration
`
`of issues implicitly or explicitly decided on appeal,” including whether
`
`Apfel discloses the comparing step.
`
`/d. at 2 (citing Amado v. Microsoft
`
`Corp., 517 F.3d 1353, 1364 (Fed. Cir. 2008)). In Petitioner’s view,“Patent
`
`Owner’s remandbrief ignores the determination of the Court, rehashes the
`
`same Apfel passagesalready carefully considered by the Court, and seeks a
`
`different outcome.” /d. at3. Petitioner asserts that Patent Ownertakes out
`
`of context the court’s statementthat “the Boardfailed to explain why [Afpel
`
`at Ex. 1004, 7:13—19] did not disclose the required compatibility check,” as
`
`this statementis not an instruction for the Boardto revisit the issue. Id.
`
`Petitioner argues that no exception to the mandate rule applies here because
`
`no new evidencehas beenpresented and because Patent Ownerdoes not
`
`argue that the court’s opinion wasclearly erroneousor that a change in
`
`applicable law has occurred.
`
`/d. at 5 (citing Banks v. United States, 741 F.3d
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`1268, 1276 (Fed. Cir. 2014)).
`
`Patent Ownerrespondsthat P etitioner mischaracterizes the court’s
`
`opinion as finding that Apfel discloses the comparing step. PO Remand
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`21
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`IPR2020-00023
`Patent 6,467,088 B1
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`Reply Br. 1. Patent Ownerarguesthat Petitioner “disregards that the
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`Court’s opinion specifically stated that the Board’s Final Written Decision
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`... failed to explain why this passage from Apfel did not disclose the
`
`required compatibility check.’” Jd. (citing Ex. 1004, 7:13—19). According
`
`to Patent Owner,its opening brief “provides the explanation, which the
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`Court stated was absent from the Final Written Decision, as to whycol. 7,
`
`lines 13-19 of Apfel fails to disclose the required compatibility check,” and
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`“Petitioner’s Remand Brieffails to provide any alternative explanation.” Jd.
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`at 1—2.
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`Turning to our analysis, we find Petitioner’s arguments more
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`persuasive. Specifically, we agree that the Federal Circuit already
`
`determined that Apfel teaches or suggests the comparing step. Microsoft,
`
`slip op. at 3-7. Whether Apfel discloses the comparing step was a close
`
`question during trial, and the Federal Circuit reached a different conclusion
`
`on appeal. The Federal Circuit’s opinion andthe evidentiary record compel
`
`us to conclude that Apfel teaches or suggests the comparingstep.
`
`Westart with the Petition. As noted above, the claimed comparing
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`step requires comparing (1) the determined componentand (2) information
`
`specifying at least one additional component currently implementedin the
`
`electronic device with a list of acceptable and a list of unacceptable
`
`configurations. In our analysis of the determining step we foundthat Apfel
`
`teachesidentifying the available upgrade package using the database lookup,
`
`and, therefore, the “determined component”ofthe comparing step is the
`
`available upgrade package. See also Pet. 37—38 (citing, e.g., Ex. 1004,
`
`22
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`9:30-35 (“the database server 80a uses the information receivedin the
`
`HTTP queryat step 415 to determineifan upgrade packageis available,
`
`suchas by a database lookup’’)).
`
`For the “additional component”portion ofthe comparingstep,
`
`Petitioner points to “five different components that make up the
`
`configuration for the requesting computer.” Jd. at 39—40 (citing Ex. 1004,
`
`8:39—46, 53-66; Ex. 1003 | 82). This additional information is provided in
`
`the upgrade requestitself, Petitioner argues, and includes“the version of the
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`WebAuthoring Components program module 37a, the version of a HTML
`
`converter in the word processor program module 37, the version of the word
`
`processor program module 37, the localization language, and the type of
`
`operating system on computer 20.” Jd. at 40 (citing Ex. 1004, 8:39—46, 53—
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`66; Ex. 1003 7 82) (emphasis omitted). We agree with Petitioner that
`
`Apfel’s query includes “additional information”that the database server uses
`
`during the lookup process. This additional information includes, for
`
`example, the version of the Web Authoring Components program module
`
`and the version of the word processor program module in the current
`
`computer configuration. Ex. 1004, 8:39—46, 53-66.
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`Asfor the recited “comparing,” Petitioner argues that Apfel discloses
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`“comparing” the determined componentand additional componentwitha
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`list of “knownacceptable configurations” by “describing maintaining and
`
`performing a lookup against a database of upgrade packages and
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`corresponding configurations which ‘should result in their download,’ as
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`well as configurations that ‘require a [particular] upgrade package.’” Id. at
`
`23
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`41-42 (citing Ex. 1004, 9:30-42; Ex. 1003 J 83). This description,
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`Petitioner argues, “mherently describes comparing the information provided
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`in the request for an upgrade andthe additional system information. . .
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`against a list of known acceptable configurations.” Jd. at42. Alternatively,
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`Petitioner contends that Apfel’s teaching “implicitly suggests maintaining
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`such ‘known good’ configuration information in some form so that a
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`determination can be made which update package URL (if any) to send to
`
`the
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