Trials@uspto.gov
`571-272-7822
`
`Paper No. 20
`Date: April 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`Vv.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2020-00023
`Patent 6,467,088 Bl
`-
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN,and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`QUINN,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 US.C. § 318(a)
`
`
`571-272-7822
`
`Paper No. 20
`Date: April 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`Vv.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2020-00023
`Patent 6,467,088 Bl
`-
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN,and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`QUINN,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 US.C. § 318(a)
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`Weinstituted inter partes review pursuant to 35 U.S.C. § 314 to
`
`review 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. Wehavejurisdiction under 35
`
`U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below,Petitioner
`
`has not shownby a preponderance of the evidence that claims 1—4, 6-14,
`
`and 16—21 of the ’088 patent are unpatentable.
`
`I. BACKGROUND
`
`A. Related Matters
`
`The parties identify the following district court proceedings involving
`
`the °088 patent: Uniloc USA, Inc. and UNILOC Luxembourg, S.A. v. Apple
`
`Inc., No. 1:18-cv-00296 (W.D.Tex.), filed April 9, 2018; Uniloc 2017 LLC
`
`v. Microsoft Corporation, No. 8:19-cv-00956 (C.D. Cal.), filed May 20,
`
`2019; and Uniloc USA, Inc. and Apple Inc., No. 6:19-cv-00532 (W.D. Tex.),
`
`filed September 10, 2019. Pet. x; Prelim. Resp. 11-12; Paper4, 2.
`
`In addition to this Petition, the ’088 patent was also challenged by a
`
`different party, Apple Inc., in IPR2019-00056 (“the Apple IPR’), which we
`
`denied.
`
`B. The ’088 Patent
`
`The °088 patentis directed to techniques for upgrading or
`reconfiguring software and/or hardware componentsin electronic devices.
`Ex. 1001, 1:6-9. The ’088 patent explains that priorart systems developed
`
`for updating componentsof electronic devices rely on a central computer
`
`2
`
`
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`IPR2020-00023
`Patent 6,467,088 Bl
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`system that tracks all software configurations for a number of remote
`
`systems. Jd. at 1:31—36. These prior art systems updated software by the
`
`central computer transmitting patches to each of the remote systems. Jd. at
`
`1:39-42; see also id. at 2:4—10 (explaining that a distributed system
`
`transmits patches to mobile units). Other known techniques for software
`
`update involve assuming that each desktop computerhas a set of resources
`
`determined in accordance with a set of enterprise policies or a central server
`
`maintaining a masterlist that is used to keep files on a remote device
`
`updated to the latest version. Jd. at 1:49-52, 1:60-65. According to the
`
`’088 patent, all of the above techniquesfail to avoid potential conflicts and
`
`ensure compatibility because they do not account for interdependencies of
`
`the resources required by the desktopsor the files resident in the remote
`
`devices. Id. at 1:41—45, 1:52—56, 1:65—2:3, 2:10-14.
`
`The ’088 patent solves the problem by providingalistor listing, that
`
`indicates “which of a set of software components supported by the manager
`
`10 are known to work well together or are otherwise compatible.” Id. at
`
`3:36—42. For instance, Figure 1 of the ’088 patent, reproduced below,
`
`illustrates reconfiguration manager 10 that “includesa listing 16 of known
`
`configurations, and a repository 18 of software components.” Jd. at
`
`3:27-29.
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`REQUEST
`
`WANT UPGRADETO A V2.0
`
`14A
`
`20
`
`"2
`
`10—~_|
`
`16—
`
`RECONFIGURATION MANAGER
`
`COMPONENTS
`
`DEVIGE X
`
`14C
`
`RESPONSE
`
`22
`
`REPOSITORY
`OF SW
`
`FIG.400¢«€C KNOWN BAD CONFIG.
`
`KNOWN GOOD CONFIG.
`
`Figure 1, above,illustrates a reconfiguration manager 10 interacting
`
`with an electronic device 12, also referred to as “Device X.” Id. at 3:14-16.
`
`Whenreconfiguration manager 10 receives a request for an upgrade from
`
`Device X, the request indicates that the device wants to upgrade to version
`
`2.0 of software componentA andincludesa list of the components currently
`
`on the device,i.e., version 1.1 of component A,version 2.0 of component C,
`
`and version 2.3 of component B. Jd. at 4:12-19. Reconfiguration manager
`
`10 processes the request, and if appropriate, delivers the requested version
`
`2.0 of software component A. Jd. 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. Jd. at 4:62-66. A known “bad”configuration is indicated in
`4
`
`
`
`IPR2020-00023
`Patent 6,467,088 BI
`
`Figure | as a dashed line between components that are not compatible. Jd. at
`
`3:58-61. For example, “[t]he pair including version 1.8 of component A
`
`and version 1.0 of componentC is an example of a known bad
`
`configuration.” Jd. 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 goodconfigurations.” Id. at 4:67—-5:3.
`
`A known “good”configuration is indicated in Figure | by a solid line
`
`betweena given pair of components indicating that the components work
`
`well together or are otherwise compatible. Jd. at 3:52—55.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1-4, 6-14, and 16-21 of the 088 patent.
`
`Pet. 2. The ’088 patent recites three independent claims: 1, 11, and 21.
`
`Challenged claim 1, reproduced below,is illustrative of the recited subject
`
`matter:
`
`<A processor-implemented method for controlling the
`1.
`reconfiguration of an electronic device, the method comprising
`the steps of:
`receiving information representative of a reconfiguration
`request relating to the electronic device;
`determining at
`least one device component
`implementthe reconfiguration request;
`and information
`comparing the determined component
`specifying at
`least one additional component currently
`implemented in the electronic device with at least one of a
`list of known acceptable configurations for the electronic
`device anda list of known unacceptable configurations for
`the electronic device; and
`
`required to
`
`
`
`IPR2020-00023
`Patent 6,467,088 Bl
`
`generating information indicative of an approvalor a denial of
`the reconfiguration request based at least 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.
`
`D. Procedural History
`
`Petitionerfiled the Petition on October 11, 2019. Paper 2 (“Pet.”).
`
`Patent Ownerfiled a Preliminary Response on January 22, 2020. Paper 6
`
`(“Prelim. Resp.”). After considering the parties’ filings, we granted the
`
`Petition and instituted inter partes review on all challenged claims andall
`
`grounds asserted. Paper 7 (“Decision”or “Dec. on Inst.”).
`
`Duringtrial, Patent Ownerfiled a Patent Owner Response (Paper 10
`
`(“PO Resp.”)) and Petitioner filed a Reply (Paper 11 (“Reply”)). Patent
`
`Owneralso filed a Sur-Reply. Paper 13 (“Sur-Reply”). We heard oral
`
`argument on January 15, 2021, a transcript of whichis filed in the record.
`
`Paper 19 (“Tr.”).
`
`E. Evidence ofRecord
`
`Petitioner relies on the following referencesas priorart (Pet. 3):
`
`1) Apfel: U.S. Patent No. 5,974,454,filed as Exhibit 1004;
`
`2) Lillich: U.S. Patent No. 5,613,101, filed as Exhibit 1005;
`
`3) Todd: U.S. Patent No. 5,867,714,filed as Exhibit 1006; and
`
`4) Pedrizetti: U.S. Patent No. 6,151,708, filed as Exhibit 1007.
`
`Petitioner further relies on the Declaration of John Villasenorto
`
`support its patentability challenge. Ex. 1003 (“Villasenor Declaration”).
`6
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`IPR2020-00023
`Patent 6,467,088 Bl
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`With the Reply, Petitioner filed the Supplemental Declaration of John
`
`Villasenor. Ex. 1016 (“Second Villasenor Declaration’).
`
`F. Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 3-4):
`
`
`
`
`
`Claims Challenged|35 U.S.C. § References/Basis
`
`
`1-4, 6-14, 16-21
`§ 103
`Apfel, Lillich, Todd
`
`
`
`§ 103
`Apfel, Lillich, Todd, Pedrizetti
`1-3, 9-13, 19-21
`§ 103
`Apfel, Lillich
`
`
`1,3, 4, 6-11, 13,
`
`
`Il. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`Petitioner contendsthat a person of ordinary skill in the art at the time
`
`of invention of the 088 patent “would have had a Bachelor’s Degree in
`
`Electrical Engineering, Computer Science, or a related subject, and one or
`
`more years of experience working with configuring hardware and software
`
`components in electronic devices”and that “[l]ess work experience may be
`
`compensated by a higher level of education, such as a Master’s Degree, and
`
`vice versa.” Pet. 16-17 (citing Villasenor Decl. J] 31-34). Patent Owner
`
`“does not offer a competing definition because, even if it were appropriate to
`
`apply Petitioner’s amorphous and varying definition for a POSITA,
`
`Petitioner would still not meet its burden to prove unpatentability of any
`
`challenged claim.” PO Resp. 11. Aside from this statement, Patent Owner
`
`does not provide a specific reason for why Petitioner’s proffered level of
`
`ordinary skill in the art is amorphousor otherwise inappropriate. Given the
`
`7
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`IPR2020-00023
`Patent 6,467,088 BI
`
`lack of actual dispute regarding the appropriate level we adopt Petitioner’s
`
`definition of the level of ordinary skill in the art, as it is consistent with the
`
`level of skill in the art reflected in the prior art of record. See Okajimav.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`B. Claim Construction
`
`In an interpartes review proceeding, a claim of a patent is construed
`using the same standard usedin federal district court, “including construing
`
`the claim in accordance with the ordinary and customary meaningof[the]
`
`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). The Petition
`
`addresses three claim terms/phrases. Pet. 18—25. Twoof the proposed
`
`constructions (“list” and “known.. . for the electronic device”) are derived
`
`from our preliminary claim construction in the Decision Denying Institution
`
`in the Apple IPR. See Ex. 1012, 7-8. In its Preliminary Response, Patent
`
`Owner“requests that the Board adopt the ordinary and customary meaning
`
`of the claim term[s] as understood by one of ordinary skill in the art.”
`
`Prelim. Resp. 15. In its Response, “Patent Owner submits that the Panel
`
`here need not expressly construe any claim term in a particular mannerin
`
`orderto arrive at the conclusionthat the Petition is substantively deficient.”
`
`PO Resp. 13. In our Decision on Institution, we adopted the following
`
`preliminary claim constructions, based on Petitioner’s proposals (Dec. on
`
`Inst. 8):
`
`“list”
`
`“known ... for the
`
`electronic device”
`
`
`
`any stored representation of information
`indicative of component compatibili
`The term “known” means“previously
`
`determined”andthe phrase“for the
`
`
`
`
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`IPR2020-00023
`Patent 6,467,088 B1
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`
`
`electronic device” does not require that the
`
`“list” of known acceptable and known
`unacceptable configurations be specific to
`
`the electronic device
`
`
` “at least one of”
`To be read in accordancewith the plain
`meaning of the phrase, namely as
`
`conjunctive lists of their respective
`elements,i.e., “at least one of [a] and at
`least one of[b].”
`
`Other than to state that the meaning of these terms should retain their
`
`plain and ordinary meaning, Patent Owner does not argue that adopting
`
`these preliminary constructions constitutes error. Because there is no actual
`
`dispute regarding these adopted claim constructions, and because our
`
`Decision here does not depend on adopting any particular construction for
`these terms, we adopt our preliminary claim constructions as final claim
`constructions. We also determine that no other claim terms require an
`
`express construction to resolve the issues presented by the patentability
`
`challenges. See Nidec Motor Corp. v. Zhongshan Broad Ocean MotorCo.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms “that are in
`
`controversy” must be construed and “only to the extent necessary to resolve
`
`the controversy”).
`
`C. Overview ofthe Prior Art
`
`1.
`
`Overview ofApfel
`
`Apfel is concerned with “{i]nstalling and updating a software program
`
`module component.” Ex. 1004, Abstract. In particular, Apfel describes a
`
`system for automatically updating a software program module component
`
`stored on a computer, as shownin Figure 3 reproduced below.
`9
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`IPR2020-00023
`Patent 6,467,088 B1
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`20
`
` COMPUTER
`
`
`
` PACKAGE
`SERVER
`
`80b
`
`Figure 3 of Apfel (above) illustrates a system including computer20,
`
`database server 80a, and package server 80b. Jd. at 6:36-37. Computer 20
`sends query 100 onorafter a predetermined date over the Internet to
`
`database server 80a. Jd. at 6:39-40. Query 100 includesall of the
`
`information regarding computer 20 that the database server 80a needsto
`
`determine if an upgrade is available and, if an upgradeis available, to
`
`determine the location of the upgrade package. Jd. at 6:49-53. After
`
`reviewing query 100, database server 80a returns response 105 overthe
`
`Internet to computer 20. Id. at 6:54-55. Ifan upgradeis available, then
`
`database server 80a will send back response 105 that includes the Uniform
`
`Resource Locator (URL)ofthe upgrade package. Jd. at 6:63-65. After
`
`computer 20 receives response 105 including the URL of the upgrade
`
`package, computer 20 will send query 110 to package server 80b at the URL
`
`of the update package. Jd. at 7:4-8. Package server 80b will send update
`
`10
`
`
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`IPR2020-00023
`Patent 6,467,088 B1
`
`package 115 to computer 20, and computer 20 will then install the update
`
`package 115. Jd. at 7:8-10. The servers are responsible for assessing
`
`whetheran upgrade is available and whether it should be downloaded based
`
`on the information sent by computer 20. Jd. at 7:13-16.
`
`2.
`
`Overview ofLillich
`
`Lillich is titled “Method and Apparatus for Determining at Execution
`
`Compatibility Among Client and Provider Components Where Provider
`
`Version Linked With Client May Differ From Provider Version Available at
`
`Execution.” Ex. 1005, code [54]. Lillich describes a “method and apparatus
`
`for verifying compatibility between components of a system[,] which share a
`
`client-providerrelationship.” Jd. at Abstract. Figure 1 of Lillichis
`
`reproducedbelow.
`
`30
`
`\
`
`32
`
`34
`
`34
`
`CONNECTOR
`
`PROVIDER
`
`36
`
`PROVIDER
`
`FIG. 1
`
`Figure 1 of Lillich (above) is a symbolic, simplified block diagram of
`
`system 30. Id. at 5:28. As shownin 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
`
`11
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`client and provider can be compared.” Jd. at 6:7—-10. A providerindicator, a
`currentindicatorof a provider, and a compatibility range are defined for
`each of a client and a provider. Jd. at 4:5—7. A providerindicator identifies
`
`a particular type of provider. Jd. at 4:7—-8. A current indicator of a provider
`
`specifies the version of the provider. Jd. at 4:8-9. When a client is linked
`
`with a version of a provider, the current indicator of that provideris stored in
`
`the executable client produced, thereby identifying the version of the
`
`provider, referred to as a “definition provider,” used to build the client. /d.
`
`at 4:9-13. Lillich describes that the compatibility range for the client
`
`identifies the range of versions of the provider, which can be used to execute
`
`the client, i.e., which have an implementation which is compatible with the
`
`definitions supplied by the definition provider. Jd. at 4:13-16. The
`
`compatibility range for the client specifies the oldest version of the provider
`
`that can be used to execute the client. Jd. at 4:17-19. The compatibility
`
`range for the provider identifies the range of versions of the provider that
`
`could be usedto build a client capable of operating with the current version
`
`of the provider.
`
`/d. at 4:19-22. The compatibility range for the provider
`
`specifies the oldest version of the provider that could have been used to
`
`build a compatible client. Jd. at 4:22—25. The versions within each ofthe
`
`two compatibility ranges are older than or equalin age to the current
`
`version. Jd. at 4:25-27. Lillich defines an “implementation provider”as
`
`“the provider which will be used to execute the client.” Jd. at 4:28-31.
`
`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
`12
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`IPR2020-00023
`Patent 6,467,088 B1
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`checks are performed between a client and available versions of the
`
`provider(s), implementation providers, with which it has been linked. Jd. at
`
`4:32-35.
`
`3.
`
`Overview of Todd
`
`Toddis titled “System and Method for Distributing Configuration-
`
`Dependent Software Revisions to a Computer System.” Ex. 1006, code
`
`[54]. Todd describes “a system for detecting and avoiding faults stemming
`
`from conflicts in hardware and/or software configurations in a computer
`
`system.” /d. at Abstract. Figure 1 of Todd is reproduced below.
`FIG. 1
`{~
`
`130 ( REMOTE DATA SOURCE)
`
`REGISTRATION
`DATABASE
`
`CONFIGURATION DATA
`
`COMMUNICATION LINK
`
`132
`
`
`
`
`
`
`
`
`NONVOLATILE
`
`MEMORY
`
`
`MEMORY
`DEVICE
`
`COMMUNICATIONS
`CIRCUITRY
`
`
`PROCESSING
`
`CIRCUITRY
`
`CONFIGURATION
`DETECTION CIRCUITRY
`
`110 (COMPUTER SYSTEM }
`
`13
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`IPR2020-00023
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`Figure 1 of Todd (above)is a block diagram of system 100. Jd. at
`
`5:57—65. As shown in Figure 1, system 100 comprises computer system 110
`
`and remote data source 130. Computer system 110 comprises “memory
`
`device 112 to store current configuration data pertaining to the hardware and
`
`software configuration of the computer system 110.” Jd. at 6:7-9.
`
`Computer system 110 also comprises processing circuitry 114, nonvolatile
`
`memory 116, and communicationscircuitry 118. Jd. at 5:66-6:41.
`
`Computer system 110 also comprises configuration detection circuitry 120
`
`responsible for obtaining data pertaining to at least a portion of the current
`
`hardwareand software configuration of the computer system 110. /d. at
`
`6:42-46. Todd describes that the configuration detection circuitry 120 may
`
`be as simple as a software program, executable within the computer system
`
`110, for querying the user as to the current hardware and software
`
`configuration. Jd. at 6:46-49. However, Todd describes that 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
`components that comprise the computer system 110. Jd. at 6:50-55. As
`
`shown in Figure 1 of Todd, remote data source 130 contains a database of
`
`software revisions that may be communicated to computer system 110 as a
`
`function of the current configuration data transmitted from computer system
`
`110 to remote data source 130 and diagnostic and analytic processes within
`
`the remote data source 130 that analyze the current configuration data to
`
`identify conflicts. Jd. at 12:1~8.
`
`14
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`D. Obviousness Grounds
`
`The Petition challenges claims 1-4, 6-14, and 16—21 as obvious over
`
`the combined teachings of Apfel, Lillich, and Todd. Pet. 26. Petitioner
`
`further asserts two alternative obviousness grounds: (1) that claims 1-3,
`
`9-13, and 19-21 would have been obvious over Apfel and Lillich (id. at
`
`69-71); and (2) that claims 1, 3, 4, 6-11, 13, 14, and 16—21 would have
`
`been obvious over Apfel and Todd (id. at 71-72). We address these grounds
`
`together.
`
`1.
`
`Issue
`
`In this proceeding, a single issue has turned outto be dispositive,
`
`which is whether Apfel’s disclosure of a database lookup (aloneor in
`
`combination with the teachings of Lillich) performs the comparing step
`
`recited in the challenged independent claims. We determine that, based on
`
`the full record before us, Petitioner has not shown by a preponderanceof the
`
`evidence that Apfel’s teachings support Petitioner’s contentions regarding
`
`the comparingstep.
`
`2.
`
`Analysis
`
`The claim is directed to a “reconfiguration of an electronic device.”
`
`See Ex. 1001, 6:43-45. The method requires determining what component
`
`is required to implementthat reconfiguration. Jd. at 6:51-50. Then the
`
`system performs a comparison—therecited comparing step. Jd. at 6:51-56.
`
`That comparingstep, as recited, states: “comparing the determined
`
`componentand information specifying at least one additional component
`
`currently implemented in the electronic device with at least one ofalist of
`
`15
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`IPR2020-00023
`Patent 6,467,088 B1
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`knownacceptable configurations for the electronic device anda list of
`
`knownunacceptable configurations for the electronic device.” Jd. Parsing
`
`out this limitation, and for ease of reference, there are four pieces of
`
`information that are required in the recited comparison: (a) a determined
`
`component(i.e., the componentthat is required to implement the
`
`reconfiguration request); (b) information specifying at least one additional
`
`componentcurrently implementedin the electronic device;(c) a list of
`
`knownacceptable configurations and (d) a list of known unacceptable
`
`configurations.
`
`Petitioner turns to Apfel as teaching the comparisonof(a), (b), and
`
`(c). For instance, the Petition asserts that Apfel inherently discloses the
`
`claimed comparison:
`
`In describing maintaining and performing a lookup against
`
`a and_correspondingdatabase of upgrade packages
`
`
`
`
`configurations which “should result in their download,”as well
`as configurations that “require a [particular] upgrade package,”
`Apfel inherently describes comparing the information provided
`in the request
`for an upgrade and the additional system
`
`
`information—including information=specifying other
`components—againsta list of known acceptable configurations,
`i.e., “configurations for the electronic device comprising sets of
`multiple components previously determined to work well
`together or be otherwise compatible.”
`
`Pet. 42. In this passage, the Petition relies on an alleged inherent disclosure
`
`of the comparing step. The Villasenor Declaration repeats this paragraph
`
`verbatim with no additional explanation of how Apfel necessarily performs
`
`the alleged comparison. Ex. 1003 § 85. Patent Owner repeatedly argues that
`
`Apfel’s disclosure does not support this theory of inherency. See PO Resp.
`
`16
`
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`IPR2020-00023
`Patent 6,467,088 B1
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`16-17, Sur-Reply 3—4. In particular, Patent Owner argues that Apfel’s
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`database lookup does not include the determined component(information (a)
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`in the above description of the comparing step). Jd. at PO Resp. 16-17.
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`Further, Patent Owner argues that Apfel’s database lookup only determines
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`that “a new upgrade is available”—notthat there is a “known compatible
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`upgrade”available. Sur-Reply 5. We agree with Patent Owner’s arguments.
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`Wefirst turn to an analysis of Apfel’s database lookup. Apfel’s
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`computerinitiates a Hyper Text Transfer Protocol (HTTP) query. Ex. 1004,
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`8:39-41. This query includes an Internet address and appended setup
`information. Jd. at 8:44—53. That appended information identifies
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`“information needed to determine which upgrade package URL is required
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`by [the] computer.” Jd. at 8:53-55. Specifically, the information includes
`the version of the “program module componentsto be upgraded,the
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`platform that the program module components are running on, and the
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`language of the program module components.” Jd. at 8:55-60. For
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`instance, Apfel provides a query with specific information for the system to
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`determine if an upgradeis available.
`
`hitp://www.microsoft.com/~word/internet/update.i
`de?Ver=8.0&1AVer=3.0& Lang=English&
`Platform=Win& FreeSpaceC=40234& FreeSpaceD
`=10234
`
`Id. at 9:1-5. The HTTP query shownaboveidentifies the version of the
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`word processor program module (Version 8.0), the version of the Web
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`Authoring Component program module (Version 3.0), the localization
`
`language (English), and the type of operating system on the computer
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`17
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`IPR2020-00023
`Patent 6,467,088 B1
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`(Windows). Jd.; see also id. 8:60—67. If this query is successfully received
`
`by Apfel’s database server, “it is determined whetherthere is an upgrade
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`packagefor the Web Authoring Components program module.” Id. at
`
`9:28-32. Specifically, using a database lookup, the database server “uses
`
`the information received in the HTTP query .
`
`.
`
`. to determine if an upgrade
`
`packageis available.” Jd. at 9:32-35.
`
`From this discussion of Apfel, and the parties seem to agree, we
`
`understand that Apfel’s database server does perform a comparison. See
`
`also id. at 12:45—48 (describing that “determining whether an upgrade
`
`package for the software program module componentis available comprises
`
`comparing the database query to a database lookuptable”); Tr. 9:2—22,
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`25:1-9. Apfel’s comparison, however, is between the information presented
`
`in the query and the lookup table. Ex. 1004, 9:32~35; see also id. at
`
`12:45—48, Tr. 10:19-—12:8 (discussion about the comparison between the
`
`query and the lookup table). The program module versions identified in the
`
`query all pertain to versions of components currently installed in the
`
`computer. See id. at 6:49—53 (stating that the query “includes all of the
`
`information regarding computer 20 that the database server 80a needsto
`
`determine if an upgradeis available . .. .” (emphases added)). Thus, there is
`
`no “determined component”in Apfel’s query. Using the database lookup,
`
`Apfel then determines whether a componentis available for upgrade. Id. at
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`9:30—32; Ex. 1003 { 80 (Villasenor, citing Ex. 1004, 9:30-35, opining that
`
`Apfel describes performing a database lookup to determine the
`
`component(s) needed to perform the requested upgrade). Thus,it is after the
`
`18
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`IPR2020-00023
`Patent 6,467,088 Bl
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`database lookup that a “determined component” may be obtained. See, e.g.,
`
`id. at 6:54—-55 (stating that “/a/fter reviewing query 100, the database server
`
`80a returns a response 105 over the Internet to the computer 20.” (emphasis
`
`added)). Toillustrate this point, and by way of example, after receiving the
`
`query reproduced above, Apfel’s database server may determinethat there is
`
`a new version of the Web Authoring Component program module, say
`
`version 4.0. We do not see how Apfel further discloses comparing this
`
`newerversion(i.e., the determined component) with information (b) and (c)
`
`of the comparing step. In other words, Apfel lacks detail sufficient to
`
`explain that the database lookup involves further comparing the resulting
`
`newerversion component with the query informationthat identifies
`
`currently installed components (such as the “Word 8.0” version) and with a
`
`knownlist of acceptable configurations.
`
`Onthis point, Petitioner relies on a general description of Apfel’s
`
`database servers. Pet. 41 (citing Ex. 1003 J 83). That passage states that
`
`“(different update packages may be providedfor different version
`
`combinations.” Ex. 1004, 9:36-38. The passage continues,“[t]hus, the
`database server 80a maintains a database ofupgrade packages and
`corresponding configurations which should result in their download.” Jd. at
`
`9:38-40. Patent Owner argues that this passage uses indecisive language
`
`(i.e., “should”) that falls short of the required factual support for a theory of
`
`inherency. PO Resp. 17; Sur-Reply 3-4. Petitioner argues that the “should
`
`result” language denotes a user choice—that Apfel has already determined
`
`compatibility and that because of the injection of user’s choice to download,
`
`the result of an actual downloadis uncertain, but “should” occur. Reply 6.
`19
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`IPR2020-00023
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`These arguments highlight the deficiency in Petitioner’s case. The passage
`
`Petitioner relies on merely describes what the database lookup provides—the
`
`determination of an upgrade packagebased on the given query. It does not
`
`explain that the database lookup, in addition to determining that a new
`
`upgrade is available, also determines that the available upgrade is
`
`compatible with the current configuration of the electronic device.
`
`Weagree with Petitioner that the database server of Apfel maintains
`
`upgrade packagesand corresponding configurations that should be
`
`downloaded. The database, however,is a “lookup table” (see Ex. 1004,
`
`12:45-48; Ex. 1003 § 81). And neither Petitioner nor Mr. Villasenor explain
`
`the content of this lookup table or the details of the Apfel comparison such
`
`that we could conclude that Apfel necessarily performs the comparison
`
`between the determined component, a componentcurrently installed, and the
`
`required list of known acceptable configurations, as the claim requires.
`
`“Inherency ... may not be established by probabilities or possibilities.”
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`PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed.Cir.
`
`2014). “The mere fact that a certain thing may result from a given set of
`
`circumstancesis not sufficient.” Jd. (emphasis added).
`Moreover, our understanding,in light ofthe arguments and evidence
`on the full record, is that Apfel’s comparison of the query with the lookup
`
`table merely yields the identification of a program module version that
`
`should be installed. See Ex. 1004, 9:30-35. To illustrate our understanding,
`
`and following our previous example of the disclosed query, Apfel may
`
`determine that there is a new version of the Web Authoring Component
`
`program module by looking up onthe table an entry for version Word 8.0,in
`20
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`IPR2020-00023
`Patent 6,467,088 B1
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`English, and identifying the latest version available of the program module
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`as [AVer=4.0. See id. at 2:38-41 (“The database server can determine
`
`whether an upgrade package for the software program module componentis
`
`available by performing a database lookup using the information included in
`
`the database query.”’); see also id. at 8:60-9:7 (identifying an exemplary
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`query including the current version of the Web Authoring Components
`
`program module), 9:32-35 (stating that the database server uses the
`
`information received in the HTTP query to determine if an upgrade package
`
`is available, such as by database lookup), 12:45—48 (disclosing “comparing
`
`the database query to a database lookuptable”). A comparison of the
`
`version in the query (3.0) with the version in the database (4.0) would result
`
`in the determination that a newerversion is available at step 427 of Apfel’s
`
`Figure 4A. See, e.g., id. at 12:45-48. As we understand Apfel, no further
`
`comparisons would be needed (nor does the Petition point to afurther
`
`comparison in Apfel’s database lookup) in order for Apfel to retrieve the
`
`URL corresponding to the download address of the newer component. Thus,
`
`Petitioner has failed to show that the mere disclosure of a database lookup,
`
`and thus a comparison with the query, necessarily means that Apfel has
`performed a compatibility determination in the manner claimed: by making
`a comparison between(a) the determined component, (b) the currently
`
`implemented component, and (c) the list of known acceptable
`
`configurations.
`
`Petitioner further argues that Apfel provides different URLsfor the
`
`different upgrade packages required. For instance the Petition states, “[n]Jot
`
`21
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`IPR2020-00023
`Patent 6,467,088 B1
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`only are there certain upgradesthat ‘should’ be installed, but certain
`
`computer configurations, according to Apfel ‘require’ certain upgrade
`
`packages.” Pet. 42 (citing Ex. 1004, 6:65-67). The passage of Apfel relied
`
`on and the argumentpresentedstill do not explain how Apfel discloses that
`
`it compares the (a) determined component, (b) currently implemented
`
`component, and(c)list of known acceptable configurations. The passage
`
`states that, “[iJt should be understood that each configuration of computer 20
`
`mayrequire a different upgrade package and,therefore[] a different URL.”
`
`Ex. 1004, 6:65-67. This passage, rather, confirms that the query (which
`
`reflects the current configuration of the computer) is the information that
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`Apfel’s database lookup uses to identify whether a version of the Web
`
`Authoring Component program is available for download. Forinstance,if
`
`the query identified that the localization language was Spanish, then the
`
`lookup table would index to another record andretrieve a different URL for
`
`the Spanish version of the Web Authoring Component program. But, again,
`
`Apfel describes this lookup for identifying the latest componentthatis
`
`available for download. That Apfel may have URLsfor each versionofthe
`
`Web Authoring Component doesnot transform Apfel’s lookup into the
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`recited comparison. Indeed, Apfel explains that becauseit identifies the
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`appropriate ve
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