Case: 21-1412 Document: 53 Page: 1 Filed: 04/01/2022
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MICROSOFT CORPORATION,
`Appellant
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Cross-Appellant
`______________________
`
`2021-1412, 2021-1413, 2021-1414, 2021-1416, 2021-1417,
`2021-1418, 2021-1419, 2021-1420, 2021-1421, 2021-1422,
`2021-1423, 2021-1424, 2021-1440, 2021-1442
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2019-
`00810, IPR2019-00811, IPR2019-00812, IPR2019-00813,
`IPR2019-00814,
`IPR2019-00835,
`IPR2019-00836,
`IPR2019-00837.
`
`______________________
`
`Decided: April 1, 2022
`______________________
`
`JOSEPH A. MICALLEF, Sidley Austin LLP, Washington,
`DC, argued for appellant. Also represented by SCOTT
`BORDER; RICHARD ALAN CEDEROTH, Chicago, IL.
`
` SARAH ELIZABETH SPIRES, Skiermont Derby LLP, Dal-
`las, TX, argued for cross-appellant. Also represented by
`
`

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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
`
`STEVEN WAYNE HARTSELL, JAIME OLIN, PAUL SKIERMONT;
`MIEKE K. MALMBERG, Los Angeles, CA.
` ______________________
`
`Before DYK, SCHALL, and TARANTO, Circuit Judges.
`TARANTO, Circuit Judge.
`IPA Technologies Inc. owns U.S. Patent Nos. 6,851,115
`and 7,069,560, which address computing systems with dis-
`tributed electronic agents. Microsoft Corporation chal-
`lenged various claims of the patents in eight inter partes
`reviews (IPRs) in the Patent and Trademark Office. The
`Office’s Patent Trial and Appeal Board held all challenged
`claims unpatentable for obviousness, except for claims 8–
`10, 29–47, 63, and 86–89 of the ’115 patent and claims 10–
`11, 28, 50–51, and 53–55 of the ’560 patent.
`Microsoft and IPA both appeal. As to Microsoft’s ap-
`peals: We affirm the Board’s determination of no proven
`unpatentability of claims 29–47 of the ’115 patent and
`claims 50–51 and 53–55 of the ’560 patent; but we reverse
`certain Board findings regarding claims 8–10, 63, and 86–
`89 of the ’115 patent and claims 10–11 and 28 of the ’560
`patent, and we remand for any further proceedings that
`may be necessary and appropriate to address those claims.
`As to IPA’s appeals (including cross-appeals): We affirm all
`of the Board’s determinations challenged here by IPA.
`I
`The ’115 patent is titled “Software-Based Architecture
`for Communication and Cooperation Among Distributed
`Electronic Agents,” and the (child) ’560 patent has a simi-
`lar title—“Highly Scalable Software-Based Architecture
`for Communication and Cooperation Among Distributed
`Electronic Agents.” The patents share a specification and
`have an effective filing date of January 5, 1999. Both de-
`scribe, in the words of the Abstract of the ’560 patent, a
`“software-based
`architecture . . .
`for
`supporting
`
`

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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`3
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`cooperative task completion by flexible, dynamic configura-
`tions of autonomous electronic agents.” ’560 patent, Ab-
`stract; see ’115 patent, Abstract (similar).
`Figure 4 depicts the structure of an exemplary system,
`which is organized around a “facilitator agent” (equiva-
`lently here, a “facilitator”)—a specialized server agent that
`coordinates other specialized agents in the system, in part
`by keeping an agent registry of all the other agents’ capa-
`bilities. ’560 patent, Fig. 4; id., col. 6, lines 38–58; id., col.
`7, lines 30–32, lines 51–53; see also id., Fig. 7. Cooperative
`task completion can be achieved in the exemplary system
`as follows. After receiving a request for service from an
`agent in the system, also called a “goal,” the facilitator
`(1) parses and interprets the goal, (2) creates a goal satis-
`faction plan by dividing the goal into sub-goals, and (3) del-
`egates the task of performing each sub-goal to an agent
`having the specialized capability to do so. See id., col. 18,
`line 54, through col. 19, line 13; see also id., Fig. 11. Com-
`munication between agents within this system is prefera-
`bly accomplished via a common language, which the
`patents call the Interagent Communication Language
`(ICL). Id., col. 10, line 54, through col. 11, line 7.
`On March 19, 2019, Microsoft filed eight IPR peti-
`tions—five involving the ’115 patent and three involving
`the ’560 patent. Microsoft argued that the subject matter
`of all the challenged claims would have been obvious over
`combinations including at least the following references:
`(1) Kiss (U.S. Patent No. 6,484,155) and (2) FIPA97 (a doc-
`ument created by the Foundation for Intelligent Physical
`Agents, J.A. 7519–832).
`Kiss, titled “Knowledge Management System for Per-
`forming Dynamic Distributed Problem Solving,” describes
`a “knowledge management system that supports inquiries
`of distributed knowledge resources,” in which “[i]nteraction
`between a user and the knowledge resources is mediated
`by a collection of cooperative intelligent agents.” Kiss,
`
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`Abstract. Kiss’s agents include meta agents, user agents,
`and knowledge agents (or intelligent agents), which are or-
`ganized into layers. Id., Fig. 1; id., col. 5, line 1, through
`col. 7, line 19. A registry, in the agent service layer, lists
`the capabilities of each agent that is active in the system.
`Id., col. 6, line 66, through col. 7, line 19. After a meta
`agent receives a “formulated question” from a user agent,
`it “analyzes the formulated question to formulate a solu-
`tion plan.” Id., col. 10, lines 12–15. “By interacting with
`the agent service layer,” including the registry, the meta
`agent “allocates and assigns tasks to knowledge agents . . .
`based on the interests and capabilities of those knowledge
`agents.” Id., col. 10, lines 15–18; id., col. 6, line 66, through
`col. 7, line 2. Undisputedly, however, Kiss does not disclose
`an interagent communication language. Microsoft Open-
`ing Br. 12–13.
`FIPA97, created to “provide[] specification of basic
`agent technologies that can be integrated by agent systems
`developers to make complex systems with a high degree of
`interoperability,” is split into seven parts. J.A. 7523–25.
`Part 1 describes a framework for agent management, de-
`fined by Agent Platforms and Agent Domains. J.A. 7524;
`J.A. 7536 (Fig. 2). Each Agent Domain has a Directory Fa-
`cilitator that maintains an agent registry for agents within
`the domain. J.A. 7532–33. Part 2 describes an Agent Com-
`munication Language (ACL), a common communication
`protocol that allows agents to communicate with one an-
`other. J.A. 7524; J.A. 7575. Part 3 discusses agent-soft-
`ware integration, and Parts 4–7 provide exemplary
`applications of the system (e.g., for personal travel assis-
`tance or for audio/video entertainment and broadcasting).
`J.A. 7524–25.
`The Board instituted all IPRs and ultimately issued
`eight final written decisions that declared all challenged
`claims unpatentable for obviousness, except for claims 8–
`10, 29–47, 63, and 86–89 of the ’115 patent and claims 10–
`11, 28, 50–51, and 53–55 of the ’560 patent. All eight final
`
`

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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`5
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`written decisions are now before us on timely appeals (or
`cross-appeals) by Microsoft and IPA. We have jurisdiction
`under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 141(c),
`319. Further details about the challenged patents and
`claims, prior art, and procedural history are discussed as
`relevant below.
`
`II
`Microsoft presents five arguments on appeal. We re-
`view the Board’s legal conclusions (including claim con-
`structions based solely on intrinsic evidence) de novo and
`its factual findings (including those concerning the prior
`art’s teachings and the motivation to combine) for substan-
`tial-evidence support. Hamilton Beach Brands, Inc. v.
`f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018);
`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d
`435, 449 (Fed. Cir. 2015). Substantial evidence exists if “‘a
`reasonable fact finder could have arrived at the agency’s
`decision’” in light of the record as a whole. Intelligent Bio-
`Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d
`1305, 1312 (Fed. Cir. 2000)). We review the Board’s judg-
`ments concerning what arguments have been adequately
`presented in a petition and other pleadings for abuse of dis-
`cretion. See Ericsson Inc. v. Intellectual Ventures I LLC,
`901 F.3d 1374, 1379 (Fed. Cir. 2018); Altaire Pharms., Inc.
`v. Paragon Bioteck, Inc., 889 F.3d 1274, 1284 (Fed. Cir.
`2018), remand order modified by stipulation, 738 F. App’x
`1017 (Fed. Cir. 2018); Intelligent Bio-Systems, 821 F.3d at
`1367; see also MModal LLC v. Nuance Commc’ns, Inc., 846
`F. App’x 900, 906 (Fed. Cir. 2021). “An abuse of discretion
`is found if the decision: (1) is clearly unreasonable, arbi-
`trary, or fanciful; (2) is based on an erroneous conclusion of
`law; (3) rests on clearly erroneous fact finding; or (4) in-
`volves a record that contains no evidence on which the
`Board could rationally base its decision.” Intelligent Bio-
`Systems, 821 F.3d at 1367 (citation omitted).
`
`

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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`A
`Microsoft’s first argument on appeal is that, for claims
`8–10 and 63 of the ’115 patent and for claim 28 of the ’560
`patent, the Board erred in finding that Microsoft had not
`proven how or why Kiss and FIPA97 would have been com-
`bined by a relevant artisan. Microsoft Opening Br. 49–57.
`Claims 8 and 9 of the ’115 patent, which are representative
`for purposes of this issue, read:
`8. A computer-implemented method as recited
`in claim 5 wherein the agent registry data struc-
`ture includes at least one trigger declaration for
`one active agent.
`9. A computer-implemented method as recited
`in claim 5 wherein the agent registry data struc-
`ture includes at least one task declaration, and pro-
`cess characteristics for each active agent.
`’115 patent, col. 30, lines 10–16 (emphases added). For con-
`text, the undisputed interpretation of “trigger” adopted by
`the Board is “a general mechanism for requesting some ac-
`tion be taken when one or more conditions is met.” Mi-
`crosoft Corp. v. IPA Techs. Inc., No. IPR2019-00810, 2020
`WL 6110974, at *50 (P.T.A.B. Oct. 15, 2020) (IPR810 Deci-
`sion). And the specification describes a “trigger declara-
`tion” as follows: “Each registered agent may be optionally
`associated with one or more triggers, which preferably
`could be referenced through their associated Trigger Dec-
`laration fields . . . in the parent facilitator Agent Regis-
`try . . . .” ’115 patent, col. 17, lines 5–9. “Process
`characteristics,” as construed by the Board, are “character-
`istics of a process for an agent.” IPR810 Decision, 2020 WL
`6110974, at *11; see also ’115 patent, col. 17, lines 12–21
`(“Each registered agent may be optionally associated with
`one or more Process Characteristics, which preferably
`could be referenced through their associated Process Char-
`acteristics Declaration fields . . . in the parent facilitator
`Agent Registry . . . .”).
`
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`7
`
`In its IPR2019-00810 petition, which included chal-
`lenges to claims 8–10 of the ’115 patent, Microsoft relied on
`a combination of Kiss and FIPA97 as disclosing the claimed
`agent registry, see, e.g., J.A. 1428–30, and Kiss as disclos-
`ing the agent registry data structure, see, e.g., IPR810 De-
`cision, 2020 WL 6110974, at *59. For trigger declarations,
`Microsoft alleged that FIPA97 Part 6, through its descrip-
`tion of the “preconditions2” trigger condition, disclosed an
`agent registry with trigger declarations. J.A. 1455–56. For
`process characteristics, Microsoft alleged that FIPA97 Part
`1, through its description of an “interaction-protocols” pa-
`rameter, disclosed an agent registry with process charac-
`teristics. J.A. 1457.
`Regarding how and why the relevant artisan would
`combine Kiss and FIPA97 to yield agent registry data
`structures with trigger declarations or process characteris-
`tics, Microsoft, in the general art-description section of its
`petition, explained:
`In [the Kiss and FIPA97] combination, FIPA97 dis-
`closes the inter-agent communication language re-
`quirements of the claims not expressly disclosed in
`Kiss, as well as other administrative functionality
`(i.e., Parts 1–3) and exemplary practices (i.e., Parts
`4–7). In particular, FIPA97 provides a common
`communications protocol and language (FIPA
`ACL) between the agents of Kiss, and also adds its
`administrative functionality and exemplary prac-
`tices to the Kiss system, as described with specificity
`below. These techniques are used to implement the
`functionality described in Kiss, including facilitat-
`ing agent collaboration, agent registry, and inter-
`agent messaging, as well [as] adding functionality
`that is disclosed in FIPA97. Where the two systems
`disclose analogous functionality, such as facilitat-
`ing cooperation and agent registry, their techniques
`are combined, as a Skilled Artisan would under-
`stand that to be an efficient and common sense way
`
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`Case: 21-1412 Document: 53 Page: 8 Filed: 04/01/2022
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`to implement the combined system in order to ob-
`tain the benefits of both, and therefore be moti-
`vated to do so.
`J.A. 1423 (emphases added and citations omitted). Mi-
`crosoft also stated that the relevant artisan would include
`FIPA97’s administrative functionality and exemplary
`practices to obtain the most advantageous implementation
`of FIPA97’s common communication protocol, ACL. J.A.
`1426 (also discussing standardization motivation). Mi-
`crosoft’s expert, Dr. Lieberman, made similar statements.
`See J.A. 7227–42 (Lieberman Decl. ¶¶ 217–31).
`In response, IPA contended that there was no explana-
`tion of why a relevant artisan would be motivated to incor-
`porate FIPA97’s agent registry’s trigger declarations and
`process characteristics into Kiss’s agent registry data
`structure. J.A. 1865–67. Microsoft replied by pointing to
`its petition’s discussion of why a relevant artisan would
`want to add the administrative functionality and exem-
`plary practices of FIPA97. J.A. 2029–34.
`In its final decision in IPR2019-00810 for claims 8–10
`of the ’115 patent, the Board found that Microsoft did not
`prove “how or why Kiss’s agent registry data structure
`would have been combined with FIPA97’s” analogous agent
`registry to obtain the subject matter of the claims. IPR810
`Decision, 2020 WL 6110974, at *61 (claims 9–10); id. at *62
`(claim 8). The Board recognized that “above, we discussed
`[Microsoft’s] proposed combination of Kiss’s electronic
`agents and their general functions and operations, includ-
`ing agent collaboration, agent registry, and inter-agent
`messaging, with FIPA97’s ACL,” i.e., the combination of
`Kiss’s registry with FIPA97’s communication protocol, but
`the Board stated that, for the present claims, Microsoft “is
`proposing a different (or additional) combination—that is,
`combining the registry of Kiss with the registry of FIPA97.”
`Id. at *61 (claims 9–10) (emphasis added); see also id. at
`*62 (claim 8). The Board addressed claim 63 of the ’115
`
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`patent and claim 28 of the ’560 patent similarly in
`IPR2019-00814 and IPR2019-00835. Microsoft Corp. v.
`IPA Techs., Inc., No. IPR2019-00814, 2020 WL 6532192,
`*57–59 (P.T.A.B. Nov. 5, 2020) (IPR814 Decision); Mi-
`crosoft Corp. v. IPA Techs., Inc., No. IPR2019-00835, 2020
`WL 6106141, *46–47 (P.T.A.B. Oct. 15, 2020) (IPR835 De-
`cision).
`The Board’s determinations at issue are not supported
`by substantial evidence. Concerning why the pertinent as-
`pects of the registries of Kiss and FIPA97 would be com-
`bined, Microsoft presented significant evidence of
`motivation, see J.A. 7227–42 (Lieberman Decl. ¶¶ 217–
`31)—which the Board credited elsewhere in its decisions,
`see IPR810 Decision, 2020 WL 6110974, at *39–40. The
`Board stated that this evidence did not explain why Kiss’s
`registry and FIPA97’s registry (with its trigger declarations
`and/or process characteristics) would be combined, as op-
`posed to why Kiss’s registry and FIPA97’s ACL would be
`combined, but that determination is unreasonable on the
`evidence. The Lieberman declaration did account for why
`relevant artisans starting with a Kiss-like system would
`look to FIPA97 and borrow not just its ACL, but also its
`other administrative functionalities and exemplary prac-
`tices. See, e.g., J.A. 7240–41 (Lieberman Decl. ¶¶ 229–31).
`Concerning how Kiss and FIPA97’s registries would be
`combined, Microsoft presented evidence, with little elabo-
`ration for what Microsoft said a skilled artisan would know
`how to do. See, e.g., J.A. 1423–26; J.A. 7227–29, 7240
`(Lieberman Decl. ¶¶ 217–19, 228). IPA’s response, which
`focused almost entirely on the why question, was at most a
`simple, unelaborated assertion that Microsoft’s evidence as
`to how was not enough, with no identification at all of what
`necessary details were missing. See, e.g., J.A. 1865–67 (ob-
`jecting to why, not how, the combination would be made);
`J.A. 4846–48 (making single-sentence assertion about the
`how issue); J.A. 12861 (Medvidovic Decl. ¶ 261) (same).
`The Board, for its part, did not meaningfully address the
`
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`how issue separately from the why issue. It did not identify
`any concrete unanswered questions about how to achieve
`the combination (which is not a matter of bodily incorpora-
`tion, but of combining the features required to arrive at the
`claim). It did not even say whether the combination re-
`quired more than simply adding one more field to Kiss’s
`registry data structure.
`In these circumstances, we see no basis for a reasona-
`ble determination rejecting Microsoft’s evidence of why and
`how the combination at issue would be made. Accordingly,
`we reverse the Board’s finding that Microsoft has not per-
`suasively shown how or why Kiss and FIPA97 would have
`been combined to generate the subject matter of claims 8–
`10 and 63 of the ’115 patent and claim 28 of the ’560 patent.
`We remand for the Board to address any remaining obvi-
`ousness disputes concerning these claims. See J.A. 1865–
`67 (IPA in its Patent Owner Response making non-disclo-
`sure arguments beyond lack of motivation for claims 8–10
`of the ’115 patent); J.A. 1867 (same for claim 63 of the ’115
`patent); J.A. 4846–48 (same for claim 28 of the ’560 patent);
`see also J.A. 5101–03 (IPA’s sur-reply on claim 28 of the
`’560 patent).
`
`B
`Microsoft’s second argument on appeal is that, for
`claims 29–47 of the ’115 patent, the Board erred in finding
`the petition insufficient. Microsoft Opening Br. 57–64.
`Claim 29, which is representative for this issue, is repro-
`duced below, as is claim 1, which is relevant to our analy-
`sis.
`
`1. A computer-implemented method for com-
`munication and cooperative task completion
`among a plurality of distributed electronic agents,
`comprising the acts of: . . .
`constructing a goal satisfaction plan wherein
`the goal satisfaction plan includes:
`
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`a suitable delegation of sub-goal requests to
`best complete the requested service request—by
`using reasoning that includes one or more of do-
`main-independent coordination strategies, do-
`main-specific reasoning, and application-specific
`reasoning comprising rules and learning algo-
`rithms; and
`dispatching each of the sub-goals to a selected
`client agent for performance, based on a match be-
`tween the sub-goal being dispatched and the regis-
`tered functional capabilities of the selected client
`agent.
`’115 patent, col. 29, lines 10–43.
`29. A computer program stored on a computer
`readable medium, the computer program executa-
`ble to facilitate cooperative task completion within
`a distributed computing environment, the distrib-
`uted computing environment including a plurality
`of autonomous electronic agents, the distributed
`computing environment supporting an Interagent
`Communication Language, the computer program
`comprising
`computer executable
`instructions
`for: . . .
`constructing a base goal satisfaction plan in-
`cluding the sub-acts of:
`determining whether the request service is
`available,
`determining sub-goals required in completing
`the base goal by using reasoning that includes one
`or more of domain-independent coordination strat-
`egies, domain-specific reasoning, and application-
`specific reasoning comprising rules and learning
`algorithms,
`
`

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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`selecting service-providing electronic agents
`from the agent registry suitable for performing the
`determined sub-goals, and
`ordering a delegation of sub-goal requests com-
`plete the requested service . . . .
`Id., col. 31, line 48, through col. 32, line 22.
`In its IPR2019-00810 petition, for the claim 29 limita-
`tions concerning “constructing a [base] goal satisfaction
`plan,” Microsoft stated only: “Kiss/FIPA97 satisfies this
`claim for the reasons stated in §§ VI.A.1.h.” J.A. 1464 (re-
`ferring to the petition’s discussion of the claim 1 limitation
`“constructing a goal satisfaction plan,” J.A. 1445–49). In
`its institution decision, the Board found that Microsoft had
`not demonstrated a reasonable likelihood of prevailing, ob-
`serving that “there exist material differences between
`these limitations on the face of the claims” but that Mi-
`crosoft “does not address the claim language of claim 29 or
`explain why its analysis for claim 1 is sufficient to demon-
`strate a reasonable likelihood of prevailing with respect to
`claim 29.” J.A. 1693–95. IPA echoed this view in its patent
`owner’s response, J.A. 1845–47, and, in reply, Microsoft ar-
`gued that there were no material differences between
`claims 1 and 29, explaining for each alleged difference why
`the respective claim language had the same meaning and
`how the alleged disclosure for claim 1 equally applied to
`claim 29, J.A. 2019–27.
`In its final decision in IPR2019-00810, the Board deter-
`mined that Microsoft had failed to meet its burden in the
`petition to show with particularity the evidence that sup-
`ported the grounds for the challenge to claim 29. IPR810
`Decision, 2020 WL 6110974, at *64–66. Additionally, the
`Board declined to consider Microsoft’s arguments “pre-
`sented belatedly in the Petitioner Reply.” Id. at *66. The
`Board found dependent claims 30–32 and 38–39 unpatent-
`able because they “depend directly or indirectly from claim
`29” and Microsoft’s “arguments and evidence presented . . .
`
`

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`only address the additionally recited limitations . . . and,
`therefore, do not remedy the deficiencies in [Microsoft’s]
`analysis of independent claim 29.” Id. at *66, *70. The
`Board addressed claim 29’s other challenged dependent
`claims similarly in IPR2019-00811 and IPR2019-00812.
`Microsoft Corp. v. IPA Techs. Inc., No. IPR2019-00811,
`2020 WL 6112246, at *56–58, *62 (P.T.A.B. Oct. 15, 2020)
`(IPR811 Decision); Microsoft Corp. v. IPA Techs. Inc.,
`No. IPR2019-00812, 2020 WL 6106303, at *58–61, *66, *74
`(P.T.A.B. Oct. 15, 2020).
`We affirm the Board’s determination that Microsoft in-
`sufficiently pleaded the unpatentability of claims 29–47.
`Microsoft’s petition did not grapple with the claim 29 lan-
`guage, simply stating “Kiss/FIPA97 satisfies this claim for
`the reasons stated in” the section pertaining to the claim 1
`limitation “constructing a goal satisfaction plan.” J.A.
`1464. That statement is true, however, only if there are no
`differences between the claims that might affect the Kiss
`and FIPA97 combination’s disclosure. Yet that central,
`necessary premise is one that Microsoft wholly failed to de-
`fend in its petition, even though there are potentially
`meaningful differences in claim language that warrant dis-
`cussion.1 The Board did not abuse its discretion in
`
`
`1 Compare ’115 patent, col. 29, lines 34–39 (claim 1
`requiring “suitable delegation of subgoal requests to best
`compete the requested service request” by using certain
`reasoning techniques), with id., col. 32, lines 11–16 (claim
`29 requiring “determining whether the request service is
`available” and “determining sub-goals required in complet-
`ing the base goal” by using certain reasoning techniques).
`Compare also id., col. 29, lines 40–43 (claim 1 requiring
`“dispatching each of the sub-goals to a selected client agent
`for performance, based on a match between the sub-goal
`being dispatched and the registered functional capabilities
`of the selected client agent”), with id., col. 32, lines 17–21
`
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`Case: 21-1412 Document: 53 Page: 14 Filed: 04/01/2022
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`concluding that Microsoft’s complete failure to address the
`language differences and explain why they do not matter
`was a failure to meet the particularity requirements for
`what must be in the petition and cannot be left to be filled
`in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§§ 42.22(a)(2) (requiring, among other things, “a detailed
`explanation of
`the significance of
`the evidence”),
`42.104(b)(4)–(5) (requiring that petition “specify where
`each element of the claim is found in the prior art patents
`or printed publication relied upon” and, regarding submit-
`ted evidence, state “the relevance of the evidence to the
`challenge raised, including identifying specific portions of
`the evidence that support the challenge”); Intelligent Bio-
`Systems, 821 F.3d at 1369; Microsoft Corp. v. Biscotti, Inc.,
`878 F.3d 1052, 1074–75 (Fed. Cir. 2017); Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363–64 (Fed. Cir. 2016).
`Microsoft effectively introduced a new issue when, on reply,
`it discussed claim differences for the first time. Cf. Cham-
`berlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919,
`925 (Fed. Cir. 2019); see also AMC Multi-Cinema, Inc. v.
`Fall Line Patents, LLC, No. 2021-1051, 2021 WL 4470062,
`at *6 (Fed. Cir. Sept. 30, 2021) (collecting cases).
`Microsoft argues for a contrary conclusion by observing
`that two claims using different words can cover the same
`subject matter and that the same prior-art disclosures or
`combinations can satisfy two differently worded claims.
`See, e.g., Microsoft Opening Br. 59–60 (citing Tandon Corp.
`v. US Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir.
`1987)). But those observations do not cure the problem.
`Microsoft, in its petition, said nothing at all to defend the
`crucial premise that the different wording did not matter;
`
`
`(claim 29 requiring “selecting service-providing electronic
`agents from the agent registry suitable for performing the
`determined sub-goals” and “ordering a delegation of sub-
`goal requests complete the requested service”).
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`Case: 21-1412 Document: 53 Page: 15 Filed: 04/01/2022
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`and the reply came too late to make up for that complete
`omission from the petition. Accordingly, we affirm the
`Board’s determinations for claims 29–47 of the ’115 patent
`in IPR2019-00810, IPR2019-00811, and IPR2019-00812.
`C
`Microsoft’s third argument on appeal is that, for claims
`86–89 of the ’115 patent, the Board erred in determining
`that the petition was insufficient. Microsoft Opening Br.
`64–67. Claim 86, which is representative for this issue, re-
`cites:
`
`86. A data wave carrier providing a transport
`mechanism for information communication in a
`distributed computing environment having at least
`one facilitator agent . . .
`wherein said at least one facilitator agent is op-
`erable to construct a goal satisfaction plan by using
`reasoning . . . .
`’115 patent, col. 37, line 10, through col. 38, line 7 (empha-
`ses added).
`In its IPR2019-00811 petition, Microsoft said the fol-
`lowing about the claim 86 preamble:
`Kiss/FIPA97 discloses “information communica-
`tion in a distributed computing environment hav-
`ing at least one facilitator agent and at least one
`active client agent” for the reasons set forth above
`in §§ VI.[A.]1.a. EX1003, ¶¶ 200–205, 347–351. In
`particular, Kiss discloses various communications
`between agents. EX1005, 12:21–14:30, Figs. 8–20.
`In the combined system, moreover, the details con-
`cerning the interests and capabilities of that new
`agent are communicated to the agent service layer,
`which combined with the meta-agent of Kiss consti-
`tutes “a facilitator agent” because it facilitates the
`cooperation in resolving requests by bi-directionally
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`MICROSOFT CORPORATION v. IPA TECHNOLOGIES INC.
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`communicating with knowledge agents and assign-
`ing tasks (sub-goals) to them in order the coordinate
`the cooperative completion of tasks. EX1005, 12:1–
`14:30, Figs. 8–20; EX1003, ¶¶ 200–205, 347–351.
`FIPA97 also discloses a Directory Facilitator (“fa-
`cilitator agent”), which provides analogous func-
`tionality, EX1006, 6–7, and for that reason would
`in the combined system be implemented in the
`meta agent. EX1003, ¶¶ 347–351.
`J.A. 2706–07 (original emphases omitted and emphases
`added). When later analyzing the claim 86 limitation
`“wherein said at least one facilitator agent is operable to
`construct a goal satisfaction plan,” Microsoft stated, “This
`claim element is satisfied for the same reasons described
`above in § VI.[A.]1.h.” J.A. 2708 (referring to the petition’s
`claim 1 discussion of how Kiss’s meta agent constructs a
`goal satisfaction plan, J.A. 2693–97).
`The Board determined in its final decision that Mi-
`crosoft had failed to show with particularity what evidence
`supported the grounds for the challenge to claim 86, and
`therefore its dependent claims 87–89. In particular, the
`Board found that Microsoft could not rely on the single sen-
`tence “[t]his claim element is satisfied for the same reasons
`described above in § VI.[A.]1.h,” cross-referencing the peti-
`tion’s discussion of claim 1, to explain the prior art’s teach-
`ing of the claim 86 limitation “wherein said at least one
`facilitator agent is operable to construct a goal satisfaction
`plan,” because claim 1 “does not recite ‘facilitator agent,’
`nor does [Microsoft] explain in the context of its analysis of
`claim 1 how the combination of Kiss and FIPA97 teaches
`‘at least one facilitator agent is operable to construct a goal
`satisfaction plan.’” IPR811 Decision, 2020 WL 6112246, at
`*58 (citation omitted).
`The Board’s determination on this point was an abuse
`of discretion. The Board’s reasoning neglects the petition’s
`discussion of the claim 86 preamble, which explained how
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`the combination of Kiss and FIPA97 disclosed a facilitator
`agent, constructed in part from Kiss’s meta agent. J.A.
`2706–07. As a result, when addressing the more refined
`limitation “wherein said at least one facilitator agent is op-
`erable to construct a goal satisfaction plan,” Microsoft did
`not need to refer to claim 1’s discussion to disclose the fa-
`cilitator agent, having already explained how the combina-
`tion of Kiss and FIPA97 disclosed this feature. Instead,
`Microsoft used the cross-reference to explain how Kiss’s
`meta agent (part of the facilitator agent, according to the
`petition) had the capability of constructing a goal satisfac-
`tion plan. J.A. 2708. The Board’s failure to consider Mi-
`crosoft’s discussion