`
`
`Filed: September 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`MICROSOFT CORPORATION,
`
`PETITIONER,
`
`V.
`
`IPA TECHNOLOGIES INC.,
`
`PATENT OWNER.
`___________________
`
`Case No. IPR2019-00810, IPR2019-00811,
`IPR2019-00814 (U.S. Patent No. 6,851,115)
`IPR2019-00835, IPR2019-00836 (U.S. Patent No. 7,069,560)
`___________________
`
`PATENT OWNER’S OPENING REMAND BRIEF
`
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`
`CLAIMS 8-10 AND 63 OF THE ‘115 PATENT AND CLAIM 28 OF THE
`‘560 PATENT ARE NOT UNPATENTABLE; PETITIONER FAILED TO
`DEMONSTRATE HOW THE REGISTRIES OF THE TWO
`REFERENCES WOULD HAVE BEEN COMBINED ................................. 2
`CLAIMS 86-89 OF THE ‘115 PATENT [IPR2019-00811] ......................... 9
`
`CLAIMS 10-11 OF THE ‘560 PATENT [IPR2019-00836] ....................... 10
`
`CONCLUSION ............................................................................................ 10
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`
`
`
`
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .............................................................................. 9
`In re Cyclobenzaprine,
`676 F.3d 1063 (Fed. Cir. 2012) .............................................................................. 5
`KSR Int’l. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................4, 6
`Medien Pat. Verwaltung AG v. Warner Bros. Ent. Inc.,
`No. 10 CIV. 4119 (CM) (GWG), 2014 WL 333470 (S.D.N.Y. Jan. 29,
`2014)....................................................................................................................... 5
`Microsoft Corp. v. IPA Technologies Inc.,
`No. 21-1412, 2022 WL 989403 (Fed. Cir. Apr. 1, 2022) ...................................... 1
`Pharmacyclics LLC v. Alvogen Pine Brook LLC,
`556 F. Supp.3d 377 (D. Del. 2021) ........................................................................ 5
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ..........................................................................4, 7
`
`
`ii
`
`
`
`I.
`
`INTRODUCTION
`Patent Owner submits this Brief pursuant to Order of the Board and the
`
`Federal Circuit’s Remand Decision. (IPR2019-00810, Paper 47); Microsoft Corp.
`
`v. IPA Technologies Inc., 2022 WL 989403 at *3-5, 7-8, 8-9 (Fed. Cir. Apr. 1,
`
`2022) (“Remand Decision”). The Remand Decision does not change the Board’s
`
`Final Written Decision in favor of Patent Owner as to claims 8-10 and 63 of the
`
`‘115 patent and claim 28 of the ‘560 patent. Although Petitioner asserts a POSA
`
`would have combined two prior art references (FIPA97 and Kiss), Petitioner’s
`
`evidence is limited to combining FIPA97’s communications protocol and inter-
`
`agent communication language with the electronic agents of Kiss. Petitioner does
`
`not provide any basis as to how a POSA would have been led to select features of
`
`agent registries from one with the data structure of the other or how the
`
`combination would have been achieved to render the claimed subject matter. A
`
`show of obviousness requires Petitioner to demonstrate that a POSA at the time of
`
`the invention would have selected and combined the specific prior art elements to
`
`yield the claimed invention. The evidence proffered by Petitioner is limited to
`
`general platitudes concerning efficiency, speculating that combining the two
`
`references is desirable to gain the benefit from both. But these generalities could
`
`apply to any combination of references. Petitioner cannot articulate a single
`
`specific reason that FIPA97’s disclosure of certain registry data such as
`
`
`
`1
`
`
`
`“preconditions2” (allegedly equated to the claimed “trigger declarations” when
`
`operated with FIPA-AVEB-Request-Notification contract-net to terminate a
`
`program’s end time) or “interaction- protocols” (allegedly equated to the claimed
`
`“process characteristics”) would have been specifically selected by a POSA or how
`
`the features would have or could have been combined with Kiss’s data structure to
`
`render the claimed invention. Petitioner cannot and does not provide the level of
`
`specificity legally required to demonstrate obviousness.
`
`II. CLAIMS 8-10 AND 63 OF THE ‘115 PATENT AND CLAIM 28 OF
`THE ‘560 PATENT ARE NOT UNPATENTABLE; PETITIONER
`FAILED TO DEMONSTRATE HOW THE REGISTRIES OF THE
`TWO REFERENCES WOULD HAVE BEEN COMBINED1
`The Board found, and the Federal Circuit affirmed, that a POSA at the time
`
`of the invention would have been motivated to combine specific and discernible
`
`portions of the alleged prior art – e.g., combining FIPA97’s communications
`
`protocol and inter-agent communication language (FIPA ACL) with the electronic
`
`agents of Kiss, including agent collaboration, agent registry and inter-agent
`
`messaging. (IPR2019-00810, Paper 44 (Pet.) at 94, 146).) For certain dependent
`
`claims, however, Petitioner expanded its assertions, seeking to combine not just the
`
`inter-agent communication language of FIPA97 with the electronic agents of Kiss,
`
`
`1 IPR2019-00810 (cl.8-10 of ‘115 patent); IPR2019-00814 (cl.63 of ‘115 patent);
`
`IPR2019-00835 (cl.28 of ‘560 patent).
`
`
`
`2
`
`
`
`but also asserted uniquely specific combinations of selected registry data structures
`
`plucked from the references. The Board found that Petitioner failed to demonstrate
`
`“how or why Kiss’s agent registry data structure would have been combined with
`
`FIPA97’s Agent Management Object to obtain the subject matter,” (IPR2019-
`
`00810, Paper 44 (FWD) at 147; IPR2019-00814, Paper 44 (FWD) at 132-136;
`
`IPR2019-00835, Paper 42 (FWD) at 106-109).) The Federal Circuit remanded,
`
`citing lack of substantial evidence concerning the Board’s finding that Petitioner
`
`had failed to demonstrate “how” the combination would have been achieved.
`
`(Remand Decision at *5.)
`
`Claims 8-10 of the ‘115 patent claims are directed to a “computer
`
`implemented method” wherein the agent registry data structure includes at least
`
`one “trigger declaration” (cl. 8) or “one process characteristic for each active
`
`agent” (cl. 9-10). (Ex. 1001.) Claim 63 of the ‘115 patent and claim 28 of the
`
`‘560 patent are both directed to facilitator agents wherein the agent registry
`
`includes “trigger declarations” and “process characteristics for each active agent.”
`
`(IPR2019-00810, Ex. 1001 (cl. 63); IPR2019-00835, Ex. 1001 (cl. 38).) For each
`
`of these claims Petitioner argued that selected features of FIPA97 were combined
`
`with the data structure disclosed in Kiss, yet did not provide how the very specific
`
`and selected features between the two references could have or would have been
`
`merged. (IPR2019-00810, Paper 22 (POR at 112-114); IPR2019-00835, Paper 19
`
`
`
`3
`
`
`
`(POR at 133-135).) For the claimed “trigger declarations” Petitioner cited to
`
`FIPA97’s “preconditions2” disclosed in FIPA97 Part 6, which, when operated with
`
`FIPA-AVEB-Request-Notification contract-net, terminated a program’s end time.
`
`IPR2019-00810, Ex. 1003 (Lieberman Decl. ¶374). And for “process
`
`characteristics” Petitioner pointed to “interaction-protocols” disclosed in FIPA97
`
`Part 1. (IPR2019-00810, Ex. 1003 (Lieberman Decl. ¶381). IPA argued – and the
`
`Board found – that Petitioner had not provided how or why Kiss’s agent registry
`
`data structure would have been combined with FIPA97’s Agent Management
`
`Object to obtain the subject matter.
`
`Petitioner “must [show] some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” KSR Int’l. Co. v.
`
`Teleflex Inc., 550 U.S. 398, 418 (2007). Obviousness “requires the additional
`
`showing that a [POSA] at the time of the invention would have selected and
`
`combined those prior art elements in the normal course of research and
`
`development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc.,
`
`655 F.3d 1352, 1360 (Fed. Cir. 2011) (emphasis added). The ultimate question in
`
`an obviousness analysis is “whether there was an apparent reason [for a POSA] to
`
`combine the known elements in the fashion claimed by the patent at issue.” KSR,
`
`550 U.S. at 418. Accordingly, “a court must determine whether an artisan of
`
`ordinary skill ‘would have a reason to combine the teaching of the prior art
`
`
`
`4
`
`
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`references to achieve the claimed invention, and . . . would have had a reasonable
`
`expectation of success [in] doing so.” Pharmacyclics LLC v. Alvogen Pine Brook
`
`LLC, 556 F. Supp.3d 377, 388 (D. Del. 2021) (citing to In re Cyclobenzaprine, 676
`
`F.3d at 1069). Petitioner’s reasoning for combining the two references were
`
`limited to combining the inter-agent communication language (disclosed in
`
`FIPA97) with the agent protocols (disclosed in Kiss). Petitioner did not provide or
`
`articulate how the specific features of the registries would have been selected or
`
`combined to render the claimed invention. Simply asserting that a POSA would
`
`make the combination without elaboration as to why or how amounts to
`
`impermissible, conclusory hindsight. Accordingly, the Board’s decision in favor
`
`of Patent Owner remains undisturbed. See Medien Pat. Verwaltung AG v. Warner
`
`Bros. Ent. Inc., No. 10 CIV. 4119 (CM) (GWG), 2014 WL 333470, at *15
`
`(S.D.N.Y. Jan. 29, 2014) (obviousness challenge could not prevail where
`
`challenger failed to demonstrate that a POSA would have selected and combined
`
`the prior art elements to yield the claimed invention).
`
`The Federal Circuit and Petitioner both point to a three-sentence, general art-
`
`description section provided in the Petition. But that description is broad,
`
`generally claiming that “FIPA97 discloses the inter-agent communication language
`
`requirements 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-
`
`
`
`5
`
`
`
`7)” and generally stating that “FIPA97 provides a common communications
`
`protocol and language (FIPA ACL) between the agents of Kiss, and also adds its
`
`administrative functionality and exemplary practices to the Kiss system . . .
`
`[w]here the two systems disclose analogous functionality, such as facilitating
`
`cooperating and agent registry, their techniques are combined, as a Skilled Artisan
`
`would understand that to be an efficient and common sense way implement the
`
`combined system in order to obtain the benefits of both, and therefore motivated to
`
`do so.” (Remand Decision at *3; IPR2019-00810, Paper 1 at 28; IPR2019-00810,
`
`Ex. 1003 (Lieberman Decl.) at ¶¶217-219.)
`
`Such a broad, generalized goal of seeking efficiency, without more, is
`
`insufficient under KSR. Petitioner failed to identify any need or problem providing
`
`a basis for combining the very specific elements in the manner claimed or how a
`
`POSA would select the very specific narrow features from the many parts of
`
`FIPA97 (e.g. “preconditions2” or “interaction protocols”) much less how a POSA
`
`would merge those specific features with Kiss’s agent registry data structure. KSR,
`
`550 U.S. at 420. Although the Federal Circuit pointed to several other portions of
`
`Petitioner’s expert declaration allegedly supporting a motivation to combine, those
`
`portions relate to the general combination of the agent communication language
`
`(disclosed in FIPA97) with the agent protocols (disclosed in Kiss) and do not
`
`indicate how a POSA would have selected the specific features in FIPA97 nor do
`
`
`
`6
`
`
`
`they provide any details on how those features would be combined with the agent
`
`registry of Kiss to render the claimed invention. (Remand Decision at *4;
`
`IPR2019-00810, Ex. 1003 (Lieberman Decl.) ¶¶217-231; see ¶217, 222, 223 (FIPA
`
`ACL would provide common communications protocol and language, Kiss the
`
`distributed agents); ¶220 (no mention of these specific features); ¶221 (same);
`
`¶223 (POSA would know a common language must be used); ¶229 (a POSA
`
`would have reason to pursue FIPA97 as inter-agent communication language in
`
`Kiss).) In fact, those paragraphs do not reference “process characteristics” or
`
`“preconditions2” at all, nor do they relate to how a POSA would have selected
`
`those specific narrow portions of FIPA97 or combined them with Kiss’s agent
`
`registry data structure.
`
`Petitioner’s claim that a POSA would combine the two references to “obtain
`
`the benefits of both” is unavailing- harnessing the generalized benefits of both
`
`references (one existing in multiple parts with no basis as to why one part was
`
`selected over another or how the combination could be achieved) cannot operate as
`
`a singular legitimate basis to obviousness – if that were the case then almost every
`
`single combination of art asserted in an obviousness challenge could prevail. See
`
`Unigene Labs., 655 F.3d at 1360 (obviousness requires showing that a POSA
`
`would have selected and combined those prior art elements in the normal course of
`
`research and development to yield the claimed invention).
`
`
`
`7
`
`
`
`The Federal Circuit faulted Petitioner for providing “little elaboration for
`
`what Microsoft said a skilled artisan would know how to do,” further indicating
`
`that there remained “concrete unanswered questions about how to achieve the
`
`combination.” Remand Decision at *4. These deficiencies remain. IPA’s expert
`
`confirmed this observation, indicating that the Petition “offers no reason to
`
`combine disparate disclosures from Kiss and FIPA97 to stitch together a combined
`
`alleged agent registry data structure, or how a POSITA could even achieve such a
`
`combination.” (IPR2019-00810, Ex. 2032 (Medvidovic Decl.) ¶193; ¶¶188-189
`
`(no reason a POSA would see a need or would even be able to combine Table 1
`
`with the function in FIPA97).) Although the Federal Circuit seemingly indicated
`
`that the Board should have “identif[ied] any concrete unanswered questions about
`
`how to achieve the combination” and/or “whether the combination required more
`
`than simply adding one more field to Kiss’s registry data structure” (Remand
`
`Decision at *4), the very fact that these details are missing proves Patent Owner’s
`
`point: there is simply no evidence advanced by Petitioner demonstrating that a
`
`POSA would have or could have selected those specific features of FIPA97 from
`
`the broader disclosure or combined them with the agency data structure of Kiss.
`
`The burden belongs with Petitioner to prove unpatentability in its petition.
`
`Petitioner did not provide the details called out by the Federal Circuit.
`
`Accordingly, the Board’s decision confirming that Petitioner did not demonstrate
`
`
`
`8
`
`
`
`unpatentability of claims 8-10 and 63 of the ‘115 patent and claim 28 of the ‘560
`
`patent remains substantively undisturbed on remand. Harmonic Inc. v. Avid Tech.,
`
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is unpatentable).
`
`III. CLAIMS 86-89 OF THE ‘115 PATENT [IPR2019-00811]
`Claims 86-89 of the ‘115 patent claim “at least one facilitator agent . . .
`
`wherein at least one facilitator agent is operable to construct a goal satisfaction
`
`plan by using reasoning.” IPR2019-00810, Ex. 1001 (‘115 patent). Petitioner
`
`cited to sections relating to other claims as the basis that the limitation was
`
`satisfied. The Board found that the cited section of the Petition did not mention
`
`“facilitator agent” appearing in the claims, finding the lack of specificity in the
`
`Petition prevented serious consideration of Microsoft’s challenge. (IPR2019-
`
`00811 (Paper 44 at 138-140).) On appeal Microsoft argued that the Board should
`
`have looked to the preamble of claim 86. The Federal Circuit agreed, finding the
`
`Board should have considered the petition’s discussion of the claim 86 preamble
`
`and remanding to reach the obviousness merits. Remand Decision at *8. It
`
`remains Petitioner’s burden to provide any basis for an obviousness determination
`
`by the Board. Patent Owner reserves its rights to respond to arguments presented
`
`in Petitioner’s Brief.
`
`
`
`9
`
`
`
`IV. CLAIMS 10-11 OF THE ‘560 PATENT [IPR2019-00836]
`Claims 10-11 of the ‘560 patent claim a computer architecture wherein
`
`“the ICL syntax supports explicit task completion advisory suggestions within goal
`
`expression.” (IPR2019-00836 (Ex.1001 (cl. 10-11)).) The term “advisory
`
`suggestion” is not used in the specification, but the specification notes that
`
`“[a]dvice parameters preferably give constraints or guidance to the facilitator in
`
`completing and interpreting the goal.” (Ex.1001 (16:22-23).) The Board found
`
`that “guidance” supports the “advisory suggestions” claim term and that the term
`
`“constraints” is different. (IPR2019-00836, Paper 42 (FWD at 104-107).) The
`
`Board found that since FIPA97 only discloses parameters (“Constraints”) that
`
`FIPA97 did not disclose guidance or “advisory suggestions.” The Federal Circuit
`
`reversed the Board’s implicit claim construction, holding that “the fairest meaning
`
`of ‘advisory suggestions’ is ‘advice parameter,’ not a meaning that excludes
`
`‘constraints’” and remanded. Remand Decision at *10. Patent Owner reserves its
`
`rights to respond to any arguments presented in Petitioner’s Brief.
`
`V. CONCLUSION
`The Remand Decision does not change the Board’s decision in favor of
`
`Patent Owner with respect to Claims 8-10 and 63 of the ‘115 patent and claim 28
`
`of the ‘560 patent. Patent Owner reserves its rights to respond to argument raised
`
`by Petitioner with respect to the other two categories of claims on Remand.
`
`
`
`10
`
`
`
`Dated: September 16, 2022
`
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`11
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
`
`Opening Remand Brief by electronic means on September 16, 2022 at the following
`
`addresses or record:
`
`Joseph Micallef
`Scott Border
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`sborder@sidley.com
`
`Dated: September 16, 2022
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
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