Filed: September 30, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`Microsoft Corp.,
`Petitioner,
`
`v.
`
`IPA Technologies Inc.,
`Patent Owner.
`
`––––––––––––––––––
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`
`––––––––––––––––––
`
`PETITIONER MICROSOFT’S REMAND RESPONSE BRIEF
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`Microsoft Corp.,
`Petitioner,
`
`v.
`
`IPA Technologies Inc.,
`Patent Owner.
`
`––––––––––––––––––
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`
`––––––––––––––––––
`
`PETITIONER MICROSOFT’S REMAND RESPONSE BRIEF
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`
`
`
`
`TABLE OF CONTENTS
`
`B.
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. ARGUMENT .................................................................................................. 1
`A.
`The Petitions Expressly Demonstrated the “Why” and “How” of the
`Kiss and FIPA97 Combination ............................................................. 1
`The Mandate Rule Precludes Consideration of Whether the Petitions
`Sufficiently Set Forth How and Why the Prior Art Should Be
`Combined .............................................................................................. 3
`No Issues Remain To Be Decided On Claims 86-89 of the 115 Patent
`and Claims 10-11 of the 560 Patent .................................................... 10
`III. CONCLUSION ............................................................................................ 10
`
`
`C.
`
`
`
`
`
`
`
`i
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`
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`I.
`
`INTRODUCTION
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`In its Opening Brief, Patent Owner seeks to relitigate issues that have
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`already been settled by the Federal Circuit. The mandate of that court was clear—
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`it reversed the Board’s finding that Petitioner had not shown how and why a
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`Skilled Artisan would combine Kiss and FIPA97 and remanded for further
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`consideration of any remaining obviousness issues. But rather than address the
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`only remaining obviousness issues—e.g., whether or not the combination of Kiss
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`and FIPA97 disclose the challenged claims—Patent Owner instead asks the Board
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`to revisit the combinability question that was settled by the Federal Circuit. The
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`mandate rule precludes such a revisit, and the absence of any argument in Patent
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`Owner’s Opening Brief addressing what was actually remanded to the Board
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`should be deemed a waiver of such remanded issues. For the reasons demonstrated
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`in Petitioner’s Opening Brief and below, the Board should find claims 8-10 and 63
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`of the 115 Patent, claim 28 of the 560 Patent, claims 86-89 of the 115 Patent, and
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`claims 10 and 11 of the 560 Patent unpatentable.
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`II. ARGUMENT
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`A. The Petitions Expressly Demonstrated the “Why” and “How” of
`the Kiss and FIPA97 Combination
`
`The petitions demonstrated both how a Skilled Artisan would combine Kiss
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`and FIPA97, and why such a Skilled Artisan would be motivated to do so. For
`
`1
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`
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`example, the Petitions explained that the “administrative functionality and
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`exemplary practices” of FIPA97 would be combined with the system of Kiss:
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`In that combination, 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 4-7). 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 practices to the Kiss system.
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`See, e.g., IPR2019-00810, Petition at 28. The petitions went further, however, and
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`specifically explained that the details of the agent registries from each references
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`would be combined:
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`These techniques [i.e., administrative functionality and exemplary
`practices] are used to implement the functionality described in Kiss,
`including facilitating agent collaboration, agent registry, and inter-
`agent messaging, as well adding functionality that is disclosed in
`FIPA97. Where the two systems disclose analogous functionality, such
`as facilitating cooperation and agent registry, their techniques are
`combined, ....
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`See, e.g., IPR2019-00810, Petition at 28. The petitions thus plainly explained that
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`the basic combination included combined registries and “how” the combination of
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`these references would have been implemented.
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`2
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`
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`The petitions also demonstrated “why” a Skilled Artisan would have been
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`motivated to make the combination of Kiss and FIPA97. The petitions explained,
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`for example, that the combination (1) would have been the arrangement of old
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`elements with each performing the same function it had been known to perform
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`and yielding no more than what one would expect from such an arrangement, see,
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`e.g., IPR2019-00810, Petition at 29; (2) was “an efficient and common sense way
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`to implement the combined system in order to obtain the benefits of both” prior art
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`systems, see, e.g., IPR2019-00810, Petition at 28; and (iii) was “a convenient and
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`efficient way to facilitate effective communication between agents,” See, e.g.,
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`IPR2019-00810, Petition at 29-30; see also, e.g., IPR2019-00810, Petition at 31
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`(describing additional reasons that a Skilled Artisan would have been motivated to
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`make the combination). Accordingly, and as discussed in detail below, it was in
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`view of this evidence (and more) that the Federal Circuit expressly held that
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`Microsoft had advanced sufficient evidence to justify both how and why Kiss and
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`FIPA97 would be combined.
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`B.
`
`The Mandate Rule Precludes Consideration of Whether the
`Petitions Sufficiently Set Forth How and Why the Prior Art
`Should Be Combined
`
`The mandate rule prevents parties from raising issues on remand that were
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`within the scope of the judgment appealed from and resolved by the appellate
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`court. Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999)
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`3
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`
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`(“Unless remanded by this court, all issues within the scope of the appealed
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`judgment are deemed incorporated within the mandate and thus are precluded from
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`further adjudication.”) (citations omitted). The rule “compels compliance on
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`remand with the dictates of a superior court and forecloses relitigation of issues
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`expressly or impliedly decided by the appellate court.” United States v. Lee, 358
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`F.3d 315, 321 (5th Cir. 2004) (citing United States v. Bell, 988 F.2d 247, 251 (1st
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`Cir. 1993)).
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`Accordingly, during this remand, the Board has no authority to address any
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`issue other than those remanded by the Federal Circuit, as an inferior tribunal “has
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`no power or authority to deviate from the mandate issued by an appellate court.”
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`Banks v. Unites States, 741 F.3d 1268, 1276 (Fed. Cir. 2014) (quoting Briggs v.
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`Pa. R. Co., 334 U.S. 304, 306 (1948)); see also Scott v. Mason Coal Co., 289 F.3d
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`263, 267 (Fed. Cir. 2002) (mandate rule “applies with equal authority and weight
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`to … administrative agencies”) (citations omitted)
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`On appeal from this panel’s final written decision, the Federal Circuit
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`reviewed the panel’s analysis of claims 8–10 and 63 of the ’115 patent and claim
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`28 of the ’560 patent, and summarized that the Board had found “that Microsoft
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`did not prove ‘how or why Kiss’s agent registry data structure would have been
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`combined with FIPA97’s’ analogous agent registry to obtain the subject matter of
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`the claims.” Microsoft Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL
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`4
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`
`
`
`
`989403, at *4 (Fed. Cir. Apr. 1, 2022) (emphasis added) (hereinafter “Microsoft”).
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`The Federal Circuit expressly held, however, that this determination by the Board
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`was “not supported by substantial evidence.” Id.
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`Moreover, with respect to the “why the pertinent aspects of the registries of
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`Kiss and FIPA97 would be combined,” the Federal Circuit stated that “Microsoft
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`presented significant evidence of motivation,” and that the Board’s determination
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`otherwise was “unreasonable on the evidence.” Id. (emphasis in original).
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`With respect to “how Kiss and FIPA97’s registries would be combined,” the
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`Court found that although “Microsoft presented evidence, with little elaboration for
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`what Microsoft said a skilled artisan would know how to do,” IPA’s response
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`“focused almost entirely on the why question, [and] was at most a simple,
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`unelaborated assertion that Microsoft’s evidence as to how was not enough, with
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`no identification at all of what necessary details were missing.” Id. (emphasis in
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`original). And as to the Board’s “why” analysis, the Federal Circuit explained that
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`the Board “did not identify any concrete unanswered questions about how to
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`achieve the combination.” Id.
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`After weighing the arguments raised by Microsoft and IPA, the Federal
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`Circuit concluded that “[i]n these circumstances, we see no basis for a reasonable
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`determination rejecting Microsoft’s evidence of why and how the combination at
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`issue would be made.” Id. at *5. The Court then “revers[ed] the Board’s finding
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`5
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`that Microsoft ha[d] not persuasively shown how or why Kiss and FIPA97 would
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`have been combined to generate the subject matter of claims 8–10 and 63 of the
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`’115 patent and claim 28 of the ’560 patent,” and remanded for the Board to
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`“address any remaining obviousness disputes concerning these claims.” Id. at *5
`
`(emphasis added).
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`In its Opening Brief on remand, however, Patent Owner asks the Board to
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`revisit the question of whether Microsoft has advanced sufficient evidence of how
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`and why the prior art would be combined and to impermissibly ignore the letter
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`and spirit of the Federal Circuit’s mandate. See IPA Opp. Br. at 4-9. In particular,
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`Patent Owner expressly argues the same “how or why” argument rejected by the
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`Federal Circuit, see id., at 5 (“Petitioner did not provide or articulate how the
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`specific features of the registries would have been selected or combined to render
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`the claimed invention. Simply asserting that a POSA would make the combination
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`without elaboration as to why or how amounts to impermissible, conclusory
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`hindsight.” (emphasis added)), and also expressly argues to this panel that the
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`Federal Circuit got it wrong, id., at 5-6 (arguing that “[t]he Federal Circuit and
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`Petitioner both point to a three-sentence, general art description section provided in
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`the Petition” and arguing that “[s]uch a broad, generalized goal of seeking
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`efficiency, without more, is insufficient under KSR.” (emphasis added))
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`6
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`
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`These arguments are foreclosed by the mandate rule. The question of
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`whether Microsoft’s petition had sufficiently set for the “how” and “why” of the
`
`cited combination was presented squarely to the Federal Circuit on appeal from the
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`Board’s final written decision and the Court ruled expressly in favor of Microsoft,
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`reversing – i.e., not just vacating – the Board’s contrary decision. Microsoft at *3-
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`5. That Microsoft’s advanced sufficient evidence to persuasively justify both the
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`how and why Kiss and FIPA97 would have been combined is now settled, and
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`under the mandate rule this panel has no authority to even address the issue.1
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`
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`1 To the extent the “how or why” arguments in Patent Owner’s remand brief are
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`intended to be in some manner different from the “how or why” arguments it
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`previously asserted in its Patent Owner Response, such new arguments are also
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`foreclosed by the mandate rule, as the Federal Circuit reversed the Board’s finding
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`that Microsoft had not persuasively shown how or why Kiss and FIPA97 would
`
`have been combined to generate the subject matter of these claims and remanded
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`only to “address any remaining obviousness disputes concerning these claims.”
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`Microsoft at *5 (emphasis added). Any other (or new) “obviousness disputes”
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`Patent Owner may seek to raise are therefore “deemed incorporated within the
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`mandate and thus are precluded from further adjudication.” Engel Indus, 166 F.3d
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`at 1383.
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`7
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`
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`Similarly, Patent Owner’s assertion that “the Board’s decision in favor of
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`Patent Owner remains undisturbed,” see IPA Opp. Br. at 5, is plainly wrong for the
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`same reasons: the Federal Circuit reversed the Board on that issue so “the Board’s
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`decision in favor of Patent Owner” is no more.2
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`Patent Owner also asserts that “[t]he Federal Circuit faulted Petitioner for
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`providing ‘little elaboration for what Microsoft said a skilled artisan would know
`
`how to do,’ further indicating that there remained ‘concrete unanswered questions
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`about how to achieve the combination,’” and suggests that “[t]hese deficiencies
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`remain.” IPA Opp. Br. at 8. Not so.
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`While the Federal Circuit noted more elaboration would have been
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`preferable, it found that:
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`The Board, for its part, did not meaningfully address the 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 incorporation, but of combining the features
`required to arrive at the claim). It did not even say whether the
`
`
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`2 Moreover, the SDNY decision Patent Owner cites in support of that argument
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`(Medien Pat. Verwaltung AG v. Warner Bros.) is simply not relevant, as it is a
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`decision by a district court on a motion for summary judgment—not a decision on
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`remand following a reversal by an appellate court.
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`8
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`
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`combination required more than simply adding one more field to Kiss’s
`registry data structure.
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`Microsoft at *4.
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`The Court accordingly found that it saw “no basis for a reasonable
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`determination rejecting Microsoft’s evidence of why and how the combination at
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`issue would be made. Accordingly, we reverse the Board’s finding that Microsoft
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`has not persuasively shown how or why Kiss and FIPA97 would have been
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`combined to generate the subject matter of claims 8–10 and 63 of the ’115 patent
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`and claim 28 of the ’560 patent.” Microsoft at *5. Whatever “deficiencies” Patent
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`Owner refers to therefore do not “remain,” but have been conclusively resolved in
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`Microsoft’s favor.3
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`
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`3 Moreover, Patent Owner’s assertion that the Court “indicat[ed] that there
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`remained ‘concrete unanswered questions about how to achieve the combination’”
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`is a mischaracterization of the Federal Circuit’s opinion. IPA Opp. Br. at 8. As
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`shown in the quote above, what the Federal Circuit actually wrote was that “[The
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`Board] did not identify any concrete unanswered questions about how to achieve
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`the combination.” Microsoft at *4. There are, therefore, no such unanswered
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`questions left to be decided.
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`9
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`
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`C. No Issues Remain To Be Decided On Claims 86-89 of the 115
`Patent and Claims 10-11 of the 560 Patent
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`As to claims 86-89 of the 115 Patent and claims 10-11 of the 560 Patent,
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`Patent Owner makes no argument whatsoever, instead asserting in both cases that
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`“Patent Owner reserves its rights to respond to arguments presented in Petitioner’s
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`Brief.” See IPA Opp. Br. at 9, 10. Petitioner notes that the Board’s Order
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`governing the briefing on remand requires that “[e]ach party’s brief shall address
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`all issues pertaining to the three claim groups” at issue on remand. Paper 49 at 4.
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`Patent Owner thus violates that order, or simply has nothing to say that might
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`support the patentability of its claims. The Board should assume the latter and find
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`these claims to be unpatentable as set forth in the petitions.
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`III. CONCLUSION
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`For the foregoing reasons and as demonstrated in its Opening Brief, the
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`Board should find claims 8-10 and 63 of the 115 Patent, claim 28 of the 560
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`Patent, claims 86-89 of the 115 Patent, and claims 10 and 11 of the 560 Patent
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`unpatentable.
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`Dated: September 30, 2022
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`Respectfully Submitted,
`
`/ Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Sidley Austin LLP
`1501 K Street NW
`Washington, D.C. 20005
`Attorney for Petitioner Microsoft Corp.
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`10
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 30th day of
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`September, 2022, I caused to be served a true and correct copy of the foregoing
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`and any accompanying exhibits by e-mail on the following counsel:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Sarah E. Spires
`Paul J. Skiermont
`Mieke K. Malmberg
`IPA_SDTeam@skiermontderby.com
`
`
`
`Dated: September 30, 2022
`
`Respectfully Submitted,
`
`/ Scott M. Border/
`Scott M. Border
`Reg. No. 77,744
`Sidley Austin LLP
`1501 K Street NW
`Washington, D.C. 20005
`Attorney for Petitioner Microsoft Corp.
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`11
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