Case: 21-2039 Document: 41 Page: 1 Filed: 10/20/2022
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`
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MICROSOFT CORPORATION,
`Appellant
`
`v.
`
`UNILOC 2017 LLC,
`Appellee
`______________________
`
`2021-2039
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`00023.
`
`______________________
`
`Decided: October 20, 2022
`______________________
`
`ANDREW M. MASON, Klarquist Sparkman, LLP, Port-
`land, OR, argued for appellant. Also represented by SARAH
`ELISABETH JELSEMA, DERRICK WADE TODDY.
`
` NATHAN K. CUMMINGS, Etheridge Law Group, South-
`lake, TX, argued for appellee. Also represented by JAMES
`ETHERIDGE, BRIAN MATTHEW KOIDE, RYAN S. LOVELESS,
`BRETT MANGRUM.
` ______________________
`
`
`

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`Case: 21-2039 Document: 41 Page: 2 Filed: 10/20/2022
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`MICROSOFT CORPORATION v. UNILOC 2017 LLC
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`Before LOURIE, DYK, and HUGHES, Circuit Judges.
`HUGHES, Circuit Judge.
`Microsoft appeals a decision of the Patent Trial and Ap-
`peal Board determining that Microsoft did not prove by a
`preponderance of evidence that claims 1–4, 6–14, 16–21 of
`U.S. patent No. 6,467,088 are unpatentable. Because sub-
`stantial evidence does not support the Board’s factual find-
`ings, we vacate and remand.
`I
`Uniloc owns the ’088 patent, which is directed to tech-
`niques for upgrading or reconfiguring software and hard-
`ware components of electronic devices. Before updating
`components of electronic devices, it is generally necessary
`to assess compatibility with the rest of the device to deter-
`mine whether the new component will cause problems. The
`’088 patent solves potential compatibility conflicts by com-
`paring “the needed and currently implemented compo-
`nents with previously stored lists of known acceptable and
`unacceptable configurations for the electronic device.” ’088
`patent at 2:38–41. Claim 1 is representative:
`1. A processor-implemented method for control-
`ling the reconfiguration of an electronic device, the
`method comprising the steps of:
`receiving information representative of a
`reconfiguration request relating to the elec-
`tronic device;
`determining at least one device component
`required to implement the reconfiguration
`request;
`comparing the determined component and
`information specifying at least one addi-
`tional component currently implemented
`in the electronic device with at least one of
`a list of known acceptable configurations
`for the electronic device and a list of known
`
`

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`Case: 21-2039 Document: 41 Page: 3 Filed: 10/20/2022
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`MICROSOFT CORPORATION v. UNILOC 2017 LLC
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`3
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`unacceptable configurations for the elec-
`tronic device; and
`generating information indicative of an ap-
`proval or a denial of the reconfiguration re-
`quest based at least in part on the result of
`the comparing step.
`Id. at 6:43–59.
`Microsoft petitioned for inter partes review of claims 1–
`4, 6–14, and 16–21 of the ’088 patent based on obviousness
`grounds. The Board instituted review but disagreed with
`all asserted grounds and concluded that Microsoft failed to
`show by a preponderance of evidence that claims 1–4, 6–
`14, 16–21 of the ’088 patent would have been unpatentable
`as obvious.
`
`II
`We review the ultimate conclusion of obviousness de
`novo and “the Board’s factual findings underlying those de-
`terminations for substantial evidence.” In re Ethicon, Inc.,
`844 F.3d 1344, 1349 (Fed. Cir. 2017).
`The dispositive issue here was whether a prior art ref-
`erence, Apfel (U.S. Patent No. 5,974,454), performs the
`claimed “comparing” step, which involves (1) a comparison
`between “a determined component” (i.e., the component re-
`quired to implement the reconfiguration request), (2) “in-
`formation specifying at least one additional component
`currently implemented in the electronic device,” and (3) “a
`list of known acceptable configurations.” ’088 patent at
`6:51–56. The Board found that Apfel did not disclose the
`comparing step. That conclusion lacks substantial evi-
`dence.
`
`A
`The Board erred in its factual finding regarding Apfel
`because it overlooked a passage that specifically discloses
`assessing the compatibility of available upgrades:
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`Case: 21-2039 Document: 41 Page: 4 Filed: 10/20/2022
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`MICROSOFT CORPORATION v. UNILOC 2017 LLC
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`The servers are responsible for assessing whether
`an upgrade is available and whether it should be
`downloaded based on the information sent by com-
`puter 20. For example, even if an upgrade is avail-
`able, it should not be downloaded if the computer
`20 already has the upgrade or if the upgrade is
`somehow incompatible with computer 20.
`’454 patent at 7:13–19 (italicizations added).
`The Board cited the above passage in a parenthetical
`and noted that “Apfel would not allow the download of a
`version [] that is incompatible with computer 20[.]” J.A. 22
`(emphasis added). But despite this citation, the Board
`failed to explain why this passage from Apfel did not dis-
`close the required compatibility check. Indeed, the Board’s
`description of this passage contradicts its conclusion that
`“Apfel’s database lookup only determines that a new up-
`grade is available—not that there is a known compatible
`upgrade available.” J.A. 16–17 (internal quotation omit-
`ted).
`In addition, the Board’s conclusion that Apfel does not
`teach a comparing step appears to be contradicted by other
`Apfel passages that it considered. The following passage,
`although not explicitly referring to a compatibility check,
`recognizes that different update packages correspond, for
`example, to different operating systems, and that a data-
`base of the different configurations is maintained to guide
`downloads:
`At decision step 427, it is determined whether
`there is an upgrade package for the Web Authoring
`Components program module. In the exemplary
`embodiment, the database server 80a uses the in-
`formation received in the HTTP query at step 415
`to determine if an upgrade package is available,
`such as by a database lookup. Different update
`packages may be provided for different version
`combinations, different operating systems, and dif-
`ferent languages. Thus, the database server 80a
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`Case: 21-2039 Document: 41 Page: 5 Filed: 10/20/2022
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`MICROSOFT CORPORATION v. UNILOC 2017 LLC
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`maintains a database of upgrade packages and cor-
`responding configurations which should result in
`their download.
`’454 patent at 9:30–40.
`The Board interpreted this passage to mean that “the
`database server of Apfel maintains upgrade packages and
`corresponding configurations that should be downloaded.”
`J.A. 20 (emphasis added). It also determined that the
`“should result in their result download” language is used
`to reflect a user’s choice of whether to accept the invitation
`to download the package. J.A. 25–26. Even if the “should”
`language leaves room for ambiguity, the Board’s interpre-
`tation differs from the preceding sentence––“[d]ifferent up-
`date packages may be provided for different version
`combinations, different operating systems, and different
`languages.” ’454 patent at 9:36–38. That portion of Apfel,
`at a minimum, suggests a form of compatibility assessment
`to find the correct upgrade package and, combined with the
`other passage cited further above that specifically refer-
`ences incompatibility, renders the Board’s conclusion that
`Apfel does not disclose a compatibility check lacking in sub-
`stantial evidence.
`
`B
`The Board also erred when it concluded that Apfel did
`not disclose the comparing step because it did not perform
`the determining and comparing steps in a certain order
`required by the disputed claims. See J.A. 18–19 (explaining
`that while Apfel compares the query and lookup table, “it
`is after the database lookup that a ‘determined component’
`may be obtained”); J.A. 21 (explaining that Apfel had not
`“performed a compatibility determination in the manner
`claimed” (emphasis added)). In other words, according to
`the Board, Apfel does not perform a compatibility check
`after determining the availability of an upgrade.
`We agree with Microsoft that the Board misconstrued
`the claims to require that the comparing and determining
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`Case: 21-2039 Document: 41 Page: 6 Filed: 10/20/2022
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`MICROSOFT CORPORATION v. UNILOC 2017 LLC
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`step are performed by two separate acts in a certain order.
`Appellant’s Br. 46. Nothing in the intrinsic record requires
`such a narrow construction, and neither party presented
`this construction to the Board.1 Without any such evidence,
`we decline to impose such a narrow claim construction.
`We review claim construction based on intrinsic
`evidence de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`574 U.S. 318, 331 (2015). A claim requires an ordering,
`when steps of a method actually recite an order, or when
`claim language, as a matter of logic, requires that the steps
`be performed in the order written. Interactive Gift Express,
`Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir.
`2001); Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764
`F.3d 1392, 1398 (Fed. Cir. 2014).
`Here, the claim does not explicitly recite an order for
`performing the claim steps. Instead, Uniloc argues that the
`antecedent of
`the determined
`component
`is
`the
`determining step, because as a matter of logic, the
`component (i.e., newer version) must be determined before
`it can be compared. Uniloc’s logic is flawed. Following
`Uniloc’s logic to its conclusion, the receiving step would
`need to occur prior to the determining step, because the
`determining
`step
`requires
`information
`from
`the
`reconfiguration request and is listed prior to the receiving
`step
`in the representative claim. But the Board’s
`construction requires that receiving and determining steps
`to occur in a reverse order. When the reconfiguration
`manager receives an upgrade request, the request must
`already
`include
`the user’s preferred version,
`the
`determined component. ’088 patent at 4:12–15; see J.A. 4.
`
`1 Uniloc claims that “Microsoft was on notice of
`Uniloc’s position that the ‘comparing’ step had to be done
`after and separately from the ‘determining’ step.” Appel-
`lee’s Br. 15 n.3. But Uniloc included no supporting refer-
`ences for this claim, and the Board’s decision did not
`discuss Uniloc’s position.
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`Case: 21-2039 Document: 41 Page: 7 Filed: 10/20/2022
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`MICROSOFT CORPORATION v. UNILOC 2017 LLC
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`Apfel was deemed not to disclose a comparing step
`specifically because the reconfiguration request in Apfel
`does not include the determined component. Hence, the
`claim cannot require that the steps be performed in the
`order written, but rather allows for the determining and
`comparing steps be part of a single process.
`Moreover, the ’088 patent provides examples where a
`reconfiguration manager performs the determining step
`after the comparing step. If, at the comparing step, the
`reconfiguration manager
`finds that the determined
`component corresponds to one of the known bad
`configurations, the reconfiguration manager repeats the
`determining step to find a set from known good
`configurations. ’088 patent at 4:64–53. The reconfiguration
`manager can also receive “requests for an upgrade to a
`particular device feature,” which will require the manager
`to determine “several device components” to be upgraded.
`Id. at 4:56–61. Any construction that would narrow the
`determining and comparing steps to a certain order is not
`supported by either the claim language or the specification.
`The Board’s apparent construction to the contrary is
`reversed.
`Because the Board erred in concluding that Apfel does
`not perform the claimed “comparing” step and implicitly
`relied on an improper claim construction, we vacate the
`Board’s decision and remand for further proceedings
`consistent with this opinion.
`VACATED AND REMANDED
`COSTS
`Costs to Microsoft Corporation.
`
`
`