Trials@uspto.gov
`571-272-7822
`
`Paper 35
`Date: July 28, 2023
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`
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00023
`Patent 6,467,088 B1
`____________
`
`
`
`Before MIRIAM L. QUINN, AMANDA F. WIEKER and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 114, 318
`
`
`
`
`
`
`571-272-7822
`
`Paper 35
`Date: July 28, 2023
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00023
`Patent 6,467,088 B1
`____________
`
`
`
`Before MIRIAM L. QUINN, AMANDA F. WIEKER and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 114, 318
`
`
`
`
`
`
`
`IPR2020-00023
`Patent 6,467,088 B1
`
`
`I. INTRODUCTION
`
`This case is on remand from the United States Court of Appeals for
`
`the Federal Circuit to address the patentability of claims 1−4, 6−14, and
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`16−21 of U.S. Patent No. 6,467,088 B1 (“the ’088 patent”), owned by
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`Uniloc 2017 LLC (“Patent Owner”). Microsoft Corp. v. Uniloc 2017 LLC,
`
`No. 2021-2039 (Fed. Cir. Oct. 20, 2022) (nonprecedential).
`
`For the reasons discussed below, we determine that Petitioner has
`
`proven by a preponderance of the evidence that claims 1−4, 6−14, and
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`16−21 of the ’088 patent are unpatentable.
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`II. BACKGROUND
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`A. The ’088 Patent and Illustrative Claim
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`
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`The ’088 patent is directed to techniques for upgrading or
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`reconfiguring software and/or hardware components in electronic devices.
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`Ex. 1001, 1:6−9. According to the ’088 patent, prior art software update
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`techniques fail to avoid potential conflicts and thus ensure compatibility
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`because they do not account for interdependencies of the resources required
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`by the desktops or the files resident in the remote devices. Id. at 1:41−45,
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`1:52−56, 1:65−2:3, 2:10−14.
`
`The ’088 patent solves this problem by providing a list or listing that
`
`indicates “which of a set of software components supported by [a
`
`reconfiguration] manager 10 are known to work well together or are
`
`otherwise compatible.” Id. at 3:36−42. For instance, Figure 1 of the ’088
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`patent, reproduced below, illustrates reconfiguration manager 10 that
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`Patent 6,467,088 B1
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`“includes a listing 16 of known configurations, and a repository 18 of
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`software components.” Id. at 3:27−29.
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`
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`Figure 1 illustrates reconfiguration manager 10 interacting with
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`electronic device 12, also referred to as “Device X.” Id. at 3:14−16. When
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`reconfiguration manager 10 receives a request for an upgrade from
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`Device X, the request indicates that the device wants to upgrade to
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`version 2.0 of software component A and includes a list of the components
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`currently on the device, i.e., version 1.1 of component A, version 2.0 of
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`component C, and version 2.3 of component B. Id. at 4:12−19.1
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`Reconfiguration manager 10 processes the request, and if appropriate,
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`delivers the requested version 2.0 of software component A. Id. at 4:22−26.
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`Processing the request involves generating a potential upgrade configuration
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`that will satisfy the received request, and searching through a set of known
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`“bad” configurations. Id. at 4:62−66. A known “bad” configuration is
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`indicated in Figure 1 as a dashed line between components that are not
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`compatible. Id. at 3:58−61. For example, “[t]he pair including version 1.8
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`of component A and version 1.0 of component C is an example of a known
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`bad configuration.” Id. at 3:61−63.
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`If the upgrade configuration corresponds to a bad configuration, the
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`reconfiguration manager “attempts to find a set or sets of potential upgrade
`
`configurations from a set of known good configurations.” Id. at 4:67−5:3.
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`A known “good” configuration is indicated in Figure 1 by a solid line
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`between a given pair of components indicating that the components work
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`well together or are otherwise compatible. Id. at 3:52−55.
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`Challenged claim 1, reproduced below, is illustrative of the
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`challenged claims:
`
`
`
`1 Although Fig. 1 depicts device 12 having three versions of software
`component A (labels 14A–C), the description of Fig. 1 indicates these are
`different versions of components A, B, and C, respectively. Ex. 1001, 3:20–
`24.
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`Patent 6,467,088 B1
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`1. A processor-implemented method for controlling the
`reconfiguration of an electronic device, the method comprising
`the steps of:
`receiving information representative of a reconfiguration
`request relating to the electronic device;
`determining at least one device component required to
`implement the reconfiguration request;
`comparing the determined component and information
`specifying at least one additional component currently
`implemented in the electronic device with at least one of a
`list of known acceptable configurations for the electronic
`device and a list of known unacceptable configurations for
`the electronic device; and
`generating information indicative of an approval or a denial of
`the reconfiguration request based at least in part on the
`result of the comparing step.
`
`
`Ex. 1001, 6:43−59. We refer to the steps of claim 1 as the receiving step,
`
`the determining step, the comparing step, and the generating step,
`
`respectively.
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`B. Trial Background
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`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
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`requesting inter partes review of claims 1−4, 6−14, and 16−21 of the
`
`’088 patent. The Petition asserts that the claims are unpatentable on the
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`following grounds (Pet. 3–4), which are supported by a declaration by John
`
`Villasenor (Ex. 1003):
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`Claims Challenged 35 U.S.C. §2
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`References/Basis
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`1–4, 6–14, 16–21
`9, 19
`1–3, 9–13, 19–21
`1, 3, 4, 6–11, 13,
`14, 16–21
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`
`
`§ 103
`§ 103
`§ 103
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`Apfel,3 Lillich,4 Todd5
`Apfel, Lillich, Todd, Pedrizetti6
`Apfel, Lillich
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`§ 103
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`Apfel, Todd
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`We instituted review on all grounds presented. Paper 7 (“Institution
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`Decision”). During the trial, Patent Owner filed a Patent Owner Response
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`(Paper 10, “PO Resp.”) but did not submit expert testimony. Petitioner then
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`filed a Reply (Paper 11), accompanied by a second declaration by John
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`Villasenor (Ex. 1016). Patent Owner then filed a Sur-Reply (Paper 13,
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`“Sur-Reply”). We heard oral argument on January 15, 2021, a transcript of
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`which appears in the record (Paper 19).
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`C. Final Written Decision and Federal Circuit Appeal
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`We issued a Final Written Decision determining that Petitioner had
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`not proven by a preponderance of evidence that claims 1−4, 6−14, and
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`16−21 are unpatentable. Paper 20 at 32–33 (“Final Decision” or “Final
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`The ’088 patent was filed June 30, 1999, so we apply pre-AIA § 103.
`Ex. 1001, code (22).
`3 U.S. Patent No. 5,974,454, filed as Exhibit 1004.
`4 U.S. Patent No. 5,613,101, filed as Exhibit 1005.
`5 U.S. Patent No. 5,867,714, filed as Exhibit 1006.
`6 U.S. Patent No. 6,151,708, filed as Exhibit 1007.
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`Dec.”). Petitioner filed a Notice of Appeal of the Final Decision with the
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`United States Court of Appeals for the Federal Circuit. Paper 21.
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`On October 20, 2022, the Federal Circuit issued a decision in the
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`appeal vacating our Final Decision as to all challenged claims and
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`remanding for further proceedings. Microsoft, slip. op. at 7. The Federal
`
`Circuit also reversed the Board’s “apparent construction” that “narrow[ed]
`
`the determining and comparing steps to a certain order.” Id.
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`The Federal Circuit issued its mandate on November 28, 2022.
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`D. Remand Proceedings
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`After the Federal Circuit mandate issued, the parties proposed a
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`procedure and schedule on remand. Paper 24, 2. Subsequently, we issued
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`an order with a remand briefing schedule permitting the parties to address
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`the impact of the Federal Circuit’s opinion but not permitting the parties to
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`introduce new evidence. Id. The parties then filed the following briefing:
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`Petitioner’s Remand Brief (Paper 32, “Pet. Remand Br.”), Patent Owner’s
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`Remand Brief (Paper 31, “PO Remand Br.”), Petitioner’s Remand Response
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`(Paper 34, “Pet. Remand Resp. Br.”), and Patent Owner’s Remand Reply
`
`(Paper 33, “PO Remand Reply Br.”).
`
`A. Principle of Law
`
`III. ANALYSIS
`
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
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`2015). A claim is unpatentable as obvious if “the differences between the
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`subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art to which said subject
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`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
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`(quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based
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`on underlying factual determinations, including: (1) the scope and content of
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`the prior art; (2) any differences between the prior art and the claims; (3) the
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`level of skill in the art; and (4) when in evidence, objective indicia of
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`nonobviousness.7 See Graham v. John Deere Co., 383 U.S. 1, 17–18
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`(1966). We apply these principles to the Petition’s challenges.
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`B. Level of Ordinary Skill in the Art
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`We apply the following assessment of the level of ordinary skill in the
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`art: a person of ordinary skill in the art (“POSITA”) “would have had a
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`Bachelor’s Degree in Electrical Engineering, Computer Science, or a related
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`subject, and one or more years of experience working with configuring
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`hardware and software components in electronic devices,” and “[l]ess work
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`experience may be compensated by a higher level of education, such as a
`
`Master’s Degree, and vice versa.” Final Dec. 7–8.
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`C. Claim Construction
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`In an inter partes review proceeding, a claim of a patent is construed
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`using the same standard used in federal district court, “including construing
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`the claim in accordance with the ordinary and customary meaning of [the]
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`
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`7 The parties have not provided any such evidence in this proceeding.
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`claim as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019).
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`There are no claim construction issues on remand. We apply the
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`Federal Circuit’s instruction that we must avoid “narrow[ing] the
`
`determining and comparing steps to a certain order.” Microsoft, slip. op.
`
`at 7.
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`D. Asserted Obviousness over Apfel, Lillich, and Todd
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`Petitioner contends, inter alia, that claims 1–4, 6–14, and 16–21
`
`would have been obvious over the combination of Apfel, Lillich, and Todd.
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`Pet. 32–64; see also infra Section III.E (addressing the combination of
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`Apfel, Lillich, Todd, and Pedrizetti). In the alternative, Petitioner argues
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`that (1) claims 1–3, 9–13, and 19–21 would have been obvious over Apfel
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`and Lillich (Ground 3), or that (2) claims 1, 3, 4, 6–11, 13, 14, and 16–21
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`would have been obvious over Apfel and Todd (Ground 4). Id. at 69–72.
`
`Before addressing the merits of Grounds 1 and 2, we first address the
`
`Petition’s alternative grounds.
`
`Claim 1 recites in part,
`
`comparing the determined component and information
`specifying at least one additional component currently
`implemented in the electronic device with at least one of a list
`of known acceptable configurations for the electronic device
`and a list of known unacceptable configurations for the
`electronic device.
`
`Ex. 1001, 6:51–56 (emphasis added). Similar limitations are found in
`
`independent claims 11 and 21. Id. at 7:56–62, 8:57–62. In our Final
`
`Decision, we observed that Petitioner argues this limitation requires a
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`comparison with both a list of known acceptable configurations and a list of
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`known unacceptable configurations, because of the claim’s conjunctive “at
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`least one of.” Final Dec. 28 (citing Pet. 23–25). The Petition’s two
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`alternative grounds address a potential disjunctive construction of this
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`limitation, “namely as covering only a comparison to ‘a list of known
`
`acceptable configurations’ or a comparison to ‘a list of known unacceptable
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`configurations.’” Pet. 70.
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`Our Final Decision did not address these alternative grounds because
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`Petitioner’s conjunctive interpretation was “undisputed on the full record.”
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`Final Dec. 28. This interpretation remains undisputed on remand. See
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`generally PO Remand Br. Thus, we only address Petitioner’s ground
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`alleging unpatentability of claims 1–4, 6–14, and 16–21 over the
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`combination of Apfel, Lillich, and Todd and do not reach Petitioner’s
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`alternative grounds.
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`1. Overview of Apfel
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`Apfel is concerned with “[i]nstalling and updating a software program
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`module component.” Ex. 1004, code (57). In particular, Apfel describes a
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`system for automatically updating a software program module component
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`stored on a computer, as shown in Figure 3 reproduced below.
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`Figure 3 of Apfel illustrates a system including computer 20, database
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`server 80a, and package server 80b. Id. at 6:36−37. Computer 20 requests
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`an upgrade by sending query 100 to database server 80a. Id. at 6:39−40. If
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`an upgrade is available, then database server 80a will send back response
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`105 that includes the Uniform Resource Locator (URL) of the upgrade
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`package. Id. at 6:63−65. After computer 20 receives response 105 including
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`the URL of the upgrade package, computer 20 will send query 110 to
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`package server 80b at the URL of the update package. Id. at 7:4−8.
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`Package server 80b will send update package 115 to computer 20, and
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`computer 20 will then install the update package 115. Id. at 7:8−10. The
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`servers are responsible for assessing whether an upgrade is available and
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`whether it should be downloaded based on the information sent by computer
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`20. Id. at 7:13−16.
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`2. Overview of Lillich
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`Lillich describes a “method and apparatus for verifying compatibility
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`between components of a system[,] which share a client-provider
`
`relationship.” Ex. 1005, code (57). Figure 1 of Lillich is reproduced below.
`
`
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`Figure 1 of Lillich is a symbolic, simplified block diagram of
`
`system 30. Id. at 5:28. As shown in Figure 1, “[s]ystem 30 may be
`
`hardware, software, or a combination thereof, and includes client 32 and
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`provider 34 connected by . . . connector 36 such that information from the
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`client and provider can be compared.” Id. at 6:7−10. Lillich further
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`describes a connector for connecting, at runtime, the client to the
`
`implementation provider to determine compatibility between the client and
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`the implementation provider. Id. at 4:28–32. “Compatibility checks are
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`performed between a client and available versions of the provider(s),
`
`implementation providers, with which it has been linked.” Id. at 4:32–35.
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`3. Overview of Todd
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`Todd describes “a system for detecting and avoiding faults stemming
`
`from conflicts in hardware and/or software configurations in a computer
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`system.” Ex. 1006, code (57). Figure 1 of Todd is reproduced below.
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`
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`In Figure 1 of Todd, system 100 includes computer system 110 and
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`remote data source 130. Computer system 110 includes configuration
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`detection circuitry 120 responsible for obtaining data pertaining to at least a
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`portion of the current hardware and software configuration of computer
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`system 110. Id. at 6:42–46. Configuration detection circuitry 120
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`determines the hardware and software configuration automatically by
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`polling hardware components and cataloging software components to create
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`a list of current configuration data setting forth the components that
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`comprise computer system 110. Id. at 6:50–55. Remote data source 130
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`contains a database of software revisions that may be communicated to
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`computer system 110 as a function of its current configuration data. Id. at
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`12:1–8. Diagnostic and analytic processes within remote data source 130
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`analyze the current configuration data of computer system 110 to identify
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`conflicts. Id.
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`4. Independent Claim 1
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`a. Pre-appeal Final Written Decision
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`In the Final Decision, we determined that the combination of Apfel,
`
`Lillich, and Todd does not disclose or suggest the comparing step of the
`
`independent claims. Final Dec. 15–26. We reasoned that although “Apfel’s
`
`database server does perform a comparison,” this comparison is “between
`
`the information presented in the query and the lookup table,” so there is no
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`“‘determined component’ in Apfel’s query.” Id. at 18. We further found
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`that “Apfel lacks detail sufficient to explain that the database lookup
`
`involves further comparing the resulting newer version component with the
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`query information that identifies currently installed components . . . with a
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`known list of acceptable configurations.” Id. at 19. We also found that
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`Apfel does not inherently or implicitly disclose this comparison. Id. at 20,
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`23–26. We further determined that Petitioner’s reliance on Lillich does not
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`cure Apfel’s deficiency because Petitioner does not rely on Lillich “for
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`teaching the comparison that includes the (a) determined component.” Id. at
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`27. Accordingly, we determined that Petitioner had not proven the
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`unpatentability of claims 1–3, 6, 7, 12–14, 16–18, and 20 by a
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`preponderance of evidence. Id. at 29.
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`b. Federal Circuit Decision
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`The Federal Circuit found that the Board’s conclusion that Apfel did
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`not disclose the comparing step lacked substantial evidence. Microsoft, slip
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`op. at 3. The court determined that the Board “erred in its factual finding
`
`regarding Apfel because it overlooked a passage that specifically discloses
`
`assessing the compatibility of available upgrades.” Id. at 3–4. This passage
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`of Apfel states:
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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 computer 20. For example, even if an
`upgrade is available, it should not be downloaded if the
`computer 20 already has the upgrade or if the upgrade is
`somehow incompatible with computer 20.
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`Id. (quoting Ex. 1004, 7:13–19). The court found that the Board’s
`
`description of this passage, that “Apfel would not allow the download of a
`
`version . . . that is incompatible with computer 20,” “contradicts its
`
`conclusion that ‘Apfel’s database lookup only determines that a new
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`upgrade is available—not that there is a known compatible upgrade
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`available.’” Id. at 4 (citing Final Dec. 16–17).
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`The court further found that the following Apfel passage also appears
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`to contradict the Board’s conclusion that Apfel does not disclose a
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`comparing step:
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`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 information 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 different languages. Thus, the database server 80a
`maintains a database of upgrade packages and corresponding
`configurations which should result in their download.
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`Id. at 4–5 (citing Ex. 1004, 9:30–40). The Federal Circuit explained that this
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`passage, “although not explicitly referring to a compatibility check,
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`recognizes that different update packages correspond, for example, to
`
`different operating systems, and that a database of the different
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`configurations is maintained to guide downloads.” Id. at 4. The court
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`focused on the following sentence from this passage—“[d]ifferent update
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`packages may be provided for different version combinations, different
`
`operating systems, and different languages.” Id. at 5 (citing Ex. 1004, 9:36–
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`38). This passage, according to the court, “suggests a form of compatibility
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`assessment to find the correct upgrade package.” Id.
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`The court further stated that “[t]he Board also erred when it concluded
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`that Apfel did not disclose the comparing step because [Apfel] did not
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`perform the determining and comparing steps in a certain order required by
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`the disputed claims.” Id. (citing Final Dec. 18–19, 21). The court found that
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`“the Board misconstrued the claims to require . . . two separate acts in a
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`certain order.” Id. at 5–6. Instead, the court found that “the claim cannot
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`require that the steps be performed in the order written, but rather allows for
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`the determining and comparing steps to be part of a single process.” Id. at 7.
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`This is because “[a]ny construction that would narrow the determining and
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`comparing steps to a certain order is not supported by either the claim
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`language or the specification.” Id. Thus, the court reversed the Board’s
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`“apparent construction.” Id.
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`The court concluded, “[b]ecause the Board erred in concluding that
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`Apfel does not perform the claimed ‘comparing’ step and implicitly relied
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`on an improper claim construction, we vacate the Board’s decision and
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`remand for further proceedings consistent with this opinion.” Id.
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`c. Disputed Issues on Remand
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`On remand, the parties address the following issues: whether Apfel
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`discloses the comparing step, and whether Petitioner set forth a sufficient
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`rationale to combine the references. We present our analysis of claim 1 in
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`the order of the recited limitations, beginning with the receiving step.
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`(1) Receiving step
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`Claim 1 requires receiving information representative of a
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`reconfiguration request relating to the electronic device. Petitioner asserts
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`that Apfel teaches this receiving step because it describes a “database server
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`receiving a reconfiguration (upgrade) request for software resident on a
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`computer, which includes the information necessary to determine whether an
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`appropriate upgrade is available.” Pet. 35−37. We agree that Apfel teaches
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`this limitation.
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`Apfel teaches that the computer sends a query to the database server.
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`Ex. 1004, 6:38−40. This query, Apfel states, “includes all the information
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`regarding computer 20 that the database server 80a needs to determine if an
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`upgrade is available and, if an upgrade is available, to determine the location
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`of the upgrade package.” Id. 6:49−53. More specifically, Apfel describes
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`the HTTP query as including information such as the version of the program
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`module component to be upgraded, the platform that the program module
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`component is running on, and the language of the program module
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`component. Id. at 2:27−35, 9:1−9. Thus, the database server receives from
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`the computer a communication, specifically an HTTP query, which
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`constitutes the recited “reconfiguration request” that relates to the computer
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`as it provides specific information about the configuration of the computer,
`
`such as the platform the software is running on and the language of the
`
`program. This query is representative of a “reconfiguration request” because
`
`based on its content, the server is configured to determine whether an
`
`upgrade is available for that computer, i.e., the computer’s configuration
`
`would be updated. Patent Owner presents no argument regarding the
`
`receiving step. See generally PO Resp.
`
`We determine that Petitioner has shown by a preponderance of the
`
`evidence that Apfel teaches the receiving step.
`
`
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`18
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`IPR2020-00023
`Patent 6,467,088 B1
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`
`(2) Determining step
`
`The claim requires determining at least one device component
`
`required to implement the reconfiguration request. Petitioner relies on Apfel
`
`as teaching this limitation because the Apfel database server uses the
`
`received HTTP request from the previous step to perform a database lookup
`
`to determine if an upgrade package is available. Pet. 37−38; Ex. 1004,
`
`6:49−53, 8:53−55, 9:30−35. We agree that Apfel teaches the determining
`
`step. Apfel’s database server uses the information received in the HTTP
`
`query to determine if an upgrade package is available using the database
`
`lookup. Ex. 1004, 9:30−35. Thus, Apfel determines the device component
`
`required to implement the reconfiguration request because the lookup results
`
`in identifying an available upgrade package. Patent Owner presents no
`
`argument regarding the determining step. See generally PO Resp.
`
`We determine that Petitioner has shown by a preponderance of the
`
`evidence that Apfel teaches the determining step.
`
`(3) Comparing step
`
`As noted above, Petitioner argues that during trial, the parties only
`
`disputed whether the prior art satisfied the claimed comparing step, and the
`
`Federal Circuit answered that question in the affirmative. Pet. Remand Br.
`
`1–4. Petitioner highlights the court’s statement that “[t]he Board found that
`
`Apfel did not disclose the comparing step. That conclusion lacks substantial
`
`evidence.” Id. at 3. Petitioner further highlights the court’s statements that
`
`Apfel, at column 9, lines 30–40, “suggests a form of compatibility
`
`
`
`19
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`IPR2020-00023
`Patent 6,467,088 B1
`
`assessment” and that Apfel, at column 7, lines 13–19, “specifically
`
`references incompatibility,” thus “render[ing] the Board’s conclusion that
`
`Apfel does not disclose a compatibility check lacking in substantial
`
`evidence.” Id. Petitioner adds, “[g]iven the Federal Circuit’s finding that
`
`Apfel discloses the claimed ‘comparing,’ the only issue on remand is
`
`whether the prior art satisfies the other claimed elements.” Id. at 4.
`
`Petitioner argues that, because Patent Owner did not challenge those other
`
`elements during trial, the Board should find for Petitioner for the reasons set
`
`forth in the Petition, consistent with the Board’s findings in the Institution
`
`Decision. Id.
`
`Patent Owner contends that the court’s determination that Apfel
`
`requires a comparing step does not require that the comparing step include
`
`the recited “information specifying at least one additional component.”
`
`PO Remand Br. 2. According to Patent Owner, a proper reading of Apfel
`
`shows that the first passage relied upon by the court, see Ex. 1004, 7:13–19,
`
`provides a high-level overview of a two-assessment process. Id. Patent
`
`Owner argues that these two assessments are (1) a determination of whether
`
`an upgrade is available, and (2) an assessment of the compatibility of the
`
`determined upgrade. Id. Patent Owner contends that the second passage
`
`relied upon by the court, see Ex. 1004, 9:30–40, provides a detailed
`
`explanation of the first assessment. Id. According to Patent Owner, “[t]he
`
`second assessment of [Ex. 1004, 7:13–19] makes clear that a compatibility
`
`determination is distinct from determining an upgrade, thus demonstrating
`
`that the second passage does not include a compatibility determination.” Id.
`
`
`
`20
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`
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`IPR2020-00023
`Patent 6,467,088 B1
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`at 2–3. Thus, Patent Owner contends that Apfel provides no “indication of
`
`the information or determination involved in the compatibility
`
`determination, demonstrating that Apfel utterly fails to disclose the
`
`comparing recitations of the independent claims.” Id. at 3.
`
`Petitioner responds that “[t]he Court did not remand for the Board to
`
`overturn the Court’s determination that Apfel teaches the ‘comparing’ step,”
`
`yet that is what Patent Owner’s remand brief requests. Pet. Remand Resp.
`
`Br. 1. Petitioner contends that “the mandate rule forecloses reconsideration
`
`of issues implicitly or explicitly decided on appeal,” including whether
`
`Apfel discloses the comparing step. Id. at 2 (citing Amado v. Microsoft
`
`Corp., 517 F.3d 1353, 1364 (Fed. Cir. 2008)). In Petitioner’s view, “Patent
`
`Owner’s remand brief ignores the determination of the Court, rehashes the
`
`same Apfel passages already carefully considered by the Court, and seeks a
`
`different outcome.” Id. at 3. Petitioner asserts that Patent Owner takes out
`
`of context the court’s statement that “the Board failed to explain why [Afpel
`
`at Ex. 1004, 7:13–19] did not disclose the required compatibility check,” as
`
`this statement is not an instruction for the Board to revisit the issue. Id.
`
`Petitioner argues that no exception to the mandate rule applies here because
`
`no new evidence has been presented and because Patent Owner does not
`
`argue that the court’s opinion was clearly erroneous or that a change in
`
`applicable law has occurred. Id. at 5 (citing Banks v. United States, 741 F.3d
`
`1268, 1276 (Fed. Cir. 2014)).
`
`Patent Owner responds that Petitioner mischaracterizes the court’s
`
`opinion as finding that Apfel discloses the comparing step. PO Remand
`
`
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`21
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`IPR2020-00023
`Patent 6,467,088 B1
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`Reply Br. 1. Patent Owner argues that Petitioner “disregards that the
`
`Court’s opinion specifically stated that the Board’s Final Written Decision
`
`. . . ‘failed to explain why this passage from Apfel did not disclose the
`
`required compatibility check.’” Id. (citing Ex. 1004, 7:13–19). According
`
`to Patent Owner, its opening brief “provides the explanation, which the
`
`Court stated was absent from the Final Written Decision, as to why col. 7,
`
`lines 13–19 of Apfel fails to disclose the required compatibility check,” and
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`“Petitioner’s Remand Brief fails to provide any alternative explanation.” Id.
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`at 1–2.
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`Turning to our analysis, we find Petitioner’s arguments more
`
`persuasive. Specifically, we agree that the Federal Circuit already
`
`determined that Apfel teaches or suggests the comparing step. Microsoft,
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`slip op. at 3–7. Whether Apfel discloses the comparing step was a close
`
`question during trial, and the Federal Circuit reached a different conclusion
`
`on appeal. The Federal Circuit’s opinion and the evidentiary record compel
`
`us to conclude that Apfel teaches or suggests the comparing step.
`
`We start with the Petition. As noted above, the claimed comparing
`
`step requires comparing (1) the determined component and (2) information
`
`specifying at least one additional component currently implemented in the
`
`electronic device with a list of acceptable and a list of unacceptable
`
`configurations. In our analysis of the determining step we found that Apfel
`
`teaches identifying the available upgrade package using the database lookup,
`
`and, therefore, the “determined component” of the comparing step is the
`
`available upgrade package. See also Pet. 37–38 (citing, e.g., Ex. 1004,
`
`
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`22
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`IPR2020-00023
`Patent 6,467,088 B1
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`9:30–35 (“the database server 80a uses the information received in the
`
`HTTP query at step 415 to determine if an upgrade package is available,
`
`such as by a database lookup”)).
`
`For the “additional component” portion of the comparing step,
`
`Petitioner points to “five different components that make up the
`
`configuration for the requesting computer.” Id. at 39–40 (citing Ex. 1004,
`
`8:39–46, 53–66; Ex. 1003 ¶ 82). This additional information is provided in
`
`the upgrade request itself, Petitioner argues, and includes “the version of the
`
`Web Authoring Components program module 37a, the version of a HTML
`
`converter in the word processor program module 37, the version of the word
`
`processor program module 37, the localization language, and the type of
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`operating system on computer 20.” Id. at 40 (citing Ex. 1004, 8:39–46, 53–
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`66; Ex. 1003 ¶ 82) (emphasis omitted). We agree with Petitioner that
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`Apfel’s query includes “additional information” that the database server uses
`
`during the lookup process. This additional information includes, for
`
`example, the version of the Web Authoring Components program module
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`and the version of the word processor program module in the current
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`computer configuration. Ex. 1004, 8:39−46, 53–66.
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`As for
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