Microsoft Corp. v. Proxyconn, Inc.
Paper 17, December 21, 2012
IPR2012-00026 (TLG) (Patent 6,657,717 B1)
[The IPR will not be instituted with regard to a particular patent claim if petitioner cannot show reasonable likelihood of a successful challenge to that claim on any ground. To succeed on the claim of anticipation, petitioner must show that each element in the challenged patent claim is found in a single prior art reference. To succeed on the claim of obviousness, petitioner must show that subject matter is obvious to a person of ordinary skill based on any combination of prior art references]
Microsoft requested an IPR for several claims of a patent owed by Proxyconn. The challenged patent described a system for data access in a computer network that would reduce the amount of redundant data sent over the network when data stored on one computer is requested from another computer. The system would accomplish this by extracting a unique ‘fingerprint’ from the datasets and enabling a comparison of these fingerprints. If fingerprints matched, the system would conclude that the datasets are identical and would not transmit the entire dataset over the network. Microsoft challenged several claims of this patent as anticipated (35 U.S.C. § 102) and obvious (35 U.S.C. § 103) based on several prior art references.
Under 35 U.S.C. § 314(a), an IPR may not be authorized unless information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.
As to the petitioners contention that patent claims are anticipated, the Board applied the standard set out in in Verdegaal Bros., Inc., 814 F.2d 628, 631 (Fed. Cir. 1987). The standard holds that a claim is anticipated only if each and every element as set forth in the claim is found either expressly or inherently described in a single prior art reference.
Applying this standard, the Board held that some of the challenged claims were not anticipated as not all of the elements of the system were described in a single reference.
As to the petitioners claim that patent claims are obvious, the Board held that “Section 103 [of 35 U.S.C.] forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
Applying this standard, the Board found that most of the claims of the challenged patent were obvious over the combinations of prior art offered by the petitioner. However, some of the claims were not obvious as none of the prior art alone or in combination taught or suggested that all elements described in those claims were necessary.
The Board granted the petition to institute action as to all claims where the petitioner showed reasonable likelihood of success on at least one of the grounds – either anticipation or obviousness.
The Board denied the petition to institute action as to those claims where the petitioner failed to show reasonable likelihood of success on either anticipation or obviousness.
To succeed in its petition for an IPR, petitioner must show reasonable likelihood of success on at least one of its claims of unpatentability as to the patent claim that the petitioner is challenging. If the petitioner cannot show reasonable likelihood of a successful challenge to a particular patent claim on any ground, the action will not be instituted with regard to that particular claim. To succeed on the claim of anticipation, petitioner must show that each element in the challenged claim is found (expressly or inherently) in a single prior art reference. To succeed on the claim of obviousness, petitioner must show that subject matter as a whole would have been obvious to a person of ordinary skill based on any combination of prior art references.
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