Microsoft Corporation v. Uniloc 2017 LLC

N OTE: This disposition is nonprecedential.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 S ARAH
ELISABETH J ELSEMA , D ERRICK W ADE T ODDY .
N ATHAN K. CUMMINGS , Etheridge Law Group, South-
lake, TX, argued for appellee. Also represented by J AMES
ETHERIDGE , BRIAN M ATTHEW K OIDE, RYAN S. L OVELESS ,
BRETT MANGRUM .
______________________
Case: 21-2039 Document: 41 Page: 1 Filed: 10/20/2022

-- 1 of 7 --

MICROSOFT CORPORATION v. UNILOC 2017 LLC 2
Before L OURIE, D YK, 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
Case: 21-2039 Document: 41 Page: 2 Filed: 10/20/2022

-- 2 of 7 --

MICROSOFT CORPORATION v. UNILOC 2017 LLC 3
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:
Case: 21-2039 Document: 41 Page: 3 Filed: 10/20/2022

-- 3 of 7 --

MICROSOFT CORPORATION v. UNILOC 2017 LLC 4
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
Case: 21-2039 Document: 41 Page: 4 Filed: 10/20/2022

-- 4 of 7 --

MICROSOFT CORPORATION v. UNILOC 2017 LLC 5
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
Case: 21-2039 Document: 41 Page: 5 Filed: 10/20/2022

-- 5 of 7 --

MICROSOFT CORPORATION v. UNILOC 2017 LLC 6
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.
Case: 21-2039 Document: 41 Page: 6 Filed: 10/20/2022

-- 6 of 7 --

MICROSOFT CORPORATION v. UNILOC 2017 LLC 7
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.
Case: 21-2039 Document: 41 Page: 7 Filed: 10/20/2022

-- 7 of 7 --