Takeaway: When the Board determines that a claim includes a computer-related means-plus-function limitation without an algorithm being disclosed in the specification for how the function is accomplished, then the claim cannot be construed. Accordingly, the Board is unable to reach a determination on the alleged grounds of unpatentability, and the Board will terminate the proceeding with regard to that claim.
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 31, 41, and 45 of the ’775 Patent are unpatentable; and had not shown by a preponderance of the evidence that claims 32-40 and 42-44 are unpatentable. The Board was unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 1-15, and terminated the proceeding with respect to those claims. The ’775 Patent relates to “a system and method for data storage, manipulation and retrieval in a self-referential logical table of a database.”
The Board began with claim construction noting that claim terms in an unexpired patent are interpreted according to their broadest reasonable construction. Plaintiff argued that the case involved a computer-implemented invention and that the challenged independent claims invoke means-plus-function claiming, but fails to disclose an algorithm. In the Decision to Institute, the Board asked Patent Owner to provide specific portions of the specifications that clearly link a computer program or algorithm to the function corresponding to the claimed means. Patent Owner argued that the ’775 Patent discloses a four-step algorithm that is linked to the recited function of configuring memory according a logical table. However, the Board was not convinced that the disparate excerpts cited by Patent Owner provided an algorithm for performing the recited functions, instead the description merely described already prepared tables without any explanation of how to form the tables. Accordingly, the Board determined that claims 1-15 are not amenable to construction and, thus, the Board terminated this proceeding with respect to those claims.
The Board then turned to the specific grounds of unpatentability. The Board agreed with Petitioner’s argument regarding the anticipation of claims 31 and 41 by Chang. Patent Owner had argued that Chang fails to disclose a single table including all of the limitations of these independent claims, that neither of the tables disclose the row OID limitation, and that neither table discloses the limitation [F1] requiring a row OID to be equal to a column OID. Although the Board agreed with Patent Owner that the claims require all the elements to be found in a single table, the Board determined that Petitioner provided “persuasive evidence that Chang’s SYS.COLUMNS, at least inherently, if not expressly, includes a record row that defines each of the columns that appear in the SYS.COLUMNS table itself.” The Board also agreed with Petitioner with regard to Patent Owner’s other arguments. However, the Board agreed with Patent Owner with regard to the other specific grounds of unpatentability except for the ground regarding claim 45.
Microsoft Corp. v. Enfish, LLC, IPR 2013-00559
Paper 65: Final Written Decision
Dated: March 3, 2015
Before: Thomas L. Giannetti, Bryan F. Moore, and Scott A. Daniels
Written by: Daniels
Related Proceedings: IPR2013-00560, IPR2013-00561, IPR2013-00562 (U.S. Pat. No. 6,151,604); IPR2013-00563 (U.S. Pat. No. 6,151,604); Enfish, LLC v. Microsoft Corp., et al., Case No. CV12-7360 MRP (MRWx) (C.D. Cal.)