Microsoft v. Enfish: Turns Out the Claims Are Obvious

This is a discussion of the new Federal Circuit Decision Microsoft v. Enfish appealing a PTAB final decision.

In the prior parallel decision – Enfish v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016), the Federal Circuit reversed a district court ruling that Enfish’s asserted software claims were ineligible under § 101 and also vacated the lower court’s holding that some of the claims were invalid as anticipated. U.S. Patent Nos. 6,151,604 and 6,163,775 (inventions relating to a “self-referential” database).

Enfish sued Microsoft for infringement in 2012. In addition to its litigation defenses, Microsoft marshaled a collateral attack on the patents with five petitions with the US Patent Office for inter partes review of the ’604 and ’775 patents.

After instituting review, the Patent Trial and Appeal Board found some of the patent claims invalid as anticipated/obvious.  On appeal, PTAB factual findings are generally given deference but legal conclusions are reviewed without deference.  After reviewing the claim construction and rejections, the Federal Circuit affirmed in a non-precedential decision.

Collateral Attacks: These collateral attacks work well to cancel patent claims with obviousness arguments that would have been unlikely to be accepted by a trial court or jury.  This is a pointed example here since the previously rejected district court’s judgment was based upon a more simplistic Section 101 analysis that is easier for the Federal Circuit to overturn.

Not Amenable to Construction:  The most interesting aspect of the decision is hidden in a single sentence statement:  “As to claims 1–26 and 30 of both patents—which are not at issue before us—the Board terminated proceedings after concluding that those claims were not amenable to construction.”

In its final judgment, the Board explained that those claims include a means-plus-function element (“means for configuring said memory according to a logical table“) but that no embodiments of the element were provided in the specification.  And, although a person of skill in the art may know how to construct the element, our 112(f) jurisprudence requires embodiments in the specification and does not allow a patentee to “rely on the knowledge of one skilled in the art to address the deficiencies” See Function Media, LLC v. Google Inc., 708 F.3d 1310 (Fed. Cir. 2013).  The statute states permits means-plus-function claims but also provides a guide for narrowly construing those claims.

35 U.S.C. 112(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

In both patent prosecution and district court litigation, failure to properly disclose structural embodiments for a means-plus-function limitation results in the claim being held invalid as indefinite since the limitation’s scope cannot be properly construed.  In the inter partes review situation, however, the Board’s power is limited to cancelling patents on novelty or obviousness grounds.  As such, the Board simply terminated the IPR trial with respect to these non-construable claims. The Board writes:

In the circumstance when the specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of the claims cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. For the reasons given, we determine that independent claims 1, 11, and 15 are not amenable to construction and, thus, we terminate this proceeding with respect to claims 1, 11, and 15 under 37 C.F.R. § 42.72.

[PTAB Final Decision].

No Appeal of Termination: Neither party appealed the termination, although the Federal Circuit previously held that its appellate jurisdiction over these cases is limited to appeals of “final written decision[s] with respect to the patentability of any patent claim challenged by the petitioner …”  A termination decision was seen as essentially an extension of the institution decision that is not itself appealable.

 

Of course, the original Federal Enfish decision mentioned above also addressed this indefiniteness issue and held that the claims were not indefinite because sufficient structure was disclosed — holding that the scant description was adequate because “the sufficiency of the structure is viewed through the lens of a person of skill in the art and without need to ‘disclose structures well known in the art.’  I guess that this means that those claims are OK.

21 thoughts on “Microsoft v. Enfish: Turns Out the Claims Are Obvious

  1. A real example where the same claims are constructed under the BRI standard and under the Phillips standard, and the result is not the same… Thanks for sharing this case.

    1. What constructions did you have in mind, how did they differ, and what exactly accounted for the different constructions? And what effect did it have on the outcome?

  2. I’m confused. The claims on which the IPR was terminated for not being amenable to construction – those weren’t invalidated by the PTAB, but were they invalidated by a court? If not, were they found infringed? If not, were they found not infringed? If not, is the patentee now estopped from asserting those claims against Microsoft?

    1. The concluding paragraph from the original post would seem to answer your question:

      “Of course, the original Federal Enfish decision mentioned above also addressed this indefiniteness issue and held that the claims were not indefinite because sufficient structure was disclosed — holding that the scant description was adequate because “the sufficiency of the structure is viewed through the lens of a person of skill in the art and without need to ‘disclose structures well known in the art.’ I guess that this means that those claims are OK.”

    2. The court said:
      “As to claims 1–26 and 30 of both patents—which are not at issue before us—the Board terminated proceedings after concluding that those claims were not amenable to construction.”

      So, the court didn’t address them. The legal effect of termination wrt to those claims is the same as denial of the petition wrt to those claims. Therefore, no estoppel on Microsoft (no written decision wrt to those claims) and no invalid claims for Enfish.

      I am sure Microsoft will try to argue that the PTAB statement is evidence to support a district court finding that the claims fail under 112; I am also sure Enfish will point to the prior CAFC decision and say the claims have been construed and are definite under 112(b) as per 112(f) doctrine [as Dennis pointed out].

      1. I am sure Microsoft will try to argue that the PTAB statement is evidence to support a district court finding that the claims fail under 112; I am also sure Enfish will point to the prior CAFC decision and say the claims have been construed and are definite under 112(b) as per 112(f) doctrine [as Dennis pointed out].

        I haven’t looked (and I’m not inclined to, given that these junky claims are best ignored ignored by pretty much every programmer on the planet) but I presume that most (all?) of these 112(f) claims are at least as broad as the claims that the CAFC just found obvious … in which case they’re d.o.a.

  3. So … just so we’re all on the same page here: one of the leading CAFC cases upholding the eligibility of logic claims (“on a computer” – wowee zowee!) sits atop a pile of obvious junk.

    Somehow this story sounds vaguely familiar …

    1. As noted on a recent thread, Malcolm refuses to admit that his 101 arguments are really just 103 arguments in disguise.

      Yeah, that does sound vaguely familiar – just not in your favor, Malcolm.

      1. Malcolm refuses to admit that his 101 arguments are really just 103 arguments in disguise.

        Because they’re not.

        Perhaps you were confused by the fact that the obviousness of the physical components recited in a claim is certainly relevant to determining the eligibility of a claim where the only other elements (other than the physical components, that is) are abstract or otherwise ineligible.

        Super difficult stuff, I know! You have to be able to read and process information at, like, a 10th grade high school level to follow this.

        Or you can just pretend to be an ign 0ramus and kick up dust. Whatever works best for you, “anon.” The important thing is that we all know you’re a very, very serious person.

            1. “Of course, the original Federal Enfish decision mentioned above also addressed this indefiniteness issue and held that the claims were not indefinite because sufficient structure was disclosed — holding that the scant description was adequate because “the sufficiency of the structure is viewed through the lens of a person of skill in the art and without need to ‘disclose structures well known in the art.’ I guess that this means that those claims are OK.”

  4. The most amusing passage in the opinion: To the extent that Microsoft intended to argue that SYS.TABLES alone disclosed claim 43’s additional limitations, it should have done so with greater clarity

    Riiiiiiiight. Setting aside the observation that this is one of the worst written CAFC opinions I’ve seen in a while (probably no the panel’s fault), what makes this this statement amusing is that it comes after the section in which the panel denounced Enfish’s relentlessly slimy efforts to read limitations into its claims. It’s hard to tackle a snake.

  5. DC: In both patent prosecution and district court litigation, failure to properly disclose structural embodiments for a means-plus-function limitation results in the claim being held invalid as indefinite since the limitation’s scope cannot be properly construed.

    More accurately, the CAFC has held that the recitation of fake “structure” (i.e., logic operations and “algorithms” that have no corresponding objective structure) will also suffice to satisfy 112(f). But totally not judicial activism, which is the worst thing ever unless its “pro-patent.”

    1. Looks like you need (again) to refresh the explication provided with the simple Set Theory (you know, on the topic that you volunteered an admission against your interests concerning the exceptions to the judicial doctrine of printed matter).

      1. Yes, it’s so simple that “anon” can’t be bothered to type out his awesome “theory” in plain English. Instead he just kicks up dust and spews out nonsense.

        But he’s a very serious person! We all have to pay attention to him.

        1. I DID type out the explication in plain English and invited you to discuss it.

          You ran away.

          I linked to the explication multiple times and invited you to discuss it.

          You ran away.

          I even cut and paste the entire explication from the Hricik side to this side of the blog and invited you to discuss it.

          You (yet again) ran away.

          And you want to spew more of your typical nonsense yet again?

          1. Keep making up your wonderful stories, “anon”! We’re all s00per d00per impressed by your fabulous “set theory.” Oh, excuse me: I meant “Set Theory.” Totally different and way more serious.

            Maybe next you can tell the awesome story about how I used the “N-word” here. You hung onto that one for years! Good thing you’re so “anti-PC”, though. And so sooper dooper serious.

  6. Flashback to the oral arguments where the panel was falling over themselves to praise these ridiculously junky claims. It was the greatest innovation in database “technology” since the relational database (which nobody ever even attempted to patent … go figure)!

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