“To the extent Mr. Sandstrom suggests that the obviousness showing requires identification of an existing real-world combination, he cites, and we know of, no persuasive authority for such a requirement.” – CAFC
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday in a per curiam decision affirmed two Patent Trial and Appeal Board (PTAB) decisions for Microsoft, agreeing that the challenged claims of two patents directed to matching tasks to different computer processor types to improve processing efficiency were invalid for obviousness.
Mark Sandstrom is the named inventor and assignee of U.S. Patent No. 9,632,833 and its parent, No. 9,424,090. A previous assignee of the patents sued Microsoft in March 2021 for infringement of the two patents, as well as others. Microsoft subsequently petitioned for inter partes review (IPR) in February 2022 of several claims of each patent and the Board determined that all the challenged claims were unpatentable as obvious.
In its decision on the ‘833 patent, the PTAB reasoned that a person skilled in the art would have been motivated to combine two prior art references—Agrawal and Brent—to arrive at five of the 18 challenged claims and that the combination of these two references with another, Feitelson, would have been obvious to a relevant artisan with respect to the remaining 13 claims.
In the IPR challenging the ‘090 patent, the Board similarly found various combinations of Agrawal with two other references—Chen and Compton—as well as the combination of Chen, Agrawal and Brent, rendered all of the challenged claims of that patent obvious.
On appeal, Sandstrom attempted to argue that the PTAB erred, but the CAFC said he failed to show how the Board’s findings were not reasonable considering the evidence. He first argued that “there is no evidence of any real-world practical combination of Agrawal and Brent…and that ‘the stated goals of Chen and Agrawal would not have seemed compatible’ to a relevant artisan.” But the CAFC rejected this reasoning, concluding that “[t]o the extent Mr. Sandstrom suggests that the obviousness showing requires identification of an existing real-world combination, he cites, and we know of, no persuasive authority for such a requirement, which would run counter to the ‘would have been obvious’ language of § 103.”
Sandstrom also argued that the PTAB did not sufficiently show how the prior art would have enabled one of the requirements of claim 15 of the ‘833 patent or that the prior art enabled an artisan to achieve the limitation of claim 1 of the ‘090 patent. The CAFC said these arguments were forfeited because Sandstrom failed to raise them to the Board and “given the important principle that strongly precludes faulting the Board for inadequacies not timely and fairly called to its attention.” However, even on the merits, the arguments failed, said the court, because the Board has substantial support from both the prior art references themselves and expert declarations to uphold its determinations.
Finally, the CAFC rejected what it said amounted to a claim construction argument regarding claim 1 of the ‘090 patent, dismissing Sandstrom’s contention that the Board ignored a feature and requirement of the claim relating to “collective optimality.” The court found no such limitation in the claim and also said that Sandstrom failed to present his “order-of-steps claim-construction argument” to the Board.
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