Microsoft Corporation v. Enfish, LLC , 662 F. App'x 981 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MICROSOFT CORPORATION,
Appellant
v.
ENFISH, LLC,
Cross-Appellant
______________________
2015-1734, 2015-1736, 2015-1737, 2015-1738, 2015-1739,
2015-1740, 2015-1741, 2015-1742, 2015-1816, 2015-1817,
2015-1818, 2015-1819
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2013-00559 through -00563.
______________________
Decided: November 30, 2016
______________________
CHAD S. CAMPBELL, Perkins Coie LLP, Phoenix, AZ,
argued for appellant. Also represented by THEODORE H.
WIMSATT; DAN L. BAGATELL, Hanover, NH; AMY
ELIZABETH SIMPSON, San Diego, CA.
ORION ARMON, Cooley LLP, Broomfield, CO, argued
for cross-appellant. Also represented by JAMES P.
2 MICROSOFT CORPORATION v. ENFISH, LLC
BROGAN, BRITTON F. DAVIS, JANNA FISCHER, PETER SAUER;
FRANK V. PIETRANTONIO, JENNIFER VOLK, Reston, VA.
______________________
Before LOURIE, O’MALLEY, and TARANTO, Circuit
Judges.
TARANTO, Circuit Judge.
Enfish, LLC owns U.S. Patent Nos. 6,151,604 and
6,163,775, which describe and claim methods and appa-
ratuses for storing and retrieving data using assertedly
improved database techniques. In September 2013,
Microsoft Corp. filed five petitions for inter partes review
of the ’604 and ’775 patents. After instituting review
based on those petitions, the Patent Trial and Appeal
Board concluded, in five final written decisions, that
some, but not all, of the challenged claims were unpatent-
able. Microsoft and Enfish cross-appeal from selected
adverse portions of the Board’s decisions. We affirm.
I
We have previously discussed the ’604 and ’775 pa-
tents in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1329–34 (Fed. Cir. 2016). The patents issued from con-
tinuations of U.S. Patent Application No. 08/383,752 and
share a specification. The patents also share much claim
language. Accordingly, we cite only the relevant passages
in the ’604 patent, except where the ’604 and ’775 patents
meaningfully differ, and we will generally use the singu-
lar “claim” to refer to corresponding claims that are
materially the same.
The patents describe and claim techniques for storing
data in a table consisting of rows and columns. ’604
patent, col. 6, lines 36–41. Each row and column has an
object identification number (OID) that identifies the row
or column. Id., col. 6, lines 42–49. To facilitate searching
and synchronization of substantively related portions of a
MICROSOFT CORPORATION v. ENFISH, LLC 3
table (such as “employed by” and “employees”), certain
columns may be defined by rows in the database. Id., Fig.
3; id., col. 7, lines 10–23.
In September 2013, Microsoft filed five petitions for
inter partes review of the ’604 and ’775 patents. In March
2014, the Board instituted review of claims 1–26, 30–56,
and 60 of both patents. IPR2013-559, -560, -561, -562, -
563. In March 2015, the Board found unpatentability,
based on anticipation or obviousness, of claims 31, 41, 46–
50, and 54 of both patents; claim 42 of the ’604 patent;
and claim 45 of the ’775 patent. The Board rejected
Microsoft’s unpatentability challenges to claims 32–40,
43–44, 51–53, 55–56, and 60 of both patents; claim 45 of
the ’604 patent; and claim 42 of the ’775 patent. 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 con-
struction.
As detailed infra, Enfish appeals certain Board de-
terminations of unpatentability, and Microsoft appeals
certain determinations of patentability. Both appeals are
authorized by 35 U.S.C. §§ 141(c) and 319. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II
Enfish argues as cross-appellant that the Board erred
in its unpatentability rulings as to claims 31, 42, 48–50,
and 54 of the ’604 and ’775 patents; claim 42 of the ’604
patent; and claims 41 and 46 of the ’775 patent. Enfish
rests its appeal on a claim-construction contention. It
contends that the Board erred in construing “object identi-
fication number (OID)” as “an array of bits that define an
object.” Enfish contends that an OID must “identify,”
rather than “define,” an object and, in addition, must be
“unique,” “system-generated,” and “immutable.” We
affirm the Board’s construction. We therefore affirm the
Board’s decisions as to the claims Enfish appeals.
4 MICROSOFT CORPORATION v. ENFISH, LLC
A
We review the Board’s decisions under the standards
set forth in the Administrative Procedure Act, 5 U.S.C.
§ 706. Dickinson v. Zurko, 527 U.S. 150, 154 (1999); Pride
Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307,
1313 (Fed. Cir. 2016). We must set aside the Board’s
actions if they are “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law” or
“unsupported by substantial evidence.” 5 U.S.C. § 706(2).
We review the Board’s legal conclusions without deference
and its factual findings for substantial evidence. In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
Claim construction is a question of law based on un-
derlying questions of fact. Teva Pharm. USA, Inc. v.
Sandoz Inc., 135 S. Ct. 831, 840–42 (2015). Because the
’604 and ’775 patents expired while this appeal was
pending, the governing construction is not the broadest
reasonable interpretation, given that there is no possibil-
ity of claim amendment. See In re CSB-System Int’l, Inc.,
832 F.3d 1335, 1340–42 (Fed. Cir. 2016). We adhere to
the normal judicial standards of claim construction. See
Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir.
2005) (en banc). We note, however, that we see no basis
on which the broadest-reasonable-interpretation approach
would lead to a different result. Cf. CSB-System Int’l, 832
F.3d at 1341 (“In many cases, the claim construction will
be the same under [both] standards.”).
B
We reject Enfish’s challenges to the Board’s construc-
tion of “OID.” As an initial matter, Enfish has forfeited
any argument that the Board should have required an
OID to “identify” an object—instead of, or in addition to,
“defining” the object. Before the Board, Enfish argued
that “OID” should be construed as “a unique, immutable,
and system-generated value that identifies an object.”
J.A. 970. To support that construction, Enfish presented
MICROSOFT CORPORATION v. ENFISH, LLC 5
evidence that an “OID” was “unique,” “system-generated,”
and “immutable.” J.A. 970–73. Enfish did not argue that
“defining” and “identifying” were meaningfully different.
Enfish’s “identifying” argument is not merely a new or
additional argument supporting the construction it urged
before the Board, but an argument for a construction
different from any Enfish clearly and timely urged before
the tribunal we review. Such arguments are generally
impermissible on appeal as having been forfeited, and we
see no basis for disregarding the forfeiture in the present
setting. See, e.g., Digital-Vending Servs. Int’l, LLC v.
Univ. of Phoenix, Inc., 672 F.3d 1270, 1273 (Fed. Cir.
2012); Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,
694 (Fed. Cir. 2008).
As to Enfish’s contention that an “OID” must be
“unique” in the sense that each object in the database has
a different OID, we agree with the Board’s rejection of
that contention. Because the term “unique” does not
appear in the claims, Enfish relies entirely on the specifi-
cation to support its proposed construction. But the
specification does not warrant Enfish’s construction.
Contrary to Enfish’s position, the specification affirm-
atively illustrates that objects may share the same OID in
some cases. In particular, Figure 3 depicts a table in
which row 136 and column 126 have the same OID
(namely, 1019). Enfish argues that Figure 3 does not
contradict its proposed construction because row 136 and
column 126 are actually the same object. The specifica-
tion is to the contrary. It states a lesser relationship than
identity. In particular, it states that “[e]ach column has
an associated column definition,” which is not the same as
the column, but instead “determines the properties of the
column, such as the domain of the column, the name of
the column, whether the column is required and other
properties that may relate to the column.” ’604 patent,
col. 7, lines 10–14. It is the associated “column defini-
tion,” not the column, that “is stored as a record [row] in
6 MICROSOFT CORPORATION v. ENFISH, LLC
the table 100 of FIG. 3. For example, the ‘Employed By’
column 126 has a corresponding row 136.” Id., col. 7,
lines 16–18. The row is not the same object as the col-
umn; indeed, Figure 3 shows different content of the row
and the corresponding column.
The specification passages on which Enfish relies do
not contradict what Figure 3 shows or otherwise establish
that each object in the database must have an OID not
used by any other object. Those passages describe various
“OIDs” as “unique,” but do not define uniqueness to
require what Enfish urges—not just lack of repetition of
OIDs among rows (often called records), and lack of
repetition of OIDs among columns, but lack of repetition
of OIDs between rows and columns. The passages need
not be read, and in light of Figure 3 should not be read, as
requiring any more than that the system be capable of
retrieving objects using OIDs. Id., col. 1, lines 65–67,
through col. 2, line 1 (“Key features of the object oriented
[database] model” include that “each item has a unique
system-generated object identification number that can be
used for exact retrieval.”); id., col. 6, lines 42–45 (“Each
row is assigned a unique object identification number
(OID) stored in column 120 and each column also is
assigned a unique OID, indicated in brackets and stored
in row 108.”); id., col. 8, lines 7–9 (“[T]he system must
generate a unique OID when columns and rows are
formed.”). We conclude that the Board properly rejected
Enfish’s “unique” construction.
For similar reasons, we conclude that the Board
properly rejected Enfish’s contention that an “OID” must
be “system-generated” rather than created by, say, a user.
There is no arguable basis in the claim language for such
a requirement. Enfish relies for its contention on several
of the same passages just discussed regarding its “unique”
contention. But those passages describe only certain
prior-art databases, id., col. 1, lines 65–67, and certain
embodiments, id., col. 8, lines 7–9. Such specification
MICROSOFT CORPORATION v. ENFISH, LLC 7
material does not meet the standard for establishing a
requirement that lacks any basis in the claim language.
Finally, we agree with the Board that an “OID” does
not need to be “immutable.” Neither “immutable” nor a
synonym appears in the claims or specification (or any
prosecution history called to our attention). Before the
Board, Enfish relied on expert testimony and other ex-
trinsic evidence to support its argument that an “OID”
must be immutable. Microsoft introduced contrary testi-
mony and evidence to rebut Enfish’s position. Given the
absence of intrinsic evidence, and conflicting extrinsic
record, the Board was entitled to reject Enfish’s proposed
construction.
III
For its part, Microsoft argues in the principal appeal
that the Board erred in upholding claims 32, 36–37, 55–
56, and 60 of both patents; claim 43 of the ’604 patent;
and claim 42 of the ’775 patent. Specifically, Microsoft
contends that the Board should have found those claims
unpatentable for anticipation or obviousness. Anticipa-
tion is a question of fact. See Bischoff v. Wethered, 76 U.S.
(9 Wall.) 812, 814–15 (1869); In re Gleave, 560 F.3d 1331,
1334–35 (Fed. Cir. 2009). Obviousness is a question of
law based on underlying questions of fact, including the
scope and content of the prior art, the differences between
the prior art and the claimed invention, the level of ordi-
nary skill in the field of the invention, and any relevant
objective indicia of nonobviousness. See Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966); Randall Mfg. v. Rea,
733 F.3d 1355, 1362 (Fed. Cir. 2013). We reject Mi-
crosoft’s contentions.
A
Claim 31 of the ’604 and ’775 patents recites a “meth-
od for storing and retrieving data in a computer memory,”
in which the “memory” is configured “according to a
8 MICROSOFT CORPORATION v. ENFISH, LLC
logical table” consisting of “logical rows” and “logical
columns.” ’604 patent, col. 23, lines 15–31. Each “logical
row” and “logical column” includes an OID to “identify”
that row or column. Id. At least one of the “logical rows”
has an OID equal to the OID of a “corresponding” logical
column, and at least one of the “logical rows” “includes
column information defining each of said logical columns.”
Id. Claim 32, dependent on claim 31, adds that the
“logical column information defines one of said logical
columns to contain information for enabling determina-
tion of OIDs from text entry.” Id., col. 23, lines 32–35.
European Patent Application 03 36580 (Chang) dis-
closes a relational database, which consists of multiple
tables. Chang discloses the use of two tables,
SYS.TABLES and SYS.COLUMNS, to store data about
tables and columns in the database, respectively. Chang,
col. 5, line 54, through col. 7, line 19; id., col. 10, line 15,
through col. 11, line 10; id., Figs. 2–3, 6–7. Each row in
SYS.TABLES includes a “packed description,” which
includes column information. Id., col. 10, line 15, through
col. 11, line 10; id., Figs. 6–7. Chang also discloses a
table, SYS.INDEXES, which is used to index columns for
searching. Id., col. 7, line 20, through col. 8, line 3; id.,
Fig. 4.
The Board rejected Microsoft’s contention that claim
32 is anticipated by Chang. The Board concluded that
Microsoft did “not explain how OID determination by text
searching as recited in claim 32 would be conducted on
such stored information and definitions in those particu-
lar tables, or even that SYS.TABLES or SYS.COLUMNS
are indexed to provide a search function.” J.A. 27; 112.
Microsoft appeals that ruling on two grounds. It ar-
gues that the Board erred by construing “text entry” to
require “text searching” and, alternatively, that
SYS.TABLES’s “packed descriptions” contain index
information that enables the determination of OIDs, even
MICROSOFT CORPORATION v. ENFISH, LLC 9
if “text entry” requires “text searching.” Neither argu-
ment has merit.
Contrary to Microsoft’s contention, the Board did not
construe “text entry” to require “text searching.” It used
“search” language because Microsoft itself used that
language to describe the two asserted Chang disclosures
of this limitation (one using indexes, the other column
information). First, Microsoft argued that SYS.TABLES’s
packed description collects keyword indexes (for each
column), which “may be searched,” such “searching being
“meant to return a particular row or rows” from which
OIDs may be determined. J.A. 234, 370. Second, Mi-
crosoft argued that Chang discloses “primary key col-
umns,” which contain information uniquely identifying
each column. J.A. 234, 371. Microsoft asserted that
SYS.COLUMNS and SYS.TABLES’s packed description
store information “defining the column from which to
obtain an OID in the form of a primary key.” Id. Mi-
crosoft urged that Chang thus discloses both “index and
column defining information from which text entry
searches can be used to obtain row OIDs.” Id. The Board
rejected those arguments as unsupported by the evidence.
The Board’s statement that Microsoft did “not explain”
how Chang disclosed “text searching” reflected Microsoft’s
formulation, not the Board’s adoption of a contested
construction that “text entry” required “text searching.”
Additionally, substantial evidence supports the
Board’s finding that Chang does not disclose that
SYS.TABLES is indexed to enable the determination of
OIDs from text entry. Figure 4 of Chang, cited in Mi-
crosoft’s Petition, refers to SYS.INDEXES, not
SYS.TABLES or SYS.COLUMNS. Although Figure 6
indicates that SYS.TABLES’s packed descriptions contain
index information, Chang does not state that those
packed descriptions are actually used in index searching.
To bridge the gap, Microsoft relied on assertions by Dr.
Hosking. In response, Enfish argued that SYS.INDEXES,
10 MICROSOFT CORPORATION v. ENFISH, LLC
not SYS.TABLES and SYS.COLUMNS, practiced index-
ing and that there was “absolutely no indication in Chang
that either of SYS.TABLES or the SYS.COLUMNS table
in Chang are indexed” or “indexed to determine OIDs.”
J.A. 1000. The Board was entitled to credit Enfish’s
response to Dr. Hosking’s analysis.
On appeal, Microsoft argues that Chang describes val-
idation, which requires the system to validate user opera-
tions, e.g., retrieving information, against the column
definitions contained in SYS.TABLES and
SYS.COLUMNS before executing those operations. But
Microsoft did not meaningfully present that argument to
the Board. We will not disturb the Board’s ruling on such
a ground. See Wallace v. Dep’t of Air Force, 879 F.2d 829,
832 (Fed. Cir. 1989) (An “issue must be raised with suffi-
cient specificity and clarity that the tribunal is aware that
it must decide the issue, and in sufficient time for the
agency to do so,” in order for the issue to be preserved for
appeal.).
B
Claim 36 of the ’604 and ’775 patents depends on
claim 31 and adds the requirements that (1) “at least one
of said plurality of logical rows includes information
defining the type of a different logical row” and (2) “at
least one of said plurality of logical rows includes a logical
cell that contains a pointer to said logical row including
logical row type information.” ’604 patent, col. 23, lines
47–53. In rejecting Microsoft’s obviousness challenge to
claim 36, a challenge based on Chang and U.S. Patent No.
5,201,046 (Goldberg), the Board found that Chang relies
on two different tables, SYS.TABLES and
SYS.COLUMNS, not a single table, to satisfy the “differ-
ent logical row” requirement. Microsoft does not dispute
that finding about Chang. But it contends that the Board
erred in construing “different logical row” in claim 36 to
MICROSOFT CORPORATION v. ENFISH, LLC 11
require that the defined and defining rows be in the same
table. We disagree.
Both the claims and the specification support the
Board’s single-table construction. Earlier this year, we
held that claim 31, which configures memory “according
to a logical table,” involved a single logical table. Enfish,
822 F.3d at 1340–43. Neither claim 36 nor any other
relevant claim suggests the use of a second table. Mi-
crosoft argues that the ’604 patent specification does not
require a different logical row to be in the same table.
But as we explained in Enfish, the specification “makes
clear” that the invention claims a “single” table. Id. at
1340–43. Microsoft does not present any arguments that
undermine that conclusion.
The prosecution history also does not support Mi-
crosoft’s construction. Microsoft argues that during
prosecution of the application that issued as U.S. Patent
No. 5,729,730, the parent of the ’604 and ’775 patents,
Enfish acquiesced in the examiner’s rejection of claim 6—
worded like claim 36 at issue here—over a prior-art
reference (U.S. Patent No. 5,421,012 (Khoyi)) that disclos-
es a multi-table invention. The record does not support
Microsoft’s argument. The cited claim 6 issued without
amendment after its base claim, claim 1, was amended to
address a different reference. ’730 patent, col. 20, lines
62–67.
C
Claim 37 of the ’604 and ’775 patents depends on
claim 31 and adds the requirement that “at least one of
said logical columns defines logical cells that include a
plurality of pointers to other logical columns within the
same record, said pointers indicating those logical col-
umns within the same record that contain defined val-
ues.” ’604 patent, col. 23, lines 54–58. Claim 42 of the
’775 patent recites a similar method, using similar lan-
guage. ’775 patent, col. 24, lines 58–62. The Board
12 MICROSOFT CORPORATION v. ENFISH, LLC
rejected Microsoft’s obviousness challenge to those claims
37 and 42, a challenged based on Chang and U.S. Patent
No. 5,463,724 (Anderson). In so ruling, the Board found
that Anderson does not disclose “pointers.” Microsoft’s
challenge to the Board’s ruling on claims 37 and 42 rests
on its challenge to that finding. We reject that challenge.
Before the Board, Microsoft argued that Anderson,
which describes a spreadsheet program, discloses “point-
ers” in the form of references, in a formula in one cell of a
spreadsheet, to other cells in the spreadsheet. In re-
sponse, Enfish’s expert, Dr. Jagadish, quoting several C++
and Java references as evidence of the usage of “pointer,”
declared that Anderson does not disclose a “pointer”
because the ordinary and customary meaning of that
phrase was “a variable that stores the address where
another object resides” and that the spreadsheet examples
of Anderson would not have been understood as “point-
ers.” J.A. 7882–83. The Board credited Dr. Jagadish’s
declaration in finding that Anderson’s spreadsheet-cell
references were not pointers. Microsoft has not identified
contrary evidence that precludes the Board’s determina-
tion, viewed either as an extrinsic-evidence-based claim
construction or as an application of the ordinary meaning
to the Anderson reference.
D
Like claim 31, claim 42 of the ’604 patent recites a
“method for storing and retrieving data in a computer
memory,” which involves “configuring” that memory into
a “logical table” with “logical rows” and “logical columns.”
’604 patent, col. 24, lines 22–40. Unlike claim 31, claim
42 also involves “searching” the “table” for a “pointer” that
defines a “logical column.” Id. Claim 43 depends on claim
42 and adds the requirement that “at least one of said
logical columns defines logical cells that include a plurali-
ty of pointers to other logical columns within the same
record, said pointers indicating those logical columns
MICROSOFT CORPORATION v. ENFISH, LLC 13
within the same record that contain defined values.” Id.,
col. 24, lines 41–45. The Board rejected Microsoft’s obvi-
ousness challenge to claim 43, a challenge based on
Chang and U.S. Patent No. 5,226,158 (Horn). In so
ruling, it concluded that Microsoft’s arguments relied on
“at least two different tables in Chang, SYS.TABLES and
SYS.COLUMNS,” rather than a “single table.” J.A. 31.
On appeal, Microsoft argues that it relied on
SYS.TABLES only. We find no reversible error by the
Board in this ruling.
The Board reasonably interpreted Microsoft’s argu-
ment as relying on both SYS.TABLES and
SYS.COLUMNS. That is one natural reading of the
relevant paragraph of Microsoft’s Petition on claim 43,
even if it is not the only possible reading. J.A. 241–42.
Microsoft’s Reply did not clarify its position. To the
extent that Microsoft intended to argue that
SYS.TABLES alone disclosed claim 43’s additional limita-
tions, it should have done so with greater clarity. See
Wallace, 879 F.2d at 832.
E
Claims 55–56 and 60 of the ’604 and ’775 patents de-
pend, directly or indirectly, on claim 54, which recites a
method for “storing and retrieving data in a computer
memory” comprising two steps: (1) “configuring” that
“memory according to a logical table,” consisting of “logi-
cal rows” and “logical columns,” and (2) “indexing” the
“data stored” in that “table.” ’604 patent, col. 26, lines 1–
15. Claims 55–56 and 60 add requirements to the index-
ing step, including “searching” the “table” for a “key
word,” “creating an index record” of that “key word,”
“locating” that “index record” in response to user queries,
and “indexing external documents.” Id., col. 26, lines 16–
28, 42–44. The Board rejected Microsoft’s obviousness
challenge to claims 55–56 and 60, a challenge based on
Microsoft Corp., Visual Basic Programming Systems for
14 MICROSOFT CORPORATION v. ENFISH, LLC
Windows Version 3.0 (1993) (Visual Basic); and Gerald
Salton & Michael J. McGill, Introduction to Modern
Information Retrieval (1983) (Salton). The Board found
that Microsoft did not present a “sufficient articulated
reason with rational underpinning” to support its conten-
tion that a person of ordinary skill would have been
motivated to combine those references. J.A. 79, 186. We
agree.
Whether it would have been obvious for a person of
ordinary skill in the art to combine two or more references
is a flexible inquiry. A factfinder “need not seek out
precise teachings directed to the specific subject matter of
the challenged claim” and “can take account of the infer-
ences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex. Inc., 550
U.S. 398, 418 (2007). Nevertheless, obviousness cannot
be established “by mere conclusory statements; instead,
there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). And “references to ‘common sense’ . . .
cannot be used as a wholesale substitute for reasoned
analysis and evidentiary support.” Arendi S.A.R.L. v.
Apple, Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).
Before the Board, Microsoft argued that Visual Basic
disclosed “configuring,” “indexing,” “searching,” and
“querying,” while Salton disclosed other requirements
present in claims 55–56 and 60. Visual Basic describes a
general-purpose programming language that enables
programmers to create relational databases. In particu-
lar, Visual Basic discloses a Table object that represents a
logical table consisting of rows and columns. A Table can
be indexed using an Index object. According to Visual
Basic, indexes can “increase the speed” with which the
programmer or user can “access information.” J.A. 7564.
Salton describes information retrieval, including the use
of indexes. Like Visual Basic, Salton discloses that index-
MICROSOFT CORPORATION v. ENFISH, LLC 15
es “may be used to speed up a search for information.”
J.A. 7653. As described, an index includes values for each
key in each record.
Although Salton and Visual Basic arguably disclose
every limitation in claims 55–56 and 60, the Board cor-
rectly concluded that Microsoft did not articulate a suffi-
cient motivation to combine. With respect to claims 55
and 56, Microsoft gave no reason for the motivation of a
person of ordinary skill to combine Visual Basic and
Salton except that the references were directed to the
same art or same techniques, viz., that they “discuss[ed]
information search and retrieval using computer data-
bases” or “describe[d] storing data in databases, allowing
users to query the data, and using indexes to facilitate
those queries.” J.A. 319. With respect to claim 60, Mi-
crosoft asserted that a person of ordinary skill would have
been motivated to combine the references and did not
elaborate. The Board did not err in finding those asser-
tions inadequate to show persuasively that a relevant
skilled artisan would have been motivated to combine the
references.
Nor did the Board err in finding insufficient the dec-
larations of Microsoft’s relevant expert, Dr. Hosking. He
asserted that a person of ordinary skill would have been
motivated to combine Visual Basic’s and Salton’s indexing
systems because they “address[ed] the same technical
issues and disclose[d] closely related subject matters.”
J.A. 1651–52, 2782. He also stated that Visual Basic and
Salton “both dea[lt] with solving the problem of locating
key words in a database.” J.A. 1657, 2787. The Board
could find those assertions, without more, insufficient to
show persuasively that a relevant artisan would have
recognized some deficiency in one reference or had some
other reason to motivate looking to the other and combin-
ing them.
16 MICROSOFT CORPORATION v. ENFISH, LLC
On appeal, Microsoft argues that Visual Basic’s high-
level disclosure of indexing would have motivated a
person of ordinary skill in the art to turn to Salton for
low-level implementation details. But Microsoft did not
present that explanation to the Board.
CONCLUSION
For the foregoing reasons, we affirm the Board’s de-
terminations of unpatentability of claims 31, 41, 46–50,
and 54 of the ’604 and ’775 patents; claim 42 of the ’604
patent; and claim 45 of the ’775 patent. We also affirm
the Board’s decisions that Microsoft did not prove the
unpatentability of claims 32–40, 43–44, 51–53, 55–56, and
60 of both patents; claim 45 of the ’604 patent; and claim
42 of the ’775 patent.
No costs.
AFFIRMED