Case: 20-1928 Document: 39 Page: 1 Filed: 06/17/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MICROSOFT CORPORATION,
Appellant
v.
FG SRC, LLC,
Appellee
______________________
2020-1928
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01594.
______________________
Decided: June 17, 2021
______________________
JOSEPH A. MICALLEF, Sidley Austin LLP, Washington,
DC, argued for appellant. Also represented by SCOTT
BORDER, SAMUEL DILLON; RICHARD ALAN CEDEROTH, Chi-
cago, IL.
JAY P. KESAN, DiMuroGinsberg PC, McLean, VA, ar-
gued for appellee. Also represented by ALFONSO CHAN, ARI
RAFILSON, Shore Chan DePumpo LLP, Dallas, TX; CECIL
E. KEY, DGKeyIP Group, Tysons Corner, VA.
______________________
Case: 20-1928 Document: 39 Page: 2 Filed: 06/17/2021
2 MICROSOFT CORPORATION v. FG SRC, LLC
Before LOURIE, PROST *, and O’MALLEY, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge PROST.
LOURIE, Circuit Judge.
Microsoft Corporation (“Microsoft”) appeals from a fi-
nal written decision of the United States Patent and Trade-
mark Office Patent Trial and Appeal Board (“the Board”)
holding that Microsoft failed to demonstrate that
claims 18–25 of U.S. Patent 6,434,687 (“the ’687 patent”)
were unpatentable. See Microsoft Corp. v. FG SRC LLC,
No. IPR2018-01594, 2020 WL 1818685 (P.T.A.B. Apr. 9,
2020) (“Decision”). We affirm.
BACKGROUND
I. THE ’687 PATENT
FG SRC, LLC (“FG”) owns the ’687 patent, which is di-
rected to methods for accelerating web site access and pro-
cessing using reconfigurable processors, such as field
programmable gate arrays (“FPGAs”). The patent explains
that e-commerce web sites often seek to provide different
content to different users based on the demographics of the
particular user. ’687 patent col. 1 ll. 35–40. The demo-
graphic data may be obtained in a number of ways. For
example, data may be obtained directly by simply asking
the user to respond to questions, or indirectly, such as by
analyzing the web sites that the user has visited previ-
ously. Id. col. 1 ll. 41–45. Either way, the patent explains,
the data must be processed in order for the server to pro-
vide customized content to the user. Id. col. 1 ll. 47–51.
* Circuit Judge Sharon Prost vacated the position of
Chief Judge on May 21, 2021.
Case: 20-1928 Document: 39 Page: 3 Filed: 06/17/2021
MICROSOFT CORPORATION v. FG SRC, LLC 3
And because typical web users are willing to wait only a
limited amount of time for a web site to load, the processing
of demographic data and selection of web page content
must be done quickly. Id. col. 1 ll. 52–55.
The ’687 patent purports to address this issue by using
a server with reconfigurable processors to process the de-
mographic data and select web content to be transmitted
to the user. The patent explains that a conventional server
with conventional processing elements processes data seri-
ally, such that N processing iterations are required to pro-
cess N elements of data. Id. col. 20 ll. 55–60. But because
the algorithms loaded into reconfigurable processors can be
changed quickly, a reconfigurable server may instantiate
many processing units tailored to the specific problem at
hand. Id. col. 21 ll. 8–14. Consequently, the patent ex-
plains that reconfigurable servers can process data in par-
allel, and N data elements can therefore be processed in a
single iteration, reducing processing time considerably. Id.
col. 21 ll. 21–23.
Claims 1–3, though not directly at issue in this appeal,
are related to the issues on appeal, and recite:
1. A method for processing data at an internet site
comprising:
providing a reconfigurable server at said site incor-
porating at least one microprocessor and at least
one reconfigurable processing element;
receiving N data elements at said site relative to a
remote computer coupled to said site;
instantiating N of said reconfigurable processing
elements at said reconfigurable server; and
processing said N data elements with correspond-
ing ones of said N reconfigurable processing ele-
ments.
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4 MICROSOFT CORPORATION v. FG SRC, LLC
2. The method of claim 1 further comprising: select-
ing a content of said site in response to said pro-
cessed N data elements.
3. The method of claim 2 further comprising: trans-
mitting said content to said remote computer.
Id. col. 21 ll. 51–67 (emphases added).
Claim 18, which is at issue in this appeal, recites sub-
stantially similar subject matter as claims 1–3 in a single
claim:
18. A process of accelerating access time of a remote
computer to an internet site comprising:
providing a reconfigurable server at said site incor-
porating at least one microprocessor and at least
one reconfigurable processor;
transmitting N data elements from said remote
computer to said server;
substantially concurrently processing said N data
elements with N of said at least one reconfigurable
processors;
selecting a content of said internet site in response
to said N data elements; and
transmitting said content to said remote computer.
Id. col. 22 ll. 50–62 (emphases added).
Finally, claim 25 depends from claim 18 and recites:
25. The process of claim 18 further comprising: dis-
playing said content at said remote computer.
Id. col. 24 ll. 6–7.
II. THE PRIOR ART
Microsoft filed a petition for inter partes review of
claims 1–25 of the ’687 patent. See Microsoft Corp. v. Saint
Case: 20-1928 Document: 39 Page: 5 Filed: 06/17/2021
MICROSOFT CORPORATION v. FG SRC, LLC 5
Regis Mohawk Tribe, No. IPR2018-01594, 2018 WL
4050662 (P.T.A.B. Aug. 24, 2018). 1 Relevant to this appeal,
Microsoft argued that claims 1–3 and 18 were anticipated
by a white paper titled “The Architecture of the Obelix – An
Improved Internet Search Engine” (“Obelix”). 2 Microsoft
also argued that claims 2, 3, and 25 would have been obvi-
ous over Obelix in view of U.S. Patent 6,098,065 (“Skillen”).
Obelix describes utilizing user action information on
web pages, such as printing and bookmarking, to improve
the web page ranking of a search algorithm using a server
with reconfigurable processors (the Obelix server).
J.A. 2099. The paper explains that the purpose of its sys-
tem is to introduce a “human factor” into search ranking
algorithms. Id. To do so, the reconfigurable processors op-
erate in three stages. First, a modified web browser col-
lects information about users’ interactions with various
web sites having distinct uniform resource locators (URLs).
Id. Obelix explains that “users’ actions” are defined to
cover most interactions with a web page, such as visiting,
saving, or printing the web page. Id. Second, the user ac-
tion information is transmitted to the Obelix server for pro-
cessing. J.A. 2101. The purpose of the processing is to
generate a weighted sum for each URL—called a “Cassel-
man score”—of all actions relating to the URL, where each
action has its own weight according to its importance. Id.
The Casselman score represents the sum of overall scores
of user actions. J.A. 2100. Finally, the results are
1 Ownership of the ’687 patent has changed during
the course of the proceedings from Saint Regis to Di-
rectStream, LLC, and presently to FG.
2 Knezevic et al., The Architecture of the Obelix – An
Improved Internet Search Engine, Proceedings of the 33rd
Hawaii International Conference on System Sciences,
IEEE (2000).
Case: 20-1928 Document: 39 Page: 6 Filed: 06/17/2021
6 MICROSOFT CORPORATION v. FG SRC, LLC
transferred to a database to be used during searching.
J.A. 2109.
When a user makes a search request, a search engine
ranks pages according to a conventional search algorithm,
such as the number of search words that appear in each
web page. J.A. 2100. Afterwards, the Obelix results are
calculated by reranking the results based on the Cassel-
man scores, and the results are returned to the user.
J.A. 2105–06.
Skillen describes a method for providing advertise-
ments to a user searching for information within a net-
work. Skillen, Abstract. A user submits a search request,
and the search results are passed to an associative search
engine that selects a probable best product for an adver-
tisement to be displayed with the search results. Id. col. 4
ll. 26–45. The advertisement selection is based in part on
a user profile data stored on the searching user’s device, id.
col. 5 ll. 7–12, and can be refined based on the user’s selec-
tion of a search result. Id. col. 4 ll. 51–55.
III. THE BOARD’S DECISION
The Board concluded that claim 1 was shown to be an-
ticipated by Obelix but that claims 2, 3, and 18 were not.
Decision, 2020 WL 1818685, at *14. Specifically, the Board
found that Obelix does not disclose “selecting a content of
said site in response to said processed N data elements” as
recited in claims 2 and 18 because Obelix does not rerank
its search results based on actions by the current user, but
rather does so based on action information of previous us-
ers collected during the data collection phase. Id. at *13.
Nevertheless, the Board concluded that claims 2 and 3
would have been obvious over Obelix in view of Skillen. Id.
at *24. Specifically, the Board found that Skillen’s selec-
tion of a probable best product advertisement based on a
user’s search query discloses the selection of content in re-
sponse to the processed data elements recited in claim 2.
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MICROSOFT CORPORATION v. FG SRC, LLC 7
Id. Likewise, the Board found that Skillen’s transmission
of the selected advertisement for display on the user’s de-
vice discloses the transmission of content to the remote
computer as recited in claim 3. Id. Finally, the Board con-
cluded that Microsoft failed to demonstrate that claim 25
would have been obvious over the combination of Obelix
and Skillen because Microsoft did not show that Obelix dis-
closes “selecting a content of said internet site in response
to said N data elements” and “transmitting said content to
said remote computer” as recited in claim 18 (from which
claim 25 depends), and Microsoft “d[id] not challenge inde-
pendent claim 18 as unpatentable over the combination of
Obelix and Skillen.” Id. at *25.
Microsoft appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Microsoft makes two principal arguments on appeal.
First, Microsoft argues that the Board erred in failing to
conclude that claim 18 would have been obvious over Obe-
lix and Skillen. Specifically, Microsoft argues that its peti-
tion fairly raised the issue of obviousness of claim 18 over
Obelix and Skillen, and the Board therefore erred in failing
to address claim 18 based on that ground. Had the Board
done so, according to Microsoft, it could only have con-
cluded that claim 18 would have been obvious over Obelix
and Skillen based on the claim’s similarity with claims 2
and 3, which the Board held unpatentable. Second, Mi-
crosoft argues that the Board erred in holding that
claim 18 was not anticipated by Obelix. Specifically, Mi-
crosoft argues that the Board erred in implicitly construing
the selecting and transmitting limitations to require a cur-
rent user and, according to Microsoft, the claim was shown
to be anticipated absent that requirement. We consider
Microsoft’s arguments in turn.
Case: 20-1928 Document: 39 Page: 8 Filed: 06/17/2021
8 MICROSOFT CORPORATION v. FG SRC, LLC
I. OBVIOUSNESS OVER OBELIX AND SKILLEN
As formal administrative adjudications, IPRs are sub-
ject to the procedural requirements of the Administrative
Procedure Act. Fanduel, Inc. v. Interactive Games LLC,
966 F.3d 1334, 1339 (Fed. Cir. 2020); Hamilton Beach
Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1338 (Fed.
Cir. 2018). “Decisions related to compliance with the
Board’s procedures are reviewed for an abuse of discre-
tion.” Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d
1374, 1379 (Fed. Cir. 2018) (citing Bilstad v. Wakalopulos,
386 F.3d 1116, 1121 (Fed. Cir. 2004)). The Board’s proce-
dures require that a petitioner set forth “[t]he specific stat-
utory grounds under 35 U.S.C. 102 or 103 on which the
challenge to the claim is based and the patents or printed
publications relied upon for each ground.” 37 C.F.R.
§ 42.104. Accordingly, we review the Board’s determina-
tion whether a petitioner challenged a claim based on par-
ticular references for an abuse of discretion. “An abuse of
discretion is found if the decision: (1) is clearly unreasona-
ble, arbitrary, or fanciful; (2) is based on an erroneous con-
clusion of law; (3) rests on clearly erroneous fact finding; or
(4) involves a record that contains no evidence on which the
Board could rationally base its decision.” Ericsson, 901
F.3d at 1379 (quoting Bilstad, 386 F.3d at 1121)).
Microsoft offers several explanations of how its petition
allegedly challenged claim 18 based on the combination of
Obelix and Skillen and argues that the Board erred in fail-
ing to address claim 18 on that ground. First, Microsoft
points to a passage in its petition in which it argued that
the selecting limitation of claim 18 was “satisfied for the
reasons set forth above with respect to claim 2.” Appel-
lant’s Br. 51 (citing J.A 146). The statement regarding
claim 18 on which Microsoft relies appears in a section of
its petition titled “Claims 1-5, 8-12, 16-19, and 22-25 Are
Anticipated by Obelix.” J.A. 129. As such, one might rea-
sonably understand Microsoft’s statement to refer to the
reasons “set forth above” with respect to claim 2 under the
Case: 20-1928 Document: 39 Page: 9 Filed: 06/17/2021
MICROSOFT CORPORATION v. FG SRC, LLC 9
same heading, arguing that the selecting limitation of
claim 2 is also anticipated by Obelix. But no. Instead, Mi-
crosoft argues that the Board should have understood the
statement to refer to the reasons set forth way above
(34 pages above, in fact) with respect to claim 2, in a com-
pletely different and unrelated section titled “Identification
of Challenged Claims” where Microsoft stated that
“Claims 2-4, 13, and 25 Are Obvious over Obelix in view
Skillen.” J.A. 112.
As further support, Microsoft directs our attention to a
citation of its expert declaration following its assertion that
the selecting limitation of claim 18 is satisfied for the same
reasons as claim 2. In addition to analysis of why claim 2
is anticipated by Obelix, the cited paragraphs of the expert
declaration also include analysis of why claim 2 would have
been obvious over Obelix and Skillen. See J.A. 146 (citing
J.A. 2022–29). We observe that Microsoft fails to
acknowledge the immediately preceding citation, which di-
rects the reader to Microsoft’s analysis in the same section
arguing that claim 2 is anticipated by Obelix.
Finally, Microsoft argues that the Board erred in fail-
ing to address claim 18 based on Obelix and Skillen be-
cause FG’s patent owner response acknowledged that
Microsoft challenged claim 18 on that ground. See J.A. 449
(“Petitioner further asserts that the combination of Skillen
with Obelix/Spencer renders obvious independent
Claim 18, based solely on the allegation that Skillen dis-
closes selecting content in response to the N data elements
and transmitting the content to a remote computer.”).
We are unpersuaded that the Board abused its discre-
tion in declining to interpret Microsoft’s petition as chal-
lenging claim 18 over Obelix and Skillen based on such
tenuous connections in Microsoft’s petition. The Supreme
Court has observed that the petitioner is the “master of its
complaint,” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355
(2018), and as such, “[i]t is of the utmost importance that
Case: 20-1928 Document: 39 Page: 10 Filed: 06/17/2021
10 MICROSOFT CORPORATION v. FG SRC, LLC
petitioners . . . adhere to the requirement that the initial
petition identify ‘with particularity’ the ‘evidence that sup-
ports the grounds for the challenge to each claim.’” Intelli-
gent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1369 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3)). Here, there is no plausible argument that Mi-
crosoft’s petition challenged claim 18 based on obviousness
over Obelix and Skillen with any particularity whatsoever.
Microsoft clearly argued that claim 18 was anticipated by
Obelix but relies on an unrelated ground in an unrelated
section of its petition to ask us to deduce the existence of
an obviousness argument from within its anticipation ar-
gument. We decline to do so, nor can we say that it was an
abuse of discretion for the Board not to do so. It is not the
Board’s job to cobble together assertions from different sec-
tions of a petition or citations of various exhibits in order
to infer every possible permutation of a petitioner’s argu-
ments. Arguments in a petition must be made with partic-
ularity, not opacity, and the Board was certainly within its
discretion to conclude that Microsoft’s analysis of claim 18
within a section titled “Claims 1-5, 8-12, 16-19, and 22-25
Are Anticipated by Obelix” was a challenge to claim 18
based only on anticipation by Obelix.
FG’s statement in its Patent Owner Response does not
warrant a different result. While the understanding of an
opposing party may be relevant to whether a petitioner’s
argument was fairly raised, it is not conclusive, and it does
not change the content of the petition. In this case, because
Microsoft’s petition was so deficient in challenging claim 18
based on Obelix and Skillen, and because FG’s acknowl-
edgement of claim 18 was made within the context of ad-
dressing claims depending from claim 18 (which Microsoft
did challenge), it was not an abuse of discretion for the
Board to discount the weight of FG’s statement.
Because we conclude that the Board did not err in fail-
ing to address claim 18 based on Obelix and Skillen, we
Case: 20-1928 Document: 39 Page: 11 Filed: 06/17/2021
MICROSOFT CORPORATION v. FG SRC, LLC 11
need not consider whether claim 18 would have been obvi-
ous based on its similarity to claims 2 and 3.
II. ANTICIPATION BY OBELIX
Microsoft also argues that the Board erred in finding
that claim 18 was not anticipated by Obelix. Specifically,
Microsoft argues that the Board’s analysis of claim 18 im-
plicitly construed the selecting and transmitting limita-
tions to be performed “in realtime for a current user.”
Appellant’s Br 56. According to Microsoft, the claim is not
limited to a current user, and, without that requirement,
the claim was shown to be anticipated by Obelix. FG re-
sponds that the claim is directed to accelerating web site
processing to provide customized content to the visitor to
the web site, and therefore the selection of content in re-
sponse to the transmitted data elements necessarily ap-
plies only to the current user. We agree with FG.
“Claim construction is a question of law that may in-
volve underlying factual questions.” Amgen Inc. v. Amneal
Pharm. LLC, 945 F.3d 1368, 1375 (Fed. Cir. 2020) (citing
Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 332
(2015)). Where, as here, the lower tribunal’s construction
is based solely on evidence intrinsic to the patent, we re-
view the construction de novo. Shire Dev., LLC v. Watson
Pharm., Inc., 787 F.3d 1359, 1364 (Fed. Cir. 2015) (citing
Teva, 574 U.S. at 330–33). Because the ’687 has expired,
we give the claim terms their plain and ordinary meaning
as would be understood by a person of ordinary skill in the
art at the time of the invention and in the context of the
entire patent specification. Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
While we agree with Microsoft that the Board implic-
itly construed the selecting and transmitting limitations to
require a current user, we disagree that the Board’s con-
struction was erroneous. We begin with the claim lan-
guage itself. FG contends that the preamble of claim 18,
which recites “a process of accelerating access time of a
Case: 20-1928 Document: 39 Page: 12 Filed: 06/17/2021
12 MICROSOFT CORPORATION v. FG SRC, LLC
remote computer to an internet site,” supports the Board’s
construction because accessing an internet site is inher-
ently performed by a single user. Appellee’s Br. 32. But
we need not resort to the preamble or determine whether
or not it is limiting to resolve the parties’ dispute. The body
of claim 18 recites, among other things, transmitting N
data elements from a remote computer to a server, select-
ing content of an internet site in response to the data ele-
ments, and transmitting the content to the remote
computer. While claim 18 does not expressly recite that
the selecting of web site content is performed immediately
or for a current user, it does require that the selection is
performed “in response to” the transmission of the data el-
ements to the server. The requirement that the content
selection is in response to the transmission of the data ele-
ments implies that the selection of web site content is trig-
gered by the transmission of data and that both steps are
performed as part of a single transaction—that is, by a sin-
gle user. In contrast, Microsoft’s proposed construction
would encompass a system (such as Obelix) in which data
are collected during one phase from a first set of users and
then stored for an indeterminate period of time until a later
user initiates a search. In that case, the selection of web
site content would not be “in response to” the transmission
of the data, but in response to the separate event of a sec-
ond user requesting web site content. As such, Microsoft’s
proposed construction is too broad because it does not ac-
count for all the language of the claim.
The written description accords with this understand-
ing of the selecting limitation. As FG argues, the patent is
generally directed to accelerating web site processing and
access to customize web site content for a single user. For
example, the background explains that web sites collect de-
mographic information about users to provide content var-
ied based on the demographics of a particular user, ’687
patent col. 1 ll.–40, and describes one aspect of the problem
to be solved that the average user will wait only twenty
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MICROSOFT CORPORATION v. FG SRC, LLC 13
seconds for a web site to update. Id. col. 1 ll. 52–54. The
patent’s solution results in a system “with significantly
faster processing capability which translates into shorter
site visitor waiting periods.” Id. col. 3 ll. 4–6. Finally, in
describing the selecting step, the patent explains that, fol-
lowing the processing of the data elements, the server can
select web page content “specifically adapted to the partic-
ular web site visitor.” Id. col. 20 ll. 63–67. Taken together,
we are persuaded that a person of skill would understand
these statements as describing the transmission of data
from the remote computer to the server, the selection of
web site content in response to the data, and the transmis-
sion of the selected web content from the server to the re-
mote computer to occur during a single transaction by a
single user. As such, we agree with FG that the selection
of content is limited to a current user, and we affirm the
Board’s construction.
Because we conclude that the Board did not err in de-
termining that the selecting limitation of claim 18 requires
the selection of data for a current user, and because Mi-
crosoft does not argue that Obelix discloses the selecting
limitation under the Board’s construction, we need not con-
sider whether Obelix discloses the selecting and transmit-
ting limitations under Microsoft’s proposed construction.
CONCLUSION
We have considered Microsoft’s remaining arguments
but find them unpersuasive. For the foregoing reasons, the
decision of the Board is affirmed.
AFFIRMED
Case: 20-1928 Document: 39 Page: 14 Filed: 06/17/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MICROSOFT CORPORATION,
Appellant
v.
FG SRC, LLC,
Appellee
______________________
2020-1928
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01594.
______________________
PROST, Circuit Judge, concurring in part and dissenting in
part.
I agree with the Majority on the result of the proce-
dural question about whether obviousness over the Obelix-
and-Skillen combination was raised. But I respectfully dis-
agree about anticipation by Obelix.
The Majority affirms the Board’s conclusion that claim
18 was not anticipated by Obelix. But I think that the
Board misinterpreted claim 18, and I would remand for the
Board to consider claim 18 again under a proper under-
standing of its scope.
Case: 20-1928 Document: 39 Page: 15 Filed: 06/17/2021
2 MICROSOFT CORPORATION v. FG SRC, LLC
The innovation, as the patent describes it, is retrieving
tailored web content that is selected after parallel pro-
cessing (or, “substantially concurrently processing”) some
underlying data. Claim 18 recites (emphasis added):
18. A process of accelerating access time of a re-
mote computer to an internet site comprising:
providing a reconfigurable server at said site incor-
porating at least one microprocessor and at least
one reconfigurable processor;
transmitting N data elements from said remote
computer to said server;
substantially concurrently processing said N data
elements with N of said at least one reconfigurable
processors;
selecting a content of said internet site in response
to said N data elements; and
transmitting said content to said remote computer.
None of this claim language mentions a “current user” or
that the content that is selected is personalized.
The Board concluded that Obelix does not disclose the
“selecting” step (i.e., in the context of this case, selecting
ranked search-engine results) because Obelix does not
rank its search results based on actions by the current user
but instead does so based on action information from pre-
vious users. See Maj. 6; Microsoft Corp. v. FG SRC, LLC,
No. IPR2018-01594, Paper 72, 2020 WL 1818685, at *13
(P.T.A.B. Apr. 9, 2020). Specifically, the Board describes
Obelix as having an initial “data collection phase” and “pro-
cessing phase” in which user behavior is tracked and po-
tential search results are ranked. Microsoft, 2020 WL
1818685, at *13. Later, “when a user submits a search re-
quest” after those phases are concluded, the search results
are ranked based on data processed before the current
user’s search. Id. This, the Board concludes, is not the
Case: 20-1928 Document: 39 Page: 16 Filed: 06/17/2021
MICROSOFT CORPORATION v. FG SRC, LLC 3
claimed “selecting” of content “in response to” data from the
remote computer. Id. The Board found “persuasive” FG
SRC’s arguments that Obelix cannot “select” as claimed be-
cause it “uses data received from past users, not from cur-
rent users, to re-rank the search results.” Id. The Majority
agrees, concluding that “the selection of content is limited
to a current user.” Maj. 13. I disagree based on my under-
standing of the claims.
Properly understood, claim 18 requires only that a com-
puter send data to a server, that the server parallel-process
that data, and that the server (at some point) send back
internet content selected using that data. It does not re-
quire that any of the steps be for a “current user” (a term
that doesn’t appear in the claims). Nor does it require that
the data processing and content selection be in a “single
transaction” with, or contemporaneous with, the collection
of data from the remote computer. See Maj. 12–13. The
real question is whether the search results are ranked
based at least in part on data from the same remote com-
puter that the search is conducted on. And the Board didn’t
answer that question.
Suppose that a computer transmits data (i.e., in the
context of this case, its users’ behavior on the internet) to
the server for a while, over weeks and weeks. And say that
some user later, on the same computer, searches the web—
and that the server processes the collected data, selects
ranked search results, and returns those ranked search re-
sults to the same computer. In my view, that would plainly
satisfy the claim limitations. But under the Majority and
the Board’s analysis, it would not.
To that end, FG SRC points to claim language requir-
ing that content selection be “in response to” the processed
data elements. The Majority says in agreement that the
selecting step must be “triggered by” the transmission of
data from the computer “as part of a single transaction,”
namely “by a single user.” Maj. 12. But “in response to”
Case: 20-1928 Document: 39 Page: 17 Filed: 06/17/2021
4 MICROSOFT CORPORATION v. FG SRC, LLC
doesn’t mean contemporaneous with or in immediate re-
sponse to—just as this paragraph, though written months
after the parties’ briefs, is “in response to” them. Besides,
the claims say that the selection is in response to the data,
not the transmission.
What’s more, even if the selection of the search results
is “in response to” the user’s search, that doesn’t mean the
selection isn’t also “in response to” the processed data. The
Majority treats these possibilities—in response to the
user’s search versus the data—as orthogonal. See Maj. 12.
But the selection can be in response to both. Here, both are
prerequisites—just as this paragraph is “in response to”
the Majority’s opinion and the parties’ briefs. And so if con-
tent is selected in the background yet only transmitted
once the user conducts a search, the limitation is met. So
too if content is selected after a search but using previously
processed data. The point, in the context of the patent, is
that avoiding laborious non-parallel processing at the time
of search means quicker search results.
Accordingly, in my view, only one narrow fact question
remains under the proper reading of the claims: does Obe-
lix disclose (1) “selecting a content” of an internet site “in
response to” data transmitted (at some point) from a re-
mote computer and (2) “transmitting said content” (at some
other point) to the same “remote computer”? We should
remand for the Board to consider that question and what-
ever other claims are implicated by it. On this issue, I re-
spectfully dissent.
Microsoft Corporation v. Fg Src, LLC
Combined Opinion