Microsoft, HP Prevail in PTAB Inter Partes Review Decision

Three administrative patent judges, Judge Sally C. Medley, Judge Jessica C. Kaiser, and Judge Scott Raevsky recently ruled all challenged claims unpatentable in a patent case concerning three separate technology companies. Microsoft Corporation (Microsoft) and HP Inc. (HP) petitioned a patent owned by Synkloud Technologies, LLC (Synkloud). An inter partes review is conducted in an effort to determine the patentability of an existing patent.

Synkloud’s patent, the ruling said, details the processes by which a wireless device may use external storage provided by a storage server. These processes are titled “McCown” and “Dutta” within the patent. They are intended to help users with wireless devices that run out of storage by providing an external storage space, which may be “partitioned by dividing it into multiple small volumes of storage space, each of which may be exclusively assigned to and used by a user of a specific wireless device.” The patent details the ways in which a user can download data to a remote server and also how they are able to retrieve data from the server.

The petitioners, HP and Microsoft, asserted that the patent is invalid because patent law claims a patent is unpatentable “if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made.” They argued that a person with reasonable skill in the field could have realized and recognized the obviousness of the processes Synkloud was patenting.

Ultimately, the judges collectively ruled that the “Petitioner’s showing that the claims are taught by the asserted art is strong, particularly in comparison to Patent Owner’s weak showing with respect to the asserted secondary considerations of non-obviousness.” This led them to ultimately rule that the claims were unpatentable by a preponderance of the evidence. They ordered that the “parties to the proceeding seeking judicial review of the Decision must comply with notice and service requirements.”The petitioners are represented by Sidley Austin LLP, while the patent owners are represented by Capitol IP Law Group.