N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________
MICROSOFT CORPORATIO N, INTERNATIONAL BUSINESS MACHINES CORPORATION, Appellant s

v.

PARALLEL NETWORKS LI CENSING, LLC, Appellee

______________________

2016

- 2515, 2016

- 2517, 2016

- 2518, 2016

- 2519, 2016

- 2642, 2016

- 2644, 2016

- 2645, 2016

- 2646

______________________ Appeals from the United States Patent and Trad ema rk Office, Patent Trial and Appeal Board in No s

. IPR2015

- 00483, IPR2015

- 00484, IPR2015

- 00485, IPR2015

- 00486, IPR2015

- 01729, IPR2015

- 01731, IPR2015

- 01732, IPR2015

- 01734.

______________________
Decided: December 1, 2017

______________________
C ONSTANTINE L. T RELA , J R ., Sidley Austin LLP, Ch icago, IL, argued for appellant s

. Appellant Microsoft Corporation a lso represented by R ICHARD A LAN C EDEROTH ; M ICHAEL D. H ATCHER , Dallas, TX; J OSHUA J OHN F OUGERE , D ANIEL H AY , J OSEPH A. M ICALLEF , Was hington, DC.MICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 2

J OHN M. D ESMARAIS , Desmarais LLP, New York, NY, for appellant International Business Machines Corpor ation. Also represented by J ON T ODD H OHENTHANER , K EVIN K ENT M C N ISH , J EFFREY S COTT S EDDON , II

.

C HRISTOPHER T HOR B OVENKAMP , McKool Smith, PC, Dallas, TX, argued for appellee. Also represented by D OUGLAS A ARON C AWLEY ; K EVIN P. H ESS , D USTIN M ARK H OWELL , Austin, TX.

______________________
Before D YK , S CHALL , and T ARANTO , Circuit Judges.

T ARANTO , Circuit Judge

. Parallel Networks Licensing, LLC owns U.S. Patents 5,894,554 and 6,415,335 (the Parallel Patents), which describe and claim systems for managing the handling of requests for World Wide Web page s having dynamic (ch anging) content. ’554 patent, col. 2

, lines 1 5

– 19 , lines 20

– 32 ; ’335 patent , col. 2

, lines 1 5

– 19 , lines 20

– 32

. Para llel sued Microsoft Corp. and International Business Machines (IBM) for infringement. Microsoft and IBM subsequently filed petitions with the Patent and Trad emark Office seeking inter partes review s of all claims of the Par allel Patents under 35 U.S.C. §§ 311

– 3 19. The Patent Trial and Appeal Board, acting as the delegate of the PTO’s Director under 37 C.F.R. § 42.4(a), instituted review s of all challenged claims on anticipation and obviousness grounds , and it consolidated t he proceedings into two, one for each of the Parallel Patents, with M icrosoft and IBM both involved as petitioner s

. After conducting the review s , the Board concluded that the petitioners failed to demonstrate anticipation or obviou sness

. Microsoft and IBM appeal the Board’s decisions , arg uing that the Board erred in construing the claim termMICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 3

“request” and in rejecting the arguments for unpatentabi lity . We affirm t he Board’s claim construction, but we
vacate in part the determination regarding anticipation, vacate the Board’s determination regarding obviousness, and remand for further proceedings.

I

A
The Parallel Patents claim priority to an application filed in 1996. By the mid

- 1990s
, the number of Web page

reques ts had grown large

. See ’554 patent, col. 1, lines 39

– 41, col. 4, lines 33

– 39

. 1 If many requests came to a single

- processor server simultaneous ly, the server could be overwhelmed, and the efficiency of fulfilling requests could suffer. Id

. , col. 4, line s 3 8

– 51. The Parallel P atents address the problem of processing numerous dynamic Web page generation requests using a parti tioned arch itecture. Id . at col. 4, lines 51

– 53. The partitioned arch itecture includes a Web server, interceptor, dispatcher, and multiple page servers. Id

. , fig. 4. The basic method recited in the challenged claims is as follows: (1) a Web page request is sent to a Web server; (2) the request is intercepted; (3) an appro priate page server to process the request is determined; and (4) the request is routed to the appropriate page server. See i d ., col. 4, lines 54

– 60, col. 5, lines 38

– 43 & fig. 4.
The page server is determined based on dynamic sy stem resource information, e.g. , the data sources each page server can access and the number of requests each page server is processing. Id

. , col. 5, line 49 through col. 6, line 19. By routing a request to a page server, the Web server

1 The ’335 patent issued from a divisional applic ation that claims priority to the ’554 patent’s underlying application; the specifications are nearly identical. Thus, we omit duplicate citations to the ’335 patent.MICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 4

is free to “concurrently process other Web c lient requests.” Id

. , col. 6, lines 20

– 25. The partitioned architecture allows the page servers and the Web server “to simult aneously process different requests, thus increasing the efficiency of the Web site.” Id

. , col. 6, lines 2 4

– 28.

In July 2012, th e PTO issued ex parte reexamination certificates for b oth of the Parallel Patents

. 2 All of the original claims in the ’554 patent were canceled and new claims 12

– 49 were added. J. A

. 67. Similarly, all of the original claims in the ’335 patent were canceled and new claims 30

– 85 were added. J. A

. 88. For present purposes, claim 12 of the ’554 patent is representative. It reads:
A computer

- implemented method for managing a dynamic W eb page generation request to a Web server, said computer

- implemented method comprising the steps of:
routing said request from said Web server to a s elected page server, said selected page server r eceiving said request and releasing said Web server to pro cess other requests, wherein said routing step further includes the steps of inte rcepting said request at said Web server, routing said request from said Web server to a dispatc her, and dispatching, by said dispatcher, said r equest to said selected page se rver; processing said request, said processing being pe rformed by said selected page server while said Web server concurrently processes said other requests; and

2 The ’335 pat ent’s ex parte reexamination certificate issued on July 17, 2012, and the ’554 patent’s ex parte reexamination certificate issued on July 24, 2012. Corresponding certificates of correction issued on those same days. J.A. 66

– 74, J.A. 87

– 97.MICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 5

dynamically generating a Web page by said s elected page server in response to said request,

sa id Web page including data dynamically r etrieved from one or more data sources; and
wherein dispatching includes: examining said request to make a selection of

which page server should process said request from among a plurality of page servers that

can each generate said Web page requested by said request; selecting one of said plurality of page servers to dynamically generate said Web page;
wherein said selection is based on examining dynamic information regarding a load assoc iated with each of said plu rality of page ser vers; and
sending said request to said selected page server

based on said examination. J.A. 69 (certificate of correction)

. The dispatcher may reside on the same machine as the Web server or on a different machine. ’554 patent, col

. 5, li nes 8

– 28.

B
In December 2014, Microsoft filed four petitions for inter partes reviews , together challenging all claims of the Parallel Patents under 35 U.S.C. §§ 102 and 103

. 3 As to the ’554 patent, t he Board instituted review s of claims 12

– 19, 32, 34 , 46 and 48 in IPR2015

- 00483 (IPR

- 483) and

3 The Parallel Patents claim priority to a 1996 a pplication and are governed by the versions of §§ 102 and 103 that were in effect before amendment by the Leahy

Smith America Invents Act, Pub. L. No. 112

- 29, § 3(n)(1), 125 Stat. 284, 293 ( 2011)

.MICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 6

claims 12, 20

– 31, 33, 35

– 45, 47 and 49 in IPR2015

- 00484. The Board consolidated those reviews into IPR

- 483, which involves claims 12

– 49 of the ’554 patent . As to the ’335 patent, the Board instituted review s of claims 30

– 40, 43

– 53, and 56

– 85 in IPR2015

- 00 485 (IPR

- 485) and claims 32, 33, 35

– 4 2 , 45, 46, 48

– 55, 65, 69, 80, and 84 in IPR2015

- 00 486. The Board consolidated those reviews in IPR

- 485, which involves claims 30

– 85 of the ’335 patent

. In August 2015, IBM filed four petitions for inter partes reviews , all substantially similar to the Microsoft petitions. The Board instituted review s on the IBM petitions and join ed IBM as a petitioner to IPR

- 483 and IPR

- 485.

In its August 2016 Final Written Decision for IPR

483, the Board concluded that Microsoft and IBM ( herea fter collectively “ Microsoft ” ) failed to demonstrate the unpatentability of claims 12

– 49 of the ’554 patent over the cited prior art

. Microsoft Corp. v. Parallel Networks Licen sing, LLC , IPR2 015

- 00483, 2016 WL 8944632, at * 1 1 ( P.T.A.B. Aug. 11, 2016) ( IPR

- 48 3 Final Decision )

. The Board reached the same conclusion in IPR

- 485 for claims 30

– 85 of the ’335 patent. Microsoft Corp. v. Parallel Networks Licensing, LLC , IPR2015

- 00485, 2016 WL 8999702, at *10 ( P.T.A.B. Aug. 11, 2016) ( IPR

- 485 Final Decision )

. 4 Microsoft appeal s the Board’s Final Written Decisions under 35 U.S.C. §§ 141(c) and 319. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

II

The main prior

- art reference con sidered by the Board for both anticipation and obviousness is a 1995 public a-

4 The Board’s Final Written Decisions in IPR

- 483 and IPR

- 485 are substantially similar. We will refer only to the decision in IPR

- 483, but our conclusions apply to both.MICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 7

tion by Daniel Andresen and others: SWEB: Towards a Scalable World Wide Web Server on Multicomputers

, Dept. of Computer Sci. Tech. Repor t TRCS95

- 17, U.C. Santa Barbara (Sept. 1995 ) ( SWEB )

. The publication discloses a “scalable Web server” implemented on a “clu ster of workstations and parallel machines” for the efficient processing of relatively large numbers of simultaneous Web page requests. Id. at 1

– 2

. The system includes a

nu mber of distributed Web server s that can either (a) themselves act as a page server when appropriate or (b)

, based on dynamic system load information, identify

a nother Web server that can more efficient ly get the client the desired information and take steps to have that server do so

. Id

. SWEB states that its preferred process for the latter is “ URL redirection ,” which refers to the Uniform Resource Locator tool for finding Web resources

. Id. at 10

. Figure 6 in SWEB , reproduced below, illu strates tha t process. Id. at 11

.

T he Web client (C) sends a Website host name , d etermined from a URL, to a domain name server (DNS)

, asking for an Internet Protocol (IP) address for a Web

server (S?) hosting the site

. Id. at 5. In the figure, the initial server to which the DNS directs the client is server S0. That server, like others in the system, contains aMICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 8

scheduler (dispatcher) that communicates with all other Web servers to exchange system load information. Id

. at 9. Whe n the client sends request r to server S0 , the scheduler determines whether S0 or some other server should supply the client the desired information. Id

. I f

, at the time, server S1 is preferable to S0 as a source for the client to get the desired inform ation , “URL Redirection” is used to bring about a connection between the client and S1. Id. at 10. “[W]hen client C sends a request [ r ] to server S0, S0 returns a rewritten URL r' and a response code indicating the information is located
at r'

. C then f ollows r' to retrieve the resulting file f .” Id

. The client computer can take the needed steps without a new action by, or even the knowledge of, the human user of client C: “ Most Net browsers and clients automatically query the new location

, so redirection is virtually tran sparent to the user .” Id

. This URL redirection process , while preferred by SWEB

, is not the only process described in SWEB for changing the server that will actually supply the client

desired information. Before describin g URL redirection, SWEB states that, where a server other than the initially contacted one would be better for servi ng the client at the time , “[t]he best situation would be to modify the UNIX sockets package ” so that the initially contacted server send s t he request directly to the desired Web server. Id. at 10. SWEB explains, however, that such modification “is difficult since it requires a substantial modification of the UNIX operating system kernel.” Id

. It then explains the advantages of URL redirec tion and also the disa dvantages, which it indicates are small. Id . at 10

– 11.

T he primary advantages of URL redi rection

, SWEB states, are simplicity and universal compatibility. Id

. at 10. “The primary disadvantage of URL redirection in practice is the added overhead of an additional co nnect/ pass re quest/parse/ respond cycle after the redirectionMICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 9

oc curs.” Id. at 11. SWEB evaluates the magnitude of the disadvantage. It sets forth a mathem atical model based on “a very short reply going back to the client browser, who then automatically issues another request to the new server address.” Id. at 14. It reports experimental results showing added overhead of URL redirection on the order of a f ew milliseconds in a n overall process that took multiple seconds to complete. Id. at 21. SWEB characte rizes this added overhead as “insignificant.” Id. at 23.

II I

A

Microsoft first argues that the Board, when evalua ting anticipation and obviousness, err oneously modified its otherwise

- proper claim construction. The only claim term at issue on appeal is “request” in the required “dynamic Web page generation request

. ” T he Board expressly adopted the construction of “request” that the parties agreed on dur ing the pending d istrict c ourt litigation: “a message that asks for a Web page.” IPR

- 483 Final Dec ision , 2016 WL 8944632, at *4

. When conducting its analysis of the alleged anticip ation by SWEB , the Board explained that the claims of the Parallel Patents “are directed to the routing and pr ocessing of a single request.” Id . at * 5. That conclusion is not meaningfully in dispute here. And in any event, we see no error in it

. What Microsoft argues is that, in its anticipation analysis of whether SWEB teach es the claim

- required steps involving a single request, the Board changed the agreed

- to simple construction of “request.” Microsoft contends that the Board imposed requirements on what can be a “request” based on what Microsoft describes as (1) the partic ular route the re quest travels; (2) the parti cular URL or destination specified; and (3) who or what the request contacts along its route

. But t he Board didMICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 10

none of those things. Instead, it determined that , under the agreed

- on construction, each time th e client computer sends a message asking for a W e b page, it has made a new request. IPR

- 483 Final Decision , 2016 WL 8944632,
at * 6

. The Board stated “that it is the act of asking

— an action taken by the client computer

— that defines a request.” Id

. (emphasis omitted)

. Contrary to Microsoft’s contention, th at conclusion does not turn on the route taken, destination, or intermediate contacts.

Microsoft’s core complaint seems to be that the Board should have focused on what the client is asking for, n ot each individual act of asking, and with that focus should have treated even multiple acts of asking as a single “request” as long as the content is the same. We have two difficulties with this position

. First, at best (for Microsoft’s purposes)

, there is amb iguity in the agreed

- on construction’s term “message”

— whether it refers to substantive communicative content or to a discrete act of utterance to convey communicative
content . But if there is such ambiguity even in the pr esent computer context, it i s apparent on the face of the
term . Yet Microsoft agreed to the term “ message” as the defining construction in district court, leaving it to the fact finder to apply it . A nd in the present proceedings, Microsoft never presented to the Board a request for further claim construction.
Second, we agree with the Board as to the best co nstruction in the context of this patent . This patent co ncerns computers sending out communications that other machines must process, with both the sending and the processing requiring expenditure of precious time and

scarce resources . In this context , the more natural unde rstanding of “request,” as of “message,” is one denoting each discrete act of communicating, not one that equatesMICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 11

discrete utterances when they convey the same content. IPR

- 483 Final Decision , 2016 WL 8944632, at *6

– 8. 5 Accordingly, we reject Microsoft’s assertion that the Board committed a claim

- construction error.

B “[T]he dispositive question regarding anticipatio n is whether one skilled in the art would reasonably unde rstand or infer from the prior art reference’s teaching that every claim element was disclosed in that single refe rence.” Dayco Prods., Inc. v. Total Containment, Inc. , 329 F.3d 1358, 1368 (Fed. Cir . 2003) (internal quotation marks, alterations, and citation omitted)

. Anticipation is a question of fact , subject to review for substantial ev idence

. In re Rambus , 753 F.3d 1253, 1256 (Fed. Cir. 2014)

. Microsoft challenged the Parallel Patents as antic ipated by two separate methods disclosed in SWEB : (1) URL redirection ; and (2) modifying the UNIX sockets package . We affirm the Board ’s finding that SWEB ’s URL redirection method does not anticipate the claims of the Parallel Patents. But the Board failed to address the allegation of anticipation by the UNIX sockets modific ation method . We therefore vacate the Board’s rejection of anticipation in part and remand for the Board to consider that ground of anticipation in the first instance.

5 Because the Parallel Patents expired on April 23, 2016, before the Board issued its Final Written Decisions, the Board properly applied judicial claim

- construction principles to identify the best construction, rather than seeking to identify the broadest reasonable construction. See In re Rambus Inc. , 694 F.3d 42, 46 (Fed. Cir. 2012) ( i nter partes reexamination ); Black & Decker, Inc. v. Positec USA, Inc. , 646 F. App’ x 1019, 1024 (Fed. Cir. 2016) ( inter partes re view).MICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 12

1 Substantial evidence supports the Board’s finding that the Web client in the URL redirection disclosure in SWEB makes two separate requests as that term is used in the Parallel Patents . One is made when the initial request (r) is sent to the Web server selected by the DNS

server . A nother is made when the request (r') is sent to the second Web server identified by the scheduler. IPR

48 3 Final Decision , 2016 WL 8944632, at *8.
Putting aside Microsoft’s claim

- construction arg ument, which we have already r ejected, Microsoft makes only one response . It accepts the Board’s focus on the redirection from one server to another. But it points out that the client computer’s human user makes only one communication

— gives the client computer an instruction only onc e

— in the SWEB URL redirection method in that circumstance. Microsoft ’s Opening Br. 44

– 45 ; Microsoft ’s Reply Br. 13

. But that is irrelevant under the Parallel Patents . The patents refer interchangeably (for these purposes) to a request, Web client request, Web browser request, and URL request

. A nd, more generally, the patents make clear that the requesting entity is the user’s computer
, i.e.

, the Web client , not the client’s human user

. ’554 patent, col. 4 , line 55 (“Web clien t 200 issues a URL request”), col. 6 , lines 29

– 30 (“Web page is .

. . transmitted back t o requesting Web client 200”).

We find no error in the Board’s determination that SWEB ’s URL redirection method fails to anticipate the challenged claims of the Paralle l Patents.

2

Microsoft challenges the Board’s rejection of anticip ation by SWEB on a separate ground . It observes, correc tly, that the Board failed to address Microsoft’s argument for anticipation based on SWEB ’s disclosure

— as an alternative to URL redirection

— of modifying the UNIXMICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 13

sockets pack age of a server that has received a request so that the server forward s the request to a second server without , as in URL redirection, involving the client in initiating contact with t he second server. Such a process is a form of what Microsoft’s expert (and the Board) called “request forwarding” as a name for what the Parallel Patents require. See IPR

- 48 3 Final Decision , 2016 WL 8944632, at *9 (quoting J.A. 11449). We agree with Mic rosoft that the Board erred in not addressing this argument

. Parallel could not show that the Board actually did address this separate basis of alleged anticipation. It argues, however, that Microsoft waived this ground of anticipation . We cannot so find

. Microsoft stated in its petitions that SWEB discloses two methods for routing requests: URL redirection and UNIX socket modification. J.A. 228 . Microsoft also clearly argued UNIX socket modification as an alternative ground for anticipation of the Parallel Patents’ routing limitation. J.A

. 231

. The Board did not find that those clear statements were insufficient to entitle Microsoft to a decision on the issue, and Pa rallel has not identified a regulatory or comparable requirement for preservation that Microsoft failed to
meet. W e see no basis for Parallel’s argument for finding a complete waiver of the issue.

We vacate the rejection of anticipation in part and remand for the Board to consider the issue of anticipation by SWEB ’s disclosure of modifying the UNIX sockets package . The Board may consider whether Microsoft committed a waiver and, if so, the scope of the waiver. If the Board finds no waiver, it should cons ider whether Microsoft has met the required elements of anticipation

—

“ disclosure of all elements of [the] claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co. , 722 F.2d 1542, 1548 (Fed. Cir. 1983) . And, if nece ssary, the Board sho uld address Parallel’s contention that this disclosure in SWEB is not enabled

— applying our lawMICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 14

that generally accord s a presumption of enablement to pri nted

- publication and patent pri or art

. I n re Antor Media Corp. , 689 F.3d 1282, 1289, 1292 (Fed. Cir. 20 12) (printed publications); Amgen Inc. v. Hoechst Marion Roussel, Inc. , 314 F.3d 1313, 135 5 (Fed. Cir. 2003) (p atents)

. C
Microsoft challenged the claims of the Parallel P atents as unpatentable for obviousness over SWEB (and other prior art) even if SWEB did not anticipate the “request forwarding” required by the claims. In rejecting the obviousness challenge, the Board relied on its dete rmination that Microsoft and its expert had “not articula ted a sufficient reason why a person of ordinary skill in the art would have modified SWEB to include request fo rwarding

. ” IPR

- 48 3 Final Decision , 2016 WL 8944632, at

* 9

– 10

. Microsoft argues on appeal that the Board failed to give proper effect to the testimony of its expert under the legal standards for obviousnes s. We agree to this
extent: the Board provided insufficient explanation to justify rejecting the challenge

. We vacate the rejection of the obviousness challenge and remand for further pr oceedings on that challenge. See

, e.g. , In re Nuvasive, Inc.

, 842 F.3d 1376, 1383 (Fed. Cir. 2016); Synopsys, Inc. v. Mentor Graphics Corp. , 814 F.3d 1309, 1322 (Fed. Cir. 2016), overruled on other grounds by Aqua Prod., Inc. v. Matal , 872 F.3d 1290 (Fed. Cir. 2017); In re Sang Su Lee

, 277 F.3d 1338, 1346 (Fed. Cir. 2002).
An obviousness challenger “must demonstrate .

. . that a skilled artisan would have had reason to combine [or modify] the teaching of the prior art references to achieve the claimed invention, and that the skilled art isan would have had a reasonable expectation of success from doing so.” Redline Detection, LLC v. Star Envir otech, Inc. , 811 F.3d 435, 449 (Fed. Cir. 2015) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc. , 773 F.3d 1186, 1193MICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 15

(Fed. Cir. 2014)). A reason “to modify a reference can come fro m the knowledge of those skilled in the art, from the prior art reference itself, or from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp. , 225 F.3d 1349, 1356 (Fed. Cir. 2000).

Those standards can and must be under stood to follow the Supreme Court’s various formulations in KSR Int’l Co. v. Teleflex, I nc. , 550 U.S. 398 (2007) . The KSR form ulations includ e those referring to the “combination of familiar elements according to known methods” that “does no more than yie ld predictable results,” id. at 416 ; “a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field,” requiring more than “a predictable result” for patentability, id. ; “‘simply arrang[ing ] old elements with each performing the same function it had been known to perform ,’ and yield[ing] no more than one would expect from such an arrangement,” id. at 417; “a technique [that] has been used to improve one device,” where “a person of ordinary s kill in the art would recognize that it would improve similar devices in the same way” and that appl ication is not beyond the ordinary skilled artisan’s skill, id. ; “the simple substitution of one known element for another or the mere application of a know n technique to a piece of prior art ready for the improvement,” id. ; circu mstances in which “there is a design need or market pre ssure to solve a problem and there are a finite number of identified, predictable solutions” and “the known options [ are ] within [an ordinary skilled artisan’s] technical grasp” and pursuing those options “leads to the anticipa ted success,” in which case the options are “obvious to try” and “might” be obvious, id. at 421. That enumeration is not exhaustive , and we are not i dentifying what aspects of KSR are ultimately important in this case.
Microsoft’s expert, Dr. Mitzenmacher, stated in his i nitial declaration:MICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 16

214. To the extent Patent Owner may argue that SWEB 95 does not disclose “ routing said r equest from said Web server to a selected page ser ver ” considering either disclosed method of sending requests to other servers, it w ould have been obv ious to include that functionality in the scheme of SWEB 95 . It was known in the prior art to r oute requests from one machine to another via request forwarding based upon a determination of which server should be used to process such a request. See, e.g. , Berson, Client/Server Architecture (2d. ed. 1996) (published by A pril 11, 1996 per U.S. Copyright Office) (“Berson”) (Ex. 1036) at 207

- 208 [J.A. 13 311

– 1 2 ] ( “ Client/server interactions are defined as those in which a client initiates the i nteraction and r equests a particular service from its ‘ home ’ server. This server reacts to the client ’ s request by either performing the des ired service or routing the request to another s erver for fu lfillment of the request; irrespective of the final l ocation of the service, the original or home server sends the response back to the client. ” ); Pfister, In Search of Clusters (1995) (“Pfister”) (Ex. 1037) at 78 (processing node in a cluster may “ dynamically move work from one internal node to another to better balance the node ” ), 226

- 228 [J.A. 13926

– 28] ; Ex. 1012 [Garland et al.

, Implementing Di stributed Server Groups for the World Wide Web (1995) ] at 8 [J.A. 12427] ( “ We could also extend the dispatcher to support anonymous members. It is conceivable that s ome servers might not want to advertise their location to the rest of the world. In this case, the dispatcher could serve as an inte rmedi ary between the client and the anonymous

server

. ” ) (emphasis added). And performing such routing was known to free up CPU cycles and

m emory resources of the sending device

– that isMICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 17

why the requests are routed away. See, e.g ., Ex. 1036 [Berson] at 9; Ex. 1 037 [Pfister] at 226

- 228 [J.A. 13926

– 28] ; Ex. 1012 [Garland] at 1 [J.A. 12420] ( “ When the volume of r equests to a server becomes prohibitively high the server tends to drop requests and eventually crashes. The service provider needs more computing power to meet the demands of the clients requesting the service. ... A fairly obvious solution to this problem is to impl ement a distributed Web server which will spread incoming reque st load among several machines.” ) (emphasis added). A person of ordinary skill in the art would therefore have been motivated to e mploy such a technique in the scheme of SWEB 95

, which is expressly concerned with the efficient use of server resources. See Ex. 1009 [ SWEB ] at 2 (“Several resource constraints affect the perfo rmance of the server: the CPU speed and memory size of one processing unit, the existing system load, the transmission bandwidth between the processing unit and its local disk, the network l atency and bandwidth between a processing unit and a remote disk when the access ed files are not stored in the local disk, and disk contention when multiple I/O requests access the same disk, can all affect the performance. Server scalability is achieved by actively monitoring the run time CPU, disk IO, and network loads of system r es ource units, and dynamically scheduling user HTTP requests to a proper node for efficient pr ocessing.”). Moreover, to do so would have been within the level of ordinary skill in the art, as the prior art shows, and merely the application of a prior art tec hnique for its known purpose to achieve a predictable result.

J.A. 11449

– 51.MICROSOFT CORP

. v. PARALLEL NETWORKS LI CENSING 18

The Board, referring to this testimony, concluded that Microsoft had not explained why a person of ordinary skill in the art would have been motivated to modify SWEB’ s URL redirec tion, because, it determined, the stated benefits of request forwarding were already provided by URL redirection. IPR

- 48 3 Final Decision , 2016 WL 8944632, at *9

. This reasoning is inadequate. It does not address the legal significance , in light of some of the KSR formulations, of Dr. Mitzenmacher’s statement, which is amply supported by references of record, that request forwarding was a well

- known technique for a request

receiving server to use to get another server to provide the client the desired information. It does not address the statement that an interest in anonymity is a reason for request forwarding. It does not address the statements in SWEB itself suggesting that the “best situation” might be to use a form of request forwarding ( by UNIX socket modification) and identifying a “disa dvantage” of URL redirection. SWEB at 10, 11.

In these circumstances, we conclude that the Board failed to provide adequate reasoning to support its dete rmination on the component of the obviousness anal ysis it said was decisive. That inadequacy , together with the failure to consider the contention that SWEB teaches UNIX sockets modification, requires vacatur of all of the Board’s obviousness rulings . We remand for reconsider ation of obviousness.

IV

For the foregoing reasons, we affirm the Board’s claim construction and rejection of anticipation by the URL redirection embodiment of SWEB . We vacate the reje ction of anticipation based on the UNIX socket modific ation teaching in SWEB and the rejection of t he obviousness challenge

. We remand for further procee dings consistent with this opinion.

No costs.MICROSOFT CORP

. v. PARALLEL NETWORKS LICENSING 19

AFFIRMED IN PART, VACATED IN PART, AND REMANDED