NOTE: This disposition is nonprecedential.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 Trademark 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 apparatuses 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 unpatentable. 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 patents in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 

1329–34 (Fed. Cir. 2016). The patents issued from continuations 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 singular “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 construction. 

As detailed infra, Enfish appeals certain Board determinations 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 identification 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 underlying 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 possibility 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 construction 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 specification to support its proposed construction. But the 

specification does not warrant Enfish’s construction.

Contrary to Enfish’s position, the specification affirmatively 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 specification 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 definition,” 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 column; 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 extrinsic evidence to support its argument that an “OID” 

must be immutable. Microsoft introduced contrary testimony 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. Anticipation 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 ordinary 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 Microsoft’s contentions.

A 

Claim 31 of the ’604 and ’775 patents recites a “method 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 determination of OIDs from text entry.” Id., col. 23, lines 32–35.

European Patent Application 03 36580 (Chang) discloses 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 particular 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 argues 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 argument 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, Microsoft argued that Chang discloses “primary key columns,” 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. Microsoft 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 Microsoft’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 indexing 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 validation, which requires the system to validate user operations, 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 sufficient 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 “different 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. Microsoft 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 Microsoft’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 discloses 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 columns within the same record that contain defined values.” ’604 patent, col. 23, lines 54–58. Claim 42 of the 

’775 patent recites a similar method, using similar language. ’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 “pointers” in the form of references, in a formula in one cell of a 

spreadsheet, to other cells in the spreadsheet. In response, 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 “pointers.” 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 determination, 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 plurality 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 obviousness 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 argument 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 limitations, 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 depend, 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 “logical 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 indexing 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 contention 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 inferences 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 particular, 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 correctly concluded that Microsoft did not articulate a sufficient 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 databases” 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, Microsoft 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 assertions 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 declarations 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 combining them.
16 MICROSOFT CORPORATION v. ENFISH, LLC

On appeal, Microsoft argues that Visual Basic’s highlevel 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 determinations 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