       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

             ORACLE AMERICA, INC.,
                   Appellant

                           v.

                   GOOGLE, INC.,
                       Appellee
                ______________________

                      2014-1351
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,548.
                 ______________________

               Decided: March 20, 2015
               ______________________

    MARC A. HEARRON, Morrison & Foerster LLP, Wash-
ington, DC, argued for appellant. Also represented by
MEHRAN ARJOMAND, Los Angeles, CA; DEANNE MAYNARD,
Washington, DC; CHRISTOPHER B. EIDE, Palo Alto, CA.

   DARYL JOSEFFER, King & Spalding LLP, Washington,
DC, argued for appellee. Also represented by ROBERT T.
NEUFELD, Atlanta, GA; ADAM CONRAD, Charlotte, NC;
SCOTT THOMAS WEINGAERTNER, New York, NY; BRIAN C.
BANNER, Austin, TX .
2                      ORACLE AMERICA, INC.   v. GOOGLE, INC.



                 ______________________

    Before DYK, O’MALLEY, and TARANTO, Circuit Judges.
O’MALLEY, Circuit Judge.
    Google, Inc. (“Google”) filed a request for an inter
partes reexamination of U.S. Patent No. 6,910,205 (“the
’205 patent”), arguing, inter alia, that the ’205 patent is
invalid under § 102 as anticipated by Partial Translation,
Swedish Institute of Computer Science Technical Report
(T93.5), October 1993 (“Magnusson”). The Patent Trial
and Appeal Board (“the Board”) affirmed the examiner’s
rejection of the ’205 patent as anticipated by Magnusson.
Oracle America, Inc. (“Oracle”), the owner of the ’205
patent, appeals the Board’s rejection. For the reasons
explained below, we affirm-in-part, reverse-in-part, va-
cate-in-part, and remand.
                     I. BACKGROUND
                    A. The ’205 Patent
    The Java computer language allows software develop-
ers to create programs that are capable of running on any
device that has a Java virtual machine (“JVM”) installed.
This ensures that, once the program is created, it can run
on a multitude of different devices—e.g., Windows com-
puters, Apple computers, tablets, smartphones. When a
program is written in Java, it is compiled into a series of
virtual machine instructions, also referred to in the
patent as “bytecodes.” Those virtual machine instructions
can be distributed to any device that has a JVM installed.
The JVM installed on each device interprets those virtual
machine instructions to achieve the desired output.
Although this is an advantage for interoperability, the
JVM must interpret the virtual machine instructions
while the program is running. This typically causes the
execution to be slower than a program that is compiled
directly into native machine instructions.
ORACLE AMERICA, INC.   v. GOOGLE, INC.                   3



     To help increase the execution speed of Java-like pro-
grams—programs that use a virtual machine to interpret
virtual machine instructions—the ’205 patent discloses a
method of replacing some virtual machine instructions
with native machine instructions. This allows the JVM to
skip the interpretation step for those instructions and
purports to speed up the execution of the program. Figure
5 is exemplary:
4                       ORACLE AMERICA, INC.   v. GOOGLE, INC.



’205 patent Fig. 5.
    The virtual machine instructions 301 are modified
such that native instructions replace some virtual ma-
chine instructions in the hybrid instructions 309. In this
example, the virtual machine instruction BYTECODE 2 is
replaced by the virtual machine instruction “GO_NATIVE
#N” in the modified virtual machine instructions 303.
When the JVM reaches the new instruction, rather than
interpret BYTECODE 2, it will execute the new
GO_NATIVE instruction. This will cause the execution of
the corresponding native code in the snippet zone 305. In
this example, the snippet executes native machine in-
structions that perform the same function as
BYTECODES 2–5 (as if the JVM had interpreted those
virtual machine instructions). As a result, once the
snippet is executed, the program will continue by inter-
preting BYTECODE 6.
    Claims 1 and 2 are indicative of the issues on appeal:
    1. In a computer system, a method for increasing
    the execution of virtual machine instructions at
    runtime, the method comprising:
    receiving a first virtual machine instruction;
    generating, at runtime, a new virtual machine in-
    struction that represents or references one or
    more native instructions that can be executed in-
    stead of said first virtual machine instruction; and
    executing said new virtual machine instruction
    instead of said first virtual machine instruction.
    2. The method of claim 1, further comprising
    overwriting a selected virtual machine instruction
    with a new virtual machine instruction, the new
    virtual machine instruction specifying execution
    of the at least one native machine instructions.
’205 patent col. 13 ll. 44–58 (emphasis added).
ORACLE AMERICA, INC.   v. GOOGLE, INC.                     5



           B. The Reexamination Proceedings
    On February 17, 2011, Google requested this inter
partes reexamination, arguing, inter alia, that Magnusson
anticipated the claims of the ’205 patent. The examiner
decided that Magnusson presented a substantial new
question of patentability and granted the reexamination.
After amendment and briefing, the examiner rejected all
of the challenged claims as anticipated by Magnusson.
On November 27, 2013, the Board affirmed the examin-
er’s rejection. Although the examiner did not construe
any claims, the Board construed “overwriting” as “the act
of replacing some information in a computer file with new
information, rather than literally writing over an existing
information.” Google, Inc. v. Oracle Am., Inc., No. 2013-
010321, 2013 WL 6217845, at *3 (Patent Tr. & App. Bd.
Nov. 27, 2013) (“Board Decision”). Based on that con-
struction, the Board concluded that Magnusson anticipat-
ed the claims that contained the “overwriting”
limitation—claims 2–4, 15, 16, and 18–21. The Board
also affirmed the examiner’s determination that Magnus-
son was an enabling prior art references for all claims,
including the claims that do not have the “overwriting”
limitation—claims 1 and 8.
    Oracle timely appealed. Because this is an appeal
from a final decision of the Board, we have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A) (2012).
                       II. DISCUSSION
    We review the Board’s legal conclusions, e.g., claim
construction, de novo. 1 In re NTP, Inc., 654 F.3d 1268,


    1   After oral argument in this case, the Supreme
Court decided Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S.Ct. 831 (Jan. 20, 2015), which changed our stand-
ard of review of a district court’s factual determinations in
construing a claim. Because the Board did not base its
6                      ORACLE AMERICA, INC.   v. GOOGLE, INC.



1273 (Fed. Cir. 2011). We review the Board’s factual
findings for “substantial evidence.” In re Morsa, 713 F.3d
104, 109 (Fed. Cir. 2013). Substantial evidence is “less
than the weight of the evidence but more than a mere
scintilla of evidence.” Id. “‘[W]here two different, incon-
sistent conclusions may reasonably be drawn from the
evidence in [the] record, an agency’s decision to favor one
conclusion over the other is the epitome of a decision that
must be sustained upon review for substantial evidence.’”
Id. (quoting In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir.
2002)).
     Whether or not a piece of prior art is enabled is a
question of law based on underlying factual findings. Id.
(citing In re Antor Media Corp., 689 F.3d 1282, 1287, 1292
(Fed. Cir. 2012)).
                 A. Claim Construction
    On reexamination, claims are to be “given their
broadest reasonable interpretation consistent with the
specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed.
Cir. 1984). Claims must be read in light of the specifica-
tion as it would be interpreted to a person having skill in
the art. In re Am. Academy of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (collecting cases).
    Although the examiner did not construe any terms,
the Board construed “overwriting” to mean “the act of
replacing some information in a computer file with new
information, rather than literally writing over an existing
information.” Board Decision, 2013 WL 6217845, at *3.
The Board explained that its construction is warranted
because “only bytecode 2 has been ‘overwritten’ within the


construction in this case on any findings of fact, and
instead only considered intrinsic evidence, we need not
consider whether Teva also changes our standard of
review on appeals from the Board.
ORACLE AMERICA, INC.   v. GOOGLE, INC.                   7



modified [JVM] instructions 303, despite the fact that
bytecodes 3–5 are also being replaced by one or more
native machine instructions.” Id.
    We conclude that the Board’s construction is errone-
ous. Although claims are given their “broadest reasonable
construction” on reexamination, that construction must be
“consistent with the specification.” Yamamoto, 740 F.2d
at 1571. Based on the clear language in the claims and
the specification, “overwriting” means “replacing infor-
mation in a particular memory location with new infor-
mation in that location.”
     In the example from Figure 5—which the Board relies
upon for its construction—although the native machine
instructions execute instead of BYTECODES 2–5, only
BYTECODE 2 is overwritten or replaced by a new virtual
machine instruction—GO_NATIVE #N. The specification
explains that only “the initial virtual machine instruc-
tion”—in this example, BYTECODE 2—is overwritten.
The new virtual machine instruction—GO_NATIVE #N—
replaces the old virtual machine instruction in the same
memory location as the old virtual machine instruction.
’205 patent col. 8 ll. 2–5. This ensures that the virtual
machine will interpret GO_NATIVE #N instead of
BYTECODE 2 when it reaches that instruction. Id. col. 8
ll. 27–30 (“When the interpreter executes the go_native
bytecode, the interpreter will look up the snippet in the
snippet zone specified by the go_native bytecode and then
activate the native machine instructions in the snippet.”).
BYTECODES 3–5, on the other hand, remain in memory,
and are, therefore, not overwritten with new infor-
mation—i.e., a new virtual machine instruction. Indeed,
the specification refers to only BYTECODE 2 as being
overwritten, not BYTECODES 3–5. Id. col. 8 ll. 2–5 (“The
interpreter generates modified Java virtual machine
instructions 303 by overwriting bytecode 2 with a
go_native virtual machine instructions.” (emphasis add-
ed)).
8                       ORACLE AMERICA, INC.   v. GOOGLE, INC.



     This example is consistent with the remainder of the
specification, which consistently discloses that only the
first bytecode in the sequence is actually overwritten or
replaced. Id. col. 7 ll. 27–28; see id. col. 7 ll. 36–40 (“At
step 209, the virtual machine instruction at the beginning
of the selected portion of the function is overwritten with a
new virtual machine instruction that specifies the execu-
tion of one or more native machine instructions of the
snippet.” (emphasis added)). The new go_native instruc-
tion replaces the old bytecode at the same location in
memory so that the virtual machine will interpret the
go_native instruction instead of the old bytecode. See id.
col. 8 ll. 27–30. While this replacement could occur either
by actually writing over the existing information with the
new information or by deleting the existing information
and inserting the new information, the existing and new
information must both appear in the same memory loca-
tion. Id.
    Based on the language in the claims and specification,
accordingly, we reject the Board’s construction and con-
strue “overwriting” to mean “replacing information in a
particular memory location with new information in that
location.” 2 Because the Board’s finding of anticipation
was based on an erroneous claim construction, we vacate
the Board’s finding that Magnusson anticipates the
overwriting claims of the ’205 patent—claims 2–4, 15, 16,




    2   Although we use the term “information” in our
construction, we note that the claims at issue discuss
“overwriting a selected virtual machine instruction with a
new virtual machine instruction.” ’205 patent col. 13 ll.
54–56. Because neither party addresses the additional
limitations in the claims at issue, we do not address them
here. The Board, however, will need to address these
limitations on remand.
ORACLE AMERICA, INC.   v. GOOGLE, INC.                     9



and 18–21—and remand for proceedings consistent with
this opinion.
              B. Enablement of Magnusson
     Because the Board considered enablement based on
an erroneous construction of overwriting, we vacate the
Board’s enablement determination with respect to the
overwriting claims—claims 2–4, 15, 16, and 18–21—and
remand for the Board to make the first determination of
enablement with respect to those claims. Oracle, howev-
er, also argues that Magnusson is not enabled for claims 1
and 8, which do not include the overwriting limitation. In
determining whether a prior art reference is enabled, we
ask “whether a person of ordinary skill in the art could
make or use the claimed invention without undue exper-
imentation based on the disclosure of that particular
document.” Morsa, 713 F.3d at 110 (emphasis in original)
(citing 35 U.S.C. § 112).
    Oracle argues that, because Magnusson does not
explain how the “TRANSLATED” instruction is intro-
duced, it is not enabled with respect to the “generating”
and “representing” steps in claims 1 and 8, respectively.
See ’205 patent col. 13, ll. 48–51 (“[G]enerating, at
runtime, a new virtual machine instruction that repre-
sents or references one or more native instructions that
can be executed instead of said first virtual machine
instruction . . . .”); id. col. 14 ll. 23–25 (“[R]epresenting
said at least one native machine instruction with a new
virtual machine instruction that is executed after the
compiling of the function . . . .”). The examiner, 3 however,



    3   The Board did not provide any analysis of this is-
sue in its opinion; it merely credited the examiner’s
analysis. Board Decision, 2013 WL 6217845, at *5 (“We
have similarly considered the record and we find that the
arguments and evidence submitted by [Oracle] are not
10                      ORACLE AMERICA, INC.   v. GOOGLE, INC.



extensively reviewed the record and found person of
ordinary skill would have known how to introduce
the “TRANSLATED” instruction to meet the generating
and representing steps. J.A. 31–32. Oracle fails to pro-
vide any explanation as to how these findings are not
supported by substantial evidence.
    Oracle’s remaining arguments are also unpersuasive.
Contrary to Oracle’s assertions, the examiner did not base
his finding of enablement on a comparison between the
disclosure in Magnusson and the disclosure in the ’205
patent. Instead, the examiner merely noted that the
specification of the ’205 patent did not even have the level
of detail that Oracle was arguing was necessary in Mag-
nusson. See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir.
1994) (“Rather the Board’s observation that appellant did
not provide the type of detail in his specification that he
now argues is necessary in prior art references supports
the Board’s finding that one skilled in the art would have
known how to implement the features of the references
and would have concluded that the reference disclosures
would have been enabling.”). Furthermore, the mere fact
that the expert witnesses for both sides were persons of
extraordinary skill, does not preclude the examiner’s
finding that a person of ordinary skill would recognize the
errors in Magnusson. Even though Oracle’s expert may
have disagreed, we cannot say that the examiner’s deter-
mination of the knowledge of a person of ordinary skill is
not supported by substantial evidence.
    We therefore conclude that Magnusson is an enabling
reference with respect to claims 1 and 8 and affirm the
Board’s holding that these claims are anticipated.




sufficient to overcome the presumption of enablement
relied upon by the Examiner.”).
ORACLE AMERICA, INC.   v. GOOGLE, INC.                11



                       III. CONCLUSION
    For the foregoing reasons, we reverse the Board’s
construction of “overwriting” and vacate its anticipation
and prior art enablement conclusions based on its incor-
rect construction—for claims 2–4, 15, 16, and 18–21. We
remand this case for proceedings consistent with this
opinion. With respect to claims 1 and 8, which do not
have the “overwriting” limitation, we agree with the
Board that Magnusson is an enabling prior art reference.
We therefore affirm the Board’s holding that these two
claims are anticipated.
    AFFIRMED IN PART, REVERSED IN PART,
        VACATED IN PART, REMANDED
