Case: 19-1443   Document: 98     Page: 1   Filed: 07/17/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

 INTEL CORPORATION, CAVIUM, LLC, DELL, INC.,
                 Appellants

                            v.

                  ALACRITECH, INC.,
                    Cross-Appellant

                   UNITED STATES,
                       Intervenor
                 ______________________

       2019-1443, 2019-1447, 2019-1449, 2019-1450
                ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 01405, IPR2017-01735, IPR2018-00336.
                  ______________________

                 Decided: July 17, 2020
                 ______________________

     GARLAND STEPHENS, Weil, Gotshal & Manges LLP,
 Houston, TX, for appellant Intel Corporation. Also repre-
 sented by MELISSA LARUE HOTZE; GREGORY SILBERT, New
 York, NY; AMANDA BRANCH, ANNE MARIE CAPPELLA, Red-
 wood Shores, CA.

    KARINEH KHACHATOURIAN, Rimon, P.C., Palo Alto, CA,
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 2                             INTEL CORP.   v. ALACRITECH, INC.



 for appellant Cavium, LLC. Also represented by NIKOLAUS
 A. WOLOSZCZUK.

     KIRK T. BRADLEY, Alston & Bird LLP, Charlotte, NC,
 for appellant Dell, Inc. Also represented by EMILY
 CHAMBERS WELCH, Atlanta, GA; BRADY COX, Dallas, TX.

     SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
 Sullivan, LLP, New York, NY, for cross-appellant. Also
 represented by JOSEPH M. PAUNOVICH, LLP, Los Angeles,
 CA.

     MELISSA N. PATTERSON, Appellate Staff, Civil Division,
 United States Department of Justice, Washington, DC, for
 intervenor. Also represented by COURTNEY DIXON, SCOTT
 R. MCINTOSH, ETHAN P. DAVIS; THOMAS W. KRAUSE,
 FARHEENA YASMEEN RASHEED, Office of the Solicitor,
 United States Patent and Trademark Office, Alexandria,
 VA.
                 ______________________

     Before MOORE, CHEN, and STOLL, Circuit Judges.
 MOORE, Circuit Judge.
     Alacritech, Inc. sued Intel Corporation, Cavium, LLC
 and Dell, Inc. (collectively, Appellants), alleging infringe-
 ment of claims of U.S. Patent No. 7,124,205. Intel filed a
 petition seeking inter partes review of claims 3, 9, 10, 16,
 22, 24–33, 35 and 36 of the ’205 patent. The Board insti-
 tuted review and subsequently joined Cavium and Dell as
 petitioners. The Board issued a final written decision hold-
 ing that Appellants had proven claims 3, 9, 10, 16, 22, 24–
 30, 35 and 36 would have been unpatentable as obvious,
 but had not proven the unpatentability of claims 31–33.
 Appellants appeal the Board’s holding with respect to
 claims 31–33. Alacritech cross-appeals the Board’s deci-
 sion holding the remaining challenged claims unpatentable
 as obvious.     We have jurisdiction under 28 U.S.C.
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 INTEL CORP.   v. ALACRITECH, INC.                           3



 § 1295(a)(4)(A). Because the Board’s decision was not er-
 roneous and substantial evidence supports its findings, we
 affirm.
                           DISCUSSION
      The ’205 patent is directed to a system and method for
 accelerating data transfer between a network and storage
 unit. ’205 patent at 3:42–43. The claimed invention recites
 an interface device that is connected to a host computer
 and performs portions of network communications, includ-
 ing network layer and transport layer processing. Id. at
 3:40–51. Claim 3 and claim 1 from which it depends are
 illustrative and recite:
    1. An apparatus comprising:
    a host computer having a protocol stack and a des-
    tination memory, the protocol stack including a
    session layer portion, the session layer portion be-
    ing for processing a session layer protocol; and
    a network interface device coupled to the host com-
    puter, the network interface device receiving from
    outside the apparatus a response to a solicited read
    command, the solicited read command being of the
    session layer protocol, performing fast-path pro-
    cessing on the response such that a data portion of
    the response is placed into the destination memory
    without the protocol stack of the host computer per-
    forming any network layer processing or any
    transport layer processing on the response.
    3. The apparatus of claim 1, wherein the session
    layer protocol is ISCSI.
     The Board held claims 3, 9, 10, 16, 22, 24–30, 35 and
 36 unpatentable as obvious in view of the combination of
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 4                            INTEL CORP.   v. ALACRITECH, INC.



 Thia, 1 Satran I, 2 and Satran II. 3 We review the Board’s
 legal determinations de novo and its factual findings for
 substantial evidence. In re Van Os, 844 F.3d 1359, 1360
 (Fed. Cir. 2017). “Obviousness is a question of law based
 on underlying facts,” including the scope and content of the
 prior art. Arctic Cat Inc. v. Bombardier Recreational Prods.
 Inc., 876 F.3d 1350, 1358 (Fed. Cir. 2017).
                 I. Alacritech’s Cross-Appeal
     Alacritech challenges the Board’s findings that Thia
 discloses offloading network layer and transport layer pro-
 cessing from the host computer and the Board’s motivation
 to combine and reasonable expectation of success anal-
 yses. 4 Substantial evidence supports the Board’s findings.
                A. Network Layer Offloading
     The Board found that Thia discloses offloading network
 layer functionality from the host computer as claimed.


     1   Thia, Y.H. and Woodside, C.M., A Reduced Opera-
 tion Protocol Engine (ROPE) for a Multiple-Layer Bypass
 Architecture, in PROTOCOLS FOR HIGH SPEED NETWORKS IV
 224 (G. Neufeld & M. Ito eds., 1995) (Thia).
     2   J. Satran et al., SCSI/TCP (SCSI over TCP), Feb.
 2000 (Satran I).
     3   J. Satran et al., iSCSI (Internet SCSI), July 2000
 (Satran II). The Board further relied on U.S. Patent No.
 5,894,560 (Carmichael) to support its holding that depend-
 ent claims 24–26 would have been obvious. Because Alac-
 ritech only challenges the Board’s decision as it relates to
 Thia, Satran I, and Satran II, we do not separately con-
 sider Carmichael.
     4   Alacritech’s appeal briefing also included a chal-
 lenge to the appointment of the Administrative Patent
 Judges on the Board under the Appointments Clause of the
 Constitution, but this challenge has since been withdrawn
 and waived. See Dkt. 82.
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 J.A. 6. It found that a person of ordinary skill in the art
 would understand Thia’s disclosure of bypassing “multiple
 layers” to include offloading network layer processing.
 J.A. 7. Alacritech contends that Thia’s disclosure of of-
 floading network layer functionality is merely conceptual
 and therefore does not provide a skilled artisan with a rea-
 sonable expectation of success. We do not agree.
      Thia discloses a bypass stack for offloading multiple
 layers from a standard protocol stack on the host computer.
 J.A. 3294–25, 3297. It depicts the architecture of the by-
 pass stack, which is “practical in terms of chip complexity
 and area, using current gate array technology.” J.A. 3294–
 27, J.A. 3300. Although Thia describes the design of the
 bypass stack with particular reference to offloading session
 and transport layer processing, its teachings are not so lim-
 ited. See EWP Corp. v. Reliance Universal Inc., 755 F.2d
 898, 907 (Fed. Cir. 1985) (“A reference must be considered
 for everything it teaches by way of technology and is not
 limited to the particular invention it is describing and at-
 tempting to protect.”). For example, Thia suggests that the
 increased processing speed and efficiency achieved using
 multi-layer offloading are “increased further in cases
 where some layers, like the network and application layers,
 have been further subdivided into sublayers.” J.A. 3297
 (emphasis added). Moreover, Thia expressly contemplates
 “implementing an entire service through all layers for cer-
 tain cases,” thereby “simplif[ying] the interface between
 the host and the adaptor chip.” J.A. 3295. Accordingly,
 substantial evidence supports the Board’s finding that
 Thia discloses offloading network layer functionality with
 a reasonable expectation of success. See Soft Gel Techs.,
 Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1342 (Fed.
 Cir. 2017) (holding that obviousness requires only a rea-
 sonable expectation of success, not “absolute predictabil-
 ity”).
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 6                            INTEL CORP.   v. ALACRITECH, INC.



                B. Transport Layer Offloading
      The Board further found that Thia discloses offloading
 transport layer processing from the host computer. J.A. 8.
 It found that “one of skill in the art would have understood
 that when the bypass stack of Thia is implemented for the
 transport layer, as Thia discloses, the entire transport
 layer would have been bypassed.” J.A. 8–9. Alacritech con-
 tends that substantial evidence does not support the
 Board’s finding because two embodiments in Thia offload
 only a portion of the transport layer processing. We do not
 agree.
      Thia expressly discloses bypassing the entire transport
 layer using a bypass stack. It describes the design of its
 bypass stack “for the OSI Session and Transport layer” and
 concludes that it is “feasible to implement the bypass stack
 (at least for the transport and session layers).” J.A. 3294,
 3306. Aside from Thia’s disclosure that “there is no seg-
 mentation/reassembly within the bypass path,” Alacritech
 has not identified any transport layer functionality that
 would not be offloaded from the host computer in any of
 Thia’s embodiments. And as Dr. Lin testified, a person of
 ordinary skill in the art would have understood Thia’s dis-
 closure of “no segmentation/reassembly within the bypass
 path” to address lower-layer reassembly, not transport
 layer reassembly. J.A. 5657–58 ¶ 14. Dr. Lin therefore
 concluded “Thia discloses reassembly at the transport
 layer.” J.A. 5658–59 ¶ 15. Moreover, as discussed above,
 Thia discloses bypassing the entire protocol stack, includ-
 ing the transport layer, in certain cases. J.A. 3295. Ac-
 cordingly, substantial evidence supports the Board’s
 finding that Thia discloses offloading the entire transport
 layer from the host computer.
 C. Motivation to Combine and Reasonable Expectation of
                        Success
    Alacritech contends that the Board’s decision must be
 vacated for failure to expressly find that a person of
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 INTEL CORP.   v. ALACRITECH, INC.                           7



 ordinary skill in the art would have been motivated to com-
 bine the asserted references with a reasonable expectation
 of success. We do not agree. When considering whether a
 claim would have been obvious in light of a combination of
 multiple references, the Board “consider[s] whether a [per-
 son of ordinary skill in the art] would have been motivated
 to combine the prior art to achieve the claimed invention
 and whether there would have been a reasonable expecta-
 tion of success in doing so.” In re Warsaw Orthopedic, Inc.,
 832 F.3d 1327, 1333 (Fed. Cir. 2016). We have explained
 that the Board must “articulate a satisfactory explanation
 for its action including a rational connection between the
 facts found and the choice made.” In re Nuvasive, 842 F.3d
 1376, 1382 (Fed. Cir. 2016) (quoting Motor Vehicle Mfrs.
 Assoc. v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43
 (1983)).
     The Board found that Appellants provided “sufficient
 reasons, based on evidence of record, to support the conclu-
 sion that the [asserted] combination would have been obvi-
 ous.” J.A. 9. The Board further stated that it was “not
 persuaded by [Alacritech’s] argument for at least the rea-
 sons set forth by [Appellants]” and cited to pages of Appel-
 lants’ reply brief that discuss the “Motivation to Combine”
 sections of Appellants’ petition. Id. While “[u]ndoubtedly,
 it would be preferable for the [Board] to provide its own
 reasoned explanation,” we can discern that the Board
 found the cited passages from Appellant’s petition persua-
 sive. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d
 1034, 1045 (Fed. Cir. 2017). “This is sufficient, if mini-
 mally, to explain the connection between the [Board]’s fac-
 tual findings and legal conclusion” of obviousness. Id. We
 understand the Board as having expressly adopted as per-
 suasive petitioner’s arguments regarding motivation to
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 8                             INTEL CORP.   v. ALACRITECH, INC.



 combine and reasonable expectation of success. 5 The
 Board set forth the specific pages of Appellants’ briefing
 with which it agreed. We therefore decline to overturn the
 Board’s decision.
                    II. Appellants’ Appeal
      Claims 31–33 of the ’205 patent recite a “means cou-
 pled to the host computer” for (1) “receiving from outside
 the apparatus a response to an iSCSI read request com-
 mand,” (2) “fast-path processing a portion of the response,”
 (3) “receiving a subsequent portion of the response,” and (4)
 “slow-path processing the subsequent portion.” ’205 patent
 at claim 31. Appellants argued before the Board that
 claims 31–33 are invalid as indefinite under 35 U.S.C.
 § 112(6) because the ’205 patent “fails to disclose any struc-
 ture, coupled to the host computer, that performs all four
 functions.” J.A. 137. A majority of the Board panel agreed
 that the specification fails to disclose sufficient structure
 but declined to invalidate claims 31–33 as indefinite, be-
 cause the Board in an inter partes review “do[es] not con-
 sider issues of validity under 35 U.S.C. § 112.” J.A. 17–18. 6
 Instead, the Board held that Appellants failed to propose a
 construction identifying the structure for the claimed func-
 tion as required under 37 C.F.R. §§ 42.104(b)(3)–(4) and
 therefore failed to prove that claims 31–33 are


     5   In view of the Board’s characterization of the as-
 serted combination as “the use of a particular known pro-
 tocol [] in a known system that uses such known
 protocols . . . in a known way to achieve a known result,”
 J.A. 10, we decline Alacritech’s invitation to find that the
 Board disclaimed its obligation to find a motivation to com-
 bine. See Warsaw, 832 F.3d at 1333.
     6   The dissent concluded that the ’205 patent dis-
 closes sufficient structure for performing the recited func-
 tionality. J.A. 28–33. It further concluded that claims 31–
 33 are unpatentable as obvious. J.A. 33–34.
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 INTEL CORP.   v. ALACRITECH, INC.                           9



 unpatentable as obvious. J.A. 18. We review the Board’s
 interpretation of its statutory authority de novo. See Forest
 Grp., Inc. v. Bon Tool Co., 590 F.3d 1295, 1301 (Fed. Cir.
 2009). We review decisions related to compliance with the
 Board’s regulations for an abuse of discretion. Ericsson
 Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379
 (Fed. Cir. 2018).
     Appellants contend that the Board had sufficient infor-
 mation to determine the patentability of claims 31–33.
 They argue that the petition identified the structures cor-
 responding to the recited functions and mapped each struc-
 ture to disclosures in the prior art. They further argue that
 because Alacritech made no argument to distinguish
 claims 31–33 from other challenged claims of similar scope,
 these claims should similarly be held unpatentable as ob-
 vious. Appellants’ contentions are unavailing.
     In an inter partes review, where a challenged claim con-
 tains a means-plus-function limitation, the petition “must
 identify the specific portions of the specification that de-
 scribe the structure, material or acts corresponding to each
 claimed function.” 37 C.F.R. § 42.104(b)(3); see also id.
 § 42.104(b)(4) (requiring that the petition identify where
 equivalent structure is found in the asserted references).
 Appellants’ petition failed to do so. In fact, Appellants
 acknowledged before the Board that they “did not advance
 a specific construction[] identifying a concrete correspond-
 ing structure[] for the ‘means’ term” recited in claims 31–
 33. J.A. 940. Instead, Appellants asserted that “at best,
 the ’205 patent discloses a network adaptor that performs”
 three of the four recited functions. That Alacritech did not
 distinguish claims 31–33 from other challenged claims
 does not relieve Appellants of their affirmative duty to
 identify specific structure corresponding to the claimed
 functions both in the patent and the asserted references.
 Therefore, we conclude the Board did not abuse its discre-
 tion in determining that Intel failed to comply with the re-
 quirements of 37 C.F.R. §§ 42.104(b)(3)–(4).
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 10                             INTEL CORP.   v. ALACRITECH, INC.



      Appellants alternatively argue that the Board should
 have held the claims unpatentable as indefinite. They ar-
 gue that 35 U.S.C. § 318(a) requires the Board to issue a
 final written decision addressing the patentability of all
 claims in an instituted inter partes review, even if for rea-
 sons outside the statutory grounds of institution. We do
 not agree. The Board cannot invalidate a patent as indefi-
 nite in an inter partes review proceeding. See, e.g., 35
 U.S.C. § 311(b) (limiting the scope of inter partes review to
 “ground[s] that could be raised under section 102 or 103.”).
 Section 318(a) requires that the Board issue a final written
 decision with respect to the patentability of all challenged
 claims. See 35 U.S.C. § 318(a). It does not grant the Board
 authority to act outside its statutory limits by holding a pa-
 tent claim unpatentable as indefinite under § 112. See
 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2132, 2141–42
 (2016). Nor does the Supreme Court’s decision in SAS
 grant the Board such authority. See SAS Ins., Inc. v. Iancu,
 138 S. Ct. 1348, 1354 (2018) (“Nothing suggests the Direc-
 tor enjoys a license to depart from the petition and institute
 a different inter partes review of his own design.”). Accord-
 ingly, we hold the Board properly determined that it lacked
 legal authority to hold the claims unpatentable as indefi-
 nite. As the Board itself recognizes, it does not have legal
 authority to decide indefiniteness in the context of an inter
 partes review. Thus, the Board’s agreement that the spec-
 ification does not disclose sufficient structure is outside the
 scope of its statutory authority and is therefore not binding
 and will not be reviewed by this court.
                         CONCLUSION
      We have considered the parties’ remaining arguments
 and find them unpersuasive. For the foregoing reasons, we
 affirm the Board’s decision.
                         AFFIRMED
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 INTEL CORP.   v. ALACRITECH, INC.                          11



                              COSTS
 No costs.
