Case: 18-2308          Document: 87           Page: 1       Filed: 03/17/2020




           NOTE: This disposition is nonprecedential.


    United States Court of Appeals
        for the Federal Circuit
                        ______________________

             INTELLECTUAL VENTURES I LLC,
                       Appellant

                                        v.

                     UNIFIED PATENTS, LLC,
                             Appellee
                      ______________________

                              2018-2308
                        ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2016-
 01643.

 ---------------------------------------------------------------------------------

             INTELLECTUAL VENTURES I LLC,
                       Appellant

                                        v.

 EMC CORPORATION, LENOVO (UNITED STATES)
           INC., NETAPP, INC.,
                  Appellees
           ______________________

                              2019-1352
                        ______________________
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 2       INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC




     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00429.
                  ______________________

                  Decided: March 17, 2020
                  ______________________

    PAUL A. STEWART, Knobbe, Martens, Olson & Bear,
 LLP, Irvine, CA, argued for appellant. Also represented by
 EDWARD M. CANNON.

     MARK CHRISTOPHER FLEMING, Wilmer Cutler Pickering
 Hale and Dorr LLP, Boston, MA, argued for all appellees.
 Appellee EMC Corporation also represented by CYNTHIA D.
 VREELAND, DANA OLCOTT BURWELL, PETER M. DICHIARA;
 THEODOROS KONSTANTAKOPOULOS, New York, NY; DAVID
 P. YIN, Washington, DC; THOMAS A. BROWN, Dell Inc., Hop-
 kington, MA.

    PETER J. AYERS, Law Office of Peter J. Ayers, Austin,
 TX, for appellee Unified Patents, LLC. Also represented
 by ROSHAN MANSINGHANI, JONATHAN RUDOLPH KOMINEK
 STROUD, Unified Patents Inc., Washington, DC,

     CHRISTOPHER CENTURELLI, K&L Gates LLP, Boston,
 MA, for appellees Lenovo (United States) Inc., NetApp, Inc.
 Also represented by BENJAMIN EDWARD WEED, Chicago, IL.
                  ______________________

     Before MOORE, REYNA, and TARANTO, Circuit Judges.
 TARANTO, Circuit Judge.
     Intellectual Ventures I LLC (“IV”) owns U.S. Patent
 No. 6,775,745, which describes methods for caching data in
 a computer. Certain claims of the patent are the subject of
 two inter partes reviews under 35 U.S.C. §§ 311–319—one
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 INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC       3



 initiated by Unified Patents, LLC (formerly known as Uni-
 fied Patents, Inc.), the other initiated by EMC Corp.,
 Lenovo (United States) Inc., and NetApp, Inc. (collectively,
 “EMC”). In those reviews, the Patent Trial and Appeal
 Board ultimately determined that claims 1, 2, 4–6, 12, and
 14 of the ’745 patent are unpatentable. Unified Patents
 Inc. v. Intellectual Ventures I LLC, IPR2016-01643, 2018
 WL 1511821 (P.T.A.B. Mar. 26, 2018); EMC Corp. v. Intel-
 lectual Ventures I LLC, IPR2017-00429, 2018 WL 5905861
 (P.T.A.B. Nov. 8, 2018).
     IV appeals, arguing that the Board erred in construing
 certain claim limitations and that, under proper construc-
 tions, those limitations are not taught by the cited prior-
 art references. We affirm without reaching all of IV’s con-
 tentions. Notably, as to the “scanning” limitation found in
 claim 6, we conclude that substantial evidence supports the
 Board’s finding that the pertinent reference discloses the
 limitation even under IV’s construction, and we therefore
 do not decide IV’s challenge to the Board’s construction of
 that limitation.
                               I
      The ’745 patent is titled “Method and Apparatus for
 Hybrid Data Caching Mechanism.” “Caching” is the pro-
 cess of storing some data files in cache memory, from which
 data may be retrieved more quickly than from a hard disk.
 ’745 patent, col. 1, lines 11–20; id., col. 2, lines 1–3. But
 cache memory is limited, so files stored in the cache often
 need to be discarded to make space for new files. Id., col.
 2, lines 11–17. The ’745 patent purports to offer an im-
 proved method for choosing which files to discard. Id., col.
 2, lines 14–30. The choice is based on the recency and fre-
 quency of a file’s use. Id., col. 2, lines 30–34.
     Independent claim 4 and dependent claim 6 are repre-
 sentative of the issues and claims on appeal. Claim 4 re-
 cites:
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 4       INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC



         4. A caching method for enhancing system
     performance of a computer, comprising:
        reading an extended segment of data in re-
     sponse to a request from an operating system;
         storing copies of files associated with the ex-
     tended segment in a cache;
         assigning frequency factors to each of the files
     stored in the cache, the frequency factors indicating
     how often each of the corresponding files are re-
     quested by the operating system;
         scanning the frequency factors, the scanning
     being performed in response to a target capacity of
     the cache being attained;
        identifying a least frequently and least recently
     used file; and
         eliminating the least frequently and least re-
     cently used file to liberate capacity of the cache.
 ’745 patent, col. 12, line 54, through col. 13, line 4 (empha-
 sis added). Claim 6, using “LRU” to mean “least recently
 used” and “MRU” to mean “most recently used,” recites:
         6. The method as recited in claim 4, wherein
     the scanning the frequency factors further in-
     cludes:
         scanning from a frequency factor corresponding
     to a LRU file to a frequency factor corresponding to
     a MRU file.
 Id., col. 13, lines 8–11 (emphasis added).
     In the inter partes review initiated by Unified Patents,
 the Board determined that claims 1, 2, 4, 12, and 14 are
 unpatentable, relying on Ramakrishna Karedla et al.,
 Caching Strategies to Improve Disk System Performance,
 Computer, March 1994, at 38 (Karedla); U.S. Patent No.
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 INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC       5



 6,738,865 (Burton); and another reference not at issue. In
 the inter partes review initiated by EMC, the Board deter-
 mined that claims 4–6 are unpatentable based on Karedla
 and Burton. It also determined unpatentability based on
 Donghee Lee et al., Implementation and Performance Eval-
 uation of the LRFU Replacement Policy, 23 Proc. Euromi-
 cro Conf. New Frontiers of Info. Tech. 106 (1997) (Lee) and
 other references.
     IV timely appealed the Board’s decisions. We have ju-
 risdiction under 28 U.S.C. § 1295(a)(4)(A).
                               II
      We review a claim construction de novo and any under-
 lying factual findings based on extrinsic evidence for sub-
 stantial evidence, including where, as is undisputed here,
 the claim construction is governed by the broadest-reason-
 able-interpretation standard. Teva Pharmaceuticals USA,
 Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–41 (2015); In re
 Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–80
 (Fed. Cir. 2015). What a piece of prior art teaches presents
 a question of fact, and the Board’s answer to the question
 is reviewed for substantial-evidence support. See, e.g., Ari-
 osa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359,
 1364 (Fed. Cir. 2015). “Substantial evidence review asks
 ‘whether a reasonable fact finder could have arrived at the
 agency’s decision’ and requires examination of the ‘record
 as a whole, taking into account evidence that both justifies
 and detracts from an agency’s decision.’” Intelligent Bio-
 Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
 1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d
 1305, 1312 (Fed. Cir. 2000)).
                               A
     With respect to all the claims at issue except claim 6,
 IV does not dispute that the Board’s unpatentability ruling
 must be affirmed if we uphold the Board’s claim construc-
 tion of the “frequency factor” limitation, italicized in the
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 6       INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC



 quotation of claim 4 above. Seeking the broadest reasona-
 ble interpretation, the Board construed “frequency factor”
 to mean “an indicator based on frequency of use or access.”
 Unified Patents, 2018 WL 1511821, at *7; EMC, 2018 WL
 5905861, at *7. IV argues that the Board should have con-
 strued the term to mean “the frequency factors showing,
 with a fair degree of certainty, how often each of the corre-
 sponding files are requested by the operating system.” Ap-
 pellant’s Opening Br. 29.
     We agree with the Board. The ordinary meaning of “in-
 dicating,” on which IV relies, is not confined to conveying
 frequency with the “fair degree of certainty” urged by IV.
 Moreover, the specification describes embodiments in
 which the frequency factors may not show frequency of ac-
 cess with “a fair degree of certainty.” Unified Patents, 2018
 WL 1511821, at *6–7. We therefore determine that the
 Board’s construction of “frequency factor” is the broadest
 reasonable one. This determination is enough to affirm the
 unpatentability of claims 1, 2, 4, 5, 12, and 14.
                              B
      Claim 6 recites “scanning from a frequency factor cor-
 responding to a LRU [least recently used] file to a fre-
 quency factor corresponding to a MRU [most recently used]
 file.” ’745 patent, col. 13, lines 10–11. The Board construed
 that limitation to encompass mere “scanning in a direction
 that proceeds from the LRU file towards the MRU file.”
 EMC, 2018 WL 5905861, at *8 (emphasis added). IV disa-
 grees, arguing that the broadest reasonable interpretation
 of the claim 6 limitation requires scanning “every fre-
 quency factor from the LRU file to the MRU file, inclusive.”
 Appellant’s Opening Br. 77.
     We do not resolve that dispute. The Board found that,
 even under IV’s narrower interpretation, Burton discloses
 the limitation. EMC, 2018 WL 5905861, at *14–15. Sub-
 stantial evidence supports that finding, making it unnec-
 essary to address the proper claim construction.
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 INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC      7



     Burton teaches scanning the last 1024 blocks in its
 LRU list and then evicting the 32 blocks with the lowest
 “LRU rank.” J.A. 3059. EMC’s expert, Dr. Kubiatowicz,
 testified that in “caches of this scale (under 1024 blocks),
 there is no dispute that Burton would scan ‘all files from
 the LRU file to the MRU file, inclusive.’” J.A. 3806 (reply
 declaration). That evidence supports the finding that Bur-
 ton discloses scanning every frequency factor from LRU to
 MRU—as IV’s construction requires—for caches with 1024
 or fewer blocks. EMC, 2018 WL 5905861, at *15.
     IV argues that Burton does not disclose a cache having
 1024 or fewer blocks. But we see no basis on which the
 Board was required not to credit Dr. Kubiatowicz’s con-
 trary testimony. IV also argues that EMC failed to show
 that Burton discloses scanning in the direction from LRU
 to MRU. Appellant’s Opening Br. 82. But IV did not
 properly present this argument before the Board. Alt-
 hough IV made the point in demonstratives supporting its
 oral argument to the Board, J.A. 4705–06, it is impermis-
 sible to present new arguments at the oral hearing, Office
 Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
 (Aug. 14, 2012). Thus, IV has forfeited this argument.
     IV has likewise forfeited the argument that it was im-
 proper for the Board to consider Dr. Kubiatowicz’s asser-
 tion about Burton and the 1024-block cache in his reply
 declaration. Before the Board, IV did not contest the
 Board’s ability to rely on that assertion—either in a motion
 to strike, in its observations on cross-examination of Dr.
 Kubiatowicz, or during the oral hearing—even though IV
 challenged the propriety of other reply arguments. See J.A.
 2372–80; J.A. 2700–16. It is generally incumbent on the
 party complaining of some procedural violation to raise the
 issue to the Board. See Belden Inc. v. Berk-Tek LLC, 805
 F.3d 1064, 1082 (Fed. Cir. 2015). We see no basis for an
 exception here.
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 8       INTELLECTUAL VENTURES I LLC   v. UNIFIED PATENTS LLC



      The Board’s finding that Burton teaches claim 6’s
 “scanning” limitation even under IV’s narrower construc-
 tion suffices to support the determination of unpatentabil-
 ity of claim 6. We do not need to decide whether the Board’s
 construction of that limitation is unreasonable. Because
 IV appealed the Board’s construction but we do not reach
 the issue, the proper construction of the limitation is open
 for fresh consideration, without issue preclusion, in other
 proceedings. See, e.g., Yingbin-Nature (Guangdong) Wood
 Industry Co., Ltd. v. International Trade Comm'n, 535 F.3d
 1322, 1334 (Fed. Cir. 2008); Masco Corp. v. United States,
 303 F.3d 1316, 1329–1331 (Fed. Cir. 2002).
                              C
      IV also challenges the Board’s construction of “a least
 frequently and least recently used file.” We do not reach
 that construction challenge either. That issue affects only
 the Board’s determination that claims 4–6 are unpatenta-
 ble over Lee. But for the reasons we have discussed, we
 affirm the Board’s determination that those claims are un-
 patentable on independent grounds.
                              III
     For the foregoing reasons, we affirm the Board’s deci-
 sions.
     Costs to the appellee.
                        AFFIRMED
