Case: 19-1865   Document: 66     Page: 1   Filed: 07/02/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

         SOUND VIEW INNOVATIONS, LLC,
                   Appellant

                            v.

                      HULU, LLC,
                       Appellee

                   UNITED STATES,
                       Intervenor
                 ______________________

                  2019-1865, 2019-1867
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2018-
 00017, IPR2018-00366.

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

         SOUND VIEW INNOVATIONS, LLC,
                   Appellant

                            v.

      UNIFIED PATENTS, LLC, F/K/A UNIFIED
                PATENTS, INC.,
                   Appellee
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 2                SOUND VIEW INNOVATIONS, LLC   v. HULU, LLC



                   UNITED STATES,
                       Intervenor
                 ______________________

                        2019-1866
                 ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2018-
 00096.
                  ______________________

                  Decided: July 2, 2020
                 ______________________

     ALAN KELLMAN, Desmarais LLP, New York, NY, for ap-
 pellant. Also represented by KEVIN KENT MCNISH.

     MARK CHRISTOPHER FLEMING, Wilmer Cutler Pickering
 Hale and Dorr LLP, Boston, MA, for appellee Hulu, LLC.
 Also represented by ELIZABETH BEWLEY; DAVID LANGDON
 CAVANAUGH, Washington, DC.

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

     DENNIS FAN, Appellate Staff, Civil Division, United
 States Department of Justice, Washington, DC, for inter-
 venor. Also represented by SCOTT R. MCINTOSH, JOSEPH H.
 HUNT; THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED,
 Office of the Solicitor, United States Patent and Trade-
 mark Office, Alexandria, VA.
                  ______________________

      Before LOURIE, DYK, and CHEN, Circuit Judges.
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 SOUND VIEW INNOVATIONS, LLC    v. HULU, LLC                   3



 DYK, Circuit Judge.
     Sound View Innovations, LLC (“Sound View”) appeals
 the Patent Trial and Appeal Board (“Board”) decisions
 holding claims 1–3 and 8–10 of U.S. Patent No. 6,125,371
 (“the ’371 patent”) unpatentable as obvious. We affirm as
 to IPR2018-00096 and dismiss as moot as to IPR2018-
 00017 and IPR2018-00366.
                         BACKGROUND
      The ’371 patent, owned by Sound View, concerns data-
 base management systems that monitor and optimize the
 efficiency of a database. Database systems typically in-
 clude a database manager that manages interactions be-
 tween application tasks and the database.               These
 interactions involve “transactions” (e.g., accesses, retriev-
 als, modifications, indices, copies, etc.) directed to infor-
 mation in the database. “Read-only transactions” do not
 modify the database while “update transactions” do. Dif-
 ferent transactions can conflict with each other if they at-
 tempt to access the same data record at the same time. To
 avoid a conflict, for example, a “read-only transaction” that
 requires a simple view of a data record may have to wait
 until the completion of an “update transaction” that takes
 time to modify that data record. “Contemporary control
 methodologies reduce conflicts between update and read-
 only transactions” by giving the latter “old” views of certain
 data records in the database. ’371 patent, col. 2, ll. 23–27.
 “This is commonly referred to as multi-versioning, in which
 [database managers] retain or archive multiple versions of
 recently updated data records for use by read-only transac-
 tions.” Id. at col. 2, ll. 27–30.
       In this context, the ’371 patent is directed to reclaiming
 memory space that is no longer used in multi-versioning
 databases. The ’371 patent states that there was “a need
 . . . in the art for an efficient means of reclaiming main
 memory space no longer used by such multi-version tech-
 niques.” Id. at col. 2, ll. 48–50. It discloses that the
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 4                 SOUND VIEW INNOVATIONS, LLC    v. HULU, LLC



 memory space can be reclaimed by “aging” (deleting) the
 old version when “a given data record version is no longer
 needed by current (or future) transactions.” Id. at col. 4,
 ll. 32–35.
     Independent claim 1 of the ’371 patent recites:
     1. A processing system for use with a database of
     data records, said database stored in a memory,
     comprising:
         a time stamping controller that assigns a
         time stamp to transactions to be performed
         on said database;
         a versioning controller that creates multi-
         ple versions of ones of said data records af-
         fected by said transactions that are update
         transactions; and
         an aging controller that monitors a meas-
         urable characteristic of said memory and
         deletes ones of said multiple versions of
         said ones of said data records in response
         to said time stamp and said measurable
         characteristic thereby to increase a capac-
         ity of said memory.
 Id. at col. 9, ll. 10–22 (emphasis added). Independent
 claim 8 is a method claim that recites similar limitations. 1
 These two independent claims are directed to the idea of
 monitoring a measurable characteristic of the memory that
 stores data records and deleting certain versions of data
 records in the database to increase the capacity of the
 memory.



     1    The ’371 patent has three independent claims:
 claims 1, 8, and 15. Independent claim 15 is not a subject
 of this appeal.
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 SOUND VIEW INNOVATIONS, LLC    v. HULU, LLC                  5



     Hulu, LLC and Unified Patents, LLC (collectively, “ap-
 pellees”) filed three petitions for inter partes review (“IPR”)
 of the ’371 patent, challenging claims 1–3 and 8–10 as ob-
 vious. In its final written decisions, the Board held
 claims 1–3 and 8–10 unpatentable as obvious in light of
 prior art. Sound View now appeals. We have jurisdiction
 pursuant to 28 U.S.C. § 1295(a)(4)(A).
                          DISCUSSION
      “We review the Board’s factual findings for substantial
 evidence and review its legal conclusions de novo.” In re
 Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir.
 2015). We thus review de novo the Board’s interpretations
 of the patent claims and determinations based on evidence
 intrinsic to the patent. Williamson v. Citrix Online, LLC,
 792 F.3d 1339, 1346 (Fed. Cir. 2015).
                                I
     In IPR2018-00096, the Board held claims 1–3 and 8–10
 obvious in view of Philip A. Bernstein et al., Concurrency
 Control and Recovery in Database Systems (1987) (“Bern-
 stein”). We focus our attention on this decision, which cov-
 ered all claims on appeal. 2
     Bernstein is a textbook directed to database systems
 that create multiple versions of a “data item” and use
 timestamps to label each version. Bernstein discloses that
 “[a]n obvious cost of maintaining multiple versions is stor-
 age space” and thus “versions must periodically be purged
 or archived” to “control this storage requirement.”
 J.A. 1522–23.



     2   In IPR2018-00096, the Board also held those
 claims obvious in view of Bernstein and Rubin (U.S. Patent
 No. 5,155,842). We need not reach this alternative ground
 because we affirm the Board’s decision based on Bernstein
 alone.
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 6                  SOUND VIEW INNOVATIONS, LLC   v. HULU, LLC



      The Board found that Bernstein taught each limitation
 in claims 1–3 and 8–10. On appeal, Sound View challenges
 the Board’s finding with respect to only the “monitor[ing] a
 measurable characteristic of said memory” limitation re-
 cited in the claims. Sound View argues that Bernstein does
 not disclose this “monitoring” limitation. We disagree.
      Bernstein discloses that when the data manager
 “run[s] out of space for storing versions” of a data item then
 “old versions . . . must be deleted.” J.A. 1533. The Board
 thus concluded that Bernstein teaches “monitoring a meas-
 urable characteristic of the memory,” because whether the
 storage “run[s] out of space” is “a measure of the ‘current
 utilization’ of memory,” and Bernstein taught “determining
 that space in [the] memory has ‘run out.’” J.A. 60. We
 agree with the Board’s conclusion that “[a] determination
 that memory is full is a determination as to the current
 utilization of the memory” and thus Bernstein satisfied the
 “monitoring” limitation. J.A. 59–60.
      Even if Bernstein determined that memory space has
 run out based on error codes returned from writing or
 memory allocation commands, contrary to Sound View’s as-
 sertion, this itself constitutes techniques for “monitor[ing]
 a measurable characteristic of [the] memory” to determine
 that the memory space has run out. See ’371 patent, col. 9,
 ll. 17–18, 52.
                               II
     Sound View argues in the alternative that the claims
 would not have been obvious for lack of a reasonable expec-
 tation of success. The Board found that “a person of ordi-
 nary skill in the art would have had a reasonable
 expectation of success in arriving at the invention recited
 in claims 1 and 8 based on Bernstein alone.” J.A. 72. We
 agree with the Board.
    Bernstein explicitly teaches deleting “old versions.”
 Specifically, Bernstein discloses a method where “all
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 SOUND VIEW INNOVATIONS, LLC   v. HULU, LLC                  7



 versions are kept in a linked list, from newest to oldest,”
 J.A. 1541, and that “versions [are] deleted from the oldest
 to newest,” J.A. 1533. Unified Patents, LLC’s expert,
 Dr. Paul Franzon, testified that Bernstein taught “a sys-
 tem that deletes old versions,” J.A. 3789, by identifying
 those with the “smallest timestamp,” J.A. 3803 (emphasis
 removed), and an algorithm to achieve this. The Board
 credited his testimony that “a person of ordinary skill in
 the art would not have required disclosure any more de-
 tailed than the disclosures in Bernstein to apply the prior
 art teachings.” J.A. 73. There is no evidence that Bern-
 stein’s method of deleting old versions was impracticable
 or even inoperable for its purpose.
     Nonetheless, Sound View suggests that Bernstein does
 not disclose using an algorithm based on a particular ap-
 proach that would make it more efficient to identify and
 delete old versions of a data record, which Sound View re-
 fers to as a “practical garbage collection algorithm.” See
 Appellant’s Br. 17, 56. However, no such feature is re-
 quired by the claims on appeal. This case is different from
 In re Rinehart, 531 F.2d 1048 (C.C.P.A. 1976) because
 there the claims explicitly recited “commercial scale pro-
 duction” of polyesters utilizing “commercial scale quanti-
 ties” of ethylene glycol and thus evidence challenging the
 commercial scalability of the prior art combination was rel-
 evant. Id. at 1051–53.
     Since the claims here did not require a certain level of
 practicality, the Board did not err in finding a “reasonable
 expectation of success . . . [in] meet[ing] the limitations of
 the claimed invention.” Intelligent Bio-Sys., Inc. v. Illu-
 mina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
 2016). 3 The Board in determining a reasonable expectation


     3   The impracticality of the prior art combination may
 be a factor in determining whether there would have been
 a motivation to combine. See, e.g., Intelligent Bio-Sys., 821
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 8                   SOUND VIEW INNOVATIONS, LLC     v. HULU, LLC



 of success properly limited the inquiry to the claims as
 written. Id. (“[F]ailure to consider the appropriate scope of
 the . . . patent’s claimed invention in evaluating the reason-
 able expectation of success . . . constitutes a legal error
 . . . .” (first, second, and third alterations in original) (quot-
 ing Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed.
 Cir. 2014))); BTG Int’l Ltd. v. Amneal Pharm. LLC, 923
 F.3d 1063, 1075 (Fed. Cir. 2019) (rejecting the patent
 owner’s argument that a reasonable expectation of success
 must be based on the likelihood of “survival advantage” of
 certain steroids, a feature not required by the claims).
                                III
     Sound View asserts that IPR is “unconstitutional as
 applied to the ’371 patent” for violating the Fifth Amend-
 ment’s Due Process Clause, because the patent issued in
 2000 before the IPR procedure was enacted under the
 American Invents Act (“AIA”) in 2011. Appellant’s Br. 57.
 However, we have consistently held that “the application
 of IPR to pre-AIA patents does not violate the Constitu-
 tion.” OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1386


 F.3d at 1364–65, 1367–68 (holding that the efficiency re-
 quired in the prior art was relevant to a finding of motiva-
 tion to combine as opposed to a reasonable expectation of
 success); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
 (holding that “desirability” is relevant to whether there
 would have been a motivation to combine); DyStar Textil-
 farben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
 464 F.3d 1356, 1368–69 (Fed. Cir. 2006) (collecting cases
 holding that there was a motivation to combine because the
 prior art combination was “more efficient”). Micro Chemi-
 cal, Inc. v. Great Plains Chemical Co., 103 F.3d 1538 (Fed.
 Cir. 1997) also involved the issue of a motivation to com-
 bine. Id. at 1546–47. Sound View does not raise an im-
 practicality argument with respect to a motivation to
 combine.
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 SOUND VIEW INNOVATIONS, LLC   v. HULU, LLC                 9



 (Fed. Cir. 2019); Arthrex, Inc. v. Smith & Nephew, Inc., 935
 F.3d 1319, 1331–32 (Fed. Cir. 2019) (“[T]he differences be-
 tween IPRs and the district court and Patent Office pro-
 ceedings that existed prior to the AIA are not so significant
 as to ‘create a constitutional issue’ when IPR is applied to
 pre-AIA patents.” (quoting Celgene Corp. v. Peter, 931 F.3d
 1342, 1361–62 (Fed. Cir. 2019))); Enzo Life Scis., Inc. v.
 Becton, Dickinson & Co., 780 F. App’x 903, 911 (Fed. Cir.
 2019). 4
                        CONCLUSION
     For the foregoing reasons, we affirm the Board’s deci-
 sion in IPR2018-00096. Having held that all claims on ap-
 peal are invalid, we dismiss the appeals in IPR2018-00017
 and IPR2018-00366 as moot.
            AFFIRMED AS TO NO. 2019-1866
  DISMISSED AS MOOT AS TO NO. 2019-1865 AND
                NO. 2019-1867
                            COSTS
     Costs to the appellees.




     4   See also Intellectual Ventures II LLC v. FedEx
 Corp., 787 F. App’x 755 (Fed. Cir. 2019) (summary affir-
 mance); Collabo Innovations, Inc. v. Sony Corp., 778 F.
 App’x 954, 961 (Fed. Cir. 2019).
