       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                     ______________________

        SOFTWARE RIGHTS ARCHIVE, LLC,
                  Appellant

                                    v.

  FACEBOOK, INC., LINKEDIN CORPORATION,
               TWITTER, INC.,
               Cross-Appellants
            ______________________

              2015-1649, 2015-1650, 2015-1651
                  ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2013-00479, IPR2013-00480.

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

        SOFTWARE RIGHTS ARCHIVE, LLC,
                  Appellant

                                    v.

  FACEBOOK, INC., LINKEDIN CORPORATION,
               TWITTER, INC.,
               Cross-Appellants
            ______________________

                      2015-1652, 2015-1653
2           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



                 ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
IPR2013-00481.
               ______________________

               Decided: September 9, 2016
                ______________________

    VICTOR G. HARDY, DiNovo, Price, Ellwanger & Hardy
LLP, Austin, TX, argued for appellant. Also represented
by MINGHUI YANG; MARTIN MOSS ZOLTICK, SOUMYA
PANDA, Rothwell, Figg, Ernst & Manbeck, P.C., Washing-
ton, DC.

    HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
for cross-appellant Facebook Inc. Also represented by
LOWELL D. MEAD, CARRIE J. RICHEY, MARK R. WEINSTEIN.

    DAVID SILBERT, Keker & Van Nest, LLP, San Francis-
co, CA, argued for cross-appellants LinkedIn Corporation,
Twitter, Inc. Also represented by SHARIF E. JACOB, PHILIP
J. TASSIN.
                  ______________________
     Before NEWMAN, MAYER, and CHEN, Circuit Judges.
         Opinion for the court filed PER CURIAM.
      Opinion dissenting-in-part filed by Circuit Judge
                         CHEN.
PER CURIAM.
    Software Rights Archive, LLC (“Software Rights”) ap-
peals inter partes review (“IPR”) decisions of the Patent
Trial and Appeal Board (“board”) of the United States
Patent and Trademark Office (“PTO”) holding that claims
18 and 45 of U.S. Patent No. 5,832,494 (the “’494 patent”)
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.         3



and claims 12 and 22 of U.S. Patent No. 6,233,571 (the
“’571 patent”) are unpatentable over the prior art. 1 See
Facebook, Inc. v. Software Rights Archive, LLC, IPR No.
2013-00479, 2015 WL 470598, at *7–13, *16–17 (PTAB
Feb. 2, 2015) (“Board Decision I”); Facebook, Inc. v. Soft-
ware Rights Archive, LLC, IPR No. 2013-00481, 2015 WL
429750, at *12–16, *18–20 (PTAB Jan. 29, 2015) (“Board
Decision II”). Facebook, Inc., LinkedIn Corporation, and
Twitter, Inc. (collectively “Facebook”) cross-appeal, chal-
lenging the board’s determinations that claims 1, 5, 15,
and 16 of the ’494 patent are not anticipated, see Face-
book, Inc. v. Software Rights Archive, LLC, IPR No. 2013-
00480, 2015 WL 456539, at *8–13 (PTAB Jan. 30, 2015)
(“Board Decision III”), and that claim 21 of the ’571 pa-
tent is not obvious over the prior art, see Board Decision
II, 2015 WL 429750, at *16–18. For the reasons discussed
below, we affirm in part and reverse in part.
                      BACKGROUND
     The ’494 and ’571 patents are continuations-in-part of
U.S. Patent No. 5,544,352 (the “’352 patent”). We recently
affirmed the board’s determination that claims 26, 28–30,
32, 34, and 39 of the ’352 patent are unpatentable as
obvious. See Facebook, Inc. v. Software Rights Archive,
LLC, IPR No. 2013-00478, 2015 WL 470597 (PTAB Feb. 2,
2015), aff’d without opinion, 640 F. App’x 995 (Fed. Cir.
2016).



   1     Software Rights also advances a cursory argu-
ment that the board erred in concluding that certain
claims that depend from claims 18 and 45 of the ’494
patent (i.e., claims 19, 20, 48, 49, 51, and 54) are un-
patentable as obvious. It does not, however, identify any
specific limitations in those dependent claims that would
render them non-obvious if the board’s determination that
claims 18 and 45 are unpatentable as obvious is affirmed.
4           SOFTWARE RIGHTS ARCHIVE, LLC    v. FACEBOOK, INC.



     The ’494 and ’571 patents, which relate to computer-
ized research on a database, are both entitled “Method
and Apparatus for Indexing, Searching and Displaying
Data.” Joint Appendix (“J.A.”) I 5057; J.A. II 5058. 2 The
patents purport to improve upon traditional Boolean
search methods by analyzing non-semantic relationships
between documents. See J.A. I 5057–59; J.A. II 5058–60.
They describe a process for organizing and searching for
data using a technique called “proximity indexing.” ’494
patent, col. 3 l. 28; ’571 patent, col. 3 l. 33. Proximity
indexing is used to search for data, including textual
objects, by “generat[ing] a quick-reference of the relations,
patterns, and similarity found among the data in the
database.” ’494 patent, col. 3 ll. 30–31; ’571 patent, col. 3
ll. 34–36. The claimed inventions are designed to provide
a “user friendly computerized research tool” which “emu-
lates human methods of research.” ’494 patent, col. 3 ll.
11–14; ’571 patent, col. 3 ll. 15–18.
I. The ’494 Patent
    The ’494 patent describes using non-semantic rela-
tionships to search for objects in a database. J.A. I 5057–
58. A citation relationship between two documents is
non-semantic because it is not based on words (or “terms”)
common to both documents, but is instead based on one
document’s reference to the other document. See J.A. I
5058, 5063. Two documents have a direct citation rela-
tionship when one document cites to the other document.
See J.A. I 5063. Two documents can also have an indirect
citation relationship, such as when they both cite to a


    2   The appendix related to the ’494 patent and the
appendix related to the ’571 patent contain many of the
same documents. For the sake of convenience, the appen-
dix related to the ’494 patent will be referred to as “J.A. I”
and the appendix related to the ’571 patent will be re-
ferred to as “J.A. II.”
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.           5



third document (bibliographic coupling (“bc”)) or when
they are both cited by a third document (co-citation (“cc”)).
J.A. I 5063–64. 3 These relationships, as well as other
relationships between documents, can be used to create
clusters of similar documents, thereby enhancing search
and retrieval. J.A. I 5058–64.
     The ’494 patent explains that data in the database to
be searched may be represented as a “node.” ’494 patent,
col. 12 ll. 34–41. A node can be “an object in a database, a
portion of an object in a database, a document, a section of
a document[] [or] a World Wide Web page.” Id. col. 12 ll.
36–39 (diagram numbering omitted). The ’494 patent
further states that a cluster link generator can be used to
generate candidate cluster links between nodes. Id. col.
21 ll. 54–67. It explains that “[c]andidate cluster links
are the set of all possible cluster links between a search
node and a target node.” Id. col. 21 l. 66–col. 22 l. 1
(diagram numbering omitted). Actual cluster links, which
are “a subset of the candidate cluster links . . . which meet
a certain criteria,” can be “used to locate nodes for dis-
play.” Id. col. 22 ll. 1–4 (diagram numbering omitted).
    Independent claim 1 of the ’494 patent recites:
    A method of analyzing a database with indirect
    relationships, using links and nodes, comprising
    the steps of:
    selecting a node for analysis;


    3    The board construed the term “direct relation-
ships” to mean “relationships where one object cites to
another object” and the term “indirect relationships” to
mean “relationships where at least one intermediate
object exists between two objects and where the interme-
diate object(s) connect the two objects through a chain of
citations.” Board Decision I, 2015 WL 470598, at *5
(citations and internal quotation marks omitted).
6            SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



    generating candidate cluster links for the selected
    node, wherein the step of generating comprises an
    analysis of one or more indirect relationships in
    the database;
    deriving actual cluster links from the candidate
    cluster links;
    identifying one or more nodes for display; and
    displaying the identity of one or more nodes using
    the actual cluster links.
Id. col. 51 ll. 38–49.
     Claim 5, which depends from claim 1, provides that
“the step of generating the candidate cluster links com-
prises the step of[] eliminating candidate cluster links,
wherein the number of candidate cluster links are limited
and the closest candidate cluster links are chosen over the
remaining links.” Id. col. 51 l. 66–col. 52 l. 4. Claim 15
recites: “The method of claim 14 further comprising the
step of deriving the actual cluster links wherein the
actual cluster links are a subset of the candidate cluster
links.” Id. col. 52 ll. 65–67 (emphasis omitted). Similarly,
claim 16 recites: “The method of claim 15 wherein the
step of deriving comprises the step of choosing the top
rated candidate cluster links.” Id. col. 53 ll. 1–3 (empha-
sis omitted).
    Claims 18 and 45 of the ’494 patent describe search
methods which use numerical representations of relation-
ships between documents. Independent claim 18 recites:
    A method of analyzing a database having objects
    and a first numerical representation of direct rela-
    tionships in the database, comprising the steps of:
    generating a second numerical representation us-
    ing the first numerical representation, wherein
    the second numerical representation accounts for
    indirect relationships in the database;
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.          7



    storing the second numerical representation;
    identifying at least one object in the database,
    wherein the stored numerical representation is
    used to identify objects; and
    displaying one or more identified objects from the
    database.
Id. col. 53 ll. 28–40.
   Claim 45 depends from claim 19, which in turn de-
pends from claim 18. It recites:
    The method of claim 19, wherein the direct rela-
    tionships are hyperlink relationships between ob-
    jects on the world wide web and the second
    numerical representation of direct and indirect re-
    lationships is a value that is generated by analyz-
    ing direct link weights in a set of paths between
    two indirectly related objects, and wherein the
    step of identifying uses at least the value to de-
    termine an object’s importance for ranking.
J.A. I 5092 (reexamination certificate) (emphasis omit-
ted).
    The board held that claim 18 of the ’494 patent is un-
patentable over three prior art publications by Dr. Ed-
ward A. Fox (collectively the “Fox Papers”). See Board
Decision I, 2015 WL 470598, at *7–13. These publications
were originally part of one document but were eventually
split into three separate documents: (1) Edward A. Fox,
Characterization of Two New Experimental Collections in
Computer and Information Science Containing Textual
and Bibliographic Concepts (Sept. 1983) (Ph.D. disserta-
tion, Cornell University) (“Fox Collection”); (2) Edward A.
Fox, Some Considerations for Implementing the SMART
Information Retrieval System under UNIX (Sept. 1983)
(Ph.D. dissertation, Cornell University) (“Fox SMART”);
and (3) Edward A. Fox, Extending the Boolean and Vector
8           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



Space Models of Information Retrieval with P-Norm
Queries and Multiple Concept Types (Aug. 1983) (Ph.D.
thesis, Cornell University) (“Fox Thesis”). The Fox Pa-
pers describe clustering documents based on concepts
(which are referred to as “vectors” or “subvectors”) as well
as terms. J.A. I 5629–40. In the Fox system, a query will
not only “retrieve clusters containing documents whose
terms match its terms,” but will also retrieve “documents
which have little in common with the query terms but are
highly correlated through other components of the ex-
tended vectors.” J.A. I 5659. Fox Thesis explains that
“bibliographic measures,” such as bc and cc, are “useful in
both retrieval and clustering applications.” J.A. I 5635.
     Although Software Rights argued that the Fox Papers
do not teach claim 18’s limitation requiring “a database
having objects and a first numerical representation of
direct relationships in the database,” ’494 patent, col. 53
ll. 27–29, the board rejected this contention. See Board
Decision I, 2015 WL 470598, at *10–11. According to the
board, “it would have been obvious to modify the data-
bases of the Fox Papers to contain full text documents.”
Id. at *10. In support, the board noted that the Fox
Papers specifically state that “some [information retriev-
al] systems store the full text of the various documents.”
Id. (citations and internal quotation marks omitted).
    The board further concluded that the Fox Papers,
when combined with Edward A. Fox et al., Users, User
Interfaces, and Objects: Envision, a Digital Library, 44 J.
Am. Soc’y Info. Sci. 480 (1993) (“Fox Envision”), rendered
claim 45 of the ’494 patent obvious. See Board Decision I,
2015 WL 470598, at *16–17. According to the board, Fox
Envision teaches analyzing web-based links, as claim 45
requires, because it specifically describes “applying cita-
tion analysis to hypertext systems, including the World
Wide Web.” Id. at *17.
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.          9



     The board determined, however, that the prior art
failed to teach the limitation of claims 1, 5, 15, and 16
that requires “deriving” actual cluster links from the set
of candidate cluster links. See Board Decision III, 2015
WL 456539, at *8–13. The board noted that “Fox SMART
describes the clustering process as initializing a new tree
as empty, adding documents to the tree, and recursively
splitting overly large nodes of the tree.” Id. at *9. In the
board’s view, however, because Fox SMART does not
disclose “deleting clusters other than those that simply
overlap, or duplicate, other clusters,” it does not teach
“deriving a subset of the already generated candidate
cluster links.” Id. at *10; see also id. at *13 (concluding
that Fox Thesis does not anticipate claims 15 and 16
because it does not teach “deriving” a subset of actual
cluster links).
II. The ’571 Patent
   The ’571 patent is focused on search techniques for
use in hypertext networks. Claim 12 describes “cluster
analyzing” universal resource locators (“URLs”):
   A method for visually displaying data related to a
   web having identifiable web pages and Universal
   Resource Locators with pointers, comprising:
   choosing an identifiable web page;
   identifying Universal Resource Locators for the
   web pages, wherein the identified Universal Re-
   source Locators either point to or point away from
   the chosen web page;
   analyzing Universal Resource Locators, including
   the identified Universal Resource Locators,
   wherein Universal Resource Locators which have
   an indirect relationship to the chosen web page
   are located, wherein the step of analyzing further
10           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



     comprises cluster analyzing the Universal Re-
     source Locators for indirect relationships; and
     displaying identities of web pages, wherein the lo-
     cated Universal Resource Locators are used to
     identify web pages.
’571 patent, col. 52 ll. 38–56.
    Claim 22 describes retrieving hyperjump data which
“has an indirect reference to [a] chosen node.” J.A. II
5090. It recites:
     A method for displaying information about a net-
     work that has hyperjump data, comprising:
     choosing a node;
     accessing the hyperjump data;
     identifying hyperjump data from within the ac-
     cessed hyperjump data that has a direct reference
     to the chosen node;
     determining hyperjump data from within the ac-
     cessed hyperjump data that has an indirect refer-
     ence to the chosen node by proximity indexing the
     identified hyperjump data; and
     displaying one or more determined hyperjump da-
     ta, wherein the nodes are nodes in the network
     that may be accessed, the hyperjump data in-
     cludes hyperjump links between nodes in the
     network, and the step of displaying comprises:
     generating a source map using one or more of the
     determined hyperjump data, wherein the source
     map represents hyperjump links that identify the
     chosen node as a destination of a link, and where-
     in the method further comprises activating a link
     represented on the source map, wherein a user
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.           11



    may hyperjump to a node represented as a node of
    the link.
J.A. II 5090–91 (reexamination certificate).
    Claim 21 of the ’571 patent describes deriving actual
cluster links from a set of candidate cluster links in a
hypertext network:
    A method of displaying information about a net-
    work that has hyperjump data, comprising:
    choosing a node;
    accessing the hyperjump data;
    identifying hyperjump data from within the ac-
    cessed hyperjump data that has a direct reference
    to the chosen node;
    determining hyperjump data from within the ac-
    cessed hyperjump data that has an indirect refer-
    ence to the chosen node using the identified
    hyperjump data, wherein the step of determining
    comprises non-semantically generating a set of
    candidate cluster links for nodes indirectly related
    to the chosen node using the hyperjump data, as-
    signing weights to the candidate cluster links and
    deriving actual cluster links from the set of candi-
    date cluster links based on the assigned weights;
    and
    displaying one or more determined hyperjump da-
    ta.
J.A. II 5090 (reexamination certificate).
    The board determined that claims 12 and 22 of the
’571 patent are obvious over a combination of Fox Thesis,
Fox SMART, and Fox Envision. See Board Decision II,
2015 WL 429750, at *12–16, *18–20. Specifically, the
board concluded that Fox SMART and Fox Thesis taught
12          SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



all of the elements of claims 12 and 22—other than the
hypertext limitations—and that Fox Envision taught
applying the teachings of Fox SMART and Fox Thesis to
hypertext networks. See id. Furthermore, although
Software Rights contended that the commercial success of
Google’s PageRank algorithm provided objective evidence
of non-obviousness, the board determined that Software
Rights had failed to establish any nexus between the
success of Google’s algorithm and the “features recited in
the claims of the ’571 patent.” Id. at *15.
    The board concluded, however, that Facebook had not
established that claim 21 of the ’571 patent is unpatenta-
ble as obvious. See id. at *16–18. In the board’s view,
since Fox SMART’s clustering algorithm does not delete
documents from the cluster tree, it does not teach “deriv-
ing” a subset of actual cluster links from the set of candi-
date cluster links. Id. at *18.
    The parties then timely appealed. This court has ju-
risdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C.
§ 141(c).
                        DISCUSSION
I. Standard of Review
    We review the board’s legal conclusions de novo, but
review for substantial evidence any underlying factual
determinations. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 836–38 (2015); see also Nike, Inc. v.
Adidas AG, 812 F.3d 1326, 1332 (Fed. Cir. 2016); In re
Giannelli, 739 F.3d 1375, 1378–79 (Fed. Cir. 2014).
Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197,
229 (1938); see In re Applied Materials, Inc., 692 F.3d
1289, 1294 (Fed. Cir. 2012).
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.         13



II. Claim 18 of the ’494 Patent
    Software Rights argues that the board erred in con-
cluding that claim 18 of the ’494 patent is obvious in view
of the Fox Papers. In support, it contends that claim 18
operates on a full-text database containing documents
with textual citations to each other, whereas the test
collections used by Fox contained only limited infor-
mation—such as abstracts, authors, titles of articles, and
bibliographic records—instead of the full text of docu-
ments.
    This argument fails. Even assuming arguendo that
claim 18 requires a database containing full-text docu-
ments, the Fox Papers explicitly suggest the use of such a
database. Fox Thesis states that some information re-
trieval “systems store the full text of the various docu-
ments . . . being manipulated,” and that this approach is
advantageous because it allows users “to locate docu-
ments of interest” and “examine paragraphs, passages,
sentences, or single word occurrences (in context).” J.A. I
5482. 4 It explains, moreover, that storing the full text of
documents is a “straightforward generalization[] of docu-
ment retrieval methods.” J.A. I 5482. Given that Fox
Thesis specifically states that storing the full text of
documents is both beneficial and “straightforward,” the
board had ample support for its conclusion that “the Fox
Papers suggested to one of ordinary skill in the art at the
time of the invention the modification of the Fox data-
bases to include full text documents.” Board Decision I,
2015 WL 470598, at *11.



   4     Fox SMART likewise suggests the use of full-text
retrieval applications. It states that “vectors could be
computed for smaller items than just documents” and
that “[t]his would be of particular value in full text re-
trieval applications.” J.A. I 5443 (emphasis added).
14           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



III. Claim 45 of the ’494 Patent
    The board also had ample support for its determina-
tion that claim 45 of the ’494 patent is obvious over a
combination of the Fox Papers and Fox Envision. See id.
at *15–17. Claim 45 recites that “the direct relationships
are hyperlink relationships between objects on the world
wide web.” J.A. I 5092 (emphasis omitted). Although
Software Rights argues that “Fox Envision does not teach
the idea that one should analyze hyperlinks as opposed to
bibliographic citations to enhance search,” the board
properly rejected this contention, concluding that Fox
Envision explicitly teaches the application of citation
analysis in hypertext systems. See Board Decision I, 2015
WL 470598, at *17.
    Fox Envision, which was published ten years after
Fox Thesis and Fox SMART, was designed to “reconcep-
tualize the idea of digital libraries” in order to “envision
their next generation.” J.A. I 5844 (emphasis omitted).
Its objective was “to harmonize and integrate concepts
from a variety of interrelated fields,” including “hyper-
text[,] hypermedia[,] . . . [and] information storage and
retrieval.” J.A. I 5844. Fox Envision explicitly teaches
analyzing the links between objects in a hypertext sys-
tem:
     Links should be recorded, preserved, organized,
     and generalized. As we integrate documents into
     very large collections covering an entire scientific
     domain or professional area, links among those
     documents become increasingly important to help
     with search and browsing. Groupings of those
     links into paths, threads, tours, and webs are es-
     sential for organizing, personalizing, sharing, and
     preserving the structural, interpretational, and
     evolutionary connections that develop. We are
     beginning to see the emergence of wide area hy-
     perext systems (Yankelovich, 1990) like the
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.            15



    WorldWideWeb . . . that carry this concept for-
    ward into a distributed environment. Clearly, we
    must coordinate hypertext and hypermedia link-
    ing with the various approaches to search and re-
    trieval (Fox et al., 1991b). One approach is the
    idea of information graphs (including hyper-
    graphs), where objects of all types are interrelated
    by links or arcs that capture not only citation (ref-
    erence) but also inheritance, inclusion, associa-
    tion, synchronization, sequencing, and other
    relationships.
J.A. I 5845.
     As the board correctly determined, “[t]he approach
taught in Fox Envision interrelates ‘objects of all types,’
including objects on the World Wide Web, so as to capture
citation relationships.”      Board Decision I, 2015 WL
470598, at *17 (quoting J.A. I 5845). Indeed, Fox Envi-
sion explains that as the overall size of a document collec-
tion increases, the “links among . . . documents become
increasingly important to help with search and browsing.”
J.A. I 5845. It further explains that one approach to
“coordinat[ing] hypertext and hypermedia linking” with
known search and retrieval methods is to create “infor-
mation graphs (including hypergraphs), where objects of
all types are interrelated by links or arcs that capture . . .
citation . . . relationships.” J.A. I 5845 (emphasis added);
see also J.A. I 7084–88. Thus, as the board correctly
concluded, Fox Envision teaches analyzing citation rela-
tionships in hypertext systems. See Board Decision I,
2015 WL 470598, at *17.
    Software Rights contends that because the Fox Papers
predated the widespread use of the web and hyperlinks,
their teachings are limited to bibliographic citations
between paper documents. We are unpersuaded. In
assessing obviousness, references are not read in isola-
tion. See, e.g., In re Merck & Co., Inc., 800 F.2d 1091,
16          SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



1097 (Fed. Cir. 1986) (“Non-obviousness cannot be estab-
lished by attacking references individually where the
rejection is based upon the teachings of a combination of
references.”). Although the Fox Papers do not describe
analyzing hyperlink relationships, they must be read in
view of Fox Envision, which, as discussed above, provides
express motivation to apply citation analysis to the links
between objects found on the web. See, e.g., Applied
Materials, 692 F.3d at 1298 (emphasizing that “[o]ne of
ordinary skill in the art is not foreclosed from combining”
relevant related references). As the board correctly
determined, moreover, a skilled artisan would readily
have combined the teachings of Fox Envision with those
of Fox Thesis and Fox SMART given that Fox Envision is
a follow-on work to Fox’s earlier publications. See Board
Decision I, 2015 WL 470598, at *16; see also Board Deci-
sion II, 2015 WL 429750, at *12 (“Dr. Fox states it would
have been obvious to one of ordinary skill in the art to
combine the techniques of [Fox] Envision, Fox Thesis, and
Fox SMART because [Fox] Envision was built on, and was
itself[] a follow-on work to Fox Thesis and Fox SMART.”).
In short, Fox Thesis and Fox SMART teach the use of
citation analysis in databases storing information related
to paper documents, while Fox Envision extends that
teaching to hypertext networks. We conclude, therefore,
that substantial evidence supports the board’s determina-
tion that claim 45 of the ’494 patent is obvious over a
combination of Fox Envision and the Fox Papers. 5 See In


     5 For similar reasons, we affirm the board’s deter-
mination that claims 12 and 22 of the ’571 patent are
obvious in view of Fox Thesis, Fox SMART, and Fox
Envision. See Board Decision II, 2015 WL 429750, at
*10–16. As the board correctly determined, Fox Thesis
and Fox SMART teach each of the elements of claims 12
and 22, other than the hypertext limitations, and Fox
Envision teaches applying citation analysis to hypertext
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.         17



re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (“The
presence or absence of a motivation to combine references
in an obviousness determination is a pure question of
fact.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 (Fed. Cir. 2000) (“What a reference teaches and
whether it teaches toward or away from the claimed
invention are questions of fact.” (citations and internal
quotation marks omitted)).
IV. Alleged Teaching Away
    “A reference may be said to teach away when a person
of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the refer-
ence, or would be led in a direction divergent from the


networks. Id. Software Rights argues that claim 12 is
not obvious because Fox Thesis describes the use of
document identifiers, which it refers to as “dids,” see J.A.
II 5738, 5766, rather than URLs. We do not agree. As
noted previously, Fox Thesis teaches using citation data,
including bibliographic relationships, to improve search
and retrieval. See J.A. II 5694–5725. Although Fox
Thesis does not discuss the use of URLs, it must be read
in view of Fox Envision, which explicitly teaches using
citation analysis in hypertext systems. See J.A. II 5845.
Given that Fox Envision is a follow-on work to Fox Thesis,
a skilled artisan “would have combined the retrieval
systems taught in Fox Thesis . . . with documents stored
as web pages and linked by hypertext and hypermedia
linking taught in [Fox] Envision.” Board Decision II, 2015
WL 429750, at *12. As this court has previously recog-
nized, moreover, taking well-known methods and apply-
ing them via the Internet is insufficient, standing alone,
to render claims non-obvious. See, e.g., Muniauction, Inc.
v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008)
(concluding that “the incorporation of web browser func-
tionality” did not establish non-obviousness).
18          SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). According to Software
Rights, the board erred in finding its claims obvious
because the Fox Papers teach away from using indirect
relationships, such as bc and cc, to enhance search and
retrieval. In support, it argues that “when all of the Fox
Papers’ teachings are fairly considered, they overwhelm-
ingly demonstrate that use of bc and cc harms search
results for the vast majority of queries.”
     We disagree. One of the central teachings of the Fox
Papers is that using indirect citation relationships, such
as bc and cc, can improve search results. For example,
Fox Thesis, after describing the results of one experiment,
concludes that using a combination of bc and cc for clus-
tering “seemed rather good” and that the “simpler” com-
bination of bc and cc produced better clusters than a
“mixture” of more subvectors. J.A. I 5693. Describing
another experiment, Fox Thesis states that “[o]verall, the
best behavior seemed to come when [bc] and [cc] were
combined with equal weighting.” J.A. I 5745. Discussing
yet another experiment, Fox Thesis concludes that “[o]f
all the subvectors, terms are best, though co-citations are
not much worse. . . . Using regression or guessed at
coefficients, the [term vector] and [cc] combination yields
a 5–6% improvement over the performance when terms
alone are used.” J.A. I 5723. Fox SMART echoes the
conclusions reached in Fox Thesis. It states that “[t]he
extended vector model was introduced whereby various
types of bibliographic data were utilized to supplement
the standard term vectors” and explains that “[o]ne
motivation for [this] model was the success of clustering
studies considering bibliographic data instead of or in
addition to terms.” J.A. I 5406 (emphasis added).
    Although the Fox Papers indicate that certain subvec-
tors will perform worse than others under differing condi-
tions and with the use of particular data sets, see, e.g.,
J.A. I 5733–34, those references unequivocally convey
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.         19



that analysis of indirect citation relationships—such as bc
and cc—can improve search and retrieval. See, e.g., Dome
Patent L.P. v. Lee, 799 F.3d 1372, 1381 (Fed. Cir. 2015)
(concluding that there was no teaching away even where
a prior art reference “disclose[d] potential disadvantages
associated” with a claimed compound).           Accordingly,
substantial evidence supports the board’s determination
that the Fox Papers do not teach away from using indirect
relationships to improve search and retrieval. See In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (emphasiz-
ing that the board’s determination as to whether a partic-
ular reference teaches away from a claimed invention
must be upheld if supported by substantial evidence).
    We reject, moreover, Software Rights’ assertion that
the board failed to give proper consideration to objective
indicia of non-obviousness. “Commercial success is rele-
vant to obviousness only if there is a nexus . . . between
the sales and the merits of the claimed invention.” Ap-
plied Materials, 692 F.3d at 1299 (citations and internal
quotation marks omitted). Although Software Rights
argues that the success of Google’s search engine using
the PageRank algorithm provides objective evidence of
non-obviousness, it fails to provide any credible evidence
that Google’s search engine practices any inventive ele-
ments recited in its claims. See Board Decision I, 2015
WL 470598, at *13 (noting that Software Rights “failed to
provide the source code of PageRank, or any other de-
tailed information beyond publicly-available, generalized
hearsay statements about Google’s search”). As we have
previously made clear, “[w]here the offered secondary
consideration actually results from something other than
what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” In re Huai-
Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); see also
Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369–
70 (Fed. Cir. 2011) (“If commercial success is due to an
element in the prior art, no nexus exists.”).
20          SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



V. The Deriving Actual Cluster Links Limitation
    We conclude, however, that the board erred when it
determined that Facebook failed to establish that claims 1
and 5 of the ’494 patent are unpatentable over Fox
SMART. See Board Decision III, 2015 WL 456539, at *8–
11. In determining that Fox SMART does not teach
deriving actual cluster links from the set of candidate
cluster links, the board failed to consider fully Fox
SMART’s procedure for splitting overly large clusters. See
J.A. I 10272–81; see also Smith & Nephew, Inc. v. Rea,
721 F.3d 1371, 1378 (Fed. Cir. 2013) (emphasizing that
the board is obliged to “read[] the prior art for all that it
teaches”).
    As an initial matter, we note that the specification of
the ’494 patent describes the step of deriving actual
cluster links as “simple” or routine. ’494 patent, col. 24 l.
2. It explains that “[o]nce the candidate cluster link set
has been generated, deriving the actual cluster links is a
simple matter of selecting or choosing the . . . top rated
candidate links, and eliminating the rest.” Id. col. 24 ll.
1–4 (diagram numbering omitted). Nothing in the specifi-
cation suggests that deriving actual cluster links from the
set of candidate cluster links is a novel or inventive aspect
of the claimed invention.
    Even more fundamentally, Fox SMART provides ex-
plicit instructions both on: (1) how to generate a set of
candidate cluster links using indirect relationships such
as bc and cc; and (2) how to derive a subset of actual
cluster links from that candidate cluster link set. See J.A.
I 10270–81. As discussed previously, a key teaching of
Fox SMART is that search and retrieval can be improved
by clustering documents based upon indirect bibliographic
relationships such as bc and cc. J.A. I 10255–82. The Fox
SMART algorithm analyzes direct relationships between
documents and then identifies and assigns weights to
indirect relationships between documents. See J.A. I
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.         21



10257–60. Both the direct and indirect relationships can
be represented as vectors in a table or matrix. See J.A. I
10257–60, 10274.
    In the Fox SMART system, clustering proceeds by de-
termining the “overall similarity between documents”
which is calculated “based on available subvectors,” J.A. I
10274, such as bc and cc, see J.A. I 10257–60. If a cluster
exceeds a preset size limit, see J.A. I 10273, an algorithm
splits the cluster and re-groups its constituent documents
into smaller clusters, J.A. I 10275–79. Splitting overly
large clusters is accomplished by creating a “complete
similarity matrix” that compares the “pairwise combined
similarity values” for each potential pair of documents in
the original cluster. J.A. I 10277; see also J.A. I 10257–
60, 10271–76. Because the similarity values calculated
during cluster-splitting provide a set of possible cluster
links between each document and every other document
in the original cluster, they qualify as “candidate cluster
links.” See Board Decision III, 2015 WL 456539, at *5
(explaining that “candidate cluster links” are the “set of
possible cluster links between a search node and a target
node” (citations and internal quotation marks omitted));
see also ’494 patent, col. 13 ll. 25–26 (defining a “cluster
link” as “a relationship between two nodes”).
     Fox SMART then describes the process for deriving a
subset of actual cluster links from the set of candidate
links. Fox SMART’s cluster-splitting procedure identifies
“highly correlated pairs” of documents from the original
cluster by “comparing the similarity of a pair of children
to the average off diagonal similarity value and seeing if
it is a sufficient number of standard deviations away from
the mean.” J.A. I 10278. Next, Fox SMART forms new,
smaller clusters which contain “highly correlated pairs,”
J.A. I 10278, and which also pass other tests for similarity
and overlap, J.A. I 10277–79. Simply put, when splitting
an oversized cluster, Fox SMART first generates candi-
date cluster links between all of the documents in the
22           SOFTWARE RIGHTS ARCHIVE, LLC    v. FACEBOOK, INC.



original cluster and then derives a subset of those links—
the actual cluster links—in order to create new, smaller
clusters.
     Indeed, Fox SMART and the preferred embodiment of
the ’494 patent perform the relatively straightforward
step of deriving actual cluster links from the set of candi-
date links in exactly the same way. The preferred embod-
iment, like Fox SMART, generates a set of candidate
cluster links based on direct and indirect relationships
and then represents those candidate cluster links as
vectors in a matrix. Compare ’494 patent, col. 21 ll. 60–64
(“[T]he cluster link generator . . . generates a set of cluster
links based upon both the direct links and on the indirect
paths. The cluster links may be represented by a table or
a series of vectors.” (diagram numbering omitted)), with
J.A. I 10275–80 (describing Fox SMART’s procedure for
creating a complete similarity matrix that compares the
similarity values for each possible pair of documents in a
cluster).    Next, the preferred embodiment, like Fox
SMART, selects a subset of the candidate cluster links to
become actual cluster links. Compare ’494 patent, col. 21
l. 66–col. 22 l. 4 (“Candidate cluster links are the set of all
possible cluster links between a search node and a target
node. . . . [T]he actual cluster links which meet a certain
criteria are used to locate nodes for display.” (diagram
numbering omitted)), with J.A. I 10277–80 (describing
Fox SMART’s splitting procedure which generates candi-
date cluster links between pairs of documents in an
oversized cluster and then selects a subset of those links,
based on the strength of their similarity, to become the
actual cluster links in new, smaller clusters). The board
erred, therefore, in concluding that Fox SMART does not
teach deriving actual cluster links from the set of candi-
date links as required by claims 1 and 5. See Board
Decision III, 2015 WL 456539, at *8–11.
    The dissent contends that Fox SMART does not teach
deriving actual cluster links because its cluster-splitting
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.          23



algorithm does not eliminate candidate cluster links, but
instead “simply redistributes the candidate cluster links
among two or more clusters.” Dissent at 4. This argu-
ment fails. When it splits oversize clusters, the Fox
system calculates pairwise similarity values between each
document and every other document in the original clus-
ter. See J.A. I 10275–79. The algorithm thus calculates
the similarity value between document one and document
two, document one and document three, document one
and document four, etc., until it has obtained similarity
values for every pair of documents in the original, over-
sized cluster. See J.A. I 10277–79. These similarity
values are the candidate cluster links. The Fox system
then chooses the best candidate cluster links to become
actual cluster links. If, for example, document one is
much more similar to document two than it is to docu-
ment three, then documents one and two will likely be
placed together in one cluster while document three will
likely be placed in a different cluster. See J.A. I 10278
(explaining that when an oversize cluster is split, the new,
smaller clusters will contain “highly correlated pairs” of
documents). The candidate cluster link between docu-
ments one and three will be eliminated when document
one is placed in a separate cluster from document three.
There is no merit, therefore, to the dissent’s assertion that
Fox SMART does not teach eliminating candidate cluster
links.
    On appeal, Software Rights contends that Facebook
waived the right to argue that Fox SMART’s cluster-
splitting procedure teaches the deriving actual cluster
links limitation by failing to properly present that argu-
ment to the board. We disagree. Facebook’s original IPR
petition identified Fox SMART’s cluster-splitting proce-
dure as teaching the “deriving” step. See J.A. I 2022–23.
In his declaration submitted with Facebook’s IPR petition,
moreover, Fox specifically stated that the process of
“recursively splitting overly large nodes” in both Fox
24          SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



SMART and Fox Thesis teaches the deriving actual
cluster links limitation. J.A. I 10851 (citations and inter-
nal quotation marks omitted). Likewise, when Fox was
cross-examined by counsel for Software Rights, he ex-
plained in detail how the cluster-splitting procedure
satisfies the deriving actual cluster links limitation. See
J.A. I 20758–59; see also J.A. I 20695, 20770, 20772–75.
We reject, therefore, Software Rights’ contention that
Facebook waived the right to rely on Fox SMART’s clus-
ter-splitting procedure to meet the requirement of deriv-
ing a subset of actual cluster links.
    We also reject Software Rights’ argument that Fox
SMART does not teach claim 1’s limitation reciting “dis-
playing the identity of one or more nodes using the actual
cluster links,” ’494 patent, col. 51 ll. 47–48. Fox SMART
specifically states that “clustered search allows retrieval
of groups in response to query submission,” J.A. I 10270,
and that “most of the documents in a retrieved cluster are
presented to the user,” J.A. I 10282. Because Fox SMART
retrieves and displays whole clusters of documents, it
necessarily “us[es] the actual cluster links” that form
those clusters when displaying documents or “nodes” as
required by claim 1. 6
    We are likewise unpersuaded by Software Rights’ ar-
gument that Fox SMART does not anticipate because it
teaches retrieving all documents and ranking multiple
clusters of documents for display. As the board correctly
determined, ranking documents from multiple clusters is
not the same as deriving a subset of those documents. See
Board Decision III, 2015 WL 456539, at *10 (explaining
that “a set of ranked documents provides an indication of
an order of presentation, but is not a subset”). Signifi-


     6   The ’494 patent explains that a “node” can be a
document, a concept, or a web page. See ’494 patent, col.
12 ll. 36–38.
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.          25



cantly, however, claim 1 does not require deriving or
displaying a subset of documents. Instead, it requires
deriving a subset of cluster links. See ’494 patent, col. 51
ll. 44–45 (reciting “deriving actual cluster links from the
candidate cluster links”). Likewise, claim 5 does not
require eliminating documents, but instead only requires
eliminating candidate cluster links. See id. col. 52 ll. 1–4
(reciting “eliminating candidate cluster links, wherein the
number of candidate cluster links are limited and the
closest candidate cluster links are chosen over the re-
maining links”). As discussed above, Fox SMART’s clus-
ter-splitting procedure teaches deriving a subset of actual
cluster links from the set of candidate links when it
describes the procedure for splitting overly large clusters.
Software Rights points to nothing in claims 1 and 5 that
additionally requires deriving a subset of documents for
display. We conclude, therefore, that the board erred in
confirming the patentability of claims 1 and 5 over Fox
SMART. See Board Decision III, 2015 WL 456539, at *8–
11.
VI. Claims 15 and 16 of the ’494 Patent
    For similar reasons, we conclude that the board erred
in confirming the patentability of claims 15 and 16 of the
’494 patent over Fox Thesis. See id. at *13. The only
limitation in claims 15 and 16 that the board found miss-
ing from Fox Thesis was the step of deriving a subset of
actual cluster links from the set of candidate cluster links.
Id. Because the process for splitting overly large clusters
in Fox Thesis is essentially the same as that described in
Fox SMART, the board erred in concluding that Fox
Thesis fails to teach the step of deriving actual cluster
links from the set of candidate cluster links.
    Fox Thesis and Fox SMART arose from the same the-
sis project and were originally part of one document. See
Board Decision I, 2015 WL 470598, at *9. It is unsurpris-
ing, therefore, that the clustering process described in Fox
26          SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



Thesis tracks that described in Fox SMART. Indeed, Fox
SMART specifically refers to Fox Thesis when it describes
its clustering algorithm. See J.A. I 10271. Like Fox
SMART, Fox Thesis describes a procedure in which overly
large clusters are split and new clusters are formed based
on high pairwise similarity values. See J.A. I 10607,
10613–14; see also J.A. I 10619 (explaining that a cluster
will be split when “the splitting limit of 20 [documents] is
reached”). As Fox Thesis explains, its algorithm will
continually split and reform clusters so that “the tree
stays relatively balanced and all documents are the same
distance from the root.” J.A. I 10613. In Fox Thesis, each
new, smaller cluster contains a derived set of actual
cluster links. See J.A. I 10614–21 (providing an example
of the procedure for splitting an overly large cluster and
forming smaller clusters of closely linked documents).
     Software Rights contends that Fox Thesis does not
teach clustering with bc and cc because it does not require
the use of bc and cc when forming clusters. This argu-
ment is unavailing. As discussed previously, Fox Thesis
and Fox SMART are both replete with statements en-
couraging the use of indirect relationships, such as bc and
cc, to cluster documents and search databases. See, e.g.,
J.A. I 10584–89, 10633–38 (Fox Thesis); J.A. I 10255–82
(Fox SMART). The fact that they do not in all cases
mandate the use of indirect relationships during the
clustering process does not mean that they do not teach
the use of bc and cc for clustering. See Hewlett–Packard
Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir.
2003) (explaining that “a prior art product that some-
times, but not always, embodies a claimed method none-
theless teaches that aspect of the invention”); see also
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376
(Fed. Cir. 2005) (concluding that a prior art reference
anticipated notwithstanding the fact that it disclosed a
claimed compound in a list with other suitable “skin
benefit ingredients”).
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.        27



    Software Rights attempts to salvage the board’s deci-
sion upholding the patentability of claims 1, 5, 15, and 16
by seeking affirmance on grounds not raised before the
board. As a general rule, however, arguments not raised
before the board are waived on appeal. See Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 450
(Fed. Cir. 2015); see also Camp v. Pitts, 411 U.S. 138, 142
(1973) (per curiam) (emphasizing that “the focal point for
judicial review should be the administrative record al-
ready in existence, not some new record made initially in
the reviewing court”); In re Lee, 277 F.3d 1338, 1345 (Fed.
Cir. 2002) (explaining that “review of an administrative
decision must be made on the grounds relied on by the
agency”).
VII. Claim 21 of the ’571 Patent
    Finally, we conclude that the board erred when it de-
termined that claim 21 of the ’571 patent is patentable
over a combination of Fox Thesis, Fox SMART, and Fox
Envision. See Board Decision II, 2015 WL 429750, at
*16–18. The board found that the prior art failed to teach
a specific feature of claim 21, the limitation requiring
“deriving actual cluster links from the set of candidate
cluster links.” J.A. II 5090 (emphasis omitted); see Board
Decision II, 2015 WL 429750, at *17–18. As discussed
above, however, the cluster-splitting procedure disclosed
in both Fox SMART and Fox Thesis teaches deriving
actual cluster links from a set of candidate cluster links.
Furthermore, the actual cluster links in Fox SMART are
selected “based on the assigned weights,” as claim 21
requires, J.A. II 5090 (emphasis omitted), because the
final clusters are defined by pairs of documents that have
been assigned high similarity values. See J.A. II 5961–62.
    Software Rights argues that the Fox Papers do not
teach “determining . . . hyperjump data that has an
indirect reference to the chosen node,” J.A. II 5090, be-
cause “[t]he clusters produced from Fox’s clustering
28           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



process contain documents that do not have any indirect
relationships between them.” This argument fails. Fox
Thesis and Fox SMART teach clustering using bc and cc,
even if some clusters contain documents that are assigned
to that cluster based upon relationships other than bc and
cc. See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (explaining that the fact that the
prior art discloses a “multitude of effective combinations”
does not mean that any particular combination is not
obvious). We therefore reverse the board’s decision con-
cluding that Facebook failed to establish that claim 21 of
the ’571 patent is obvious over the prior art.
                        CONCLUSION
    We have considered Software Rights’ remaining ar-
guments but do not find them persuasive. Accordingly,
we affirm the determinations of the Patent Trial and
Appeal Board that claims 18–20, 45, 48–49, 51, and 54 of
the ’494 patent and claims 12 and 22 of the ’571 patent
are unpatentable on the ground of obviousness, but re-
verse its determinations that claims 1, 5, 15, and 16 of the
’494 patent and claim 21 of the ’571 patent are patentable
over the prior art.
 AFFIRMED-IN-PART AND REVERSED-IN-PART
                           COSTS
     The cross-appellants shall have their costs.
       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                    ______________________

        SOFTWARE RIGHTS ARCHIVE, LLC,
                  Appellant

                                    v.

  FACEBOOK, INC., LINKEDIN CORPORATION,
               TWITTER, INC.,
               Cross-Appellants
            ______________________

              2015-1649, 2015-1650, 2015-1651
                  ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2013-00479, IPR2013-00480.

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

        SOFTWARE RIGHTS ARCHIVE, LLC,
                  Appellant

                                    v.

  FACEBOOK, INC., LINKEDIN CORPORATION,
               TWITTER, INC.,
               Cross-Appellants
            ______________________

                      2015-1652, 2015-1653
2           SOFTWARE RIGHTS ARCHIVE, LLC    v. FACEBOOK, INC.



                  ______________________

   Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
IPR2013-00481.
               ______________________

CHEN, Circuit Judge, dissenting in part.
     I join the court’s opinion with the exception of parts V,
VI, and VII, which all relate to the cross-appeals filed by
Facebook, Inc., LinkedIn Corporation, and Twitter, Inc.
(collectively “Cross-Appellants”). In those parts of the
opinion, the majority reverses the Patent Trial and Ap-
peal Board’s decisions, which found that claims 1 and 5 of
U.S. Patent No. 5,832,494 were not anticipated by Fox
SMART; claims 15 and 16 of the ’494 patent were not
anticipated by Fox Thesis; and claim 21 of U.S. Patent
No. 6,233,571 would not have been obvious in view of Fox
SMART, Fox Thesis, and Fox Envision. I would hold that
the Board’s findings that the prior art references failed to
disclose “deriving actual cluster links from the candidate
cluster links” 1 were supported by substantial evidence. I



    1    Claims 1 and 5 of the ’494 patent explicitly in-
clude the limitation “deriving actual cluster links from the
candidate cluster links.” ’494 patent, 51:44–45. The
parties do not dispute that claims 15 and 16 of the ’494
patent and claim 21 of the ’571 patent include this same
limitation, albeit using slightly different words. See id. at
52:65–67 (“The method of claim 14 further comprising the
step of deriving the actual cluster links wherein the
actual cluster links are a subset of the candidate cluster
links.”); ’571 patent (Reexamination Certificate), 2:53–54
(“deriving actual cluster links from the set of candidate
cluster links based on the assigned weights”).
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.         3



would therefore affirm the Board’s Final Written Deci-
sions in full.
    In support of its unpatentability holding, the majority
identifies the cluster-splitting process disclosed in Fox
SMART and Fox Thesis as disclosing the “deriving”
limitation. The majority describes the steps in this pro-
cess as involving (1) the creation of a “similarity matrix”
representing the calculated similarity between individual
pairs of documents in a cluster; (2) the identification of
“highly correlated pairs” of documents within the cluster
based on the calculated similarity values found in the
similarity matrix; and (3) the formation of new, smaller
clusters containing those “highly correlated pairs” of
documents. Op. at 21–22 (citations omitted). The majori-
ty equates these new, smaller clusters with the “actual
cluster links” described in the claims and contends that
they are derived from “candidate cluster links” in the form
of the calculated similarity values. Id. at 22.
    The Board found to the contrary. It first construed
“actual cluster links” to mean “a subset of the candidate
cluster links, which meet certain criteria.” Board Deci-
sion III, 2015 WL 456539, at *5. It then reasoned that
under the construction—which Cross-Appellants did not
challenge on appeal—derivation of actual cluster links
required deletion of at least some candidate cluster links.
Id. at *9–10. The Board reviewed the Fox references and
found that the only cluster links deleted in the cluster-
splitting process are “those that simply overlap, or dupli-
cate, other clusters,” which means that, in fact, no candi-
date cluster links are deleted at all. Id. at *10. As a
result, Fox SMART and Fox Thesis failed to disclose the
“deriving” step.
    I believe the Board’s conclusion is based on a reasona-
ble reading of those references. The ’494 patent’s descrip-
tion of deriving candidate cluster links is clear:
4           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



    Once the candidate cluster link set has been gen-
    erated, deriving the actual cluster links is a sim-
    ple matter of selecting or choosing the T top rated
    candidate links, and eliminating the rest.
’494 patent, 24:1–4 (emphasis added) (diagram numbering
omitted); see also Op. at 20. That description is consistent
with the Board’s construction of “actual cluster links.”
The cluster-splitting process disclosed in Fox SMART and
Fox Thesis, in contrast, uses a qualitatively different
approach. As the Board found, that process does not
involve eliminating any candidate cluster links. Instead,
cluster-splitting simply redistributes the candidate clus-
ter links among two or more clusters. Such redistribution
cannot result in a “subset of the candidate cluster links”
as required by the claims.
    Further, the majority, in my view, conflates two dif-
ferent aspects of information retrieval to reach its conclu-
sion: creating a database and searching a database.
    The Fox references use cluster-splitting in database
creation. Fox describes adding documents to a database
as akin to placing leaves on a tree. J.A. I 10272 (“The
clustering algorithm produces a hierarchy where all N
documents in a collection end up as leaves of a multilevel
tree.”). One by one each document is placed on the par-
ticular branch of the tree (i.e., the “cluster”) containing
other documents with which it is most similar. Id. When
a branch is assigned more documents than it can bear,
that branch splits in two. Id. It is at this step that the
cluster-splitting process occurs. Documents continue to
be added to the tree—and branches/clusters are split as
necessary—until no documents remain. J.A. I 10275
(“Adding documents . . . simply involves finding the
proper place to insert, attaching the incoming entry
appropriately, and recursively splitting overly large nodes
from that point up the tree as needed.”).
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.          5



    In contrast to creating the database, the claims at is-
sue are directed to analyzing (i.e., searching) an already
populated database. Claims 1 and 5 of the ’494 patent are
exemplary. They expressly claim a “method of analyzing
a database.” ’494 patent, 51:38. The claimed method
begins with the selection of a document (i.e., a “node”) for
analysis and results in the display of other, similar docu-
ments as determined by the “actual cluster links.” Id. at
51:38–49. During oral argument, counsel for Cross-
Appellants LinkedIn and Twitter compared the claimed
methods to a Lexis search for “more cases that are like
this case.” 2 Oral Argument Tr., No. 2015-1652, 19:13–
20:30.
    Fox SMART confirms that, while the process used to
search a database is similar to the process used to create
the database, the processes are different. J.A. I 10281
(“Searching a clustered tree is very much like finding the
correct place to add a new document . . . . However,
searching has a different objective; instead of finding the
single twig where insertion should follow[,] one would like
to retrieve and rank documents so that all relevant docu-
ments, regardless of what cluster they appear in, are



   2    Though claims 15 and 16 of the ’494 patent are di-
rected to “method[s] of representing the relationships
between nodes,” ’494 patent, 52:51–52, Cross-Appellants
make no argument that this difference impacts the un-
patentability analysis. Cross-Appellants’ Br. 75 (“For the
same reasons explained above with respect to claim 1, the
Board’s decision [with respect to claims 15 and 16] was
erroneous and should be reversed.”). And, like claims 1
and 5 of the ’494 patent, claim 21 of the ’571 patent in-
volves a method that begins with the selection of a node
for analysis and results in the display of data as deter-
mined by “actual cluster links.” ’571 patent (Reexamina-
tion Certificate), 2:38–55.
6           SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.



retrieved as soon as possible.”). Neither Fox SMART nor
Fox Thesis suggests that the cluster-splitting process
used in database creation is part of search. Cross-
Appellants’ reliance on Fox’s cluster-splitting in support
of their unpatentability arguments is therefore misplaced.
    Moreover, the search process described in Fox SMART
and Fox Thesis necessarily follows database creation. See
J.A. I 10270 (“Clustering is simply a process for creating
groupings, and clustered search allows retrieval of groups
in response to query submission.”). By the time a user
searches the database, the document tree is already full.
It is thus the links within this fully formed tree that must
serve as the claimed “candidate cluster links,” a proposi-
tion that counsel for Cross-Appellants LinkedIn and
Twitter admitted at oral argument results in a “dead
end.” Oral Argument Tr., No. 2015-1652, 22:34–22:42.
This is because Fox SMART makes clear that a search
returns all documents in the database. As the Board
explained, “Fox SMART states that ‘one would like to
retrieve and rank documents so that all relevant docu-
ments, regardless of what cluster they appear in, are
retrieved as soon as possible.’” Board Decision III, 2015
WL 456539, at *10 (emphasis added) (quoting J.A. I
10281). No documents are deleted or otherwise removed
before presentation to the user. As such, the Board was
correct to find that Fox SMART’s search process cannot
satisfy the unchallenged construction of “actual cluster
links.” Id. at *10 (“We are not persuaded that Fox
SMART’s description of ranking documents discloses
deriving a subset because a set of ranked documents
provides an indication of an order of presentation, but is
not a subset. . . . Because Petitioner does not point to
disclosure of deriving a subset, Petitioner has not shown
by a preponderance of the evidence display using links of
that subset.”). I therefore would find that substantial
evidence supports the Board’s decision that the Fox
references do not disclose a key limitation of claims 1, 5,
SOFTWARE RIGHTS ARCHIVE, LLC   v. FACEBOOK, INC.     7



15, and 16 of the ’494 patent and claim 21 of the ’571
patent and, as a result, do not render those claims un-
patentable.
