NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
INTELLECTUAL VENTURES I LLC, Appellant
v.
EMC CORPORATION, LENOVO (UNITED STATES) INC., NET APP, INC., Appellees ______________________
2018-2289, 2018-2290 ______________________
Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017- 00374, IPR2017-00439. ______________________
Decided: September 25, 2019 ______________________
WILLIAM H. MILLIKEN, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC, argued for appellant. Also repre- sented by BYRON LEROY PICKARD, DANIEL S. BLOCK.
CYNTHIA D. VREELAND, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for all appellees. Ap- pellee EMC Corporation also represented by DANA OLCOTT BURWELL, PETER M. DICHIARA, MARK CHRISTOPHER FLEMING; MICHAEL H. SMITH, Washington, DC; THOMAS A. 2 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
BROWN, Dell Inc., Hopkington, MA.
BENJAMIN EDWARD WEED, K&L Gates LLP, Chicago, IL, for appellees Lenovo (United States) Inc., Net App, Inc. Also represented by CHRISTOPHER CENTURELLI, Boston, MA. ______________________
Before TARANTO, CHEN, and STOLL, Circuit Judges. TARANTO, Circuit Judge. Intellectual Ventures I, LLC owns U.S. Patent No. 8,275,827, which describes and claims methods and sys- tems for using storage available on network-attached de- vices. After IV filed suits alleging infringement of the ’827 patent, EMC Corp., Lenovo (United States) Inc., and NetApp, Inc. (collectively, EMC) filed two petitions in the Patent and Trademark Office (PTO) for inter partes re- views of certain claims of the ’827 patent under 35 U.S.C. §§ 311–319. The PTO’s Patent Trial and Appeal Board, acting as delegee of the PTO’s Director, 37 C.F.R. §§ 42.4, 42.108, instituted both reviews. The Board ultimately de- termined that several claims of the ’827 patent are un- patentable. IV appeals. It argues that the Board erred in its claim construction of one claim limitation and that, under a proper construction, that claim limitation is not taught by the cited references. IV also argues that EMC, in its peti- tions, did not adequately set forth the basis for its chal- lenge regarding another claim limitation. Finally, IV argues that the Board improperly relied on its own filling of gaps left by EMC’s evidence. We conclude that the Board properly found the first claim limitation met for two reasons: for both IPRs, IV’s proposed claim construction is incorrect; for one IPR, even under IV’s construction, the cited reference discloses what the limitation requires. We also reject EMC’s challenge to INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 3
the sufficiency of EMC’s petitions regarding the second claim limitation at issue. And we determine that the Board did not rely on improper gap filling in its obviousness anal- ysis. We therefore affirm the Board’s decisions. I A The ’827 patent is titled “Software-Based Network At- tached Storage Services Hosted on Massively Distributed Parallel Computing Networks.” A “network attached stor- age (NAS) device” is a device that is connected to a network to provide storage capacity to network-connected users. ’827 patent, col. 2, lines 18–20. Traditionally, the patent says, NAS devices were “stand-alone devices or systems that contain[ed] their own storage, processing, connectivity and management resources.” Id., col. 2, lines 12–14. A “dedicated NAS device” is one “whose primary operational purpose is for providing NAS service.” Id., col. 2, lines 34– 35. The patent asserts that traditional dedicated NAS de- vices often had inferior hardware components compared to increasingly cheap and increasingly ubiquitous desktop computers, id., col. 2, lines 46–55, and that the invention takes advantage of the storage resources on those desktop computers, which often sat idle, id. Because the patent contemplates provision of NAS ser- vices by devices (such as desktop computers) that are not dedicated to providing NAS functionality, the specification states that the term “NAS device,” as used in the patent, “broadly refers to a device that makes data storage re- sources available to network-connected user devices.” Id., col. 2, lines 31–35. It describes creating non-dedicated NAS devices through installation of a client agent program on a multiplicity of networked, distributed computers, many of which are used for non-NAS purposes. Id., col. 2, line 59, through col. 3, line 17. This program takes ad- vantage of unused resources on the distributed computers 4 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
and provides NAS services to connected user devices. Id., col. 3, lines 6–21. The patent states that “a large number of desktop” computers “can each act as a[n] NAS device by running a client agent program and NAS component that brings its resources to the network with the appearance of a dedi- cated NAS device or as part of an integrated system that appears as a single or dedicated NAS device.” Id., col. 42, lines 59–65. The patent goes on to describe at least three embodiments of the NAS system claimed in the ’827 patent: (1) a system in which the NAS devices function as “stand- alone” devices, each directly accessed by user devices; (2) an “NAS fabric” system in which some NAS devices main- tain storage-location information about other NAS devices, with the information used to direct users to the particular devices storing requested data; and (3) a “server assisted” system in which a server receives storage and access re- quests from user devices and plays a role in directing user devices to the distributed device storing requested data. Id., col. 43, line 34 through col. 44, line 46; see also id., fig. 21. The patent includes two independent claims, claims 1 and 13, both at issue in this appeal. Claim 1 recites: 1. A computer-implemented method comprising: configuring a distributed processing system of a plurality of distributed devices coupled to a net- work, wherein the plurality of distributed devices include respective client agents configured to pro- cess respective portions of a workload for the dis- tributed processing system, wherein the respective client agents for particular distributed devices of the plural- ity of distributed devices have correspond- ing software-based network attached storage (NAS) components configured to INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 5
assess unused or under-utilized storage re- sources in selected distributed devices of the plurality of distributed devices; representing with the corresponding software- based NAS component that the selected distributed devices respectively comprise NAS devices having an available amount of storage resources related to the unused and under-utilized storage resources for the selected distributed devices; processing one or more of data storage or access workloads for the distributed processing system by accessing data from or storing data to at least a portion of the available amount of storage re- sources to provide NAS service to a client device coupled to the network; and enabling at least one of the selected distributed de- vices to function as a location distributed device to store location information associated with data stored by the selected distributed devices through use of the respective client agents for the particular distributed device. Id., col. 46, lines 28–56. Claim 13 parallels claim 1, except that, first, the subject of claim 13 is a system, rather than a method, and, second, it adds a requirement that the NAS component is configured to “allocate respective available amount of unused storage resources in selected distributed devices of the plurality of distributed devices.” Id., col. 47, lines 38–40. B In December 2016, EMC petitioned for an inter partes review of certain claims of the ’827 patent, relying for its primary reference on John Kubiatowicz et al., OceanStore: An Architecture for Global-Scale Persistent Storage, 35 ACM SIGPLAN NOTICES 190 (2000) (OceanStore). Later that month, EMC petitioned for another inter partes 6 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
review of a slightly different set of the ’827 patent’s claims, this time invoking as its primary reference a patent appli- cation naming Carter and others as inventors, Patent Co- operation Treaty publication WO 98/22881 (Carter). On the first petition, the Board instituted a review of claims 1, 2–9, 13, and 15–21—the OceanStore IPR. That IPR came to include three grounds: anticipation by OceanStore; obviousness over OceanStore; and obvious- ness over OceanStore combined with another reference (Condor). In its final written decision, the Board held claims 1, 3–9, 13, 15, 16, and 18–21 unpatentable for obvi- ousness over OceanStore. EMC Corp. v. Intellectual Ven- tures I LLC, No. IPR2017-00374, 2018 WL 3089864, at *11–21 (P.T.A.B. June 20, 2018) (OceanStore Decision). On the second petition, the Board instituted a review of claims 1, 3–6, 8, 9, 13, 15–18, 20, and 21—the Carter IPR. That IPR came to include two grounds: anticipation by Carter of all but claims 5 and 17; and obviousness of claims 5 and 17 over Carter and another reference (Pitzel). In its final written decision, the Board held claims 1, 3, 4, 6, 8, 9, 13, 15, 16, 18, 20, and 21 unpatentable as antici- pated by Carter and claims 5 and 17 unpatentable for ob- viousness over Carter and Pitzel. EMC Corp. v. Intellectual Ventures I LLC, No. IPR2017-00439, 2018 WL 3089250, at *8–21 (P.T.A.B. June 20, 2018) (Carter Deci- sion). Claim 17 was addressed only in the Carter IPR, whereas claims 7 and 19 were addressed only in the OceanStore IPR. In both the OceanStore IPR and the Carter IPR, the parties proposed competing constructions of the claim lim- itation, “representing with the corresponding software- based NAS component that the selected distributed devices respectively comprise NAS devices.” EMC proposed that the phrase means “using the corresponding software-based NAS components of the selected distributed devices to mimic dedicated NAS devices,” whereas IV proposed that INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 7
the phrase means “using the corresponding software-based NAS components of the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS de- vice.” OceanStore Decision at *4; Carter Decision at *4. The Board rejected IV’s construction as unduly narrow. OceanStore Decision at *5–6; Carter Decision at *5–6. It also concluded that, even under IV’s construction, both OceanStore and Carter disclose “representing” as required by this claim limitation. OceanStore Decision at *6, *14; Carter Decision at *6, *15–16. In each proceeding, IV sought leave to file a motion to strike EMC’s reply. The Board allowed IV to file a two- page paper in each proceeding that identified the argu- ments in EMC’s replies that IV deemed improper. In those papers, IV argued that EMC, in its replies, had improperly presented arguments for unpatentability not contained in EMC’s petitions. The Board disagreed, reasoning that EMC’s arguments and evidence fairly responded to argu- ments raised in IV’s responses. OceanStore Decision at *25; Carter Decision at *25–26. IV timely appealed the Board’s decisions. We have ju- risdiction under 28 U.S.C. § 1295(a)(4)(A). We review claim constructions de novo in a case like this, in which the relevant issue turns only on intrinsic ev- idence. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–41 (2015); Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018). It is not disputed that, in this case, the Board was required by regulation to adopt the broadest reasonable interpreta- tion when construing the claims. Anticipation is a question of fact, whose resolution by the Board we review for substantial evidence. In re Ram- bus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014). We review the Board’s determination of obviousness de novo and its underlying factual findings for substantial-evidence 8 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
support. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). Factual determinations include “findings as to the scope and content of the prior art, the differences between the prior art and the claimed inven- tion, the level of ordinary skill in the art, the presence or absence of a motivation to combine or modify with a rea- sonable expectation of success, and objective indicia of non- obviousness.” Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015). “Substantial evi- dence review asks ‘whether a reasonable fact finder could have arrived at the agency’s decision’ and requires exami- nation of the ‘record as a whole, taking into account evi- dence that both justifies and detracts from an agency’s decision.’” Intelligent Bio-Systems, Inc. v. Illumina Cam- bridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review the Board’s procedural decisions for abuse of discretion. Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018). II IV challenges the Board’s construction of the “repre- senting” limitation. According to IV, the Board’s construc- tion omitted both parts of what IV says is a dual requirement of the limitation—that (1) each distributed de- vice must represent (2) “to the user device” that it includes its own NAS device. Appellant’s Brief at 22. Under a proper construction of the term, IV contends, neither OceanStore nor Carter discloses a process that meets the “representing” limitation. A We conclude first that IV’s claim construction is incor- rect in demanding that the representation required by the “representing” limitation be made “to the user device” (the device of a user requesting storage). IV has made no sub- stantial argument that, if there is no such requirement, the INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 9
Board was wrong to find that both OceanStore and Carter meet the “representing” limitation. In both IPRs, we there- fore affirm the Board’s finding that this limitation is met. 1 We reject IV’s argument that the “representing” limi- tation requires the representation to be made to the user device. We find nothing in the claim language or specifica- tion that supports IV’s position under the broadest-reason- able-interpretation standard. The claim language does not say to whom the required representation must be made. In particular, it does not narrow the recipient class for the required representation to the user device. The claims at issue do not recite user devices at all. ’827 patent, col. 46, lines 28–56. We also see inadequate support for IV’s “to the user de- vice” requirement in the specification, either in the two specification statements to which IV has pointed or else- where. The first statement reads, “[A] client agent pro- gram is configured to run on the network-connected client devices that are part of the distributed computing system to provide what appears to user devices as dedicated NAS functionality . . . .” ’827 patent, col. 2, lines 61–66. The second reads, “Through the client agent and infrastructure implementation of the present invention, such devices can provide storage capabilities that allow these devices to ap- pear to users as dedicated NAS devices . . . .” Id., col. 42, lines 54–59. Merely “appear[ing]” to a user device does not mean that a given distributed device has represented itself as an NAS device to the user device; such a device may ap- pear as an NAS device to the user device because, e.g., the user device received that representation about the particu- lar device from another device. Regardless, even if “ap- pear(s)” equates to “represent,” the two specification statements do not require each individual client device to present itself to a user device as a dedicated NAS device. The first statement speaks only of a user device seeing NAS 10 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
“functionality,” and both it and the second statement are reasonably understood as covering a user device seeing the client devices collectively as dedicated NAS devices. The specification language does not include the word “respec- tively” that appears in the claims and points toward indi- vidualized representations (though not “to the user device”). Indeed, the sentence following IV’s citation to column 42 says that “a large number of desktop PCs in the enter- prise (Intranet) or on the Internet can each act as a[n] NAS device by running a client agent program and NAS compo- nent that brings its resources to the network . . . as part of an integrated system that appears as a single or dedicated NAS device.” Id., col. 42, lines 59–65. Thus, the specifica- tion contemplates that each distributed device might not make a representation to a user device. IV has so acknowl- edged, explaining that, while its proposed construction co- vers the three specific embodiments described in columns 43 and 44, it reads out the “integrated system” implemen- tation identified in column 42. 2 Having rejected IV’s proposed requirement that the claimed representation must be made to the user device, we affirm the Board’s finding that both OceanStore and Carter teach the claim limitation. The crux of IV’s argu- ment that neither reference teaches the limitation is that both references disclose systems in which user devices see only a single, aggregated storage pool. Appellant’s Reply Brief at 9 (“OceanStore does not disclose the ‘representing’ limitation under the correct construction because OceanStore’s system appears to user devices as a single pot of storage.”), 12 (“Carter describes only a shared memory that appears to each node as a single, large storage space.”). IV does not argue that, in the absence of a “to the user device” requirement, OceanStore and Carter do not disclose the representing limitation. INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 11
Nor is it surprising that IV keys its argument to the “to the user device” requirement. As we will discuss in the next section, IV’s position is that a distributed device rep- resents itself as an NAS device whenever it engages in a memory transaction with another device. To function as an NAS device on that understanding—i.e., making stor- age resources available to network-connected user de- vices—a given distributed device must communicate to some other network-connected device that it has available storage space. Likewise, when a user device accesses data stored on an NAS device, the latter must communicate that data to another device so that it may, directly or indirectly, reach the user device. Therefore, under IV’s position de- scribed next, a network-connected distributed device func- tioning as an NAS device necessarily represents that it is an NAS device to some other device on the network, even if that other device may not be the user device. B For the OceanStore IPR, there is a second basis to af- firm the Board’s finding about the “representing” limita- tion. Substantial evidence supports the Board’s finding that OceanStore teaches the limitation even under IV’s construction. 1 In its opening brief and its reply brief, IV argues that all three embodiments discussed in columns 43 and 44 of the ’827 patent—i.e., “stand alone” NAS, “NAS fabric,” and “server assisted” NAS—meet the “representing” limitation. In so arguing, IV makes clear what suffices to meet the claim limitation within its construction. The first embodiment meets the limitation, IV says, be- cause user devices directly access each NAS device as if it were a traditional dedicated NAS device. ’827 patent, col. 43, lines 44–58. In the NAS fabric embodiment, at least some of the distributed devices contain location 12 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
information used to provide links or directions to data that might be stored in any of several NAS devices on the net- work, id., col. 43, lines 59–66, and an NAS device storing location information receives a request from a user device and then directs the user device to the NAS device storing the requested data, id., col. 44, lines 13–16. IV asserts that the “representing” limitation is met in this setting because, once the user device is directed to the storing device, the resulting direct user-device/storing-device interaction nec- essarily includes the storing device representing to the user device, not just to some other entity on the internal net- work, that it is an NAS device. IV’s position on coverage of the third embodiment, involving server assistance, is simi- lar. In that embodiment, the server receives requests from a user device and directs the user device to the NAS device storing the requested data. Id., col. 44, lines 24–42. Ac- cording to IV, the resulting direct user-device/storing-de- vice interaction means that the latter is representing itself to the former as an NAS device, as in the NAS fabric em- bodiment. 2 IV’s argument for why the NAS fabric and server as- sisted embodiments come within its construction estab- lishes a sufficient condition for a disclosure to meet the “representing” limitation under IV’s construction. OceanStore satisfies that condition. Like the ’827 patent, OceanStore notes the ubiquity of computing devices configured with excess storage space. OceanStore at 191. OceanStore envisions a system of geo- graphically distributed servers—referred to as “nodes”— that store “replicas” (copies) of user data, easing users’ ac- cess to their data. Id. at 191, 193. Every “persistent object” (stored item) in OceanStore is identified by a globally unique identifier (GUID). Id. at 191. An object and a rep- lica of the object are directly addressable using the same GUID. Id. at 192–93. INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 13
Messages in OceanStore are handled by the routing layer of the OceanStore protocol. Id. at 193. A user device accesses requested data by a two-step process. “Messages begin by routing from node to node along the distributed data structure until a destination is discovered. At that point, they route directly to the destination.” Id. (emphasis added); see also id. at 194 (“When someone searches for in- formation, they climb the tree until they run into a pointer, after which they route directly to the object.”). The Board found: “In the second stage, after the node that has the requested object is identified, messages can be directly sent to that node without having to route through the other nodes.” OceanStore Decision at *9. That finding is a reasonable reading of the article. And the Board’s find- ing establishes that OceanStore discloses the “represent- ing” limitation for the same reasons that the NAS fabric meets the limitation according to IV. Just as the user de- vice comes to directly interact with the storing node in the NAS fabric embodiment, the user devices in OceanStore come to communicate directly with the desired object once the location of that object is discovered. IV suggests that substantial evidence does not support the Board’s finding about OceanStore. IV disputes that OceanStore teaches an NAS device communicating directly with a user device; rather, IV argues, the direct communi- cation that occurs during the second stage of message rout- ing is between the storing node and the node nearest the user device. The Board could reasonably find otherwise. Although OceanStore discusses communication with “the closest entity,” the “entit[ies]” at issue in this particular context are the nodes storing a replica of the desired object. OceanStore at 193. OceanStore explains that its method of routing messages allows the client—i.e., the user device— to communicate with the nearest node storing a replica of the desired object, rather than whichever node the client last communicated with when accessing the desired object. 14 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
Id. Therefore, this “closest entity” is the storing node, not the node nearest the user device. Id. Figure 2 of OceanStore does not contradict this under- standing. OceanStore’s mechanism for routing uses a two- tiered approach, “featuring a fast, probabilistic algorithm backed up by a slower, reliable hierarchical method.” Id. The probabilistic algorithm uses attenuated Bloom filters, which indicate the objects stored on an edge of nodes. Id. Figure 2 illustrates how queries are routed along the edge whose Bloom filter indicates the desired object is closest; this query eventually determines the precise node where the object is located. Id. Thus, Figure 2 portrays how the first step of message routing works—routing node to node until the destination is discovered; it is unrelated to the di- rect communication that occurs after the destination is dis- covered. The figure thus does not support IV’s argument. Nor is IV’s argument about OceanStore supported by OceanStore’s statement that “[i]f replicas move around, only the network, not the users of the data, needs to know.” Id. Users need not know the location of the desired object because they are eventually directed there by the network. This is precisely how the NAS fabric described by the ’827 patent functions: A user device makes a request, and an- other device with location information directs it to the stor- ing device. ’827 patent, col. 44, lines 13–16. IV has insisted that the “representing” limitation is met by that process. We conclude that substantial evidence supports the Board’s finding that OceanStore discloses the “represent- ing” limitation under IV’s proposed construction. We do not address the same alternative ground for Carter, as to which the resolution of this issue is less clear from the Board’s decision, the particular portions of Carter relied on by the Board’s decision, and EMC’s petition and evidence. INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 15
III IV asserts that the Board erred in holding that the “al- locate” limitation of claim 13 was taught by or would have been obvious in light of the prior art. IV’s argument is that the Board, in making that determination, improperly re- lied on arguments and evidence presented for the first time in EMC’s reply. That reliance, EMC contends, violates statutory and regulatory requirements. See 35 U.S.C. § 312(a)(3) (IPR petition must identify the grounds with particularity and the evidence that supports the grounds); 37 C.F.R. § 42.104(b)(4) (petition must specify where each claim element is found in the relied-on prior art); Office Pa- tent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (a reply may respond to the patent owner’s re- sponse but “a reply that raises a new issue or belatedly pre- sents evidence will not be considered”). We have generally treated Board rulings challenged on such grounds as subject to review for abuse of discretion. See, e.g., Intelligent Bio-Systems, 821 F.3d at 1367; Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015). Legal errors can make a ruling an abuse of discretion, and legal questions are decided de novo. See Yancheng Baolong Biochemical Products Co., Ltd. v. United States, 406 F.3d 1377, 1380 (Fed. Cir. 2005). But we do not see a genuine legal issue here, only an application of the legal standards to the case-specific facts presented in the two IPRs. We find no reversible error regarding the “allocate” limitation of claim 13. We consider the OceanStore petition first, then the Carter petition. A The entirety of the discussion of the “allocate” limita- tion in the OceanStore petition is as follows: Claim element 13[d] is satisfied for the same rea- sons as element 1[d]. (Ex. 1002, ¶138.) In this re- gard, Dr. Kubiatowicz explains that desktop 16 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
workstations with excess storage and using OceanStore software would allocate the excess storage for use by OceanStore users (i.e., making it available for other devices to use) but would re- serve other workstation storage for purely local use, e.g., to store computer programs, local operat- ing system and the like. (Ex. 1002, ¶138.). J.A 249. The referred-to element 1[d] is the “representing” limitation. J.A. 235. The cited paragraph of the declara- tion of EMC’s expert, Dr. Kubiatowicz, is almost identical to the paragraph in the petition. J.A. 1386 (itself citing back to earlier paragraphs 102–104, J.A. 1371–72). In its preliminary response, IV argued that EMC failed to explain how any statements it made regarding the “rep- resenting” limitation were relevant to the “allocate” limita- tion. J.A. 298. IV further argued that Dr. Kubiatowicz’s testimony deserved little weight, because it simply par- roted the arguments made in the petition. J.A. 299–300. But the Board, in its institution decision, relied partly on Dr. Kubiatowicz’s declaration to determine, under the in- stitution-stage standard, that a relevant artisan would have understood OceanStore as teaching or at least sug- gesting the “allocate” limitation. J.A. 357–58. In its post-institution response, IV again argued that EMC’s petition failed to establish a prima facie case of ob- viousness for the “allocate” limitation of claim 13. J.A. 465. IV further argued that OceanStore does not in fact teach or suggest allocating and contains no discussion of how or when storage is allocated in the OceanStore system. J.A. 467. In reply, EMC pointed out that the ’827 patent itself neither claims any particular method of allocation nor con- tains any description of an allocation method in its specifi- cation. J.A. 535–36. EMC also quoted a portion of its expert’s deposition and argued that IV had not explained why OceanStore does not suggest allocating when it INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 17
teaches that its nodes both assess unused storage and make that storage available to other devices. J.A. 536–37. IV then requested authorization to file a motion to strike certain portions of EMC’s reply. The Board declined, instead granting IV authorization to submit a list of im- proper reply arguments, a list the Board would consider in its final written decision. J.A. 587–88. IV filed its list, identifying one argument regarding the “allocate” limita- tion. J.A. 608–09. In its final written decision, the Board determined that the arguments in EMC’s reply were ap- propriate and fairly responded to arguments IV raised in its responses. OceanStore Decision at *25. We conclude that EMC’s petition provided IV legally adequate notice of and support for its theory of unpatenta- bility, including with respect to the “allocate” limitation. In the portion of its petition effectively incorporated by refer- ence into the analysis of the “allocate” limitation, EMC ex- plained that “the OceanStore software provided the functionality for the pool devices, such as desktop work- stations with excess storage, to instead appear, function and act as storage servers on the network, providing stor- age resources to user devices connected to the network.” J.A. 235–36. Both the petition and Dr. Kubiatowicz’s dec- laration, in their brief discussions of the claim 13 “allocate” limitation, refer back to passages that highlight the re- quirement to make storage available. See J.A. 1371. The express assertions that this claim 13 limitation is satisfied because of the earlier explanation amount to, and should have been understood as, assertions that the claimed allo- cating is taught or would have been obvious from the other features, including the making available of storage, taught in OceanStore. Thus, we think that the Board could properly conclude that EMC’s argument from the outset was that, because the OceanStore nodes function as NAS devices and repre- sent that they have available storage, it would have been 18 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
obvious to a relevant artisan that the nodes would allocate excess storage space for use by the user devices, and that is the rationale the Board adopted when it found that OceanStore taught or at least suggested the “allocate” lim- itation. OceanStore Decision at *16. In these circum- stances, we think that the initial notice was sufficient even without further explanation, especially given that IV’s pa- tent itself provides no more explanation of allocating sepa- rate and apart from the other features calling for making storage available. Cf. SRI Intern. Inc. v. Internet Sec. Sys- tems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (determin- ing that an anticipatory reference was enabled when its level of detail on how to make was as great as the discus- sion of the claimed limitation in the patent at issue). It is not clear that EMC’s argument about the Board’s reliance on reply material is intended to stand inde- pendently of its contention about the inadequacy of the pe- tition, but we see no reversible error in this respect if it is. The Board could fairly conclude that the arguments in EMC’s reply were responsive to arguments IV made in its patent owner’s response. They helped explain why the ar- gument in EMC’s petition was correct—namely, why dis- closure of the “representing” limitation would teach or suggest the “allocate” limitation. See Wasica Finance GmbH v. Continental Automotive Systems, Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). EMC did not abandon its pre- vious theory of prima facie obviousness in favor of a new one, nor did it advance a new theory of invalidity using en- tirely different references. See id. at 1286–87; Intelligent Bio-Systems, 821 F.3d at 1369–70. Therefore, we reject IV’s challenge to the Board’s deci- sion regarding the “allocate” limitation of claim 13 in the OceanStore IPR. B The Carter petition’s treatment of the “allocate” limi- tation is like that of the OceanStore petition in relying on INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 19
a cross-reference back to a discussion earlier in the docu- ment. See J.A. 828 (referring to J.A. 811–17, citing ¶157 of Dr. Kubiatowicz’s declaration, J.A. 1483). But in the Carter IPR, neither the petition’s paragraph on the “allo- cate” limitation nor the cited paragraph of Dr. Kubi- atowicz’s declaration includes even the single explanatory sentence found in their OceanStore IPR counterparts. The petition simply states, “This limitation is satisfied for the reasons given above in the context of claim 1. See §§VII.B.1(c), VII.B.1(d), supra. (Ex. 1102, ¶157.).” J.A. 828. The cross references are to the petition’s analysis of the “assess” and “representing” limitations of claim 1. J.A. 811–17. Dr. Kubiatowicz’s declaration, for its part, simply states, “This limitation is satisfied for the reasons given above in the context of claim 1.” J.A. 1483. In its preliminary response, IV argued that claim 1 did not recite the “allocate” limitation, so the petition’s discus- sion of the “assess” and “representing” limitations could not satisfy the “allocate” limitation. J.A. 885–86. In its insti- tution decision, the Board found that Dr. Kubiatowicz’s dis- cussion of “dynamically distribut[ing] the available resources,” in the context of the “assess” limitation, corre- sponds to the “allocate” limitation and sufficed to meet EMC’s burden. J.A. 936. In its response, IV argued that merely “distributing available resources” does not satisfy the “allocate” limitation. J.A. 1037–40. In reply, EMC again pointed out that the ’827 patent does not provide any description of allocating. J.A. 1096–97. Additionally, EMC argued that IV’s expert, Dr. Shenoy, admitted during cross- examination that Carter has numerous disclosures regard- ing allocating, and Dr. Kubiatowicz further testified that allocating was a well-known function that would not re- quire significant description. Id. IV requested permission to file a motion to strike and was granted leave to submit a list of allegedly improper re- ply arguments. J.A. 1147–48. In its list, IV pointed to EMC’s arguments regarding Dr. Shenoy’s identification of 20 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
allocating in Carter and Dr. Kubiatowicz’s testimony that allocating was a well-known function. J.A. 1162–63. In the final written decision, the Board determined that the iden- tified arguments were not improper and fairly responded to IV’s arguments raised in its responses. Carter Decision at *25–26. We do not think that IV’s argument as to claim 13 calls for a result for the Carter IPR different from the result we have reached for the OceanStore IPR. On this record, we cannot say that the Board erred in determining that the Carter petition gave adequate notice of and support for its theory of why the “allocate” limitation was taught. The ex- press assertions that this claim 13 limitation is satisfied because of the earlier explanation amount to, and should have been understood to be, assertions that the claimed al- locating is taught by the other features disclosed in Carter, including its distinguishing of used and unused storage space and employment of the policy controller to distribute the available unused resources. J.A. 812–13. This is the disclosure the Board relied on in its institu- tion decision and again in its final written decision for claim 13. Carter Decision at *17. There was no switching of theories from petition to decision. And we see no impro- priety in the Board’s treatment of EMC’s reply submis- sions. Therefore, we reject IV’s challenge to the Board’s deci- sion regarding the “allocate” limitation of claim 13 in the Carter IPR. IV IV’s final argument applies only to the OceanStore IPR. IV argues that the Board’s obviousness analysis in that IPR is legally deficient because it relies on gap-filling to find teaching or suggestion of several limitations that IV says are not disclosed by OceanStore. In particular, IV con- tends that the Board did not find that the “assess unused INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 21
or under-utilized storage resources,” “representing,” “cen- tralized server,” and “downloading” limitations are dis- closed by OceanStore. A With regard to the “representing” and “centralized server” limitations, the Board found that each was explic- itly disclosed by OceanStore. There was no gap to fill for those limitations if those findings are supported by sub- stantial evidence. We conclude that they are. We have al- ready discussed the substantial evidence that supports the Board’s finding that OceanStore discloses the “represent- ing” limitation. We discuss here only the “centralized server.” Claim 4—which depends indirectly on claim 1—recites “managing the NAS service for the at least one of the par- ticular distributed devices at least in part utilizing a cen- tralized server.” ’827 patent, col. 46, lines 65–67. Claim 16 depends indirectly on claim 13 and recites a similar limita- tion. Id., col. 48, lines 16–18. The Board found that OceanStore discloses the “centralized server” limitation re- quired by claims 4 and 16. OceanStore Decision at *18. IV argues that the Board relied on Dr. Kubiatowicz’s conclusory assertions to reach its finding. But Dr. Kubi- atowicz’s declaration is not conclusory: it cites to several portions of OceanStore to support his statements that the disclosed servers would cache, monitor, and manage the NAS functionality for users associated with the server. J.A. 1376–79. Moreover, the Board’s decision cites not only to Dr. Kubiatowicz’s testimony but to OceanStore. OceanStore Decision at *18. Although IV contends that the ’827 specification describes a centralized server performing several functions not disclosed by OceanStore, those func- tions are not recited in the claims. 22 INTELLECTUAL VENTURES I LLC v. EMC CORPORATION
We conclude that substantial evidence supports the Board’s finding that OceanStore discloses the “centralized server” limitation in ’827 claims 4 and 16. B With regard to “assess[ing] unused or under-utilized storage resources” as required by claims 1 and 13, the Board found that OceanStore does not disclose that limita- tion expressly or inherently. Id. at *11. Nevertheless, based on the testimony of Dr. Kubiatowicz and the prose- cution history of the ’827 patent, the Board determined that the assessing required by this limitation would have been obvious to a relevant artisan. Id. at *12–13. We see no reversible error in that determination. IV argues that Dr. Kubiatowicz’s declaration is conclu- sory on this point. We disagree. The declaration cites to several portions of OceanStore that describe providing storage resources to users by using software, and the dec- laration concludes that a device must “assess” storage re- sources in order to make them available. J.A. 1369–70. Additionally, both the Board and Dr. Kubiatowicz noted that the ’827 patent itself provides no detail of how the NAS devices assess resources. Id.; OceanStore Decision at *13. Indeed, in response to a § 112 rejection during prose- cution, the applicant argued that “it would have been obvi- ous to one of ordinary skill in the art that the client agent programs must assess unused or under utilized capabilities for it to be able to configure the devices to mimic stand- alone NAS devices using their spare and/or unused capa- bilities.” J.A. 1701 (underlining omitted). This argument is strikingly similar to Dr. Kubiatowicz’s own argument. We conclude that substantial evidence supports the Board’s finding that OceanStore teaches or suggests the “assess” limitation. INTELLECTUAL VENTURES I LLC v. EMC CORPORATION 23
C We reach the same conclusion with respect to the claim 5 requirement of “downloading the software-based NAS component to the selected distributed devices.” ’827 pa- tent, col. 47, lines 1–3. Although OceanStore discloses that its software is written in Java, OceanStore at 199, it does not disclose that the software can be downloaded. But based on the record, particularly the testimony of Drs. Ku- biatowicz and Shenoy, the Board determined that it would have been obvious to a relevant artisan to download the Java files. OceanStore Decision at *18–20. We see no re- versible error in that determination. The Board credited Dr. Kubiatowicz’s testimony that Java was downloadable at the time of the ’827 patent’s pri- ority date, and his testimony is supported by documentary evidence. J.A. 3365–67. The Board could reasonably credit that testimony even though Dr. Shenoy testified that soft- ware was typically distributed using compact disks at the time. That testimony about what was typical was about software generically, not about Java specifically, and Dr. Shenoy recognized that software could have been down- loaded over the network. OceanStore Decision at *18–20. Dr. Shenoy did not opine on the distribution practices for Java in particular. J.A. 3665–67. We conclude that substantial evidence supports the Board’s finding that OceanStore teaches or suggests “downloading the software based NAS component.” V For the foregoing reasons, we affirm the Board’s deci- sions. The parties shall bear their own costs. AFFIRMED