Case: 22-1038 Document: 40 Page: 1 Filed: 02/24/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTEL CORPORATION,
Appellant
v.
PACT XPP SCHWEIZ AG,
Appellee
______________________
2022-1038
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00531.
______________________
Decided: February 24, 2023
______________________
NATHAN S. MAMMEN, Kirkland & Ellis LLP, Washing-
ton, DC, argued for appellant. Also represented by DIVA R.
HOLLIS, JOHN C. O'QUINN; ROBERT ALAN APPLEBY, New
York, NY.
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for appellee. Also
represented by NIMA HEFAZI, FREDERICK A. LORIG, Los An-
geles, CA; MARK YEH-KAI TUNG, Redwood Shores, CA.
______________________
Case: 22-1038 Document: 40 Page: 2 Filed: 02/24/2023
2 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
Before NEWMAN, PROST, and HUGHES, Circuit Judges.
Hughes, Circuit Judge.
PACT XPP Schweiz AG owns
U.S. Patent No.
9,436,631, which discloses and claims reconfigurable bus
systems for transferring data between components of mul-
tiprocessor systems. On a petition for inter partes review
filed by Intel Corp., the Patent and Trademark Office’s Pa-
tent Trial and Appeal Board instituted review and found
claim 4 to be nonobvious. We reverse.
I
This case is about “bus systems,” which are systems
that transfer data between components inside a computer.
The ’631 patent discloses a “[r]econfigurable architecture”
including “modules . . . which are interconnected directly
or via a bus system.” ’631 patent at 1:40–46. The patent
describes the architecture as comprising “Processing Array
Elements,” which are simply the processing components
(e.g., processors or memory) in the ’631 patent’s reconfigu-
rable architecture. ’631 patent at 2:3–9.
Claims 1–4 are relevant to this appeal. Claim 1 reads:
1. A bus system for transferring data between parts
of a multiprocessor system, the bus system com-
prising:
a plurality of bus segments for each processor
of the multiprocessor system comprising a plu-
rality of flexible data channels to each proces-
sor of the multiprocessor system according to
algorithms to be executed, wherein a plurality
of algorithms may executed in parallel;
wherein a communication between a sender
and a receiver is established in accordance
with a data transfer for an executed algorithm;
and
Case: 22-1038 Document: 40 Page: 3 Filed: 02/24/2023
INTEL CORPORATION v. PACT XPP SCHWEIZ AG 3
at least one identifier is transmitted with the
data for at least one of: identifying a source of
the data transfer; and selecting a target of the
data transfer.
’631 patent at 34:20–33. Claim 2 depends from claim 1, and
adds “wherein at least one of the parts of the multiproces-
sor system is a cache memory.” ’631 patent at 34:34–35.
Claim 3 depends from claim 2 and adds “wherein the cache
memory comprises a plurality of cache cores.” ’631 patent
at 34:36–37. Claim 4, the claim at issue on appeal, depends
from claim 3 and reads:
4. The bus system of claim 3, wherein the cache
cores are connected to the bus system such that for
the data transfer one of the cache cores is selected
according to an address transferred via the bus sys-
tem; wherein at least some of the plurality of cache
cores are combined to form a large cache.
’631 patent at 34:38–43 (emphasis added).
Intel petitioned for inter partes review of claims 1–4 of
the ’631 patent. Relevant to our decision, the petition as-
serts that claim 1 is obvious under
U.S. Patent No.
5,761,455 (King) and that claims 2–4 are obvious under
King in combination with
U.S. Patent No. 5,893,163
(Arimilli).
King teaches that “the bottleneck which limits pro-
cessing speed is the interface between the processor and
memory.” King at 1:37–39. The bus system disclosed by
King tries to solve this bottleneck through “coupling pro-
cessors and memories efficiently . . . to allow processors in
a multi-processor system to access memories with a mini-
mum of contention and a maximum use of the available
ports to the memories.” King at 1:46–50. It is undisputed
that King’s bus system meets every limitation of claim 1.
And while King’s bus system does not use caches to im-
prove the processing speed, King does teach that “on-chip
Case: 22-1038 Document: 40 Page: 4 Filed: 02/24/2023
4 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
memory caching” is another method for reducing the bot-
tleneck. King at 1:39–40.
Arimilli, like King, is directed to improving multipro-
cessor systems. Arimilli teaches that the “latency associ-
ated with accessing system memory [is] quite large”
compared to the latency associated with accessing cache
memory. Arimilli at 1:60–64. Consequently, Arimilli’s solu-
tion for reducing latency is “maintain[ing] as much useful
data in at least one of the cache memories as possible[.]”
Id. Arimilli accomplishes this goal by disclosing multipro-
cessor systems using three levels of caches: primary L1,
secondary L2, and tertiary L3. Each processing unit’s L3
cache can operate in a “shared” mode, wherein all “L3
caches . . . are combined” to represent “different segments
that “[make] up the entire address spaces of the system
memory.” Arimilli at 4:64–5:3.
After Intel filed the petition and before filing its pre-
liminary response, PACT statutorily disclaimed claims 1–
3 of the ’631 patent. The Board then instituted inter partes
review on claim 4.
Although the only remaining challenged claim was
claim 4, the Board’s final written decision also addressed
the validity of disclaimed claims 1–3 “since claim 4 de-
pends, successively, from each of these other claims.” Intel
Corp. v. PACT XPP Schweiz AG, IPR2020-00531, Paper 37
at 7 (P.T.A.B. Aug. 10, 2021) (Board Decision). The Board
found “that King discloses each limitation of claim 1[.]”
Board Decision at 30. For claims 2 and 3—which add the
requirements that the system includes cache memory and
that the cache memory comprises a plurality of cache
cores—the Board again agreed with Intel that the combi-
nation of King and Arimilli teaches all the limitations of
claims 2 and 3 and that there was “a persuasive rationale”
why an artisan of ordinary skill would have incorporated
Arimilli’s L1 and L2 caches into King’s system to achieve
the claimed bus system. Board Decision at 30–33.
Case: 22-1038 Document: 40 Page: 5 Filed: 02/24/2023
INTEL CORPORATION v. PACT XPP SCHWEIZ AG 5
For claim 4, which requires that cache cores are con-
nected to the bus system and that at least some of the cache
cores are combined to form a large cache, the Board found
that Intel had not met its burden to show that claim was
obvious. The Board found that Intel, who had argued that
Arimilli’s L3 caches operating in shared mode taught claim
4’s additional limitation, had not established a motivation
to combine because “Intel has not specifically explained
how a person of ordinary skill in the art would have modi-
fied King[] . . . to incorporate a shared bus as disclosed in
Arimilli.” Board Decision at 38.
Intel appeals the Board’s conclusion that claim 4 of the
’631 patent is nonobvious under King and Arimilli. 1 We
have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
II
A
“Whether a claimed invention would have been obvious
is a question of law, based on factual determinations re-
garding the scope and content of the prior art, differences
between the prior art and claims at issue, the level of ordi-
nary skill in the pertinent art, [and] the motivations to
modify or combine prior art . . . .” Belden Inc. v. Berk-Tek
LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015). We review the
Board’s legal determinations de novo and its underlying
factual determinations for substantial evidence. Rambus
Inc. v. Rea,
731 F.3d 1248, 1251 (Fed. Cir. 2013). Substan-
tial evidence “means such relevant evidence as a
1 Intel’s petition also included another obviousness
ground for claim 4 that the Board rejected in its final writ-
ten decision. Intel argues that the Board’s rejection of this
other ground was also in error. Because our resolution of
the ground concerning King and Arimilli resolves the ap-
peal, we need not and do not consider Intel’s arguments re-
garding this other ground.
Case: 22-1038 Document: 40 Page: 6 Filed: 02/24/2023
6 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. N.L.R.B.,
305 U.S. 197,
217 (1938).
B
In challenging the conclusion of nonobviousness over
King and Arimilli, Intel argues that the Board committed
legal error by requiring Intel to explain how the two rele-
vant aspects of the two references could “bodily incorpo-
rated.”
“The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the
structure of the primary reference[.]” Allied Erecting &
Dismantling Co. v. Genesis Attachments, LLC,
825 F.3d
1373, 1381 (Fed. Cir. 2016) (quoting In re Keller,
642 F.2d
413, 425 (C.C.P.A. 1981)). Instead, the question is whether
“a skilled artisan would have been motivated to combine
the teachings of the prior art references to achieve the
claimed invention[.]”
Id. (quoting Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1361 (Fed. Cir. 2007)); see also In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established
that a determination of obviousness based on teachings
from multiple references does not require an actual, physi-
cal substitution of elements.”); In re Etter,
756 F.2d 852,
859 (Fed. Cir. 1985) (en banc) (explaining that whether one
reference can be incorporated in another is “basically irrel-
evant” since the test for obviousness is “not whether the
references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings
of the prior art as a whole”).
Intel argues that the Board required Intel to prove that
Arimilli’s caching mechanism, including its specific bus
structure, could be “bodily incorporated” into King’s bus
system. That is clearly what happened here. The Board’s
only explanation for why claim 4 is nonobvious is that Intel
had not shown a sufficient “rationale” for modifying King
to accommodate Arimilli because “Intel has not specifically
Case: 22-1038 Document: 40 Page: 7 Filed: 02/24/2023
INTEL CORPORATION v. PACT XPP SCHWEIZ AG 7
explained how a [POSA] would have modified King[] . . . to
incorporate a shared bus as disclosed in Arimilli.” Board
Decision at 38 (emphases added); see also
id. (stating that
the proposed combination requires “a modification that is
not disclosed in King or Arimilli”). The Board did not find—
and PACT does not argue—that Arimilli’s L3 cache operat-
ing in shared mode does not teach the shared cache limita-
tion of claim 4. To the contrary, the Board recognized that
Arimilli teaches L3 caches and that latency of memory ac-
cess can be improved “by operating the L3 caches in ‘shared
mode,’ in which ‘all L3 caches within the SMP data-pro-
cessing system are combined, each L3 cache representing
different segments of the system memory.’” Board Decision
at 25 (citing Arimilli at 1:51–64, 4:64–66).
PACT disagrees that the Board required evidence of
bodily incorporation and argues that the Board instead
merely “rejected” that “King’s [bus system] could be modi-
fied to include Arimilli’s L3 caches[.]” Appellee’s Br. at 36.
But that is not the case. To be sure, evidence that the teach-
ings and concepts of the prior art were (either actually or
apparently) incompatible such that a skilled artisan would
not have reasonably expected to succeed in combining
those teachings is relevant to the obviousness analysis. But
the Board never made a factual finding that King’s bus sys-
tem could not be modified to include Arimilli’s L3 caches
operating in shared mode. As we just explained, the Board
merely stated that combining the relevant aspects of the
two references requires a modification that the references
did not teach and that Intel did not provide. Board Decision
at 38.
In sum, the Board legally erred in requiring evidence
that Arimilli’s specific caching mechanism could be “bodily
incorporated” into King’s bus system. See Elbrus Int’l Ltd.
v. Samsung Elecs. Co.,
738 F. App’x 694, 698 (Fed. Cir.
2018) (rejecting a similar argument that a proposed combi-
nation of references “would lead to an inoperable circuit
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8 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
absent significant additional design work” as improperly
requiring bodily incorporation to show obviousness).
C
Intel argues that, if we find that the Board legally erred
by requiring evidence of bodily incorporation, then we
should reverse because “[a]ll elements of claim 4 are admit-
tedly disclosed[,] PACT made no arguments about second-
ary considerations[,] [a]nd PACT made no other arguments
that the combination of King and Arimilli would be non-
obvious.” Appellant’s Br. at 47. PACT does not address in
its brief whether, if we agree with Intel that the board im-
properly required evidence of bodily incorporation, reversal
is warranted. For the reasons below, we agree with Intel
that reversal is warranted in this case.
Under a proper analysis, the Board should have asked
whether an artisan of ordinary skill would have been moti-
vated to combine the teachings of Arimilli and King to ar-
rive at the claimed invention. Based on the evidence before
the Board, we hold that substantial evidence could only
support a finding that an ordinary artisan would have been
so motivated. The ’631 patent, Arimilli, and King are all
concerned with improving the processing speed of multi-
processor systems. And King, while not using caching in its
multiprocessor systems, specifically teaches that caching
was an alternative method for improving processing speed.
Taken altogether, there is strong evidence of motivation to
combine. See Uber Techs., Inc. v. X One, Inc.,
957 F.3d 1334,
1341 (Fed. Cir. 2020) (reversing Board’s finding that moti-
vation was lacking where the two prior art references
taught “two known, finite, predictable solutions for solving
the same problem which, consistent with precedent, ren-
ders obvious the challenged limitation”); In re ICON Health
& Fitness, Inc.,
496 F.3d 1374, 1380 (Fed. Cir. 2007) (“One
skilled in the art would naturally look to prior art address-
ing the same problem as the invention at hand, and in this
case would find an appropriate solution.”); In re Kurzweil,
Case: 22-1038 Document: 40 Page: 9 Filed: 02/24/2023
INTEL CORPORATION v. PACT XPP SCHWEIZ AG 9
4 F. App’x 823, 826 (Fed. Cir. 2001) (“The motivation to
combine references can be inferred from the fact that they
address the same problem.”); Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc.,
75 F.3d 1568, 1573 (Fed. Cir. 1996)
(“[The motivation to combine references] may also come
from the nature of the problem to be solved, leading inven-
tors to look to the references relating to possible solutions
to that problem.”). Indeed, the Board found that an artisan
of ordinary skill would have been motivated to combine
Arimilli’s lower-level caches when it found claims 2 and 3
obvious. See Board Decision at 30–33.
In its brief, PACT cites portions of its expert’s declara-
tion that it contends support the Board’s conclusion that
there was no motivation to combine the teachings of King
and Arimilli. See Appellee’s Br. at 37 (citing J.A. 3513–16
at ¶¶ 46–50). These paragraphs, however, do not change
our conclusion that substantial evidence could only support
a finding of motivation to combine. Some of the cited opin-
ions, like the Board’s flawed analysis, focus on whether the
two references could be bodily incorporated without modi-
fication. See J.A. 3513–15 at ¶ 46 (“But [Arimilli’s L3
caches operating in shared mode] is not possible in King’s
system, without modification.” (emphasis added)), ¶ 48
(“King’s bus units are not designed to transfer requests or
data between processor buses and neither King nor Arimilli
teaches such a modification. (emphasis added)), ¶ 50 (“[In-
tel’s expert] does not explain how POSITA would modify
King’s bus units . . . .” (emphasis added)). Consequently,
these opinions are “basically irrelevant.” In re Etter,
756
F.2d at 859. Other opinions focus on Arimilli’s L3 caches
operating in “private” mode, rather than shared mode, see
J.A. 3514–15 ¶¶ 47, 49, and are also irrelevant.
The only cited portion of the expert declaration rele-
vant to the motivation inquiry is the opinion that
At the very least, [modifying King’s system to ac-
commodate Arimilli’s cache system] would require
Case: 22-1038 Document: 40 Page: 10 Filed: 02/24/2023
10 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
additional arbitration logic . . . . Such a modifica-
tion would increase latency and contention for the
processor buses, which goes directly against King’s
teachings that the system should “allow processors
in a multi-processor system to access memories
with a minimum of contention.”
J.A. 3515–16 ¶ 50 (citing King at 1:46–50). PACT’s expert
does not opine how much the modification would increase
latency or whether the latency introduced by the additional
arbitration logic would be offset by the ability for the cache
cores to operate as a single large cache. In other words,
PACT’s expert merely opines that there is an unspecified
processing speed “cost” associated with implementing
Arimilli’s L3 caches in King’s bus system but does not opine
on whether the benefits of the implementation outweigh
the cost. In light of the strong evidence of a motivation to
combine set out above, this opinion and other evidence
cited by PACT do not amount to substantial evidence that
would support a conclusion of no motivation to combine.
III
For these reasons, we reverse the Board’s determina-
tion that claim 4 of the ’631 patent would not have been
obvious.
REVERSED
