Case: 22-1297 Document: 41 Page: 1 Filed: 04/25/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: NICIRA, INC.,
Appellant
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2022-1297
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/815,950.
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Decided: April 25, 2023
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MANI ADELI, Adeli LLP, Pacific Palisades, CA, for ap-
pellant. Also represented by NATHANIEL F.N. ROSS.
BRIAN RACILLA, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Katherine K. Vidal. Also represented by MICHAEL S.
FORMAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA
YASMEEN RASHEED.
______________________
Before DYK, LINN, and CHEN, Circuit Judges.
PER CURIAM.
Nicira, Inc. appeals from the final decision of the Pa-
tent Trial and Appeal Board (“Board”), affirming the Ex-
aminer’s rejection of claims 1-20 of Nicira’s U.S. Patent
Case: 22-1297 Document: 41 Page: 2 Filed: 04/25/2023
2 IN RE: NICIRA, INC.
Application No. 2015/0381362 (“Application”). Nicira ar-
gues that the Board’s obviousness rejection of representa-
tive claim 1 based on Allen in view of Lin and Harjula is
not supported by substantial evidence under a proper con-
struction of claim 1. For the reasons that follow, we affirm.
DISCUSSION
Nicira first argues that the claims require that a single
program on a single device must receive the command from
the controller and send the request for the new key to the
key generator. It also argues that such single device must
be the same entity that processes data messages using en-
cryption keys. We agree with the Board that the broadest
reasonable interpretation of the claims does not require
such a limitation. The preamble of representative claim 1
opens with the term “A non-transitory machine readable
medium” and uses the open-ended “comprising” transition.
J.A. 71 (emphasis added). It is well-settled that the use of
“a” or “an” in a claim generally means “one or more.” See
01 Communique Lab., Inc. v. LogMeIn, Inc.,
687 F.3d 1292,
1297 (Fed. Cir. 2012). It is likewise well-settled that the
term “comprising” is an open-ended transitional term.
Invitrogen Corp. v. Biocrest Mfg., L.P.,
327 F.3d 1364, 1368
(Fed. Cir. 2003).
Moreover, claim 1 expressly recites that “program”
comprises plural “sets of instructions” for performing the
claimed tasks and contemplates that separate entities will
perform those tasks. Claim 1 (“the program for execution
by at least one processing unit, the program comprising sets
of instructions for…”) (emphasis added). The claims do not
limit the location of the instructions or restrict the program
to a single discrete entity. As the Board recognized, under
the broadest reasonable interpretation of claim 1, the actor
that receives the command to fetch a new key need not be
the same actor that sends a request for a new key to the
key generator.
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IN RE: NICIRA, INC. 3
Nicira argues that the claims, specification, and Fig-
ures 3 and 22 of the Application, require the “controller”
that sends the command to the program to start the key-
request process to be distinct from the device that pro-
cesses messages, such as client device 202 in U.S. Pat. No.
8,584,216 (“Allen”). As the Board correctly explained, how-
ever, nothing in the claims limits the term “controller” in
this way. The controller, as claimed, is simply the entity
that sends the command to fetch a new key and remove a
particular key. While the specification at ¶¶ 17, 30, 55, 140
and Figures 3 and 22 provide a written description of “some
embodiments,” there is nothing in the specification that ex-
pressly limits the scope of the claims to those embodiments.
See Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 906
(Fed. Cir. 2004).
Nicira next contends that Allen does not meet the claim
limitation of a “machine readable medium,” because Allen
does not recite a single entity on a single machine readable
medium that performs the recited steps. As the Board cor-
rectly held, however, the claims read on a single program
with instructions acting across different entities. Nicira is
thus incorrect that the claimed program cannot read on Al-
len’s system-management module 110 merely because the
system-management module itself generates the keys ra-
ther than sends a request to a key generator; the Board
correctly held that the subscription-management module
106 in Allen sends the request to the system-management
module 110, which satisfies the “key generator” limitation.
First Board Op. 6.
Nicira also argues that Allen’s “server-side” modules
are incompatible with the client-side components of U.S.
Pat. No. 8,340,300 (“Lin”) because Allen’s client-side com-
ponents already handle encryption and message pro-
cessing, and it would make no sense to modify Allen’s
processing systems with Lin’s client-side components. We
disagree. Allen expressly notes that the modules may “run
on one or more computer devices, such as the devices
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4 IN RE: NICIRA, INC.
illustrated in FIG. 2 (e.g. computing devices 202(1)-(N)
[(client devices)] and/or server 202.” Allen at 5:10-15 (em-
phasis added). See also
id. at 6:13–19 (noting that “[e]xam-
ples of server 206 include, without limitation, application
servers and database servers”). The Board fully considered
Nicira’s argument and was not persuaded; nor are we. The
interchangeability of the location of the entities performing
the claimed tasks is also confirmed by Harjula, which dis-
closes that the client and the server “may execute on the
same physical or virtual machine,” and the systems “may
operate as a server, as a client, or as both a server and a
client at different times.” U.S. Pat. App. No. 2015/0242594
(“Harjula”) at ¶ 62. Nicira incorrectly reads the references
in isolation and attempts to require a wholesale incorpora-
tion of components from one reference into another to reach
a determination of obviousness. The legal question is
whether the references in combination and as a whole ren-
der the claims obvious—not whether one reference may be
wholly incorporated into the other. See In re Etter,
756
F.2d 852, 859 (Fed. Cir. 1985) (en banc) (citing Orthopedic
Equip. Co. v. United States,
702 F.2d 1005, 1013 (Fed. Cir.
1983)).
Nicira finally argues that the combination of Allen,
Lin, and Harjula fails to provide substantial evidentiary
support for the Board’s conclusion. Nicira specifically
points to Lin as disclosing only a single key and failing to
disclose or teach the claimed limitation of “a second plural-
ity of keys in the keyring.” We disagree. As the Board ex-
plained, obviousness was based on the combination of Lin
with Allen and Harjula, and both Allen and Harjula dis-
close the use of multiple keys in a keyring. First Board Op.
at 7; Final Rejection at 6–7, J.A. 81–82; Allen at 6:46–47;
Harjula at ¶¶ 216, 255 (“Plural instances may be provided
for components, operations, or structures described herein
as a single instance.”). It is the combination of the refer-
ences that renders the limitation and the claim obvious, not
each reference read in isolation. See In re Merck & Co., 800
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IN RE: NICIRA, INC.
5
F.2d 1091, 1097 (Fed. Cir. 1986). The Board adequately
explained its reasoning, and we see no violation of Alac-
ritech, Inc. v. Intel Corp.¸
966 F.3d 1367, 1379 (Fed. Cir.
2020).
The Board also did not equate “a first plurality of keys”
and “a second plurality of keys,” as Nicira argues. See
Nicira Br. at 5. The Board explained that one plurality of
keys included the particular key (i.e., the old key being re-
moved) and one plurality did not, First Board Op. at 7, a
proposition that Nicira appears to agree with. Nicira Br.
at 15 (describing the sending and receiving of packets dur-
ing the first and second time periods in Allen).
Nicira cursorily challenges the reason to combine Allen
with Lin and Harjula but does not provide any reason for
its challenge.
Nicira did not contest the Board’s consideration of
Claim 1 as representative and does not do so here. The
obviousness of Claim 12 and the rest of the claims thus
rests upon the same bases as the obviousness of Claim 1.
CONCLUSION
The Board correctly interpreted representative claim
1 and properly affirmed Examiner’s rejections of claims 1-
20.
AFFIRMED
