Crfd Research, Inc. v. Matal , 876 F.3d 1330 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
CRFD RESEARCH, INC.,
Appellant
v.
JOSEPH MATAL, PERFORMING THE FUNCTIONS
AND DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2016-2198
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00055.
………………………………………………………………..
CRFD RESEARCH, INC.,
Appellant
v.
DISH NETWORK CORPORATION, DISH DBS
CORPORATION, DISH NETWORK LLC,
ECHOSTAR CORPORATION, ECHOSTAR
TECHNOLOGIES LLC,
Appellees
______________________
2 CRFD RESEARCH, INC. V. MATAL
2016-2298
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00627.
………………………………………………………………..
HULU, LLC, NETFLIX, INC., SPOTIFY USA INC.,
Appellants
v.
CRFD RESEARCH, INC.,
Appellee
______________________
2016-2437
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00259.
______________________
Decided: December 5, 2017
______________________
TAREK N. FAHMI, Ascenda Law Group, PC, San Jose,
CA, argued for appellant in 2016-2198, 2016-2298 and for
appellee in 2016-2437.
MARY L. KELLY, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor in 2016-2198. Also represented by NATHAN K.
KELLEY, MICHAEL SUMNER FORMAN, THOMAS W. KRAUSE,
SCOTT WEIDENFELLER.
CRFD RESEARCH, INC. V. MATAL 3
ELIOT DAMON WILLIAMS, Baker Botts LLP, Palo Alto,
CA, argued for appellees in 2016-2298. Also represented
by GEORGE HOPKINS GUY, III.
HARPER BATTS, Baker Botts LLP, Palo Alto, CA, ar-
gued for appellant Hulu, LLC, in 2016-2437. Also repre-
sented by ELIOT DAMON WILLIAMS; MICHAEL HAWES,
Houston, TX.
JOHN F. WARD, Kelley Drye & Warren, LLP, New
York, NY, argued for appellants Netflix, Inc., Spotify USA
Inc., in 2016-2437. Also represented by DAVID
LINDENBAUM, MICHAEL J. ZINNA.
______________________
Before NEWMAN, MAYER, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
Today we decide three appeals in companion cases
from final written decisions of the United States Patent
and Trademark Office (“PTO”) Patent Trial and Appeal
Board’s (“Board”) inter partes reviews (“IPRs”) of U.S.
Patent No. 7,191,233 (“the ’233 patent”), owned by CRFD
Research, Inc. (“CRFD”). Iron Dome LLC v. CRFD Re-
search, Inc., No. IPR2015-00055, 2016 Pat. App. LEXIS
6855 (P.T.A.B. Apr. 22, 2016) (hereinafter “Iron Dome
Final Written Decision,” Appeal No. 16-2198); DISH
Network Corp. v. CRFD Research, Inc., No. IPR2015-
00627, 2016 Pat. App. LEXIS 7567 (P.T.A.B. June 1,
2016) (hereinafter “DISH Final Written Decision,” Appeal
No. 16-2298); Hulu, LLC v. CRFD Research, Inc., No.
IPR2015-00259, 2016 Pat. App. LEXIS 4340 (P.T.A.B.
June 1, 2016) (hereinafter “Hulu Final Written Decision,”
Appeal No. 16-2437). For the reasons stated below, we
affirm the Iron Dome and DISH Final Written Decisions,
4 CRFD RESEARCH, INC. V. MATAL
but we reverse the Board’s determination on obviousness
in the Hulu Final Written Decision.
I. BACKGROUND
A. The ’233 Patent
The ’233 patent describes methods and systems for
“user-directed transfer of an on-going software-based
session from one device to another device.” ’233 patent,
col. 1, ll. 10–11. These methods and systems operate to
allow the user to begin a session on one communication-
enabled device, such as a cellular telephone, wireless
personal digital assistant, laptop computer, or desktop
computer, and then to transfer the session to another
device. Id. col. 1, ll. 8–11; see id. col. 1, ll. 15–52; see also
id. col. 2, ll. 3–20; id. col. 3, ll. 6–10.
The ’233 specification explains that, “[i]n conventional
systems, the user would have to discontinue the current
session on the first device and reinitiate a new session on
the second device.” Id. col. 1, ll. 59–62. But the session
transfer described in the ’233 patent “provides the capa-
bility to initiate a transfer of an on-going session from a
first device to a second device while maintaining the
session and its context.” Id. col. 3, ll. 7–10.
The ’233 patent describes a method of session transfer
in which: (1) a first device sends a “redirect or transfer
command” to a session transfer module; (2) a session
server begins intercepting messages intended for the first
device; (3) the first device transmits a “transaction or
session history” to the session server; (4) the session
server retrieves the previously stored “device profile” of a
second device to which the session will be redirected,
converts the stored messages of the session history into a
data format compatible and/or modality compatible with
the second device, and converts the session state to a
state compatible with the second device; and (5) when the
user activates the second device, the session server “push-
CRFD RESEARCH, INC. V. MATAL 5
es the converted session to the redirected device over the
network 100 as a normal session with the converted
transaction log.” Id. col. 7, l. 46–col. 8, l. 35.
Claim 1 is illustrative of the independent and depend-
ent claims at issue in these appeals: 1
1. A method for redirecting an on-going, software
based session comprising:
conducting a session with a first device;
specifying a second device;
discontinuing said session on said first de-
vice; and
transmitting a session history of said first
device from said first device to a session
transfer module after said session is dis-
continued on said first device; and
resuming said session on said second de-
vice with said session history.
Id. col. 9, ll. 30–39.
1 CRFD appealed the Iron Dome Final Written De-
cision as to the Board’s finding of anticipation of claim 1
and obviousness of claims 4–6 and 8–11 of the ’233 patent.
See Appeal No. 16-2198. CRFD also appealed the DISH
Final Written Decision as to the Board’s finding of antici-
pation of claims 1, 4, 23, and 25 of the ’233 patent, and
obviousness of claims 4 and 25 of the ’233 patent. See
Appeal No. 16-2298. Hulu appealed the Hulu Final
Written Decision as to the Board’s finding of no anticipa-
tion of claims 1–3, 23, and 24 of the ’233 patent, and
nonobviousness of claims 1–6, 8–11, 13–15, 17–20, 23–25,
29–31, 34–36, and 38–41 of the ’233 patent. See Appeal
No. 16-2437.
6 CRFD RESEARCH, INC. V. MATAL
B. Relevant Prior Art
The Board reviewed three prior art references rele-
vant to the issues raised in these appeals: (1) Thomas
Phan et al., “A New TWIST on Mobile Computing: Two-
Way Interactive Session Transfer” in the Proceedings of
the Second IEEE Workshop on Internet Applications
(WIAPP 2001) (“Phan San Jose”); (2) Thomas Phan et al.,
“Handoff of Application Sessions Across Time and Space”
in volume 5 of the IEEE International Conference on
Communications (ICC 2001) (“Phan Helsinki”); and
(3) U.S. Patent No. 6,963,901, filed July 24, 2000, and
issued November 8, 2005 (“Bates”). 2
2 In the IPRs leading to the DISH and Hulu Final
Written Decisions, the Board also instituted review on
various grounds related to two other prior art references:
(1) Mun Choon Chan & Thomas Y. C. Woo, Next-
Generation Wireless Data Services: Architecture and
Experience, IEEE Pers. Comm., Feb. 1999, 20 (“Chan”);
and (2) Bo Zou, Mobile ID Protocol: A Badge-Activated
Application Level Handoff of a Multimedia Streaming to
Support User Mobility (2000) (M.S. thesis, University of
Illinois at Urbana-Champaign) (“Zou”). In IPR2015-
00627, the Board instituted review of the ’233 patent
under 35 U.S.C. § 103(a) on the combination of Bates and
Chan. DISH Final Written Decision, at *7. In IPR2015-
00259, the Board instituted review of the ’233 patent
under 35 U.S.C. § 103(a) on the combinations of Bates and
Chan, Bates and Zou, and Bates, Zou, and Chan. Hulu
Final Written Decision, at *6. As discussed below in
sections II.B and II.C, the parties do not dispute that
petitioners in these actions offered Bates as the only
reference that teaches and/or suggests the transmitting
session history limitation at issue in the relevant portions
of those proceedings.
CRFD RESEARCH, INC. V. MATAL 7
1. Phan San Jose
The Board examined Phan San Jose as part of the
Iron Dome and DISH Final Written Decisions. Phan San
Jose describes the “Interactive Mobile Application Sup-
port for Heterogeneous Clients (iMASH) research project.”
iMASH allows hospital physicians and staff to “seamless-
ly move an application’s session from one machine to
another machine,” such as a desktop or laptop computer,
using the hospital’s “network as a conduit.” Using
iMASH, a physician may begin a session on a first device
and later resume that session on a different device using
the session data from the first device.
As part of its discussion of the iMASH research pro-
ject, Phan San Jose discloses a two-way interactive ses-
sion transfer (“TWIST”). TWIST places middleware
servers (“MWSs”) between client devices and an applica-
tion server. Session state data on a first device is stored
on the MWS and then transferred to another client upon
session handoff.
Phan San Jose also describes how the iMASH system
could be used with a “Teaching File” Java applet that
displays medical images and associated information to
allow users to create and modify instructional “teaching
files.” In responding to a user request, the application
server sends an image file from storage to the MWS. The
MWS then performs a format conversion on the image,
and the requesting client device then receives this image.
Phan San Jose describes two methods for session
handoff: a “pull” mode and a “push” mode. In the “pull”
mode, so named because the target machine retrieves the
session state from the MWS, the session handoff proceeds
as follows:
When the user wishes to perform a session
handoff, he must first decide how the handoff
shall be conducted with respect to the recipient. If
8 CRFD RESEARCH, INC. V. MATAL
the user selects a “Suspend” operation [at the first
client device in the “pull” mode], his session shall
be saved back to the MWS, allowing the applica-
tion to terminate, and at a later time the session
can be reinstantiated by the Teaching File appli-
cation running on the target machine.
J.A. 349 (Appeal No. 16-2198); J.A. 1333 (Appeal No. 16-
2298). In the “pull” mode, the second device is specified
after the session is terminated on the first device. But in
the “push” mode, the user selects the target second device
to which the transfer will be made before the session on
the first device is terminated. Id. When the handoff
occurs in the “push” mode, the MWS contacts a daemon
running on the target device to immediately launch the
Teaching File applet; this action automatically retrieves
the session state data from the first device. Id. The
applet on the first client terminates only after the session
state is fully reinstantiated on the second machine. Id.
2. Phan Helsinki
The Board examined Phan Helsinki in the course of
the Iron Dome and DISH Final Written Decisions. Phan
Helsinki elaborates on the architecture and operation of
the iMASH research project described in Phan San Jose.
J.A. 359–64 (Appeal No. 16-2198); J.A. 1343–48 (Appeal
No. 16-2298). Phan Helsinki explains that this system
employs MWSs “strategically placed between the applica-
tion servers and the clients.” J.A. 359 (Appeal No. 16-
2198); J.A. 1343 (Appeal No. 16-2298). The MWSs, rather
than the original application servers, act as the data
sources for the various clients and support session
handoffs. Id. “When a user moves an on-going applica-
tion session from one device to another, middleware
servers act as a ‘home’ for the application state (including
active connections, cached data, etc.) to facilitate migra-
tion between devices.” J.A. 361 (Appeal No. 16-2198); J.A.
1345 (Appeal No. 16-2298).
CRFD RESEARCH, INC. V. MATAL 9
Phan Helsinki also describes the “Middleware-Aware
Remote Code” (“MARC”) on the client device that facili-
tates “session saving and restoration,” and explains how a
session is transferred using a web browser that has been
“outfitted” with MARC. J.A. 361–62 (Appeal No. 16-
2198); J.A. 1345–46 (Appeal No. 16-2298). First, a user
starts the client application by providing a user ID. The
MARC within the browser then contacts the MWS and
begins a new session using this user ID. If a previous
session state exists, it is retrieved from the MWS and is
incorporated into the browser before the user’s current
session begins. Id.
3. Bates
Bates discloses a system and method for “shar-
ing . . . browser information between at least two browser
applications” in which a web browsing session is trans-
ferred from a first computer to a second computer via one
or more servers. Bates, col. 1, ll. 63–66; id. col. 3, ll. 4–7;
id. col. 9, ll. 24–30; id. col. 10, l. 51–col. 11, l. 8. The
“browser information includes information generated
during a browsing session, i.e., a period of time when the
browser 240 is executing on a client computer 106 and a
network connection exists between the client 106 and the
network 104 allowing a user to traverse network address-
es corresponding to the servers 108,” and the information
“may be limited to the information generated during a
particular browsing session.” Id. col. 4, ll. 61–67; id. col.
6, ll. 11–13; id. col. 7, ll. 22–24.
Bates discloses a step-by-step session transfer process
in which a user first conducts a web browsing session on a
first client computer. Id. col. 10, ll. 58–61. Next, “[a] user
may input to the field 302 an e-mail address for a com-
puter (e.g., a remote client computer 106) to which the
browser information contained in the sending computer’s
buffer 242 will be sent.” Id. col. 5, ll. 52–56. When the
user wishes to switch computers, “the user may be re-
10 CRFD RESEARCH, INC. V. MATAL
quired to terminate a browsing session. In such an event,
the necessary browser information may be collected and
transmitted to a remote computer containing another
browser program” through the use of various servers and
networks. Id. col. 10, ll. 61–65. “The browser information
is then used to reconfigure the browser program of the
remote computer and restore the user to where he or she
left off during the terminated browsing session.” Id. col.
10, l. 65–col. 11, l. 1. “In effect, the present invention
preserves the current status of a browsing session to be
resumed at another location.” Id. col. 11, ll. 6–8.
Bates also describes various “share events,” which are
events “adapted to initiate transmission of the browser
information from the local client computer to the remote
client computer.” Id. col. 9, ll. 4–7. Share events occur in
connection with a user interface, where the local computer
is configured to share browser information with a remote
computer. Id. col. 8, ll. 59–66. Figure 5 of Bates depicts
five such events: (1) upon user request (i.e., the browser
information is transmitted immediately in response to a
user request); (2) at shutdown (where the browser infor-
mation is transmitted when the client computer is shut-
down); (3) at an idle period (where the browser
information is transmitted when the client computer is
idle—e.g., when it enters a standby or hibernation mode);
(4) periodically (where the browser information is trans-
mitted at periodic time intervals); and (5) upon a prede-
termined action (in which the browser information is
transmitted upon the occurrence of an action performed
by the user, which action is not solely directed to sending
the browser information). Id. col. 7, l. 56–col. 8, l. 23; id.
Fig. 5. When a “share event” occurs, the first client
computer transmits the browser information to the second
client computer. Id. col. 9, ll. 38–49.
CRFD RESEARCH, INC. V. MATAL 11
II. DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Gartside,
203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial
evidence is something less than the weight of the evidence
but more than a mere scintilla of evidence.” In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing Gartside, 203
F.3d at 1312). It is “such relevant evidence as a reasona-
ble mind might accept as adequate to support a conclu-
sion.” In re Applied Materials, Inc., 692 F.3d 1289, 1294
(Fed. Cir. 2012) (quoting Consol. Edison Co. of N.Y. v.
NLRB, 305 U.S. 197, 229 (1938)). We have jurisdiction
over these appeals under 28 U.S.C. § 1295(a)(4).
In its appeals of the Iron Dome and DISH Final Writ-
ten Decisions, CRFD challenges the Board’s determina-
tions that certain claims of the ’233 patent are
unpatentable as anticipated or obvious over the Phan
references. In appealing the Hulu Final Written Decision,
Hulu, LLC, Netflix, Inc., and Spotify USA Inc. (collective-
ly, “Hulu”) challenge the Board’s conclusion that various
claims of the ’233 patent are not unpatentable as antici-
pated or obvious based on disclosures in the Bates refer-
ence. We review each appeal in turn.
A. Iron Dome Final Written Decision
(Appeal No. 16-2198)
As noted above, CRFD challenges the Iron Dome Fi-
nal Written Decision in two ways: (1) it contends that
claim 1 of the ’233 patent is not anticipated by Phan San
Jose; and (2) it argues that claims 4–6 and 8–11 would not
have been obvious over Phan San Jose in combination
with Phan Helsinki. For the reasons stated below, we
reject both of these challenges and affirm the Board’s
decision in this appeal.
12 CRFD RESEARCH, INC. V. MATAL
1. Procedural History
Iron Dome LLC filed a petition seeking inter partes
review of claims 1–6, 8–11, 13–15, 17, 18, 20, and 34 of
the ’233 patent. Iron Dome Final Written Decision, at *1.
The Board instituted review on two proposed grounds:
(1) claim 1 as anticipated by Phan San Jose; and
(2) claims 4–6 and 8–11 as obvious over Phan San Jose in
combination with Phan Helsinki. Id. at *7.
In its final written decision, the Board concluded first
that some, but not all, steps described in claim 1 of the
’233 patent must be performed in a particular order. Id.
at *9–13. The Board found that claim 1 states explicitly
that the “transmitting a session history” step of claim 1
must follow the “discontinuing [a] session” step, and that,
logically, the “conducting a session with a first device”
step must take place before the “discontinuing said ses-
sion on said first device” step. Id. at *11. But the Board
concluded that “[t]here is nothing in the language of the
claim, however, expressly requiring ‘specifying a second
device’ to take place before ‘discontinuing said session on
said first device’ or requiring such an order as a matter of
logic or grammar.” Id. Although the ’233 patent includes
two examples in which a user specifies a second device
before discontinuing a session, the Board noted that the
’233 specification indicates explicitly that, “although the
method of the present invention has been described by
examples, the steps of the method may be performed in a
different order than illustrated or simultaneously.” Id. at
*12 (citing ’233 patent, col. 9, ll. 22–25). The Board thus
concluded that claim 1 does not require the “specifying”
step to take place before the “discontinuing” step. Id. at
*13.
The Board then found that Phan San Jose anticipates
claim 1. Id. at *13–22. Although the Board agreed with
CRFD that Phan San Jose’s “push” mode failed to teach
the method recited in that claim, the Board found that the
CRFD RESEARCH, INC. V. MATAL 13
“pull” mode of Phan San Jose discloses every limitation of
claim 1, including the “specifying a second device” limita-
tion relevant to this appeal. Id. at *16–17. The Board
concluded that Phan San Jose teaches the specification of
a second device even though, in the “pull” mode, the user
does not identify a second device before suspending the
session. Instead, “[t]he specification of the second device
may take place at a later time, such as when the user
chooses to resume the session on a different device.” Id.
at *18. As the “specifying” step need not take place before
the “discontinuing” step in claim 1 under the Board’s
construction, the Board found that Phan San Jose dis-
closed a scenario in which device specification could occur
after the user selects the “Suspend” operation, thereby
discontinuing the session and causing the transmission of
the session history to the MWS.
The Board also found that Phan San Jose teaches
specifying a second device in the “pull” mode when the
user takes action on the second device to resume the
session. Id. at *20. According to the Board, claim 1 “does
not specify who or what does the specifying, or to whom or
what the second device is specified,” as the claim only
requires that the second device be specified. Id.
The Board then explained that, even if the second de-
vice must be specified to the Phan San Jose MWS, that
MWS “must receive enough information from the second
device to be able to distinguish the chosen second device
from other potential devices, even if only by virtue of the
second device’s association with a user account; otherwise,
the MWS would not be able to transmit the session histo-
ry to the second device.” Id. at *21. Given these disclo-
sures, the Board found that Phan San Jose discloses the
“specifying” step of claim 1 either through user selection
of a second device to resume the session or through the
second device’s communication to the MWS to transmit
the session history from the first device.
14 CRFD RESEARCH, INC. V. MATAL
The Board also determined that claims 4–6 and 8–11
would have been obvious over Phan San Jose and Phan
Helsinki. Id. at *22–27. The Board rejected CRFD’s
contention that Phan Helsinki’s description of the “pull”
mode, also disclosed in Phan San Jose, fails to teach or
render obvious the “specifying a second device” step of
claim 1. The Board noted its earlier determination that
Phan San Jose alone discloses the “specifying a second
device” step, and concluded that CRFD’s arguments as to
claims dependent on claim 1 were unpersuasive for this
reason. Id. at *26–27.
CRFD appealed. Iron Dome subsequently withdrew
from the appeal, and the Director exercised her right to
intervene under 35 U.S.C. § 143.
2. Anticipation by Phan San Jose
A patent is invalid for anticipation under 35 U.S.C.
§ 102 if a single prior art reference discloses all limita-
tions of the claimed invention. Schering Corp. v. Geneva
Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003). “Anticipa-
tion is a question of fact, and decisions from the Board on
factual matters are reviewed for substantial evidence.”
REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954,
958 (Fed. Cir. 2016) (citing Eli Lilly & Co. v. Bd. of Re-
gents of Univ. of Wash., 334 F.3d 1264, 1267 (Fed. Cir.
2003)). Anticipation is established when “one skilled in
the art would reasonably understand or infer from the
prior art reference’s teaching that every claim [limitation]
was disclosed in that single reference.” Akamai Techs.,
Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d
1186, 1192–93 (Fed. Cir. 2003) (quoting Dayco Prods., Inc.
v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir.
2003)).
On appeal, CRFD does not challenge the Board’s de-
termination that nothing in claim 1 requires the step of
specifying a second device occurs before the first session is
discontinued, nor does it challenge any of the Board’s
CRFD RESEARCH, INC. V. MATAL 15
other claim construction determinations. And, CRFD
does not dispute that Phan San Jose’s “pull” mode teaches
that a physician can begin a session on a first device and
then discontinue that session by suspending it, thereby
causing the session history to be saved onto the MWS for
continuation of the session at a later time.
Instead, CRFD contends that the Board erred in de-
termining that Phan San Jose anticipates claim 1 of the
’233 patent as, in its view, Phan San Jose’s “pull” mode
does not teach “specifying a second device.” CRFD argues
that nothing in Phan San Jose describes “specifying” as
part of a second device’s retrieval of session history from
the MWS, and that, to anticipate, Phan San Jose must
have provided more detail about the reinstantiation
process. But claim 1 only requires “specifying a second
device.” As the Board correctly noted, this is a broad
limitation; it does not restrict specifying to a particular
user or a particular device. Iron Dome Final Written
Decision, at *20. Indeed, CRFD admitted at the oral
hearing before the Board that either a user or another
entity could specify the second step. Id. (citing J.A. 286 at
ll. 14–22). And, according to the Board’s uncontested
claim construction, the specifying step need not occur
before the discontinuation of the first session, meaning
that a user can specify a second device, or a second device
can specify itself, after the first session has been discon-
tinued and the session history has been transferred to the
MWS.
The Board explained that “the MWS in Phan San Jose
must receive enough information from the second device
to be able to distinguish the chosen second device from
other potential devices, even if only by virtue of the sec-
ond device’s association with a user account; otherwise,
the MWS would not be able to transmit the session histo-
ry to the second device.” Id. at *21. As the Board found,
Phan San Jose teaches that the user may select the
second device on which a session will be resumed and
16 CRFD RESEARCH, INC. V. MATAL
take action on that device to resume the session; such
action causes the second device to communicate with the
MWS to retrieve the session history. Id. at *20.
CRFD has not explained why the Board’s finding—
that claim 1 does not prohibit a user from specifying a
second device by taking action on that second device to
resume the session—was erroneous. CRFD contends that
nothing in Phan San Jose describes a user log-on action,
but CRFD fails to explain how, under its theory, the
session history could be sent to the second device without
a user or a device instructing the MWS on where to send
the data—thereby “specifying” the device. The fundamen-
tal flaw in CRFD’s theory is that it fails to acknowledge
that, in order for the session history to be transmitted to
the second device, the MWS must know the identity of the
second device. CRFD’s arguments that Phan San Jose
fails to provide the precise details of this identification
process are unavailing, because the identification of the
second device (or, in claim 1’s parlance, the “specifying” of
such a device) is required for Phan San Jose’s operation.
CRFD also challenges the Board’s anticipation conclu-
sion as to the “transmitting” limitation. The Board found
that CRFD admitted that Phan San Jose discloses the
“transmitting” step of claim 1 at the oral hearing. See id.
at *17. CRFD’s attorney made the following statement at
the oral hearing before the Board:
JUDGE ARBES: Counsel, do you agree that the
pull mode of Phan San Jose discloses transmitting
the session history after the session is discontin-
ued limitation?
MR. FAHMI: I’m sorry, which mode, Your Honor?
JUDGE ARBES: The pull mode.
MR. FAHMI: The pull mode teaches transfer after
the session is discontinued, yes. In fact, it has to
because in the pull mode the application on the
CRFD RESEARCH, INC. V. MATAL 17
first client is allowed to terminate after indicating
that they wish to suspend the session.
J.A. 283 at ll. 3–11 (emphasis added); see also Iron Dome
Final Written Decision, at *17 (citing J.A. 283 at ll. 3–9).
CRFD argues that this statement does not concede
that Phan San Jose’s “pull” mode teaches transmitting a
session history after the session is discontinued. Instead,
it reflects CRFD’s agreement that, in Phan San Jose,
transfer of a session to a second device occurs after a
session is terminated on the first device. CRFD points to
Phan San Jose in support of this position, arguing that, in
that reference, the session data must be saved on the
MWS before the application running on the first device
can terminate: “If the user selects a ‘Suspend’ operation,
his session shall be saved back to the MWS, allowing the
application to terminate.” J.A. 349. But CRFD’s citation
is incomplete; Phan San Jose explains that, after the
session is saved back to the MWS, which allows the
application to terminate, “at a later time the session can
be reinstantiated.” Id. The Board cites the entire state-
ment in its decision, and this statement is not incon-
sistent with the Board’s conclusion that Phan San Jose
discloses this limitation. CRFD has not shown that the
Board erred in this finding.
Because substantial evidence supports the Board’s
conclusion that Phan San Jose teaches all steps of claim 1
of the ’233 patent, we affirm the Board’s determination
that Phan San Jose anticipates this claim.
3. Obviousness Over Phan San Jose
and Phan Helsinki
Obviousness is a question of law based on subsidiary
findings of fact. Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016). An
obviousness determination requires finding both “that a
skilled artisan would have been motivated to combine the
18 CRFD RESEARCH, INC. V. MATAL
teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would
have had a reasonable expectation of success in doing so.”
Id. at 1367–68 (quoting Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)). We
uphold the Board’s factual findings unless they are not
supported by substantial evidence, while we review the
Board’s legal conclusions de novo. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015).
CRFD has not raised nonobviousness arguments sep-
arate from the anticipation arguments we have rejected.
CRFD contends that the “pull” mode taught in Phan San
Jose and Phan Helsinki does not teach or suggest the
specification of a second device to which the session
history of the first device would be transmitted. Claims
4–6 and 8–11 depend either directly or indirectly from
claim 1, and thus all include the “specifying a second
device” limitation. For the reasons stated above, we hold
that substantial evidence supports the Board’s conclusion
that Phan San Jose, alone, discloses the “specifying a
second device” limitation. CRFD therefore has not shown
that the Board erred in concluding that claims 4–6 and 8–
11 would have been obvious in view of Phan San Jose and
Phan Helsinki.
B. DISH Final Written Decision
(Appeal No. 16-2298)
CRFD appeals the Board’s determinations in the
DISH Final Written Decision that (1) claims 1, 4, 23, and
25 of the ’233 patent are anticipated by Phan Helsinki,
and (2) claims 4 and 25 would have been obvious over
Phan Helsinki in view of Phan San Jose. DISH Network
Corporation, DISH DBS Corporation, DISH Network
L.L.C., EchoStar Corporation, and EchoStar Technologies
L.L.C. (collectively, “DISH”) argue that, if we reverse the
Board’s decision as to the grounds CRFD appeals, we
CRFD RESEARCH, INC. V. MATAL 19
should still conclude that claims 1, 4, 23, and 25 are
unpatentable as obvious over the combination of Bates
and Chan. For the reasons that follow, we affirm the
Board’s decision that claims 1, 4, 23, and 25 of the ’233
patent are anticipated by Phan Helsinki, and therefore
need not reach CRFD or DISH’s obviousness arguments
on the same claims.
1. Procedural History
DISH filed a petition requesting inter partes review of
claims 1, 4, 23, and 25 of the ’233 patent. DISH Final
Written Decision, at *1. The Board instituted inter partes
review on four proposed grounds: (1) claims 1, 4, 23, and
25 as anticipated by Phan Helsinki; (2) claims 4 and 25 as
obvious over Phan Helsinki in combination with Phan
San Jose; (3) claims 1 and 23 as anticipated by Bates; and
(4) claims 1, 4, 23, and 25 as obvious over Bates and
Chan. Id. at *7.
In its final written decision, the Board found claims 1,
4, 23, and 25 of the ’233 patent anticipated by Phan
Helsinki, and also found claims 4 and 25 would have been
obvious over Phan Helsinki in view of Phan San Jose. Id.
at *29, *33. On anticipation, the Board found that DISH
presented sufficient evidence to show that Phan Helsinki
discloses every limitation of claims 1, 4, 23, and 25. Id. at
*20. The Board first rejected CRFD’s contention that
Phan Helsinki does not teach the “transmitting” step
recited in claim 1, noting that, during the oral hearing,
CRFD agreed that the “pull” mode described in Phan
Helsinki discloses the “transmitting” step of claim 1. Id.
at *21–22.
The Board then concluded that DISH provided suffi-
cient evidence that Phan Helsinki discloses the specifying
a second device limitation as recited in claim 1. Id. at
*22–28. As in the Iron Dome Final Written Decision, here
the Board found the specifying of a second device step, as
claimed in claim 1, can take place after the discontinua-
20 CRFD RESEARCH, INC. V. MATAL
tion of the session on the first device. Id. at *23–24. And,
according to the Board, the second device in Phan Helsin-
ki is specified when the user acts on the second device to
resume the session. Id. at *25. The Board found that
claim 1 “does not specify who or what does the specifying,
or to whom or what the second device is specified.” Id.
On this point, CRFD’s declarant acknowledged that, in
the “pull” mode of Phan Helsinki and Phan San Jose, the
“[s]econd device is specified at some point in time.” Id. at
*26. The Board rejected CRFD’s contention that Phan
Helsinki’s step of identifying a user through a unique user
ID is not equivalent to claim 1’s step of specifying a sec-
ond device, finding that the Phan Helsinki MWS must
receive enough information from the second device to
distinguish that device from other potential devices.
Otherwise, the MWS would not be capable of transmitting
the session history to the second device. Id. at *27. 3
The Board also concluded that DISH had shown by a
preponderance of the evidence that claims 4 and 25 are
unpatentable as obvious over Phan Helsinki in view of
Phan San Jose. Id. at *31–33. The Board first concluded
that a person of ordinary skill in the art would have
considered the teachings of Phan Helsinki and Phan San
Jose regarding the same research project together and
combined their teachings. Id. at *29–32. Based on this
conclusion, the Board found that a person of ordinary skill
would have understood that including content adaptation,
as recited in claims 4 and 25, and as described in Phan
San Jose, would have been an obvious improvement to the
disclosed system in Phan Helsinki. Id. at *32.
3 The Board noted that independent claim 23 “re-
cites similar limitations to claim 1,” and found that the
additional limitations of claims 4 and 25 are disclosed in
Phan Helsinki’s “device profiling” and “presentation
conversion” functionalities. Id. at *28.
CRFD RESEARCH, INC. V. MATAL 21
The Board found, however, that DISH had not shown
by a preponderance of the evidence that claims 1 and 23
of the ’233 patent were anticipated by Bates, nor that
claims 1, 4, 23, and 25 were unpatentable as obvious over
Bates and Chan. Id. at *33–46.
2. Anticipation by Phan Helsinki
In this appeal, CRFD does not challenge the Board’s
claim construction or whether Phan Helsinki discloses a
second device for resuming the session. Rather, CRFD’s
only challenge is that the Board erred in finding that
Phan Helsinki anticipates claims 1, 4, 23, and 25 of the
’233 patent by finding that Phan Helsinki teaches “speci-
fying a second device” in the “pull” mode. 4
CRFD contends that the second device described in
Phan Helsinki is identified based on the use of a user ID
within the relevant client application, not by “specifying”
a second device. Under this theory, CRFD argues that
Phan Helsinki teaches that any unspecified second device
can resume a session in “pull” mode, when the second
device contacts the MWS through use of a user ID. Put
another way, CRFD asserts that Phan Helsinki does not
4 CRFD contends that claim 23, like claim 1, recites
“specifying a second device” and is therefore patentable
over Phan Helsinki for the same reasons as claim 1. As
claims 4 and 25 have the same relevant limitations and
depend from claims 1 and 23, respectively, with the same
limitations, CRFD contends that claims 4 and 25 are each
patentable over Phan Helsinki for at least the same
reasons as claims 1 and 23. CRFD acknowledged that, as
to this appeal and the limitation at issue, it did not argue
claims 23 and 25 in a manner separate from how it ar-
gued claims 1 and 4. Oral Arg. at 1:01–1:34,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-2298.mp3.
22 CRFD RESEARCH, INC. V. MATAL
teach or suggest that the user ID is associated with any
particular device such that the device could self-specify.
We disagree, and conclude that substantial evidence
supports the Board’s determination that Phan Helsinki
anticipates the “specifying a second device” limitation.
The Board found that Phan Helsinki teaches the step of
specifying a second device through the user’s selection of a
device on which to resume the session by taking action on
that device, which causes the second device’s client appli-
cation to communicate with the MWS to retrieve the
session state. Id. at *25. And the Board determined that
Phan Helsinki discloses a second device that is specified
when a user “logs on to or starts a new device to continue
the session.” Id. at *24 (emphasis added).
CRFD concedes that Phan Helsinki teaches that any
second device may resume the session in “pull” mode, as
Phan Helsinki allows any second device that contacts the
MWS to resume the session based on a user ID. Phan
Helsinki explains that, “[w]hen a user changes devices or
spawns a new branch of a session to a new device, the
middleware server authenticates the user on the new
device.” J.A. 1345 (emphasis added). The new device
then receives the session data from the MWS, which
permits “seamless access to data from any device on a
variety of networks.” J.A. 1344 (emphasis added). The
MWS acts to “facilitate migration [of application sessions]
between devices.” J.A. 1345 (emphasis added). As the
Board found, these teachings indicate that the user’s
actions to resume a session on the second device “specify”
that device to the MWS, as required by claims 1, 4, 23,
and 25.
CRFD’s expert testimony and its own attorney argu-
ment also support the Board’s finding of anticipation. As
the Board noted, Dr. Mohapatra acknowledged that the
“[s]econd device is specified at some point in time, yes, in
the pull model.” J.A. 1773, at 67:23–24. Dr. Mohapatra
CRFD RESEARCH, INC. V. MATAL 23
further noted that the second device would identify itself
using at least its unique IP address when making a
request to the MWS to resume the session. J.A. 1747–48,
at 41:3–42:2. CRFD’s attempts to recast this testimony
are unpersuasive, particularly given CRFD’s concession
before the Board that, in Phan Helsinki, “at some point
the middleware server knows what the second device is.”
J.A. 372, at 24:3–4.
We further agree with the Board that the second de-
vice in Phan Helsinki must be specified at some point,
because otherwise the MWS would not know where to
send the saved session state. And, as the Board pointed
out, even if the second device must be specified to the
MWS, the second device must provide enough information
to the MWS so that the server can distinguish between
the potential devices to which it could transfer the session
history. DISH Final Written Decision, at *27. The Board
concluded that the user account discussed in Phan Hel-
sinki could act to provide the information needed to
distinguish the second device from other potential devices.
Id. We agree with the Board that the user’s action of
indicating which device should resume the session is the
act of specifying. As the claims do not limit who or what
performs the “specifying” step, we find substantial evi-
dence supporting the Board’s conclusion that Phan Hel-
sinki discloses the specifying step.
For these reasons, we affirm the Board’s conclusion
that Phan Helsinki anticipates claims 1, 4, 23, and 25 of
the ’233 patent. 5 We need not reach CRFD’s contentions
5 The parties dispute whether the teachings of
Phan San Jose can be used, in any form, in this anticipa-
tion analysis. Although the Board rejected the use of
Phan San Jose to support CRFD’s arguments as to Phan
Helsinki, it did so because it did not see the relevance of
Phan San Jose to the ground of anticipation based on
24 CRFD RESEARCH, INC. V. MATAL
that the Board erred in finding that claims 4 and 25
would not have been obvious over Phan San Jose and
Phan Helsinki, as we conclude those claims are anticipat-
ed by Phan Helsinki. We also need not reach DISH’s
counterargument that claims 1 and 23 would have been
obvious over the combination of Bates and Chan, as we
affirm the Board’s decision that those claims are antici-
pated by Phan Helsinki as to this appeal.
C. Hulu Final Written Decision
(Appeal No. 16-2437)
Hulu appeals the Board’s determination in the Hulu
Final Written Decision that (1) claims 1–3, 23, and 24 are
not anticipated by Bates, (2) claims 1–6, 8–11, 23–25, and
29–31 would not have been obvious over Bates and Chan;
(3) claims 13, 14, 34, and 35 would not have been obvious
over Bates and Zou; and (4) claims 15, 17–20, 36, and 38–
41 would not have been obvious over Bates, Zou, and
Chan. For the reasons stated below, we reverse the
Board’s determinations of nonobviousness, and do not
reach the Board’s determination on anticipation.
1. Procedural History
Hulu filed a petition requesting inter partes review of
claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and
38–41 of the ’233 patent. Hulu Final Written Decision, at
*1. The Board instituted review on four grounds of un-
patentability: (1) claims 1–3, 23, and 24 as anticipated by
Bates; (2) claims 1–6, 8–11, 23–25, and 29–31 as obvious
Phan Helsinki. DISH Final Written Decision, at *21–22.
For the reasons explained above, we find it unnecessary
to look beyond the four corners of Phan Helsinki to de-
termine whether it teaches the step of specifying a second
device, and thus need not decide whether use of Phan San
Jose as an extrinsic reference in this anticipation analysis
would be appropriate.
CRFD RESEARCH, INC. V. MATAL 25
over Bates and Chan; (3) claims 13, 14, 34, and 35 as
obvious over Bates and Zou; and (4) claims 15, 17–20, 36,
and 38–41 as obvious over Bates, Zou, and Chan. Id. at
*6.
In the final written decision, the Board concluded that
Hulu had not shown by a preponderance of the evidence
that any of the challenged claims were unpatentable
based on the grounds on which the Board instituted
review. At the outset, the Board construed the term
“session” to mean “a series of information transactions
between communicating devices during a particular time
period.” Id. at *8. The parties agreed that the claims
require that the session must be discontinued before the
session history may be transmitted. Id. at *10.
The Board concluded that Bates does not anticipate
claims 1–3, 23, and 24 of the ’233 patent because it does
not expressly or inherently disclose transmitting a session
history from a first device “after said session is discontin-
ued on said first device,” as required by these claims. Id.
at *13–28. The Board concluded that nothing in Bates
explicitly discloses when a “session” ends, and that a
“session” as defined in the ’233 patent occurs during the
period of time Bates references as a “browsing session.”
Id. at *16–18. Because Figure 7 of Bates “depicts the
steps performed by the client computer ‘during a browsing
session,’” id. at *18, and because “the client computer
begins processing an event at step 704, determines
whether the event is a share event (e.g., ‘upon user re-
quest,’ ‘at shutdown,’ or ‘at idle period’) at step 710, and
transmits the browser information at step 720,” id., the
Board concluded that “transmission of the session history
in Bates occurs during the session, not after the session is
discontinued as required by the claims.” Id. (emphasis in
original). The Board found that Bates does not explicitly
disclose when a “session” ends and, as all steps depicted
in Figure 7 occur during a browsing session, the “session”
ends after transmission of the browser information. Id. at
26 CRFD RESEARCH, INC. V. MATAL
*19–20. Although Hulu argued that, when certain “share
events” occur (“upon user request,” “at shutdown,” and “at
idle period”), transmission of the session history could or
would necessarily occur after discontinuation of the
session, the Board credited CRFD’s expert testimony that
“it is at least equally likely that transmission occurs
before discontinuing the session” for each of these share
events. Id. at *21–22 (emphasis in original). 6
With respect to obviousness, the Board first noted
that Hulu relied solely on Bates for teaching the claimed
step of transmitting a session history of a first device from
the first device to a session transfer module “after said
session is discontinued on said first device.” Id. at *31.
Although Hulu argued, in a different asserted ground
upon which the Board did not institute review, that it
would have been obvious based on Bates to transmit the
session history “after said session is discontinued on said
first device,” the Board found that Hulu had failed to
make this argument in the asserted grounds on which the
Board instituted review. Id. at *31 n.3. Even if Hulu had
made this argument as part of an instituted ground,
however, the Board explained that it would not have been
persuaded because Hulu failed to provide “a sufficient
reason for why a person of ordinary skill in the art would
have modified the sequence of operations in Bates to
discontinue the session before transmitting the browser
information.” Id. As the Board concluded in its anticipa-
tion analysis that Bates does not teach the “after said
session is discontinued on said first device” limitation, the
Board concluded that Hulu had not shown by a prepon-
derance of the evidence that claims 1–6, 8–11, 13–15, 17–
6 The Board also found that three of Hulu’s argu-
ments made in reply offered new theories not argued in
Hulu’s petition, and therefore declined to consider them.
Id. at *24–28.
CRFD RESEARCH, INC. V. MATAL 27
20, 23–25, 29–31, 34–36, and 38–41 would have been
obvious over Bates in view of Chan and/or Zou. Id. at *31.
2. Obviousness of Challenged Claims
Hulu challenges the Board’s determination that vari-
ous claims of the ’233 patent would not have been obvious
on the grounds on which the Board instituted review. On
appeal, the only claim limitation in dispute for these
grounds is “transmitting a session history of said first
device from said first device to a session transfer module
after said session is discontinued on said first device.”
’233 patent, col. 9, ll. 35–37 (emphasis added). We con-
clude that the Board erred, both in how it performed its
obviousness analysis and in the merits of its determina-
tion of nonobviousness.
Hulu first contends the Board failed to conduct a sep-
arate analysis on obviousness as to each of the instituted
grounds. Instead, according to Hulu, the Board improper-
ly relied on its finding that Bates did not anticipate
various asserted claims of the ’233 patent to support its
finding of nonobviousness without considering whether
Bates suggests transmission of session history after
discontinuation.
We agree that the Board legally erred in its treatment
of Hulu’s obviousness challenge. Although Hulu raised
separate arguments as to the obviousness of certain
claims, the Board performed limited fact-finding in its
obviousness inquiry, only examining the level of ordinary
skill in the art and then relying primarily on its determi-
nation that Bates did not anticipate the challenged
claims. Hulu Final Written Decision, at *28–31. But
“[t]he tests for anticipation and obviousness are different.”
Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364
(Fed. Cir. 2008). As noted, anticipation is a question of
fact, while obviousness is a question of law based on
underlying factual findings. Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
28 CRFD RESEARCH, INC. V. MATAL
And, “the various unenforceability and invalidity defenses
that may be raised by a defendant—inequitable conduct,
the several forms of anticipation and loss of right under
§ 102, and obviousness under § 103—require different
elements of proof.” Duro-Last, Inc. v. Custom Seal, Inc.,
321 F.3d 1098, 1107–08 (Fed. Cir. 2003). Even if a refer-
ence’s teachings are insufficient to find anticipation, that
same reference’s teachings may be used to find obvious-
ness. See, e.g., Nike, Inc. v. Adidas AG, 812 F.3d 1326,
1335 (Fed. Cir. 2016) (“A claimed invention may be obvi-
ous even when the prior art does not teach each claim
limitation, so long as the record contains some reason why
one of skill in the art would modify the prior art to obtain
the claimed invention.”), overruled on other grounds, Aqua
Prods., Inc. v. Matal, 872 F.3d 1290, 1296 n.1 (Fed. Cir.
2017) (en banc). Whatever the merits of the Board’s
determination that Bates does not anticipate the ’233
patent’s transmitting session history limitation, its find-
ings on anticipation are insufficient as a matter of law to
decide the obviousness inquiry.
Hulu next argues that, contrary to the Board’s find-
ing, it would have been obvious, based on Bates, to
transmit session history after session discontinuation.
Hulu Final Written Decision, at *31 n.3. Hulu explains
that it explicitly made this argument in its petition,
where it contended that claims 1–3, 23, and 24 would
have been obvious in view of Bates alone. J.A. 69–70 (“It
would also have been obvious that in Bates, the browser
information can be transferred after discontinuation of
the session on the first device; Bates explicitly discloses
that transfer can occur at a variety of user-chosen times,
which could include after discontinuation.”). Hulu then
incorporated this argument into other grounds of un-
patentability—Bates in view of Chan, at least as to claims
1–3, 23, and 24, and Bates in view of Zou—by direct
citation to this argument in the petition. J.A. 74; J.A. 83.
The Board did not institute review on the obviousness of
CRFD RESEARCH, INC. V. MATAL 29
the ’233 patent over Bates alone, due to its finding that
such institution would be redundant. J.A. 109.
We agree with Hulu that the Board erred on this
point, as Hulu expressly incorporated this argument as
part of other grounds of unpatentability on which the
Board instituted trial. 7 Hulu relies solely on the teach-
ings of Bates to satisfy the transmitting limitation as to
all asserted claims. The Board, in its discretion, elected
to not institute review on Bates alone for redundancy
reasons, but instituted review on obviousness grounds
that include the only reference—Bates—cited in that
ground. To bar Hulu from pressing an argument it raised
in a ground the Board found “redundant” and that it
expressly incorporated into other proposed grounds of
unpatentability on which the Board instituted would not
only unfairly prejudice Hulu, but would also raise ques-
tions about the propriety of the Board’s redundancy
decision. As the parties agree, our obviousness analysis
on this limitation is controlled by the teachings and
suggestions of Bates, and the Board’s decision to not
review the obviousness ground of Bates alone for redun-
dancy reasons cannot control the breadth of the obvious-
ness inquiry it took below, and that we must review here.
Finally, Hulu contends that the Board misread the
Bates reference in concluding that it did not render obvi-
ous the transmitting limitation. At the outset, we reject
7 Although Hulu did not expressly incorporate this
argument into its petition as to proposed Ground 5, Bates
in view of Zou, in further view of Chan, Ground 5 also
does not address the “transmitting” limitation at issue in
this appeal. Hulu does explain in this ground, however,
that it would have been obvious to combine Bates and Zou
and Bates and Chan. J.A. 86. We believe this incorpora-
tion suffices to support the argument Hulu now presses
on appeal.
30 CRFD RESEARCH, INC. V. MATAL
CRFD’s argument that Hulu has raised a new obvious-
ness argument on appeal as to its contention that Bates
provided only two choices for transmitting a session
history: either before or after the session has been discon-
tinued. Hulu made this argument both before the Board
and in its opening brief. Appellant Br. at 28–30; J.A. 69;
J.A. 484–85. Before the Board, Hulu argued and offered
expert testimony to support its position that “[i]t would
also have been obvious that in Bates, the browser infor-
mation can be transferred after discontinuation of the
session on the first device.” J.A. 69 (emphasis added);
J.A. 484–85.
The parties agree that a person of ordinary skill
would have understood that Bates’s system could trans-
mit browser information prior to or after discontinuation
of a session. In fact, CRFD admitted in its patent owner
response that “transmissions that occur when an applica-
tion or computer is being shutdown need not necessarily
be concurrent with a transmission after a session is
discontinued. It is equally likely that the transmission is
made as part of the shutdown process – i.e., concurrently
with the session being terminated.” J.A. 136 (emphasis
added). This admission corresponds with Dr. Mohapatra’s
testimony as to how transmission would occur in response
to three share events in Bates:
For example, a transmission that occurs “immedi-
ately upon user request” is not necessarily concur-
rent with a transmission after a session is
discontinued. User requests may occur at any
time, and are especially likely to occur during a
browsing session as a user comes across interest-
ing information or performs actions that the user
wishes to preserve as browsing history or other
session events. Therefore, it is equally, if not
more, likely that such a user request will be made
(and a corresponding transmission of session state
CRFD RESEARCH, INC. V. MATAL 31
effected) while the user is engaged in a current
session.
J.A. 852–53 (emphasis added).
Likewise, transmissions that occur when an appli-
cation or a computer is being shutdown need not
necessarily occur after a session is discontinued.
It is equally likely that the transmission is made
as part of the shutdown process – i.e., concurrent-
ly with the session being terminated.
J.A. 853 (emphasis added).
Similarly, transmissions that occur when a com-
puter is idle do not necessarily occur after a ses-
sion is discontinued.
J.A. 854 (emphasis added). As part of its anticipation
analysis, the Board found Dr. Mohapatra’s testimony on
these share events persuasive and supported by the text
of Bates. Hulu Final Written Decision, at *22.
But, even in light of CRFD’s admission and Dr. Mo-
hapatra’s testimony, the Board failed to consider whether
Bates suggests transmitting a session history after discon-
tinuation when considering whether the asserted claims
would have been obvious. Based on the Board’s findings
and credibility determinations, we conclude that a person
of ordinary skill would have two predictable choices for
when the Bates system would transmit browser infor-
mation, providing a person of ordinary skill with a simple
design choice as to whether to specify transmission after
discontinuation to meet Bates’s goal to preserve the entire
session history. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“When there is a design need or market
pressure to solve a problem and there are a finite number
of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options within
his or her technical grasp.”); id. at 417 (“If a person of
32 CRFD RESEARCH, INC. V. MATAL
ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.”).
As the Board acknowledged, the motivation to modify
Bates to transmit a session history after discontinuation
of the session exists in Bates itself. The Board found that
one of Bates’s goals is to preserve session history; quoting
discussion of a step shown in Figure 8 of Bates, the Board
found that “it is true that Bates’s system ‘preserves the
current status of a browsing session to be resumed at
another location.’” Hulu Final Written Decision, at *31
n.3 (quoting Bates, col. 11, ll. 6–8) (emphasis in original).
Even in light of this finding, the Board concluded that
Hulu had failed to provide a sufficient reason for why a
person of ordinary skill would have modified the sequence
of operations in Bates to discontinue the session before
transmitting the browser information. The Board found
that the goal of preserving the current status of a brows-
ing session “is accomplished if the browser information is
transmitted upon user request, at shutdown, or at an idle
period during a browsing session.” Id.
That some embodiments identified by the Board could
transmit session history before or during discontinuation
and thus would satisfy the goal expressed in Bates is not
dispositive of an obviousness inquiry. Indeed, given this
goal, it is illogical to conclude that a person of ordinary
skill would not have considered ways in which the entire
session history could be transferred. The Board construed
the term “discontinued” to require that the session be
“terminated or otherwise stopped, with the ability to be
resumed.” Id. at *8. If a transfer occurs before discontin-
uation of a session, additional information transactions
may occur after the transfer but prior to discontinuation,
but these additional information transactions would be
lost if a session transferred before discontinuation.
CRFD points to the prosecution history of the ’233 pa-
tent in support of the Board’s position that a person of
CRFD RESEARCH, INC. V. MATAL 33
ordinary skill would not depart from the explicit teach-
ings of Bates as to times for preserving browsing infor-
mation: immediately upon user request, at shutdown,
and when the user’s computer is idle. See id. at *31 n.3.
When the applicant amended claim 1 during prosecution
to add the “transmitting” step, the step recited “transmit-
ting a session history of said first device from said first
device to a session transfer module during a transition of
said session from said first device to said second device.”
J.A. 308 (emphasis added). The examiner rejected the
claims after concluding that a prior art reference (Bel-
fiore) 8 discloses transmitting a session history during
transition of a session between devices. J.A. 373. The
applicant then amended claim 1 to replace the phrase
“during a transition of said session from said first device
to said second device” with “after said session is discon-
tinued on said first device,” and the ’233 patent issued
with this limitation. J.A. 384; J.A. 405; J.A. 409.
During prosecution, the applicant distinguished the
claims at issue from those in Belfiore by contending that
Belfiore continuously updates the session history infor-
mation, which causes continuous network traffic or re-
quires a large centralized storage space. According to the
applicant, neither of these features are required when
practicing the ’233 patent. J.A. 398. The ’233 examiner
concluded that Belfiore could be distinguished from the
claims at issue here, because the Belfiore reference dis-
closes a system and method in which “the session history
information is transmitted periodically from the first
device to a session server prior to termination of the
session on the first device.” J.A. 409.
CRFD compares Belfiore to Bates, as Bates teaches
the need for storage for emails in a certain embodiment
8 U.S. Patent Application Publication No.
2002/0059425, later issued as U.S. Patent No. 6,990,513.
34 CRFD RESEARCH, INC. V. MATAL
and periodic transfer of browser information in another.
Bates, col. 3, ll. 59–65; id. col. 8, ll. 5–6. But CRFD’s
comparison fails, as it assumes that, even if Bates disclos-
es an embodiment with a similar solution to that ex-
plained in Belfiore, Bates cannot contain other teachings
that disclose or suggest the claimed embodiment. The
Board found, and the parties acknowledge, that Bates
discloses multiple embodiments. As we noted above,
Bates at least suggests the transmission of session history
after a first device has discontinued a session, to preserve
the browsing history prior to resuming the session on
another device. “A reference must be considered for
everything that it teaches, not simply the described
invention or a preferred embodiment.” In re Applied
Materials, 692 F.3d at 1298. 9
9 Hulu relies solely on Bates to teach or suggest the
transmitting limitation of the asserted claims of the ’233
patent. Hulu cited Chan for its disclosures related to
session transfer modules, J.A. 73, and Zou for its teach-
ings concerning a “server-side implementation of session
transfer between computers,” J.A. 81. But CRFD con-
tends that the features of the Chan and Zou systems
would have directed a person of ordinary skill away from
combining Bates with Chan and/or Zou. The Board did
not make a finding of teaching away, and this conclusion
is consistent with our conclusions about what a person of
ordinary skill would understand about Bates. Even Hulu
acknowledges that Chan and Zou add nothing toward the
transmitting limitation at issue here. And CRFD’s argu-
ment fails to account for the logical result of the Board’s
factual findings, that Bates would at least suggest trans-
mission after discontinuation of a session. Even if Chan
and Zou teach or suggest transmission before discontinua-
tion or during discontinuation, this does not negate this
CRFD RESEARCH, INC. V. MATAL 35
The Board’s failure to perform a proper obviousness
analysis, and its misreading of the Bates reference, led it
to err in its obviousness determination as to the asserted
claims of the ’233 patent. For the foregoing reasons, we
reverse the Board’s determination that Hulu did not
show, by a preponderance of the evidence, the obviousness
of claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36,
and 38–41 of the ’233 patent. We need not address Hulu’s
anticipation challenge to claims 1–3, 23, and 24 of the
’233 patent or its related procedural arguments, because
our decision on obviousness invalidates all claims Hulu
argued were anticipated.
III. CONCLUSION
Substantial evidence supports the Board’s findings
that (1) claim 1 of the ’233 patent is anticipated by Phan
San Jose and (2) claims 4–6 and 8–11 of the ’233 patent
would have been obvious over the combination of Phan
San Jose and Phan Helsinki, and we affirm the Board’s
determinations as to these claims and references in the
Iron Dome Final Written Decision. Substantial evidence
also supports the Board’s determination that claims 1, 4,
23, and 25 of the ’233 patent are anticipated by Phan
Helsinki, and we affirm the Board’s determination as to
these claims and references in the DISH Final Written
Decision. For the reasons stated above, however, we
reverse the Board’s determinations in the Hulu Final
Written Decision as to the obviousness of various claims,
and conclude that (1) claims 1–6, 8–11, 23–25, and 29–31
would have been obvious over Bates and Chan, (2) claims
13, 14, 34, and 35 would have been obvious over Bates
teaching of Bates as it pertains to the obviousness of the
transmitting limitation of the asserted claims.
36 CRFD RESEARCH, INC. V. MATAL
and Zou, and (3) claims 15, 17–20, 36, and 38–41 would
have been obvious over Bates, Zou, and Chan. 10
AFFIRMED IN APPEAL NOS. 16-2198 AND 16-2298;
REVERSED IN APPEAL NO. 16-2437
COSTS
Costs to Hulu in Appeal No. 16-2437.
10 Given the repetitive nature of the issues we have
considered across these three appeals, we question
whether the Board could have managed these IPRs in a
more efficient manner. The record does not reflect any
attempt to consolidate these cases to enhance the efficien-
cy of the Board’s examination of the grounds raised
against the ’233 patent, even though the petitions were
filed within two months of each other and the Board
published its decisions to institute review of various
claims offered by the petitioners at similar times. Each of
these petitions challenged claim 1, along with various
other claims, based on two sets of prior art that over-
lapped over various parts of the proceedings. It is hard to
see how the Director would not have been authorized
under 35 U.S.C. § 315(d) to consolidate these matters.