Iron Oak Technologies, LLC v. Samsung Electronics Co., Ltd., Microsoft Corporation

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IRON OAK TECHNOLOGIES, LLC,
Appellant
v.
SAMSUNG ELECTRONICS CO., LTD., MICROSOFT
CORPORATION,
Appellees
______________________
2020-1556, 2020-1811
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01554, IPR2019-00107.
______________________
Decided: March 10, 2021
______________________
ROBERT J AMES M CAUGHAN , JR., McAughan Deaver
PLLC, Houston, TX, for appellant. Also represented by
ALBERT BERTON D EAVER, JR.
JOSEPH P ALYS , Paul Hastings LLP, Washington, DC,
for appellee Samsung Electronics Co., Ltd. Also repre-
sented by PHILLIP W. CITROEN , STEPHEN B LAKE K INNAIRD ,
NAVEEN M ODI, ANDERSON TO .
Case: 20-1556 Document: 54 Page: 1 Filed: 03/10/2021

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IRON OAK TECHNOLOGIES , LLC v.
SAMSUNG ELECTRONICS CO ., LTD .
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RICHARD A LAN C EDEROTH , Sidley Austin LLP, Chicago,
IL, for appellee Microsoft Corporation. Also represented by
SCOTT BORDER, JOSEPH A. M ICALLEF, Washington, DC.
______________________
Before D YK , LINN , and M OORE, Circuit Judges.
PER C URIAM.
Iron Oak Technologies, LLC appeals from final deci-
sions of the Patent Trial and Appeal Board (“Board) in two
inter partes review proceedings collectively holding claim
1 of Iron Oak’s U.S. Patent No. 5,966,658 (the ‘658 patent)
invalid as anticipated by three distinct prior art references
and obvious over two additional grounds. We affirm based
on anticipation by U.S. Patent Number 6,044,075 (“Le
Boudec”).
Substantial evidence supports the Board’s conclusion
that Le Boudec anticipates all limitations of claim 1 of the
’658 patent. Iron Oak contends the Board erred in reaching
that conclusion with respect to three limitations. With re-
spect to the “plurality of ordered lists” limitation, the table
in column 15 of Le Boudec (“table”) reasonably can be seen
to disclose one ordered list showing a start/finish commu-
nication route of A to B and a second ordered list showing
a start/finish route of A to D. Iron Oak proffers no reason
why association with a communication attribute requires
that the entries in the ordered list have the same value for
at least one attribute. Moreover, the Board is correct that
the first two entries in the table may be read as a list “of
routes between nodes A and B ordered according to increas-
ing delay and a second list of routes between nodes A and
B ordered according to decreasing bandwidth.” IPR 2018-
01554 Final Written Decision at 21. The fact that the table
discloses multiple routes within a single table and refers to
the table in the singular as “[t]he set,” Le Boudec at col. 9,
ll. 29-30; id. at col. 9, ll. 52-53, does not detract from what
is disclosed or suggest that the Board engaged in
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IRON OAK TECHNOLOGIES , LLC v.
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impermissible hindsight reconstruction or reconceptualiza-
tion. Substantial evidence thus supports the Board’s find-
ing that the table met the limitation in claim 1 of “a
plurality of ordered lists of communication paths.”
With respect to the “communication attributes” limita-
tion, Iron Oaks argues that because the delay and band-
width values disclosed in Le Boudec do not “overlap,” the
list of optimum routes between nodes A to D is not associ-
ated with a common attribute. The Board was correct to
reject this argument both because it was raised for the first
time in Iron Oak’s sur-reply and because it inaccurately re-
flects what is actually disclosed and claimed in the ‘658 pa-
tent. Figure 4 of the ‘658 patent discloses several paths
each of which may have its own unique characteristic. And
those paths may be ordered according to those characteris-
tics. Again, substantial evidence thus supports the Board’s
finding that Le Boudec met the limitation in claim 1 of a
plurality of ordered lists each “associated with one of a plu-
rality of communication attributes.”
Finally, Iron Oak argues that the Board failed to ex-
plain its reasoning for why Le Boudec discloses the limita-
tion that “[e]ach communication attribute represent[s] a
separate priority for communication.” Samsung argued in
its petition that “the additive attribute [(e.g. delay)] reflects
a priority for delay characteristics of the route, and the re-
strictive attribute [(e.g. bandwidth)] reflects a priority for
bandwidth availability of the route.” J. App’x 155 (Micron
Petition in IPR 2018-01554). The Board agreed with Sam-
sung’s argument that each ordered list in the table in Le
Boudec “is associated with one of a plurality of communi-
cation attributes . . . and each attribute represents a sepa-
rate priority for communication (e.g. least available
bandwidth or most constrained link, etc.).” Board Decision
in IPR 2018-01554 at 14. See also id. at 16 (“We agree with
Petitioner that . . . each list is ordered in terms of increas-
ing delay and decreasing bandwidth.”).
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IRON OAK TECHNOLOGIES , LLC v.
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Iron Oak’s argument that the Board failed to explain
its reasoning with respect to this last element is unpersua-
sive. Samsung presented a persuasive argument as to why
the “separate priority” limitation was disclosed by Le
Boudec and Iron Oak failed to present a convincing argu-
ment to the contrary. Iron Oak points to its arguments
with respect to the element “[e]ach ordered list associated
with one of a plurality of communication attributes.” See
Iron Oak Reply Br. at 3–5 (citing Iron Oak Sur-Reply for
IPR 2018-01554 at 2–4). The most that can be said of the
cited excerpt from Iron Oak’s argument, however, is that
Iron Oak quoted the claim language. That is not sufficient
to preserve the argument on appeal. See In re Watts, 354
F.3d 1362, 1367-68 (Fed. Cir. 2004). Under the circum-
stances, the Board was entitled to rely on Samsung’s argu-
ment and otherwise provided ample explanation in support
of its conclusion on anticipation.
Because we hold that substantial evidence supports
the Board’s finding that claim 1 is anticipated by Le
Boudec, we need not and do not reach the other grounds of
invalidity of that claim.
AFFIRMED
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