Daedalus Blue LLC v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
DAEDALUS BLUE LLC,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2023-1312
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00830.
______________________
Decided: May 21, 2024
______________________
D ENISE MARIE D E M ORY , Bunsow De Mory LLP, Red-
wood City, CA, argued for appellant. Also represented by
K EVIN K ENT MCN ISH , McNish PLLC, Portland, ME.
P ETER J. AYERS , Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by MICHAEL S. F ORMAN,
Case: 23-1312 Document: 40 Page: 1 Filed: 05/21/2024

-- 1 of 9 --

DAEDALUS BLUE LLC v. VIDAL 2
F ARHEENA Y ASMEEN RASHEED, MEREDITH H OPE
SCHOENFELD.
______________________
Before P ROST , CHEN, and HUGHES , Circuit Judges.
CHEN, Circuit Judge.
Daedalus Blue LLC (Daedalus Blue) appeals the Pa-
tent Trial and Appeal Board’s (Board) final written deci-
sion finding the petitioner proved by a preponderance of
the evidence that all claims of U.S. Patent No. 8,572,612
(’612 patent) are unpatentable under 35 U.S.C. § 103. Mi-
crosoft Corp. v. Daedalus Blue, LLC, No. IPR2021-00830,
2022 WL 16551441, at *1 (P.T.A.B. Oct. 27, 2022) (Final
Written Decision). Daedalus Blue alleges the Board mis-
construed two limitations of representative independent
claim 1: (1) “flagging the instance of a [virtual machine
(VM)] for autonomic scaling including termination” (the
“flagging” limitation), and (2) “deploying . . . an additional
instance of the VM” (the “deploying” limitation). Because
we do not believe the Board erred in construing either lim-
itation, we affirm.
I. REPRESENTATIVE C LAIM 1
Independent claim 1 is representative of the issues
raised on appeal and recites:
1. A method of autonomic scaling of virtual ma-
chines in a cloud computing environment, the cloud
computing environment comprising a plurality of
virtual machines (‘VMs’), the VMs comprising mod-
ules of automated computing machinery installed
upon cloud computers disposed within a data cen-
ter, the cloud computing environment further com-
prising a cloud operating system and a data center
administration server operably coupled to the VMs,
the method comprising:
deploying, by the cloud operating system, an in-
stance of a VM, including flagging the instance of a
Case: 23-1312 Document: 40 Page: 2 Filed: 05/21/2024

-- 2 of 9 --

DAEDALUS BLUE LLC v. VIDAL 3
VM for autonomic scaling including termination
and executing a data processing workload on the
instance of a VM;
monitoring, by the cloud operating system, one or
more operating characteristics of the instance of
the VM;
deploying, by the cloud operating system, an addi-
tional instance of the VM if a value of an operating
characteristic exceeds a first predetermined
threshold value, including executing a portion of
the data processing workload on the additional in-
stance of the VM; and
terminating operation of the additional instance of
the VM if a value of an operating characteristic de-
clines below a second predetermined threshold
value;
wherein the cloud operating system comprises a
module of automated computing machinery, fur-
ther comprising a self service portal and a deploy-
ment engine, and deploying an instance of a VM
further comprises:
passing by the self service portal user specifica-
tions for the instance of a VM to the deployment
engine;
implementing and passing to the data center ad-
ministration server, by the deployment engine, a
VM template with the user specifications; and
calling, by the data center administration server, a
hypervisor on a cloud computer to install the VM
template as an instance of a VM on the cloud com-
puter.
’612 patent at claim 1 (emphases added).
Case: 23-1312 Document: 40 Page: 3 Filed: 05/21/2024

-- 3 of 9 --

DAEDALUS BLUE LLC v. VIDAL 4
II. T HE “FLAGGING” L IMITATION
Daedalus Blue contends the “flagging” limitation re-
quires a flag that contains information indicating a VM in-
stance is amenable to autonomic termination. Appellant’s
Opening Br. 28. According to Daedalus Blue, the applicant
for the ’612 patent made statements during prosecution
supporting this construction. Id. at 28–29. In an ex parte
appeal brief, the applicant distinguished the claims from
the prior-art reference Yach1 by arguing:
At this reference point, Yach discloses a virtual ma-
chine that sets a “state flag.” Yach’s “state flag”
however indicates the state of the virtual [ma-
chine]—whether executing or idle. Yach’s flag is
set when the virtual machine begins executing.
Yach’s flag is cleared when the virtual machine en-
ters an idle state. Yach’s flag, however, does not
indicate whether the virtual machine is amenable
to “autonomic scaling including termination” as
claimed here. That is, Yach discloses flagging a vir-
tual machine to indicate whether the virtual ma-
chine is idle or executing while the claims, in stark
contrast, recite flagging a virtual machine for auto-
nomic scaling including termination. Certainly,
Yach fails to even suggest that the virtual ma-
chine’s flag is “for autonomic scaling including ter-
mination.”
J.A. 966 (emphasis added). The above emphasized state-
ment, Daedalus Blue argues, compels its proposed con-
struction. Appellant’s Opening Br. 29.
We agree with the Board that the prosecution history
does not require Daedalus Blue’s proposed construction.
See Final Written Decision, 2022 WL 16551441, at *5. In
the prosecution history, the applicant argued that Yach’s
flags do not indicate that the VM is amenable to
1 U.S. Patent No. 7,502,962.
Case: 23-1312 Document: 40 Page: 4 Filed: 05/21/2024

-- 4 of 9 --

DAEDALUS BLUE LLC v. VIDAL 5
“autonomic scaling including termination” and the purpose
of Yach’s flags is not for “autonomic scaling including ter-
mination.” The applicant was not, as Daedalus Blue con-
tends, asserting that the “flagging” limitation requires that
the specific contents of Yach’s flag indicate the VM is ame-
nable to “autonomic scaling including termination.” We
thus, like the Board, reject Daedalus Blue’s attempt to read
into the “flagging” limitation a requirement of a flag that
contains information indicating the amenability of a VM
instance to autonomic termination. We affirm the Board’s
construction.
III. T HE “D EPLOYING” L IMITATION
Daedalus Blue asserts that the “deploying” limitation
requires creating a new, additional instance of a VM—the
“creating” requirement. Appellant’s Opening Br. 33. We
disagree.
First, Daedalus Blue argues that the language of
claim 1—in specifying that “deploying . . . an additional in-
stance of the VM . . . includ[es] executing a portion of the
data processing workload on the additional instance of the
VM”—requires that the “deploying” limitation involves
more than “executing a portion of the data processing
workload.” Appellant’s Opening Br. 45–46. The Board
erred, in Daedalus Blue’s view, because it failed to consider
the “executing” limitation separately from the “deploying”
limitation. Id. But that argument fails to explain how any
such distinction mandates the “creating” requirement that
Daedalus Blue seeks to read into the “deploying” limita-
tion. Moreover, the Board relied on two separate functions
in the prior art to find that it teaches the “deploying” and
“executing” limitations: (1) the prior art’s teaching of dy-
namically adding additional computing nodes to a com-
puter network, and (2) the prior art’s teaching of using
these additional nodes to process a portion of the workload
formerly processed by the original VM. See Final Written
Decision, 2022 WL 16551441, at *17–20. The claim lan-
guage thus does not require Daedalus Blue’s proposed con-
struction.
Case: 23-1312 Document: 40 Page: 5 Filed: 05/21/2024

-- 5 of 9 --

DAEDALUS BLUE LLC v. VIDAL 6
Second, Daedalus Blue argues that the remainder of
the specification supports its proposed construction. Daed-
alus Blue relies on one passage describing an “example
cloud operating system” that deploys an instance of a VM
in accordance with user specifications. Appellant’s Open-
ing Br. 33–35; ’612 patent col. 4 l. 63, col. 5 ll. 17–20. In
this example, a data center administration server calls a
hypervisor “to install the instance of the VM” and then “rec-
ords a network address assigned to the new instance of the
VM as well as a unique identifier for the new instance of
the VM.” ’612 patent col. 5 ll. 33–39 (emphases added).
This stray reference to a “new instance” of a VM, Daedalus
Blue avers, establishes that the “deploying” limitation im-
poses the “creating” requirement. Appellant’s Opening
Br. 33–35. This phrase “new instance,” however, appears
only in this passage, and this single passage describes only
an “example cloud operating system.” ’612 patent col. 4
l. 63 (emphasis added). The specification does not limit the
act of deploying a VM instance to this example. And even
if this passage’s isolated use of the word “new” limited the
meaning of the “deploying” limitation, nothing in the pas-
sage suggests that the word “new” must refer to a newly
created instance (and not, for example, a newly deployed
instance).
Furthermore, contrary to what Daedalus Blue argues,
the specification does not consistently describe that deploy-
ing refers to creating. For example, the specification de-
scribes that the example method of Figure 3 is similar to
the example method of Figure 2 but notes that they differ
in that deploying an instance of a VM in the Figure 3
method involves installing a “VM template as an instance
of a VM (102) on the cloud computer.” ’612 patent col. 11
ll. 27–36. By comparison, the specification does not de-
scribe that deploying a VM instance in the example method
of Figure 2 involves “install[ation]” of a VM template as a
VM instance. Id. col. 9 l. 38 – col. 10 l. 20. Therefore, to
the extent that Daedalus Blue believes installation of a VM
template refers to creation of an instance of a VM, the spec-
ification does not consistently describe that deploying a VM
Case: 23-1312 Document: 40 Page: 6 Filed: 05/21/2024

-- 6 of 9 --

DAEDALUS BLUE LLC v. VIDAL 7
instance involves installing a VM template. Nor does the
specification suggest that deploying a VM instance is lim-
ited to the example of Figure 3 that involves installing a
VM template. We conclude that the specification does not
demand that deploying an instance of VM involves creating
an instance of a VM.
Third, Daedalus Blue criticizes the Board for errone-
ously “invert[ing] the roles of intrinsic evidence and extrin-
sic evidence” by starting with general-purpose dictionary
definitions rather than starting with the specification. Ap-
pellant’s Opening Br. 41–43. But the sequencing of the
Board’s consideration of evidence, alone, does not consti-
tute error. See Phillips v. AWH Corp., 415 F.3d 1303, 1324
(Fed. Cir. 2005) (en banc) (“Nor is the court barred from
considering any particular sources or required to analyze
sources in any specific sequence . . . .”); Old Town Canoe
Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1316
(Fed. Cir. 2006) (“In construing the claim terms in this
case, the district court began its analysis by referring to
dictionary definitions presented by the parties. The dis-
trict court’s reference to the dictionary was not an improper
attempt to find meaning in the abstract divorced from the
context of the intrinsic record but properly was a starting
point in its analysis, which was centered around the intrin-
sic record consistent with Phillips.”). Indeed, our court on
multiple occasions has considered the meaning of a claim
term in the context of the relevant field before we analyzed
this term in the context of the intrinsic evidence. See, e.g.,
Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732 (Fed. Cir.
2014) (ascertaining the meaning of the claim term “pro-
gram” in the context of the relevant art before considering
this term in the context of the intrinsic evidence); Starhome
GmbH v. AT&T Mobility LLC, 743 F.3d 849 (Fed. Cir.
2014) (describing the “well-understood meaning in the art”
for the claim term “gateway” before considering this term
in the context of the intrinsic evidence).
Here, the Board started with the dictionary definitions
of the words “deploy” and “create” to highlight that
Case: 23-1312 Document: 40 Page: 7 Filed: 05/21/2024

-- 7 of 9 --

DAEDALUS BLUE LLC v. VIDAL 8
Daedalus Blue’s proposed construction—which used the
word “create”—was inconsistent with the common mean-
ing of the claim term “deploy.” See Final Written Decision,
2022 WL 16551441, at *8. The Board then turned to the
specification to explain that nothing in the specification re-
quires displacing the common meaning of the term “deploy”
by construing the term “deploy” as “create.” Id. Though
the Board used dictionary definitions, it did not consider
these definitions in a vacuum “entirely divorced from the
context of the written description,” Phillips, 415 F.3d at
1321, and, in fact, adopted a construction consistent with
our precedent that claim construction sometimes “involves
little more than the application of the widely accepted
meaning of commonly understood words,” id. at 1314. In
light of our review of the specification as explained above,
the Board’s claim construction analysis did not inappropri-
ately elevate the dictionary definitions of “deploy” and “cre-
ate” above the intrinsic evidence.
Finally, at oral argument, Daedalus Blue’s counsel de-
voted a significant amount of time to the last “wherein”
clause of independent claim 1 that further defines steps of
deploying an instance of a VM. Oral Arg. 5:55–8:11 (avail-
able at https://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=23-1312_04022024.mp3). This clause, in
relevant part, recites “wherein . . . deploying an instance of
a VM further comprises . . . calling, by the data center ad-
ministration server, a hypervisor on a cloud computer to
install the VM template as an instance of a VM on the cloud
computer.” ’612 patent at claim 1 (emphasis added). At
oral argument, rather than exclusively asserting that the
language “deploying . . . an additional instance of the VM,”
by itself, imposes the “creating” requirement, Daedalus
Blue’s counsel argued that the language “install[ing] the
VM template as an instance of a VM on the cloud computer”
houses this requirement. See Oral Arg. 7:51–8:08. This
amounts to a new claim construction argument that Daed-
alus Blue never raised to the Board and that has not been
the focus of the dispute on appeal around the “deploying”
Case: 23-1312 Document: 40 Page: 8 Filed: 05/21/2024

-- 8 of 9 --

DAEDALUS BLUE LLC v. VIDAL 9
limitation. It is thus forfeited.2 Monsanto Tech. LLC v. E.I.
DuPont de Nemours & Co., 878 F.3d 1336, 1342 n.8 (Fed.
Cir. 2018) (finding a claim construction argument forfeited
because the appellant failed to raise it to the Board).
In sum, we find the intrinsic evidence does not support
Daedalus Blue’s proposed construction of the “deploying”
limitation and do not believe the Board erred in its use of
dictionary definitions. We accordingly affirm the Board’s
construction of the “deploying” limitation.
CONCLUSION
We have considered Daedalus Blue’s remaining argu-
ments and find them unpersuasive. For the foregoing rea-
sons, we affirm.
AFFIRMED
2 In any event, Daedalus Blue fails to show why we
need to disturb the Board’s obviousness determinations as
to these limitations. In both its institution decision and
final written decision, the Board expressly indicated that
Daedalus Blue did not directly challenge the petitioner’s
contentions as to these limitations and found that the prior
art teaches these limitations. J.A. 365–67; Final Written
Decision, 2022 WL 16551441, at *21–22. And Daedalus
Blue did not challenge these findings before us. See Appel-
lant’s Opening Br. 54–63. Accordingly, even if we consid-
ered Daedalus Blue’s argument, we see no reason to
disturb the Board’s conclusion that the prior art renders
obvious the limitations in the “wherein” clause of claim 1.
Case: 23-1312 Document: 40 Page: 9 Filed: 05/21/2024

-- 9 of 9 --