Intel Corporation v. Pact Xpp Schweiz Ag

N OTE : This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTEL CORPORATION,
Appellant
v.
PACT XPP SCHWEIZ AG,
Appellee
______________________
2023-1537
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00535.
______________________
Decided: December 11, 2024
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J OHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for appellant. Also represented by DIVA R.
HOLLIS; R OBERT A LAN A PPLEBY, J AMES E. MARINA , New
York, NY.
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for appellee. Also
represented by R ON HAGIZ ; N IMA HEFAZI, F REDERICK A.
L ORIG, Los Angeles, CA; MARK YEH -KAI TUNG, Redwood
Shores, CA.
Case: 23-1537 Document: 53 Page: 1 Filed: 12/11/2024

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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 2
______________________
Before MOORE , Chief Judge, TARANTO, Circuit Judge, and
SCHROEDER , District Judge.1
MOORE , Chief Judge.
Intel Corporation (Intel) appeals an inter partes review
final written decision from the Patent Trial and Appeal
Board (Board) holding that Intel failed to prove claim 8 and
claims which depend from claim 8 of U.S. Patent
No. 8,312,301 would have been obvious. We affirm.
BACKGROUND
PACT XPP Schweiz AG (PACT) owns the ’301 patent,
which discloses a multiprocessor system where different
data processing components can be operated at reduced
clock frequencies (i.e., processor speed) to save power when
the battery level is low. ’301 patent at 1:21–22, 2:20–40,
7:48–53, 10:49–58. Claim 8 is representative:
8. A processor device, comprising:
a plurality of data processing elements adapted for
programmably processing sequences and to which
tasks are assigned, each of the data processing ele-
ments having at least one Arithmetic Logic Unit;
and
at least one bus system at least one of (a) intercon-
necting at least some of the data processing ele-
ments and (b) connecting at least some of the data
processing elements with at least one of periph-
erals and external memory;
wherein:
1 Honorable Robert W. Schroeder, III, District
Judge, United States District Court for the Eastern Dis-
trict of Texas, sitting by designation.
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 3
each of at least some of the data processing el-
ements is capable of operating at a clock fre-
quency different than at least one other of the
data processing elements; and
the processor device is adapted for reducing
clock frequencies of the data processing ele-
ments in response to a determination that a
power reserve of a battery is below a predeter-
mined threshold.
’301 patent at 15:59–16:9 (emphasis added).
Intel challenged claims 3, 6–10, 12–19, 23–26, 30, 32,
35, and 36 of the ’301 patent as obvious over the combina-
tion of U.S. Patent Nos. 6,141,762 (Nicol) and 6,535,798
(Bhatia). The Board held independent claims 3, 6, 10, 12,
23, and 24 and dependent claim 7 were unpatentable in
view of Nicol alone or in combination with Bhatia, but in-
dependent claim 8 and claims which depend from claim 8
(claims 9, 13–19, 25, 26, 30, 32, 35, and 36) were not un-
patentable. Intel appeals the Board’s determination with
respect to claim 8 and its dependents. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Obviousness is a question of law based on underlying
findings of fact. Regents of Univ. of Cal. v. Broad Inst., Inc.,
903 F.3d 1286, 1291 (Fed. Cir. 2018). We review the
Board’s ultimate conclusion of obviousness de novo and its
underlying factual findings for substantial evidence. Id.
Intel argues the Board legally erred by refusing to con-
sider U.S. Patent No. 6,704,877 (Cline) as background
knowledge a skilled artisan would have in evaluating Nicol
and Bhatia’s teachings. Appellant’s Br. 30–37. We do not
agree. In determining claim 8 would not have been obvi-
ous, the Board found “no teaching or suggestion in either
Nicol or Bhatia of determining the power reserve of a bat-
tery, let alone reducing clock frequencies in response to a
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 4
determination that the power reserve is below a predeter-
mined threshold.” J.A. 52. The Board found Intel relied on
Cline to supply a missing claim limitation—reducing clock
frequency in response to “detection of a low battery condi-
tion”—not taught by either Nicol or Bhatia, rather than, as
Intel argued, to describe the state of the art. J.A. 53–54.
Thus, Intel needed to include Cline in the asserted grounds
of unpatentability set forth in its petition and persuasively
show a skilled artisan would have been motivated to com-
bine Cline with Nicol and Bhatia. J.A. 53. Because Intel
failed to do so, the Board refused to consider Cline.
Intel frames this as legal error, but the “level of skill in
the art and the scope and content of the prior art are fact
questions we review for substantial evidence.” Neptune Ge-
nerics, LLC v. Eli Lilly & Co., 921 F.3d 1372, 1377 (Fed.
Cir. 2019); see also Pers. Web Techs., LLC v. Apple, Inc., 848
F.3d 987, 992 (Fed. Cir. 2017) (listing “[skilled] artisans’
background knowledge” as a fact finding). We see no error
in the Board’s treatment of Cline. Substantial evidence
supports the Board’s finding that neither Bhatia nor Nicol
discloses the claim limitation. J.A. 52, 54–55; Oral Arg. at
4:40–54, 6:32–46, https://oralarguments.cafc.uscourts.gov/
default.aspx?fl=23-1537_12032024.mp3. Under substan-
tial evidence review, we cannot overturn the Board’s find-
ing that Cline is used to supply a missing claim limitation,
and not as evidence of a skilled artisan’s background
knowledge. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357,
1364 (Fed. Cir. 2006) (“An agency decision can be sup-
ported by substantial evidence, even where the record will
support several reasonable but contradictory conclu-
sions.”).
Intel also argues the Board legally erred by refusing to
consider the Advanced Configuration and Power Interface
specification (ACPI) as background knowledge a skilled ar-
tisan would have in evaluating Bhatia’s teachings. Appel-
lant’s Br. 37–44. We do not agree. As a preliminary
matter, the Board rejected Intel’s argument that “Bhatia
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 5
incorporates the entirety of the ACPI specification by its
reference to processor power management states disclosed
therein.” J.A. 57–58. Intel makes the same argument to
this court. Appellant’s Br. 16, 19, 37, 44. There is simply
no merit to this argument. The Board found that while In-
tel had, in its petition, identified certain portions of the
ACPI with regard to certain grounds, the arguments it
made in reply differed from the arguments made in the pe-
tition. J.A. 57. Thus, the Board found them untimely. In
its petition, Intel did not even cite ACPI when discussing
claim 8. See J.A. 257–62. In its reply, Intel cited ACPI
§ 3.4 (Controlling Device Power) and § 3.8 (Battery Man-
agement). J.A. 573 (citing J.A. 3285); J.A. 574–75 (citing
J.A. 3291–92). “The Board’s determinations that a party
exceeded the scope of a proper reply are reviewed for abuse
of discretion.” Apple Inc. v. Andrea Elecs. Corp., 949 F.3d
697, 705 (Fed. Cir. 2020). We see no abuse of discretion.
The Board found Bhatia does not incorporate the relevant
ACPI sections by reference that Intel cited in reply, let
alone the entirety of ACPI. J.A. 57–58.
Bhatia references ACPI’s processor power states (C0–
C3) and “an interrupt defined by the ACPI specification.”
E.g., J.A. 2360 at 12:58–61; J.A. 2361 at 13:33. Processor
power states are described in ACPI §§ 2.5, 3.5, and 8. J.A.
3278, 3288, 3408. Interrupts are described in ACPI §§ 3.4
and 3.5. J.A. 3285, 3288. However, given Bhatia’s refer-
ences to processor power states in § 3.5, the Board found
Bhatia’s reference to “interrupt” is not directed to § 3.4.
J.A. 56–57. By contrast, in its reply, Intel cited ACPI’s de-
vice power states (D0–D3) and battery management, de-
scribed in ACPI §§ 3.4 and 3.8, respectively. J.A. 573–75
(citing J.A. 3285, 3291–92). Substantial evidence supports
the Board’s finding that Bhatia does not reference ACPI in
the context of device power management (ACPI § 3.4) and
battery management (ACPI § 3.8). J.A. 57.
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 6
C ONCLUSION
We have considered Intel’s remaining arguments and
find them unpersuasive. We affirm the Board’s determina-
tion that Intel failed to prove claim 8 and claims which de-
pend from claim 8 of the ’301 patent would have been
obvious.
AFFIRMED
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