Google LLC v. MINDBASEHQ, LLC, Cross-Appellant 2023-1622, 2023-1623, 2023-1669, 2023-1670…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GOOGLE LLC,
Appellant
v.
MINDBASEHQ, LLC,
Cross-Appellant
______________________
2023-1622, 2023-1623, 2023-1669, 2023-1670
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
01251, IPR2021-01252.
______________________
Decided: August 28, 2025
______________________
N ATHAN K. K ELLEY , Perkins Coie LLP, Washington,
DC, argued for appellant. Also represented by J ONATHAN
I RVIN T IETZ; D AN L. BAGATELL , Hanover, NH; ANDREW
BALUCH , Smith Baluch LLP, Washington, DC.
J AMES I ACONIS , Iaconis Law Office, Moundsville, WV,
argued for cross-appellant.
______________________
Before D YK, REYNA, and STARK, Circuit Judges.
Case: 23-1622 Document: 83 Page: 1 Filed: 08/28/2025

-- 1 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 2
STARK, Circuit Judge.
Google LLC (“Google”) appeals from the final written
decisions of the Patent Trial and Appeal Board (“Board”)
determining that Google failed to prove several claims of
patents owned by MindbaseHQ, LLC (“Mindbase”) are un-
patentable. Because the Board’s implicit claim construc-
tion was incorrect, and it further erred by not considering
Google’s reply evidence and arguments, we vacate and re-
mand for further proceedings with respect to these claims.
The Board also found that Google succeeded in proving
other Mindbase claims were unpatentable and, as to these,
Mindbase cross-appeals. We find no error in the Board’s
conclusion relating to these claims and, therefore, affirm
with respect to Mindbase’s cross-appeal.
I
Mindbase owns U.S. Patent Nos. 6,510,433 (“’433 pa-
tent”) and 6,665,680 (“’680 patent”) (together, the “Chal-
lenged Patents”). The patents share a title, “Database
Structure Having Tangible And Intangible Elements And
Management System Therefor,” and a specification.1 Gen-
erally, they disclose database systems modeled on the hu-
man mind and its ability to store “all of the descriptive
details and word associations that people usually leave out
of their communications.” ’433 pat. 3:19-25. The disclosed
systems accomplish this by classifying data into “tangible”
and “intangible” elements. E.g., ’433 pat. 2:28-42. The
Challenged Patents refer to “tangible” data as “cause” data
(i.e., physical data elements with weight), and “intangible”
data as either “effect” data (i.e., verbs) or “descriptors” (i.e.,
adjectives and adverbs). Id. For example, in the sentence
“The tall man drove the car 50 miles per hour,” “man” is
tangible while “drove the car,” “tall,” and “50 miles per
hour” are intangible (with “drove the car” being an effect
1 Like the parties, we cite to the ’433 patent.
Case: 23-1622 Document: 83 Page: 2 Filed: 08/28/2025

-- 2 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 3
and “tall” and “50 miles per hour” being descriptors). ’433
pat. 7:64-8:5. The Challenged Patents explain that the dis-
closed classification system is formatted to mirror the hu-
man mind and overcomes problems such as “automatically
integrating an unlimited number of heterogeneous data-
bases into a single database,” and “storing all data ele-
ments only once.” E.g., ’433 pat. 3:47-63.
Two types of claims are at issue in Google’s appeal. The
first are the “dictionary routine” claims (claims 14-19 and
33-40 of the Challenged Patents). Claim 14 of the ’433 pa-
tent is representative of the dictionary routine claims:
A database system, comprising:
[14.1] a database stored in a fixed medium and
having a set of tangible data elements repre-
senting things which have physical weight and
can cause an effect and a set of intangible data
elements representing words and concepts
which have no physical weight and cannot be
weighed;
[14.2] said set of intangible data elements in-
cluding a first subset of effect data elements
representing verbs, standing alone and in com-
bination with other words, which describe ac-
tions, objectives, results, missions, procedures
and processes, and a second subset of descrip-
tive data elements describing said tangible
data elements, said effect data elements and
degrees of performance of said tangible data el-
ements; and,
[14.3] a dictionary routine for automatically
classifying and storing words entered into said
database according to said sets and subsets of
data elements.
The second type of claims at issue are the “normaliza-
tion” claims (claims 43 and 44 of the Challenged Patents).
Case: 23-1622 Document: 83 Page: 3 Filed: 08/28/2025

-- 3 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 4
In this context, “normalization” generally refers to de-du-
plicating and simplifying database entries (for instance,
combining entries for “car” and “automobile”). Claim 43 of
the ’433 patent is representative of these claims:
A method for inter-relating different databases
structured as recited in claim 41,[2] comprising the
steps of:
[43.1] for each of said databases, and in any or-
der, normalizing names of like data elements
having different names in said different data-
bases and normalizing names of different data
elements having like names in said different
databases;
[43.2] normalizing data elements which are
separate in any one of said databases and
which are grouped together as single data ele-
ments in any other of said databases;
[43.3] comparing each of said normalized data-
bases with each other one of said normalized
databases;
[43.4] recording all common data elements
found during each said comparing step; and,
2 As relevant here, claim 43 depends from claim 41,
which includes these limitations: “each said tangible data
element being linked to each said effect data element par-
tially or wholly caused by said tangible data element; each
said effect element being linked to each said tangible data
element required for said effect to occur; and, all said data
elements being stored in hierarchal structures of parent-
child relationships, said hierarchal structures defining ver-
tical lines and horizontal levels.” ’433 pat. claim 41.
Case: 23-1622 Document: 83 Page: 4 Filed: 08/28/2025

-- 4 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 5
[43.5] recording one location of each said com-
mon data element in each of said databases.
Representative of the issues presented by Mindbase’s
cross-appeal is claim 1 of the ’433 patent:
A database of information stored in a fixed me-
dium, said database comprising:
[1.1] a set of tangible data elements, said tan-
gible data elements representing things which
have physical weight and can cause an effect;
[1.2] a set of intangible data elements, said in-
tangible data elements representing words and
concepts which have no physical weight and
cannot be weighed;
[1.3] said set of intangible data elements in-
cluding a first subset of effect data elements,
said effect data elements representing verbs
standing alone and in combination with other
words, which describe actions, objectives, re-
sults, missions, procedures and processes; and,
[1.4] said set of intangible data elements in-
cluding a second subset of descriptive data ele-
ments, said descriptive data elements
describing said tangible data elements, said ef-
fect data elements and degrees of performance
of said tangible data elements.
Google petitioned for inter partes reviews (“IPR”), con-
tending that every claim of the Challenged Patents is inva-
lid as obvious based on combinations of four prior art
Case: 23-1622 Document: 83 Page: 5 Filed: 08/28/2025

-- 5 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 6
references. Three of these references – Conlon,3 Miller,4
and Beckwith5 – relate to lexical databases (i.e., databases
of words), computational linguistics, and computational
lexicography, and their implementation. The fourth refer-
ence, Fong,6 relates to designing a normalized database.
The Board found that Google failed to prove claims 14-
19, 33-40, and 43-46 of the Challenged Patents are obvious
under any of the grounds asserted in the petition but suc-
ceeded in proving that claims 1-13, 20-32, 41, and 42 are
obvious based on various combinations of Conlon, Miller,
and Beckwith. Google timely appealed the Board’s final
written decision; Mindbase cross-appealed, arguing that
the Board erred in finding certain claims obvious.
The Board had jurisdiction under 35 U.S.C. § 316(c).
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II
We review the Board’s ultimate claim construction and
obviousness determinations de novo and its underlying fac-
tual determinations for substantial evidence. See Wasica
3 Sumali Pin-Ngern Conlon et al., Developing a Large
Lexical Database for Information Retrieval, Parsing, and
Text Generation Systems, 29(4) Info. Processing & Mgmt.
415 (1993).
4 George A. Miller, Nouns in WordNet: A Lexical Inher-
itance System, 3(4) Int’l J. Lexicography 245 (1990).
5 Richard Beckwith & George A. Miller, Implementing
a Lexical Network, 3(4) Int’l J. Lexicography 302 (1990).
6 Elizabeth N. Fong et al., Guide on Logical Database
Design, NBS Special Publication 500-122 (1985).
Case: 23-1622 Document: 83 Page: 6 Filed: 08/28/2025

-- 6 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 7
Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278
(Fed. Cir. 2017); Uber Techs., Inc. v. X One, Inc., 957 F.3d
1334, 1337 (Fed. Cir. 2020). We review decisions related to
compliance with Board procedures for abuse of discretion.
See Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374,
1379 (Fed. Cir. 2018).
III
A
Google first appeals the Board’s determination that it
failed to prove that the “dictionary routine” claims (claims
14-19 (system claims) and 33-40 (method claims) of the
Challenged Patents) are obvious. This aspect of Google’s
appeal turns principally on the meaning of the limitation
“a dictionary routine for automatically classifying and stor-
ing words entered into said database according to said sets
and subsets of data elements” (hereinafter, the “automati-
cally classifying and storing limitation”). Google argues, as
it did before the Board, that the correct construction of the
automatically classifying and storing limitation is “a con-
ventional lookup process that retrieves dictionary infor-
mation from a database and also stores the queried word.”
Open. Br. at 36. In Google’s view, the Board’s “analysis
necessarily rested on a flawed reading of that limitation
that required a routine to create a database or definition,”
resulting in the limitation not being satisfied by mere use
(i.e., “looking up words already in the database”). Open.
Br. at 1-2. The proper construction, Google continues, re-
quires “using a dictionary” but does not necessarily require
“creating a dictionary or dictionary definitions in the first
place.” Open. Br. at 33 (citing Appx2728-31, 4132-33, 5219
¶ 42); see also Google’s Reply Br. at 5 (“Creation and use
are separate and distinct processes, and the claims require
only that the latter process be automatic. They are agnos-
tic about how the database was built.”). Google faults the
Board for “effectively constru[ing] ‘automatically classify-
ing’ to exclude automatic retrieval of a word’s
Case: 23-1622 Document: 83 Page: 7 Filed: 08/28/2025

-- 7 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 8
predetermined classification . . . . thus requir[ing] auto-
matically creating a classification.” Open. Br. at 42.
Google’s proposed construction of the automatically
classifying and storing limitation is correct. In light of the
other claims and the specification, Google explains that
“classifying” refers to identifying a word’s predetermined
categorizations (i.e., classifications). See id. Mindbase
does not meaningfully dispute this argument. Accepting
this construction of “classifying,” nothing about the term
“automatically classifying and storing words” would inform
a person of ordinary skill in the art that automatic “crea-
tion” of a database, in addition to “use” of an already-cre-
ated database, is a requirement of the dictionary routine
claims. That the plain and ordinary meaning of the claim
language is broad enough to include “use” is reflected in the
fact that certain claims of the Challenged Patents, includ-
ing claims 20-32, add limitations expressly requiring “cre-
ating” a database. Similarly, several of the dictionary
routine claims themselves (claims 39-40) add the limitation
“further comprising the step of generating a dictionary.”
’433 pat. 38:37-44 (emphasis added). These claims provide
clear indications that “automatically classifying and stor-
ing words” does not itself require “creating” or “generat-
ing,” as otherwise there would be no need to call out these
latter steps through additional claim language. See also
Appx656 (during prosecution, applicant distinguishing
“claims 14-20 [reciting] a dictionary routine for automati-
cally classifying and storing words” with claims 39 and 40
requiring “[g]enerating such a dictionary”).
Moreover, as Google correctly states, the “specification
describes the ‘dictionary routine’ as the act of looking up
words already in the database.” Open. Br. at 2; see also
’433 pat. 3:33-35 (“The [claimed] system can advanta-
geously be provided with a very detailed dictionary routine
that classifies all words as causes, effects, or descriptors.
This routine also differentiates between uses of the same
word for different parts of speech.”). The specification also
Case: 23-1622 Document: 83 Page: 8 Filed: 08/28/2025

-- 8 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 9
provides examples of use – that is, mere lookup – not ac-
companied by creation. ’433 pat. 13:65-15:4. These “use”
embodiments would be excluded from the scope of the dic-
tionary routine claims by a construction that requires cre-
ation of a dictionary in order to meet the automatically
storing and classifying words limitation. Such an outcome
is generally disfavored. See Apple Inc. v. Corephotonics,
Ltd., 81 F.4th 1353, 1359 (Fed. Cir. 2023) (“Our caselaw
counsels against interpreting the claims in a way that
would omit a disclosed embodiment absent clear evidence
to the contrary.”). It is notable, as well, that the specifica-
tion nowhere describes automatically creating a dictionary;
all instances of creating dictionary entries rely, at least in
part, on manual data entry by users. ’433 pat. 13:57-60
(referring to storing in dictionary “all cause-effect relation-
ships that are created by users” (emphasis added)); see also
Appx4132-33.
Mindbase does not point to anything in the prosecution
history detracting from our conclusion. Thus, the intrinsic
evidence establishes that Google’s proposed construction is
correct, and we adopt it.7
Our agreement with Google’s construction does not
necessarily prevent us from affirming the Board’s judg-
ment. This is because the Board did not expressly construe
the automatically classifying and storing limitation. It
stated, instead, that “we do not need to expressly construe
any term, including ‘dictionary routine’ and ‘automatically
classifying and storing,’ . . . [because] whether these terms
are construed in the sense of using a dictionary lookup
7 We do not need to analyze Google’s arguments that
rely on extrinsic evidence. See Vitronics Corp. v. Concep-
tronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (explaining
we generally look to extrinsic evidence only where a term’s
meaning remains ambiguous after review of all intrinsic
evidence).
Case: 23-1622 Document: 83 Page: 9 Filed: 08/28/2025

-- 9 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 10
function, or initially creating the dictionary, Petitioner has
not shown by a preponderance of the evidence that Conlon
teaches” the disputed limitation. Appx24; see also Appx40-
43. The Board purported to apply Google’s proposed con-
struction in reaching its conclusion that Google failed to
meet its burden.
Google argues that while the Board said it was not con-
struing the automatically classifying and storing limita-
tion, in actuality it implicitly construed the term and,
relatedly, failed to evaluate Google’s obviousness combina-
tion under Google’s proposed construction. Google states
that the Board’s “analysis continued to require automati-
cally creating a dictionary definition” and, therefore, ig-
nored evidence “that the prior art disclosed an automatic
dictionary lookup.” Open. Br. at 3. Google may be right.
The statements from Conlon on which the Board relied in
rejecting Google’s obviousness case relate to creating a da-
tabase. See, e.g., Appx40-42 (citing Appx725-26, 732-36).
In providing its reasoning for finding that Conlon did not
render the dictionary routine claims obvious, the Board
emphasized that in Conlon “the process of translating
knowledge from a machine-readable dictionary into a form
usable in a lexical database . . . [is] describe[d] [in Conlon]
. . . as semi-automatic, not automatic.” Appx42. If, as we
have now held, the dictionary routine claims can be satis-
fied by mere use of a lexical database, and do not also re-
quire the automatic creation of additional definitions, these
distinctions of Conlon may lack merit.
In sum, as Google contends and we now hold, the “dic-
tionary routine” claims can be practiced by use of an al-
ready-created dictionary, and do not also require the
automatic creation of a dictionary. The Board needs to con-
sider Google’s evidence and argument by applying this con-
struction of the automatically classifying and storing
limitation, and using this understanding to determine
whether Conlon may, in fact, render the “dictionary rou-
tine” claims obvious (and, relatedly, whether its prior
Case: 23-1622 Document: 83 Page: 10 Filed: 08/28/2025

-- 10 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 11
distinctions of Conlon may be immaterial). Therefore, we
vacate the Board’s judgment and remand for such further
proceedings.8
B
Google next challenges the Board’s conclusion that it
failed to prove the “normalization” claims (claims 43-46 of
both Challenged Patents) obvious in view of Fong. Accord-
ing to Google, the Board reached this determination by im-
properly excluding Google’s reply argument and the
accompanying supplemental declaration of its expert.
Again, we agree with Google.
In its final written decisions, the Board stated that
Google’s petition failed to “identif[y] with particularity how
the references, particularly Fong,” teach limitations [43.3]
(“comparing each of said normalized databases with each
other one of said normalized databases”), [43.4] (“recording
all common data elements found during each said compar-
ing step”), and [43.5] (“recording one location of each said
common data element in each of said databases”). Appx54.
The Board further determined that Google’s reply brief and
supplemental expert report raised new arguments that
could have been included in its petition and, therefore,
should not be considered. According to the Board:
[Google’s] Reply does not merely “respond” to the
issues discussed in our Institution Decision but in-
stead “proceed[s] in a new direction with a new ap-
proach as compared to the positions taken in” the
Petition by introducing in the Reply new argument
and evidence not presented in the Petition regard-
ing how limitations [43.3], [43.4], and [43.5] are
8 While, as we have explained, it appears to us that the
Board did not actually apply Google’s proposed construc-
tion, on remand it will necessarily do so.
Case: 23-1622 Document: 83 Page: 11 Filed: 08/28/2025

-- 11 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 12
“necessary” or inherent. We decline to consider
these late arguments and evidence.
Appx57 (internal citation omitted; alteration in original).
By not considering the arguments made by Google in
its reply and the supplemental declaration provided by
Google’s expert, Dr. Jansen, the Board abused its discre-
tion. These materials appropriately elaborated on the pe-
tition’s contention that Fong’s disclosure of four conditions
of a normalized database would have motivated a person of
ordinary skill in the art to modify Conlon’s system with
Fong to practice the normalization limitations of claims 43-
46. Google appropriately used its reply and supplemental
declaration to address reasons the Board had provided in
its institution decision for why it believed Google’s refer-
ences failed to teach three limitations of claim 43 ([43.3],
[43.4], [43.5]) and an additional limitation of claim 44
([44.6]). In doing so, Google and Dr. Jansen relied on the
same theory as set out in the petition, based on the same
portions of the same prior art references.9
Specifically, and contrary to the Board’s finding,
Google’s petition and reply advanced the same theory of ob-
viousness: “a skilled artisan would have been motivated to
9 The Board noted that at the oral hearing, Google had
described its theory that Fong renders limitation [43.3] ob-
vious as “an inherency argument.” Appx56. We are not
holding that the Board abused its discretion by failing to
consider an “inherency” theory that the Board found was
missing in the petition; nor are saying that Board must ad-
dress “inherency” on remand. Instead, we are requiring
that the Board address the evidence and argument Google
submitted with its reply that supports the theory Google
articulated in its petition. This is, as Google puts it, an
“express-disclosure theory,” not an “inherent-anticipation
theory.” Open. Br. at 51.
Case: 23-1622 Document: 83 Page: 12 Filed: 08/28/2025

-- 12 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 13
normalize Conlon’s database using Fong’s four conditions,
and a skilled artisan would have performed the limitations
of claims 43-36 to reach that result.” Open. Br. at 51 (in-
ternal emphasis omitted); see also Appx4099-4100 (Dr.
Jansen explaining how his supplemental illustrations, at
Appx4157, depicted how Fong’s four normalization condi-
tions mapped onto claim limitations, as articulated in
words in original declaration, at Appx360-61, 363). In par-
ticular, Dr. Jansen visually depicted the same theory he
had described verbally in his earlier declaration, and ex-
plicitly described how his supplemental analysis was sub-
stantively identical to his original analysis. Appx4110-15,
4123-24.
The Board’s decision to exclude Google’s rebuttal argu-
ment and supplemental declaration is based on a clear fac-
tual error (i.e., that Google improperly raised a new theory
of obviousness), rendering its exclusion an abuse of discre-
tion. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (explaining
abuse of discretion occurs where, inter alia, Board’s deci-
sion “is based on an erroneous conclusion of law” or “rests
on clearly erroneous fact finding”); see also Apple Inc. v. An-
drea Elecs. Corp., 949 F.3d 697, 705-07 (Fed. Cir. 2020)
(finding Board erred in refusing to consider reply argu-
ments that did not present “new theory of unpatentability”
and “squarely respond[ed] to” Board’s institution decision);
Ericsson, 901 F.3d at 1381 (vacating Board refusal to con-
sider reply arguments that “expressly follow[ed] from . . .
contentions raised in the Petition”).
The Board further faulted Google’s reply for being “sig-
nificantly more detailed” than what Google had articulated
in its petition. Appx56. But greater detail is allowed on
reply, provided that the reply is responsive (to the Board’s
institution decision and/or the patent owner’s preliminary
response) and not new. See Andrea Elecs. Corp., 949 F.3d
at 705-07; 37 C.F.R. § 42.23(b) (“A reply may only respond
to arguments raised in the corresponding opposition,
Case: 23-1622 Document: 83 Page: 13 Filed: 08/28/2025

-- 13 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 14
patent owner preliminary response, patent owner re-
sponse, or decision on institution.”). Likewise, just because
the evidence and argument submitted on reply could also
have been included in the petition does not mean the Board
can ignore it, provided such evidence and argument is re-
sponsive and not new.10
Accordingly, we vacate the Board’s judgment that
Google failed to prove the normalization claims are obvious
and remand for further proceedings, which must include
evaluation of the evidence and argument Google provided
in reply.
IV
Mindbase raises multiple issues in its cross-appeal.
None has merit.
First, Mindbase argues that the Board erred in adopt-
ing Google’s proposed level of skill for a person of ordinary
skill in the art. Substantial evidence supports the Board’s
finding that a person of ordinary skill in the art “would
have had at least a bachelor’s degree in computer science,
computational linguistics, computational lexicography, or
the equivalent, [and] at least two years of academic or in-
dustry experience in lexical databases, computational lin-
guistics, computational lexicography, or the equivalent,
and experience or coursework in computer science, data-
base development, or the equivalent.” Appx2479-80
(Google proposing this level of skill in its petition); see also
Appx21 (Board adopting Google’s proposal). After
10 The Board reiterated in its final written decisions
that it had found the petition “deficient,” as well as “con-
fusing and vague,” with respect to the normalization
claims. Appx56. Whether or not we were to agree with the
Board’s characterization of the petition, an issue not before
us, our holding today is limited to the Board’s handling of
the reply evidence and argument.
Case: 23-1622 Document: 83 Page: 14 Filed: 08/28/2025

-- 14 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 15
considering both parties’ proposed descriptions of the per-
son of ordinary skill in the art, including Mindbase’s cri-
tique that Google required too high a level of skill and
qualifications untethered to the patents, the Board deter-
mined that the specification and claims demand knowledge
of Google’s identified areas, even though Google’s precise
words are not recited in them. Indeed, the Board pointed
out that the specification’s references to lexical concepts
were “too numerous to recount.” Appx17.
Relatedly, Mindbase contends that Conlon, Miller, and
Beckwith are not analogous art, because these references
deal with lexical databases. Mindbase insists that the
Board erred in “ignor[ing] the problems described and ad-
dressed” in the Challenged Patents and that these refer-
ences are “not concerned with the particular problems the
inventors sought to solve.” This is essentially a reiteration
of Mindbase’s challenge to the Board’s identification of the
person of ordinary skill in the art. Having found substan-
tial evidence supporting the Board’s finding that such a
person would have education and experience in computer
science, computational linguistics, computations lexicogra-
phy, lexical databases, or the equivalent, it follows that
substantial evidence also supports the Board’s finding that
Conlon, Miller, and Beckwith – each of which indisputably
addresses these subjects – is also supported by substantial
evidence.
Mindbase next argues that substantial evidence does
not support the Board’s findings that elements [1.3] (“said
set of intangible data elements including a first subset of
effect data elements, said effect data elements represent-
ing verbs standing alone and in combination with other
words, which describe actions, objectives, results, missions,
procedures and processes”) and [1.4] (“said set of intangible
data elements including a second subset of descriptive data
elements, said descriptive data elements describing said
tangible data elements, said effect data elements and de-
grees of performance of said tangible data elements”) of the
Case: 23-1622 Document: 83 Page: 15 Filed: 08/28/2025

-- 15 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 16
Challenged Patents were disclosed in Google’s prior art ref-
erences. It attacks the Board for purportedly relying on
nothing more than conclusory statements that Conlon’s Ta-
ble 14 discloses the claimed “objectives, results, missions,
procedures and processes” of element [1.3] and Conlon’s
Tables 19 and 21 render element [1.4] obvious. Resp. Br.
at 65-67 (citing Appx31-34). We disagree. The Board’s
findings are supported by substantial evidence. See
Appx31-34 (citing Appx2497-2500, 4144-47).
Finally, Mindbase asserts that the Board failed “to pro-
vide explanation as to all of the claim limitations in order
to substantiate an obviousness determination” and improp-
erly shifted the burden of proof onto Mindbase. Resp. Br.
67-69. Mindbase is wrong. The Board provided sufficient
explanation to allow us to reasonably discern the basis for
its findings. That the Board did not say all that much re-
flects Mindbase’s relatively cursory arguments and the fact
that the Board found them decidedly unpersuasive. See
Appx32-33. Nor do we see any indication in the final writ-
ten decisions that the Board shifted a burden onto Mind-
base to prove the patentability of its claims. The
statements Mindbase points to as showing such error are,
instead, simply the Board’s explanation for why it was per-
suaded by Google, after considering all of the evidence and
argument before it. Appx32-34.
V
We have considered Mindbase’s remaining arguments
and find them unpersuasive. Accordingly, for the foregoing
reasons, with respect to Google’s appeal we vacate the
Board’s final written decisions concluding the “dictionary
routine” and “normalization” claims of the Challenged Pa-
tents were not proven unpatentable and remand for further
proceedings consistent with this opinion. With respect to
Mindbase’s cross-appeal, we affirm.
VACATED AND REMANDED IN PART, AFFIRMED
IN PART
Case: 23-1622 Document: 83 Page: 16 Filed: 08/28/2025

-- 16 of 17 --

GOOGLE LLC v. MINDBASEHQ, LLC 17
COSTS
Each party to bear its own costs.
Case: 23-1622 Document: 83 Page: 17 Filed: 08/28/2025

-- 17 of 17 --