Ca, Inc. v. Netflix, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CA, INC.,
Appellant
v.
NETFLIX, INC.,
Appellee
______________________
2023-1768
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01319.
______________________
Decided: January 27, 2025
______________________
D AN Y OUNG , Quarles & Brady LLP, Highlands Ranch,
CO, argued for appellant. Also represented by K ENT
D ALLOW, M ATTHEW CHRISTIAN H OLOHAN .
H ARPER BATTS , Sheppard Mullin Richter & Hampton
LLP, Menlo Park, CA, argued for appellee. Also repre-
sented by JEFFREY LIANG , CHRISTOPHER SCOTT PONDER;
JONATHAN RICHARD D EFOSSE, Washington, DC.
______________________
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CA, INC. v. NETFLIX , INC. 2
Before REYNA, TARANTO , and STARK , Circuit Judges.
STARK , Circuit Judge.
CA, Inc. (“CA”) appeals from an inter partes review de-
cision by the Patent Trial and Appeal Board (the “Board”)
finding its patent – which is directed to a method of auto-
matically storing a set of network objects in cache memory
to make those objects quicker and easier to access – invalid
as obvious. CA primarily argues that the Board misread
the plain and ordinary meaning of the term “cache
memory” and that substantial evidence does not support
the Board’s findings leading to its obviousness determina-
tion. We agree with the Board’s construction of cache
memory and find substantial evidence supports each of the
Board’s findings. Accordingly, we affirm.
I
A
CA’s U.S. Patent No. 7,103,794 (the “’794 patent”), en-
titled “Network Object Cache Engine,” claims priority to
June 8, 1998 and consists of 15 independent claims and 42
dependent claims. J.A. 31 (’794 patent), 45-47 (’794 patent,
17:5-22:58). The ’794 patent is directed to a method of stor-
ing items without relying on a file storage system as in con-
ventional computers. Conventional computers contain
folders and call objects by name, but the system of the ’794
patent instead (in at least one embodiment) employs a
“cache engine coupled to the network [that] provides a
cache of transmitted objects, which it stores in memory and
mass storage,” “taking direct control” when the objects are
stored in “mass storage.” J.A. 37 (’794 patent, 1:64-67).
The benefit of such a storage system is the ability to di-
rectly and immediately recall stored objects, rather than
having to proceed more slowly through the file storage sys-
tem.
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CA, INC. v. NETFLIX , INC. 3
The specification explains:
The invention provides a method and system for
caching information objects transmitted using a
computer network. A cache engine determines di-
rectly when and where to store those objects in a
memory (such as RAM) and mass storage (such as
one or more disk drives), so as to optimally write
those objects to mass storage . . . . The cache en-
gine actively allocates those objects to memory or
to disk.
J.A. 31 (’794 patent, Abs.).
In a preferred embodiment, the cache engine stores
network objects most often accessed by a user’s device. In
this embodiment, the file system of the device does not con-
trol the cache storage; instead, the cache storage operates
independently of the file system.
Independent claim 1 is representative of most of the
disputes presented in this appeal. It recites:
A method, including steps of:
receiving a set of network objects in re-
sponse to a first request to a server from a
client; and
maintaining said network objects in a
cache memory in a cache engine, said cache
engine connected via a network to the
server and the client, said cache memory
including mass storage;
wherein said step of maintaining includes
steps of recording said network objects in
said cache memory and retrieving said net-
work objects from said cache memory, so as
to substantially minimizes a time required
for retrieving said network objects from
said mass storage.
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CA, INC. v. NETFLIX , INC. 4
J.A. 45 (emphasis added).
Independent claim 17 is also at issue. It adds the re-
quirement that the “maintaining of network objects in a
cache memory” is “performed independently of a file system
for mass storage,” as follows:
A method, including steps of:
receiving a set of network objects in re-
sponse to a first request to a server from a
client; and
maintaining said network objects in a
cache memory in a cache engine, said cache
engine connected via a network to the
server and the client, said cache memory
including mass storage;
wherein said step of maintaining is per-
formed independently of a file system for
said mass storage.
Id. (emphasis added).
B
On July 30, 2021, Netflix, Inc. (“Netflix”) filed a peti-
tion for inter partes review (“IPR”) of the ’794 patent. The
Board instituted the IPR on February 9, 2022 and issued a
Final Written Decision (“FWD”) on February 8, 2023. The
FWD found all challenged claims (1, 3-9, and 11-17) un-
patentable as obvious.
Three pieces of prior art are relevant here. “Medin” re-
fers to U.S. Patent No. 6,370,571, “System and Method for
Delivering High-Performance Online Multimedia Ser-
vices.” J.A. 850. “Medin discloses a system and method for
delivering online multimedia services using a distributed
network architecture and processes for replicating and
caching frequently accessed multimedia content.” J.A. 12;
see also J.A. 865 (Medin at 2:21-25, 54-61). Medin’s system
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CA, INC. v. NETFLIX , INC. 5
provides for frequently accessed content to be “cached” and
replicated in local data centers. Medin is directed to, inter
alia, systems using UNIX operating systems.
“Seltzer” is Margo Seltzer et al., An Implementation of
a Log-Structured File System for UNIX, Proceedings of the
1993 Winter USENIX Conference (Jan. 1993). Seltzer dis-
closes a “log-structured file system” (“LFS”) which “stor[es]
all file system data in a single, continuous log.” J.A. 881.
Seltzer explains that the problem with “large main-
memory file caches” is that while they “effectively cache
reads, [they] do little to improve write performance.” Id.
Seltzer, as its title implies, is directed to systems using
UNIX operating systems.
Finally, “Markatos” is Evangelos P. Markatos, Main
Memory Caching of Web Documents, 28 Computer Net-
works & ISDN Systems 893 (May 1996). Markatos pro-
vides a method for “caching a World Wide Web server’s
documents in its main memory,” which allows for a small
amount of memory to be dedicated to caching documents
requested from the internet. J.A. 907-08.
In its petition, Netflix asserted that (i) claims 1, 3-9,
and 11-16 are invalid as obvious over Medin and Seltzer,
and (ii) claim 17 is invalid as obvious over Medin and Mar-
katos.
C
In its FWD, the Board first addressed the parties’ claim
construction disputes. Relevant to this appeal, CA asked
the Board to adopt what it contended is the plain and ordi-
nary meaning of “cache memory,” which it articulated as
“both a memory (e.g., RAM) and mass storage (e.g., disk
drives).” J.A. 7-8. It is undisputed that RAM is an abbre-
viation for “random access memory,” which is a form of vol-
atile memory; that is, memory that is erased when a device
is turned off. Before the Board, CA contended that the re-
quired “memory” of the challenged claims is limited to
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CA, INC. v. NETFLIX , INC. 6
“volatile memory,” of which RAM is an example. J.A. 8.
Netflix countered that while the “cache memory” of the
claims must include mass storage, the claim does not re-
quire volatile memory (such as RAM). J.A. 7-8.
The Board agreed with Netflix, concluding that “[t]he
claimed ‘cache memory’ cannot refer only to a cache with
volatile memory because the claim states that the ‘cache
memory includ[es] mass storage.’” J.A. 9 (second alteration
in original). The Board acknowledged that the specifica-
tion of the ’794 patent references RAM as an example of
memory, but concluded RAM is just that: an example of
what may be included in “cache memory” but not a required
component of “cache memory.” The Board therefore deter-
mined that “the plain language [] require[s] mass storage
[and] permissively allow[s] other types of memory, includ-
ing volatile memory such as RAM.” J.A. 10.
Applying this construction, the Board then found that
the combination of Seltzer and Medin disclosed all the lim-
itations of claims 1, 3-9, and 11-16. It noted that even CA
“acknowledge[d] that Medin’s cache system includes mass
storage.” J.A. 16. The Board also found that a person of
ordinary skill in the art would have been motivated to com-
bine Medin with Seltzer, as these two references were “spe-
cifically compl[e]mentary” in that both deal with reading
and writing content to storage in UNIX systems in order to
minimize the time needed to retrieve network objects from
mass storage. J.A. 20, 1920. That is, both Medin and Selt-
zer “share the goal of improving speed and efficiency” of
systems storing information. J.A. 19-20. The Board fur-
ther found that Markatos’ disclosure of a different, argua-
bly better solution to the same problems the ’794 patent
purports to solve would not undermine a skilled artisan’s
motivation to combine Medin and Seltzer.
With respect to the Medin-Markatos combination, the
Board agreed with Netflix that “a person of ordinary skill
would have been motivated to combine Markatos’s
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CA, INC. v. NETFLIX , INC. 7
teachings of main memory caching of web documents with
Medin’s teachings of cache servers that store web docu-
ments,” for reasons including that both “references share
the same overall goal of improving speed and efficiency of
responding to requests for content over the internet.” J.A.
25. The Board rejected CA’s contrary view as being based
on an “[i]mplicit” claim construction limiting claim 17 to
embodiments in which all network objects must be cached
independently of the file system. J.A. 26. In the Board’s
view, however, claim 17 “does not exclude maintaining
other network objects – network objects other than ‘said set
of network objects’ – in the mass storage and having the
maintenance of those other network objects implicate a file
system.” J.A. 27. Thus, the Board found, in agreement
with Netflix, a person of ordinary skill “would have been
motivated to modify Medin based on the teachings of Mar-
katos to incorporate main memory caching in combination
with Medin’s teachings regarding a cache engine with
cache memory that includes mass storage.” J.A. 27.
CA timely appealed.1
II
We review the Board’s claim construction de novo. See
Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 808 (Fed. Cir.
2021). Claim terms are generally accorded their plain and
ordinary meaning to a person of ordinary skill in the art in
the context of the patent. See Biogen Idec, Inc. v. Glax-
oSmithKline LLC, 713 F.3d 1090, 1094 (Fed. Cir. 2013).
“The ultimate determination of whether an invention
would have been obvious is a legal conclusion based on un-
derlying findings of fact.” In re Kahn, 441 F.3d 977, 985
(Fed. Cir. 2006). While we review a Board determination
1 The Board had jurisdiction under 35 U.S.C. §§ 6,
316(c). We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A) and 35 U.S.C. §§ 141(c), 319.
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CA, INC. v. NETFLIX , INC. 8
of obviousness de novo, see Intelligent Bio-Sys., Inc. v. Illu-
mina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016),
that conclusion is based on factual findings such as a moti-
vation to combine, which we review for substantial evi-
dence, see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d
1364, 1368 (Fed. Cir. 2017).
III
CA presses three issues on appeal: (1) the Board’s con-
struction of “cache memory” is incorrect; (2) the Board’s
finding that a person of ordinary skill in the art would have
a motivation to combine Medin and Seltzer lacks substan-
tial evidence; and (3) the Board’s findings that all of the
limitations of claim 17 are disclosed by the combination of
Medin and Markatos also lacks substantial evidence. We
have set out the Board’s reasoning in some detail above.
Because we agree with it, our discussion below of CA’s chal-
lenges is succinct.
A
The Board correctly construed “cache memory,” in the
claim term “a cache memory in a cache engine . . . said
cache memory including mass storage,” as requiring mass
storage and permitting, but not requiring, volatile memory
such as RAM. J.A. 9-10. CA argues that this construction
is “unjustifiably broad” and “obliviated the distinction be-
tween the claimed memory and mass storage elements, ef-
fectively reading ‘memory’ out of the limitation.” Opening
Br. at 23. We disagree.
The claim language expressly calls out mass storage:
“cache memory including mass storage.” It does not simi-
larly call out any other type of memory. Thus, the claim
language itself strongly supports the conclusion that “mass
storage,” and only mass storage, is required in the cache
memory. In this way, the claim language indicates that
mass storage is required while any other type of memory,
including volatile memory like RAM, is optional.
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CA, INC. v. NETFLIX , INC. 9
The specification also supports the Board’s construc-
tion. For example, Figure 1 of the ’794 patent (reproduced
below) shows network object 114 stored in the mass storage
component of a cache memory 102, and not stored in the
optional other memory 103 that is part of this embodi-
ment’s cache memory. No objects, in this embodiment, are
stored in the memory, contrary to what is required by CA’s
construction.
J.A. 33 (’794 patent, Fig. 1) (as annotated at Opening Br.
at 31). Our precedents disfavor constructions that exclude
embodiments expressly disclosed in a patent’s specifica-
tion. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed.
Cir. 2008) (“[W]here claims can reasonably [be] interpreted
to include a specific embodiment, it is incorrect to construe
the claims to exclude that embodiment, absent probative
evidence on the contrary.”).
To be sure, there are parts of the specification that
could be read as supporting CA’s proposed, more limiting,
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CA, INC. v. NETFLIX , INC. 10
construction. See, e.g., J.A. 37 (’794 patent, 2:8-10) (“In the
invention, a cache engine determines directly when and
where to store those objects in a memory (such as RAM)
and mass storage.”); J.A. 38 (’794 patent, 3:30-31) (“The
cache 102 includes the program and data memory 103 and
a mass storage 104.”). Still, we agree with the Board that
“nothing in the specification limits memory—much less
cache memory—to RAM of volatile memory.” J.A. 9 (inter-
nal quotation marks omitted). Hence, nothing in the spec-
ification renders CA’s proposed construction the correct
construction.
The Board did not rely on prosecution history. J.A. 9.
Regardless, nothing in it alters our conclusions. During
prosecution, the patentee noted that in its claims the term
“memory” “broadly encompass[es] both fixed memories
such as . . . hard disks, caches, etc., as well as removable
memories such as floppy disks.” J.A. 3012-13; see also J.A.
603. This indicates, if anything, that the patent uses
“memory” broadly, providing no support for CA’s narrow
construction of “cache memory.”
Because the proper construction of cache memory is
clear from the claim language and specification, we need
not consider extrinsic evidence, such as the parties’ com-
peting dictionary definitions of “memory.” See J.A. 2998,
3040, 3243; see also Phillips v. AWH Corp., 415 F.3d 1303,
1318-20 (Fed. Cir. 2005) (en banc).
Thus, again, we agree with the Board’s construction of
cache memory as requiring mass storage and including,
but not requiring, volatile memory such as RAM.
B
With respect to the Board’s determination that claims
1, 3-9, and 11-16 are unpatentable as obvious over the com-
bination of Medin and Seltzer, CA principally contends
that “Medin does not disclose a ‘cache memory’ when ana-
lyzed” under CA’s proposed construction. Opening Br. at
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CA, INC. v. NETFLIX , INC. 11
39-51. As we have not adopted CA’s proposed construction,
this contention is moot.
CA additionally argues that the Board erred in finding
that a skilled artisan would have been motivated to com-
bine Medin and Seltzer, because the Board supposedly, and
wrongly, relied on a motivation that is “generic.” Id. at 53
(citing J.A. 20). The Board found:
a person of ordinary skill would have been moti-
vated to combine the teachings of Medin and Selt-
zer “so as to substantially minimize[] a time
required for retrieving said network objects from
said mass storage.” In particular, as Petitioner ar-
gues, Medin and Seltzer “share the goal of improv-
ing the speed and efficiency” of systems for storing
information.
J.A. 19-20. This finding is supported by substantial evi-
dence, including Netflix’s expert’s opinion. J.A. 19-20 (cit-
ing J.A. 754-55). And the motivation found by the Board is
not too generic to satisfy the requirements for obviousness.
Cf. ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
694 F.3d 1312, 1328 (Fed. Cir. 2012) (discounting pur-
ported motivation of “build[ing] something better,” which
was “generic and [bore] no relation to any specific combina-
tion of prior art elements”). To the contrary, substantial
evidence supports the Board’s determinations that Medin
and Seltzer are “specifically compl[e]mentary,” as both
arise in the field of UNIX read/write operations, and both
are aimed at improving the speed and efficiency of these
systems. J.A. 19-20 (citing Netflix’s expert, Dr. Houh (J.A.
754-55) and Shahram Ghandeharizadeh et al., Placement
of Data in Multi-Zone Disk Drives, Second International
Baltic Workshop on Databases and Information System,
Tallinn, Estonia (1996) (J.A. 949)).
Even if, as CA asserts, another prior art reference,
Markatos, would also have improved speed and efficiency
in UNIX systems, and even if Markatos would have been
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CA, INC. v. NETFLIX , INC. 12
even more effective in doing so, the Board weighed all the
evidence relating to motivation and found substantial evi-
dence for its conclusion that a person of ordinary skill in
the art would have been motivated to combine Medin and
Seltzer. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784,
800 (Fed. Cir. 2021) (“It’s not necessary to show that a com-
bination is the best option, only that it be a suitable op-
tion.”) (internal quotation marks omitted). We see no error
in this conclusion.
CA’s remaining arguments seek to persuade us that
the record contains substantial evidence to support its po-
sitions that the Board rejected. See, e.g., Opening Br. at 44
(“CA provided substantial evidence showing that there is
no factual dispute.”); Reply Br. at 1 (“Netflix’s arguments
are unpersuasive when compared to CA’s substantial evi-
dence.”). These arguments are predicated on a misunder-
standing of our standard of review, which is only to
determine whether there is substantial evidence for the
findings the Board actually did make. See Elbit Sys. of
Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356
(Fed. Cir. 2018) (“If two inconsistent conclusions may rea-
sonably be drawn from the evidence in record, the PTAB’s
decision to favor one conclusion over the other is the epit-
ome of a decision that must be sustained upon review for
substantial evidence.”) (internal quotation marks and
brackets omitted); In re Gartside, 203 F.3d 1305, 1315 (Fed.
Cir. 2000) (explaining issue on appeal is whether Board’s
factual conclusions are “supported by ‘substantial evi-
dence’ . . . within the record”). As we have explained, the
record contains substantial evidence for the Board’s find-
ings; whether substantial evidence might have also sup-
ported different findings is not relevant to our appellate
review.
C
Turning, last, to the Markatos-Medin combination and
claim 17, substantial evidence supports each of the
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CA, INC. v. NETFLIX , INC. 13
findings CA challenges. CA argues that Markatos does not
disclose the limitation “wherein said step of maintaining is
performed independently of a file system for said mass
storage,” because Markatos stores some objects in main
memory and not solely in mass storage, and because some
objects in mass storage are stored using a file system. We
agree with the Board that CA’s arguments rely on an im-
plicit claim construction (which CA never formally pro-
posed) that would require in claim 17 that all network
objects in the mass storage are always stored independent
of a file system. J.A. 26-27; see also Oral Arg. at 13:51-
14:32 (CA’s counsel arguing that “in the case[] of Marka-
tos,” elements are “never found exclusively in the memory”
and are not always accessed “without the use of a file sys-
tem”). Claim 17 is not so narrow; the implicit construction
CA needs in order to prevail is both forfeited and incon-
sistent with the intrinsic evidence. To the contrary, claim
17 encompasses embodiments in which some but not all of
the network objects are maintained in the cache memory –
which, again, must include mass storage and may also in-
clude other memory, including RAM.
Finally, substantial evidence supports the Board’s find-
ing, crediting Netflix’s argument, that a person of ordinary
skill “would have been motivated to modify Medin based on
the teachings of Markatos to incorporate main memory
caching in combination with Medin’s teachings regarding a
cache engine with cache memory that includes mass stor-
age.” J.A. 27; see also J.A. 25 (citing J.A. 108-09, 3031).
IV
We have considered CA’s remaining arguments and
find them unpersuasive. For the reasons stated above, we
affirm the decision of the Board.
AFFIRMED
COSTS
Costs awarded to Netflix.
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