Cisco Systems, Inc., Hewlett Packard Enterprise Co. v. K.mizra LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CISCO SYSTEMS, INC., HEWLETT PACKARD
ENTERPRISE CO.,
Appellants
v.
K.MIZRA LLC,
Appellee
______________________
2022-2290, 2023-1183
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00593, IPR2022-00081, IPR2022-00084.
______________________
Decided: August 16, 2024
______________________
ANGELA M. O LIVER , Haynes and Boone, LLP, Washing-
ton, DC, argued for appellants. Cisco Systems, Inc. also
represented by T HEODORE M. F OSTER, Denver, CO; EUGENE
G ORYUNOV, Chicago, IL; D EBRA J ANECE M CCOMAS , D AVID
L. MCCOMBS , Dallas, TX.
MANISH MEHTA, Benesch Friedlander Coplan & Ar-
onoff, Chicago, IL, for appellant Hewlett Packard Enter-
prise Co. Also represented by CRISTINA ALMENDAREZ,
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 2
SAMUEL RUGGIO.
CLIFF WIN, II, Folio Law Group PLLC, Seattle, WA, ar-
gued for appellee. Also represented by CRISTOFER
L EFFLER, STEVEN SKELLEY , MOSES XIE.
______________________
Before D YK, REYNA, and STOLL , Circuit Judges.
REYNA, Circuit Judge.
Cisco Systems, Inc. appeals from the final written de-
cision of the Patent Trial and Appeal Board in an inter
partes review. The Board determined that Cisco failed to
demonstrate the obviousness of claims 1–3, 5–13, and
15–19 of the ’705 patent based solely on a lack of a motiva-
tion to combine two prior art references. Because the
Board erred in failing to address Cisco’s non-benefits-based
motivation to combine arguments and the Board’s finding
that Cisco failed to establish a motivation to combine is un-
supported by substantial evidence, we vacate and remand.
BACKGROUND
Appellee K.Mizra LLC (“K.Mizra”) owns U.S. Patent
No. 8,234,705 (“’705 patent”). This patent describes a sys-
tem and method for ensuring that a host, e.g., a computer,
cannot connect to a protected network and spread harmful
viruses throughout the network. One way the ’705 patent
proposes to solve this problem is with a system that can
determine whether the computer should be quarantined
while trying to connect to a protected network. If quaran-
tined, the computer is allowed limited access to the pro-
tected network through a remediation server able to take
certain remedial actions, such as downloading a software
patch, installing software, or running diagnostics. Other
access requests are redirected to a quarantine server,
which responds with a quarantine notification webpage in-
forming the user (1) that the device is quarantined and (2)
of instructions on how to carry out remediation.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 3
Claim 1 of the ’705 patent is representative on appeal
and recites in relevant part:
1. A method for protecting a network, comprising:
[1.1] detecting an insecure condition on a first host
that has connected or is attempting to connect to a
protected network, wherein detecting the insecure
condition includes [1.2] contacting a trusted com-
puting base associated with a trusted platform
module within the first host, [1.3] receiving a re-
sponse, and [1.4] determining whether the re-
sponse includes a valid digitally signed attestation
of cleanliness, [1.5] wherein the valid digitally
signed attestation of cleanliness includes at least
one of an attestation that the trusted computing
base has ascertained that the first host is not in-
fested, and an attestation that the trusted compu-
ting base has ascertained the presence of a patch
or a patch level associated with a software compo-
nent on the first host;
[1.6] when it is determined that the response does
not include a valid digitally signed attestation of
cleanliness, quarantining the first host, including
by preventing the first host from sending data to
one or more other hosts associated with the pro-
tected network, wherein preventing the first host
from sending data to one or more other hosts asso-
ciated with the protected network includes [1.7] re-
ceiving a service request sent by the first host, [1.8]
serving a quarantine notification page to the first
host when the service request comprises a web
server request, [1.9] and in the event the service
request comprises a DNS query, providing in re-
sponse an IP address of a quarantine server config-
ured to serve the quarantine notification page if a
host name that is the subject of the DNS query is
not associated with a remediation host configured
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 4
to provide data usable to remedy the insecure con-
dition; and
[1.10] permitting the first host to communicate
with the remediation host.
J.A. 77, 19:57–20:23.1
I. Prior Art
There are two prior art references at issue: Gleichauf2
and Lewis.3 Gleichauf relates to controlling a computer’s
access to a network depending on the computer’s security
status. Similar to the ’705 patent, Gleichauf teaches a
method for quarantining an infected computer that is at-
tempting to connect to a protected network. Unlike the
’705 patent, Gleichauf does not disclose a quarantine
server. Rather, Gleichauf teaches that the quarantined de-
vice is only allowed access to a remediation server and that
the remediation server displays messages to the user indi-
cating that the device has been quarantined. Gleichauf
does not specify how the messages are displayed to a user.
See, e.g., J.A. 1164, 21:5–8 (“[T]he message may be dis-
played to the user . . . indicating that the device has been
quarantined.”).
Lewis describes a “system for ensuring that machines
having invalid or corrupt states are restricted from access-
ing network resources.” J.A. 1234, 4:7–9. Lewis discloses
a quarantine server that determines whether the device is
infected. If infected, the device is quarantined. Lewis’s
quarantine server then displays a message to the user via
a webpage that the device has been quarantined.
1 The bracketed numbers refer to the parties’ desig-
nations of the claim limitations.
2 U.S. Patent No. 9,436,820 to Gleichauf et al.
3 U.S. Patent No. 7,533,407 to Lewis et al.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 5
II. The Board’s Decision
Appellant Cisco Systems, Inc. (“Cisco”) filed a petition
for inter partes review (“IPR”) of the ’705 patent.4 In its
petition, Cisco challenged claims 1–3, 5–13, and 15–19 of
the ’705 patent (“the challenged claims”) as obvious over
one ground: the combination of Gleichauf, Lewis, and Ova-
dia.5 J.A. 149. Relevant to this appeal is Cisco’s proposed
combination of Gleichauf and Lewis as disclosing claim
limitations 1.8 and 1.9 listed above, which relate to a quar-
antine server sending a quarantine notification over a
webpage.
In its petition, Cisco presented several arguments that
a skilled artisan would have been motivated to combine
Gleichauf’s remediation method with Lewis’s quarantine
server and quarantine notification webpage to arrive at
limitations 1.8 and 1.9. J.A. 158–61. On appeal, Cisco
characterizes its motivation to combine arguments in its
petition as five separate and distinct “rationales.” Appel-
lant Br. 25–26, 39–40. The first and second rationales al-
legedly focused on the “predictability” of the combination of
Gleichauf and Lewis. Id. at 33, 39–40. The third, fourth,
and fifth rationales allegedly focused on the benefits of
such combination. Id. at 25–26.
Particularly relevant to this appeal, Cisco’s “fourth ra-
tionale” for combining Gleichauf with Lewis was that
Lewis’s quarantine notification message via a webpage
could be displayed in a browser that the user already had
4 Appellant Hewlett Packard Enterprise Co. (“HPE”)
also filed a petition for IPR of the ’705 patent and sought to
join the Cisco-initiated IPR. The Board joined HPE as a
petitioner in the Cisco-initiated IPR.
5 U.S. Patent No. 7,747,862 to Ovadia. Because
Cisco’s arguments concerning Ovadia are not at issue on
appeal, we do not discuss Ovadia’s teachings.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 6
open. Thus, Cisco’s petition argued that Lewis did not re-
quire separate software components to display a notifica-
tion message, as was purported to be required by
Gleichauf. The Board, however, found that Gleichauf’s no-
tification message provided the same benefit as Lewis’s dis-
closed method, such that a skilled artisan would not be
motivated to combine the two references. The Board rea-
soned that Gleichauf “indicates that the notification mes-
sages may be displayed on a browser using XML pages” or
that a skilled artisan “could implement a webpage as part
of the notification” even if Gleichauf did not disclose such a
webpage. J.A. 32.
The Board concluded that Cisco did not carry its bur-
den of showing a motivation to combine Gleichauf and
Lewis because “Gleichauf provides all of the Petitioner-
identified benefits or advantages of the proposed combina-
tion of Gleichauf and Lewis.” J.A. 30. This determination
was the sole basis for the Board’s overall conclusion that
Cisco failed to establish the unpatentability of all chal-
lenged claims of the ’705 patent. J.A. 34–35. The Board
did not reach Cisco’s other obviousness arguments in its
petition. Cisco appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Obviousness is a question of law with underlying fac-
tual findings. Acoustic Tech., Inc. v. Itron Networked Sols.,
Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020). Whether a
skilled artisan would have been motivated to combine prior
art references is a question of fact. Id. We review the
Board’s legal conclusions de novo and its factual findings
for substantial evidence. Id. Substantial evidence is “such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938).
We review de novo whether the Board improperly re-
lied on new arguments not contained in the petition.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 7
Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed.
Cir. 2023). We review for an abuse of discretion the Board’s
determination whether a reply or sur-reply was improperly
non-responsive. Id.
Cisco argues that the Board’s decision should be va-
cated and remanded for the following three independent
reasons: the Board (1) legally erred by applying the law of
obviousness too narrowly, (2) committed a procedural error
by considering an argument K.Mizra raised for the first
time in its sur-reply brief, and (3) made an unsupported
factual finding as to Gleichauf that resulted in an errone-
ous motivation to combine analysis. We address each ar-
gument in turn.
I
Cisco argues that the Board legally erred under KSR
International Co. v. Teleflex Inc., 550 U.S. 398 (2007) and
Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373 (Fed.
Cir. 2023) by “categorically requiring a motivation to
achieve a specific benefit.” Appellant Br. 37; Reply Br. 4.
According to Cisco, the limitations at issue in the ’705 pa-
tent did nothing more than rearrange “‘familiar elements’
using ‘known methods’ to yield ‘predictable results.’” Ap-
pellant Br. 40 (quoting KSR Int’l Co., 550 U.S. at 416).
Thus, Cisco argues, “where the prior art was so similar,
and the choice of elements readily predictable, [it] did not
need to show a specific motivation to improve Gleichauf to
achieve a particular benefit.” Id. Cisco argues that for this
reason alone, the Board’s decision should be vacated and
remanded for an obviousness analysis under the proper le-
gal standard. We agree with Cisco.
While an obviousness analysis should be “expansive
and flexible,” KSR Int’l Co., 550 U.S. at 415, “there must
exist a motivation to combine various prior art references
in order for a skilled artisan to make the claimed inven-
tion.” Virtek Vision Int’l ULC v. Assembly Guidance Sys.,
Inc., 97 F.4th 882, 887 (Fed. Cir. 2024); see also Belden Inc.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 8
v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
Such an analysis may include considering whether there
was a benefit in combining prior art references. KSR Int’l
Co., 550 U.S. at 424 (“The proper question . . . was whether
[a skilled artisan], facing the wide range of needs created
by developments in the field of endeavor, would have seen
a benefit to upgrading [the prior art] with a sensor.”).6
A tribunal, however, crosses into forbidden territory
when it applies a general principal as a rigid rule. Id. at
419. And as we recently decided in Intel, a party is not
rigidly required to show an improvement or benefit in com-
bining prior art references in a “categorical sense” in order
to show a motivation to combine. 61 F.4th at 1381 (citation
omitted).
Here, the Board ran afoul of KSR and Intel by ignoring
Cisco’s non-benefits-based, first and second motivation to
combine rationales. In doing so, the Board effectively re-
quired Cisco to show a benefit in combining Gleichauf and
Lewis to establish a motivation to combine. In addition to
several benefits-based arguments, Cisco alleged in its peti-
tion that the proposed combination of Gleichauf and Lewis
“uses the known technique of redirection of device traffic to
a quarantine server that serves a webpage to the device, as
in Lewis, to improve a similar method of traffic redirection,
as in Gleichauf, in the same way.” J.A. 159 (citation omit-
ted). Cisco also argued that the proposed combination “is
merely the application of Lewis’s known technique of serv-
ing a webpage to a quarantined device with information
and remediation instructions to Gleichauf’s . . . known
method[] of providing a notification message identifying
reasons for quarantine, yielding predictable results.” Id.
(citation omitted). The Board overlooked these arguments.
Instead, the Board exclusively focused its motivation to
6 Cisco concedes that “identifying a benefit” can be
part of a motivation to combine analysis. Reply Br. 8.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 9
combine analysis on the benefits-based arguments Cisco
presented, namely whether a skilled artisan would have
looked to Lewis to modify Gleichauf to achieve various ben-
efits. J.A. 29–38. Consistent with our recent decision in
Intel, the Board should have addressed whether Cisco
showed a motivation to combine Gleichauf with Lewis in-
dependent of whether a skilled artisan would recognize any
benefit in making the proposed combination. Its failure to
do so was error. See Provisur Techs., Inc. v. Weber, Inc., 50
F.4th 117, 125 (Fed. Cir. 2022).
The Board’s omission is legal error that requires us to
vacate and remand the Board’s motivation to combine de-
termination for further proceedings.
II
Cisco next argues that the Board procedurally erred
when rejecting Cisco’s three benefits-based rationales for a
motivation to combine. Appellant Br. 57. According to
Cisco, the Board rejected these rationales based on an ar-
gument K.Mizra raised for the first time in its sur-reply
brief—that a skilled artisan would not have combined
Gleichauf with Lewis’s quarantine server because the ben-
efits identified by Cisco would have already been present
in Gleichauf, leaving no need to look to Lewis’s quarantine
server. Id. at. 29. According to Cisco, by considering this
untimely argument, the Board violated 37 C.F.R. § 42.23(b)
and its procedural rights under the Administrative Proce-
dure Act (“APA”). Id. at 57–58. We are not persuaded by
either argument.
First, the Board did not violate 37 C.F.R. § 42.23(b).
This regulation provides that “[a] sur-reply may only re-
spond to arguments raised in the corresponding reply and
may not be accompanied by new evidence other than depo-
sition transcripts of the cross-examination of any reply wit-
ness.” 37 C.F.R. § 42.23(b). Here, K.Mizra did not
introduce any new evidence with its sur-reply brief con-
cerning the Gleichauf-Lewis combination. Additionally,
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 10
K.Mizra’s argument that the benefits identified by Cisco’s
petition were already present in Gleichauf was in direct re-
sponse to Cisco’s reply brief. There, Cisco argued that
K.Mizra was “wrong to ignore the numerous benefits iden-
tified in the Petition” for why a skilled artisan would have
been motivated to incorporate Lewis’s quarantine server
and webpage notification into Gleichauf’s system. J.A. 451.
Cisco’s reply brief then listed the various alleged benefits
of this combination. J.A. 451–53. K.Mizra directly re-
sponded by arguing that (1) “[a]ll of the rationales proffered
by Petitioners” are suggested by Gleichauf and (2) that
“[n]one of Petitioner’s rationales in its Reply” sufficiently
explain why Lewis’s quarantine server would be needed
when Gleichauf’s remediation server would suffice.
J.A. 510. Because these arguments are in direct response
to Cisco’s reply brief arguments concerning the benefits of
a Gleichauf-Lewis combination, we see no error in the
Board’s consideration of them.
Second, the Board did not violate the APA. Cisco ad-
dressed the merits of K.Mizra’s sur-reply arguments at a
hearing before the Board and thus had notice and an op-
portunity to be heard. J.A. 553–57, 14:11–18:11. Addition-
ally, if Cisco believed that K.Mizra raised an untimely
argument in its sur-reply brief, it should have raised its
objection before the Board instead of raising such objection
on appeal in the first instance. See Patent Trial and Appeal
Board Consolidated Trial Practice Guide (Nov. 2019),
available at https://www.uspto.gov/sites/default/files/docu-
ments/tpgnov.pdf, at 80 (“If a party believes that a brief
filed by the opposing party . . . exceeds the proper scope of
. . . sur-reply, it may request authorization to file a motion
to strike . . . . [or] authorization for further merits brief-
ing.”). Cisco failed to partake in available procedural
mechanisms before the Board, and it cannot now fault the
Board for this failure. Parkervision, Inc. v. Vidal, 88 F.4th
969, 981 (Fed. Cir. 2023); see also WhatsApp, Inc. v.
TriPlay, Inc., 752 F. App’x 1011, 1016 n.1 (Fed. Cir. 2018)
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 11
(“[I]t is incumbent upon the party complaining of some pro-
cedural violation—such as the inclusion of improper rebut-
tal in a reply brief—to first raise the issue below.” (citations
omitted)).
For these reasons, we see no error in the Board’s con-
sideration of K.Mizra’s sur-reply arguments.
III
Cisco finally argues that the Board made an erroneous
and prejudicial fact finding when rejecting its fourth ra-
tionale for combining the prior art references. Appellant
Br. 5. We agree with Cisco and thus vacate the Board’s
factual finding as unsupported by substantial evidence.7
Cisco’s fourth rationale argued that a skilled artisan
would have combined Gleichauf with Lewis because
Lewis’s quarantine notification webpage could be displayed
in the browser that the user already has open, rather than
through separate software components for displaying mes-
sages, as allegedly required by Gleichauf. See J.A. 159–60.
The Board rejected this rationale by concluding that
Gleichauf’s quarantine notification message provides the
same benefit as Lewis’s quarantine notification webpage.
The Board found that “Gleichauf indicates that the notifi-
cation messages may be displayed on a browser using XML
pages, without the need for additional software running on
the device to receive and display the notification message
7 Cisco argues that the Board’s determination that
Gleichauf’s message may be displayed on a browser using
XML pages also constituted a separate, reversable, proce-
dural error. Appellant Br. 52–53. According to Cisco, the
Board came up with its theory regarding Gleichauf’s use of
XML “out of whole cloth.” Id. at 54. We do not reach
whether this theory is a procedural violation because we
conclude that the Board’s factual determination is unsup-
ported by substantial evidence and cannot stand.
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 12
to the user.” J.A. 32 (emphasis added). Cisco argues that
this finding is unsupported by substantial evidence. Ap-
pellant Br. 48–49. We agree with Cisco.
Gleichauf does not disclose a notification message via a
browser. J.A. 1163, 20:54–65. Rather, Gleichauf broadly
discloses that messages will be displayed to a user.
J.A. 1164, 21:5–8 (“[T]he message may be displayed to the
user . . . indicating that the device has been quarantined.”).
Gleichauf then provides some examples of such messages,
such as a notification message via a text message for dis-
play to a user or a message that may be written to a log file
indicating that the device has been quarantined and needs
to be remediated. J.A. 1164, 21:1–8.
Additionally, Gleichauf does not disclose a notification
message displayed in XML format on a web browser. Ra-
ther, Gleichauf broadly states that notification messages
can be configured in “extensible messaging format” such as
XML format. J.A. 1163, 20:54–64. Gleichauf then discloses
that XML format is a “well-defined, application-independ-
ent form for representing . . . data” that allows third-party
manufactures of “posture plug-ins” to recognize the infor-
mation in the notification message. Id. However, there is
no support in Gleichauf, or the record, to indicate that an
“application-independent form” could mean a web browser.
The only support the Board cited for its finding that
Gleichauf’s notification messages may be “displayed on a
browser using XML pages” was attorney argument made
by K.Mizra’s counsel at the close of the oral hearing.
J.A. 32 (J.A. 582, 43:7–15). Attorney argument cannot sup-
port the Board’s finding. Acoustic Tech., 949 F.3d at 1375
(“[A]ttorney argument cannot constitute substantial evi-
dence of a motivation to combine.” (citation omitted)).
In light of this evidentiary record, there was no basis
for the Board to find that Gleichauf indicates that a notifi-
cation message may be displayed on a browser using XML
format. The Board’s rejection of Cisco’s fourth rationale is
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CISCO SYSTEMS, INC. v. K. MIZRA LLC 13
thus unsupported by substantial evidence. We vacate this
finding.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons discussed
above, we vacate the Board’s motivation to combine analy-
sis, which was rooted in legal error and a fact finding un-
supported by substantial evidence. We further vacate the
Board’s ultimate determination that Cisco failed to show
the unpatentability of the challenged claims of the ’705 pa-
tent and remand for the Board to consider the remaining
issues regarding the obviousness of the challenged claims,
including Cisco’s non-benefits-based motivation to combine
arguments and Cisco’s fourth rationale.
VACATED AND REMANDED
COSTS
Costs against K.Mizra.
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