Sound View Innovations, LLC v. Hulu, LLC

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

SOUND VIEW INNOVATIONS, LLC,
Appellant

v.

HULU, LLC,
Appellee

UNITED STATES,
Intervenor
______________________

2019-1865, 2019-1867
______________________

Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
00017, IPR2018-00366.

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -

SOUND VIEW INNOVATIONS, LLC,
Appellant

v.

UNIFIED PATENTS, LLC, F/K/A UNIFIED
PATENTS, INC.,
Appellee

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SOUND VIEW INNOVATIONS, LLC v. HULU, LLC

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UNITED STATES,
Intervenor
______________________

2019-1866
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00096.
______________________

Decided: July 2, 2020
______________________

A
LAN KELLMAN, Desmarais LLP, New York, NY, for ap-
pellant. Also represented by KEVIN KENT MCNISH.

MARK CHRISTOPHER FLEMING, Wilmer Cutler Pickering
Hale and Dorr LLP, Boston, MA, for appellee Hulu, LLC.
Also represented by ELIZABETH BEWLEY; DAVID LANGDON
CAVANAUGH, Washington, DC.

PETER J. AYERS, Law Office of Peter J. Ayers, Austin,
TX, for appellee Unified Patents, LLC. Also represented
by J
ONATHAN RUDOLPH KOMINEK STROUD, ROSHAN
MANSINGHANI, Unified Patents, LLC, Washington, DC.

DENNIS FAN, Appellate Staff, Civil Division, United
States Department of Justice, Washington, DC, for inter-
venor. Also represented by S
COTT R. MCINTOSH, JOSEPH H.
HUNT; THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED,
Office of the Solicitor, United States Patent and Trade-
mark Office, Alexandria, VA.
______________________

Before L
OURIE, DYK, and CHEN, Circuit Judges.
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DYK, Circuit Judge.
Sound View Innovations, LLC (“Sound View”) appeals
the Patent Trial and Appeal Board (“Board”) decisions
holding claims 1–3 and 8–10 of U.S. Patent No. 6,125,371
(“the ’371 patent”) unpatentable as obvious. We affirm as
to IPR2018-00096 and dismiss as moot as to IPR2018-
00017 and IPR2018-00366.
BACKGROUND
The ’371 patent, owned by Sound View, concerns data-
base management systems that monitor and optimize the
efficiency of a database. Database systems typically in-
clude a database manager that manages interactions be-
tween application tasks and the database. These
interactions involve “transactions” (e.g., accesses, retriev-
als, modifications, indices, copies, etc.) directed to infor-
mation in the database. “Read-only transactions” do not
modify the database while “update transactions” do. Dif-
ferent transactions can conflict with each other if they at-
tempt to access the same data record at the same time. To
avoid a conflict, for example, a “read-only transaction” that
requires a simple view of a data record may have to wait
until the completion of an “update transaction” that takes
time to modify that data record. “Contemporary control
methodologies reduce conflicts between update and read-
only transactions” by giving the latter “old” views of certain
data records in the database. ’371 patent, col. 2, ll. 23–27.
“This is commonly referred to as multi-versioning, in which
[database managers] retain or archive multiple versions of
recently updated data records for use by read-only transac-
tions.” Id. at col. 2, ll. 27–30.
In this context, the ’371 patent is directed to reclaiming
memory space that is no longer used in multi-versioning
databases. The ’371 patent states that there was “a need
. . . in the art for an efficient means of reclaiming main
memory space no longer used by such multi-version tech-
niques.” Id. at col. 2, ll. 48–50. It discloses that the
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memory space can be reclaimed by “aging” (deleting) the
old version when “a given data record version is no longer
needed by current (or future) transactions.” Id. at col. 4,
ll. 32–35.
Independent claim 1 of the ’371 patent recites:
1. A processing system for use with a database of
data records, said database stored in a memory,
comprising:
a time stamping controller that assigns a
time stamp to transactions to be performed
on said database;
a versioning controller that creates multi-
ple versions of ones of said data records af-
fected by said transactions that are update
transactions; and
an aging controller that monitors a meas-
urable characteristic of said memory and
deletes ones of said multiple versions of
said ones of said data records in response
to said time stamp and said measurable
characteristic thereby to increase a capac-
ity of said memory.
Id. at col. 9, ll. 10–22 (emphasis added). Independent
claim 8 is a method claim that recites similar limitations.
1

These two independent claims are directed to the idea of
monitoring a measurable characteristic of the memory that
stores data records and deleting certain versions of data
records in the database to increase the capacity of the
memory.

1
The ’371 patent has three independent claims:
claims 1, 8, and 15. Independent claim 15 is not a subject
of this appeal.
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Hulu, LLC and Unified Patents, LLC (collectively, “ap-
pellees”) filed three petitions for inter partes review (“IPR”)
of the ’371 patent, challenging claims 1–3 and 8–10 as ob-
vious. In its final written decisions, the Board held
claims 1–3 and 8–10 unpatentable as obvious in light of
prior art. Sound View now appeals. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
“We review the Board’s factual findings for substantial
evidence and review its legal conclusions de novo.” In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir.
2015). We thus review de novo the Board’s interpretations
of the patent claims and determinations based on evidence
intrinsic to the patent. Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1346 (Fed. Cir. 2015).
I
In IPR2018-00096, the Board held claims 1–3 and 8–10
obvious in view of Philip A. Bernstein et al., Concurrency
Control and Recovery in Database Systems (1987) (“Bern-
stein”). We focus our attention on this decision, which cov-
ered all claims on appeal.
2

Bernstein is a textbook directed to database systems
that create multiple versions of a “data item” and use
timestamps to label each version. Bernstein discloses that
“[a]n obvious cost of maintaining multiple versions is stor-
age space” and thus “versions must periodically be purged
or archived” to “control this storage requirement.”
J.A. 1522–23.

2
In IPR2018-00096, the Board also held those
claims obvious in view of Bernstein and Rubin (U.S. Patent
No. 5,155,842). We need not reach this alternative ground
because we affirm the Board’s decision based on Bernstein
alone.
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The Board found that Bernstein taught each limitation
in claims 1–3 and 8–10. On appeal, Sound View challenges
the Board’s finding with respect to only the “monitor[ing] a
measurable characteristic of said memory” limitation re-
cited in the claims. Sound View argues that Bernstein does
not disclose this “monitoring” limitation. We disagree.
Bernstein discloses that when the data manager
“run[s] out of space for storing versions” of a data item then
“old versions . . . must be deleted.” J.A. 1533. The Board
thus concluded that Bernstein teaches “monitoring a meas-
urable characteristic of the memory,” because whether the
storage “run[s] out of space” is “a measure of the ‘current
utilization’ of memory,” and Bernstein taught “determining
that space in [the] memory has ‘run out.’” J.A. 60. We
agree with the Board’s conclusion that “[a] determination
that memory is full is a determination as to the current
utilization of the memory” and thus Bernstein satisfied the
“monitoring” limitation. J.A. 59–60.
Even if Bernstein determined that memory space has
run out based on error codes returned from writing or
memory allocation commands, contrary to Sound View’s as-
sertion, this itself constitutes techniques for “monitor[ing]
a measurable characteristic of [the] memory” to determine
that the memory space has run out. See ’371 patent, col. 9,
ll. 17–18, 52.
II
Sound View argues in the alternative that the claims
would not have been obvious for lack of a reasonable expec-
tation of success. The Board found that “a person of ordi-
nary skill in the art would have had a reasonable
expectation of success in arriving at the invention recited
in claims 1 and 8 based on Bernstein alone.” J.A. 72. We
agree with the Board.
Bernstein explicitly teaches deleting “old versions.”
Specifically, Bernstein discloses a method where “all
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versions are kept in a linked list, from newest to oldest,”
J.A. 1541, and that “versions [are] deleted from the oldest
to newest,” J.A. 1533. Unified Patents, LLC’s expert,
Dr. Paul Franzon, testified that Bernstein taught “a sys-
tem that deletes old versions,” J.A. 3789, by identifying
those with the “smallest timestamp,” J.A. 3803 (emphasis
removed), and an algorithm to achieve this. The Board
credited his testimony that “a person of ordinary skill in
the art would not have required disclosure any more de-
tailed than the disclosures in Bernstein to apply the prior
art teachings.” J.A. 73. There is no evidence that Bern-
stein’s method of deleting old versions was impracticable
or even inoperable for its purpose.
Nonetheless, Sound View suggests that Bernstein does
not disclose using an algorithm based on a particular ap-
proach that would make it more efficient to identify and
delete old versions of a data record, which Sound View re-
fers to as a “practical garbage collection algorithm.” See
Appellant’s Br. 17, 56. However, no such feature is re-
quired by the claims on appeal. This case is different from
In re Rinehart, 531 F.2d 1048 (C.C.P.A. 1976) because
there the claims explicitly recited “commercial scale pro-
duction” of polyesters utilizing “commercial scale quanti-
ties” of ethylene glycol and thus evidence challenging the
commercial scalability of the prior art combination was rel-
evant. Id. at 1051–53.
Since the claims here did not require a certain level of
practicality, the Board did not err in finding a “reasonable
expectation of success . . . [in] meet[ing] the limitations of
the claimed invention.” Intelligent Bio-Sys., Inc. v. Illu-
mina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016).
3
The Board in determining a reasonable expectation

3
The impracticality of the prior art combination may
be a factor in determining whether there would have been
a motivation to combine. See, e.g., Intelligent Bio-Sys., 821
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of success properly limited the inquiry to the claims as
written. Id. (“[F]ailure to consider the appropriate scope of
the . . . patent’s claimed invention in evaluating the reason-
able expectation of success . . . constitutes a legal error
. . . .” (first, second, and third alterations in original) (quot-
ing Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed.
Cir. 2014))); BTG Int’l Ltd. v. Amneal Pharm. LLC, 923
F.3d 1063, 1075 (Fed. Cir. 2019) (rejecting the patent
owner’s argument that a reasonable expectation of success
must be based on the likelihood of “survival advantage” of
certain steroids, a feature not required by the claims).
III
Sound View asserts that IPR is “unconstitutional as
applied to the ’371 patent” for violating the Fifth Amend-
ment’s Due Process Clause, because the patent issued in
2000 before the IPR procedure was enacted under the
American Invents Act (“AIA”) in 2011. Appellant’s Br. 57.
However, we have consistently held that “the application
of IPR to pre-AIA patents does not violate the Constitu-
tion.” OSI Pharm., LLC v. Apotex Inc., 939 F.3d 1375, 1386

F.3d at 1364–65, 1367–68 (holding that the efficiency re-
quired in the prior art was relevant to a finding of motiva-
tion to combine as opposed to a reasonable expectation of
success); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(holding that “desirability” is relevant to whether there
would have been a motivation to combine); DyStar Textil-
farben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368–69 (Fed. Cir. 2006) (collecting cases
holding that there was a motivation to combine because the
prior art combination was “more efficient”). Micro Chemi-
cal, Inc. v. Great Plains Chemical Co., 103 F.3d 1538 (Fed.
Cir. 1997) also involved the issue of a motivation to com-
bine. Id. at 1546–47. Sound View does not raise an im-
practicality argument with respect to a motivation to
combine.
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(Fed. Cir. 2019); Arthrex, Inc. v. Smith & Nephew, Inc., 935
F.3d 1319, 1331–32 (Fed. Cir. 2019) (“[T]he differences be-
tween IPRs and the district court and Patent Office pro-
ceedings that existed prior to the AIA are not so significant
as to ‘create a constitutional issue’ when IPR is applied to
pre-AIA patents.” (quoting Celgene Corp. v. Peter, 931 F.3d
1342, 1361–62 (Fed. Cir. 2019))); Enzo Life Scis., Inc. v.
Becton, Dickinson & Co., 780 F. App’x 903, 911 (Fed. Cir.
2019).
4

CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion in IPR2018-00096. Having held that all claims on ap-
peal are invalid, we dismiss the appeals in IPR2018-00017
and IPR2018-00366 as moot.
AFFIRMED AS TO NO. 2019-1866
DISMISSED AS MOOT AS TO NO. 2019-1865 AND
NO. 2019-1867
C
OSTS
Costs to the appellees.

4
See also Intellectual Ventures II LLC v. FedEx
Corp., 787 F. App’x 755 (Fed. Cir. 2019) (summary affir-
mance); Collabo Innovations, Inc. v. Sony Corp., 778 F.
App’x 954, 961 (Fed. Cir. 2019).
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