Case: 21-1917 Document: 60 Page: 1 Filed: 07/18/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
POLARIS INNOVATIONS LIMITED,
Appellant
v.
ADVANCED MICRO DEVICES, INC.,
Cross-Appellant
______________________
2021-1917, 2021-1958
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01527.
______________________
Decided: July 18, 2022
______________________
ROBERT E. FREITAS, Freitas & Weinberg LLP, Redwood
Shores, CA, argued for appellant.
AASHISH G. KAPADIA, Baker Botts L.L.P., Austin, TX,
argued for cross-appellant. Also represented by BRIAN W.
OAKS; MICHAEL HAWES, Houston, TX.
______________________
Before MOORE, Chief Judge, PROST and HUGHES, Circuit
Judges.
Case: 21-1917 Document: 60 Page: 2 Filed: 07/18/2022
2 POLARIS INNOVATIONS LIMITED v.
ADVANCED MICRO DEVICES, INC.
PROST, Circuit Judge.
Advanced Micro Devices, Inc. (“AMD”) petitioned for
inter partes review (“IPR”) of claims 1–3, 5, 9–15, 17, and
21–25 of U.S. Patent No. 8,117,526 (“the ’526 patent”),
which Polaris Innovations Ltd. (“Polaris”) owns. In a final
written decision, the Patent Trial and Appeal Board
(“Board”) concluded that AMD had proved unpatentable
only claims 1, 9, 12, 24, and 25. Advanced Micro Devices,
Inc. v. Polaris Innovations Ltd., No. IPR2019-01527, Paper
28 (P.T.A.B. Feb. 26, 2021) (“Final Written Decision”).
Each party appeals aspects of the decision adverse to it.
We affirm in part and dismiss in part.
DISCUSSION
We first address the merits of Polaris’s appeal. We
then consider whether aspects of AMD’s cross-appeal are
improperly before us and whether AMD has standing be-
fore turning to the merits of the cross-appeal.
I
Polaris limits its challenges on appeal to claim 9, rais-
ing three arguments. It first contends that the Board erred
in construing “checksum” to include simple parity bits cal-
culated across disjoint inputs. Second, it argues that sub-
stantial evidence does not support the Board’s obviousness
determination, even under the Board’s construction of
“checksum.” And third, it suggests that the Board violated
the Administrative Procedure Act (“APA”) by relying on a
prior-art reference for its construction of “checksum” that
neither party raised and to which Polaris never had an op-
portunity to respond. We consider each argument in turn
and conclude that none has merit.
We start with Polaris’s challenge to the Board’s con-
struction of “checksum.” AMD asked the Board to construe
“checksum” to mean “a plurality of ECC [error correction
code] bits.” Final Written Decision, at 13. Polaris disa-
greed, arguing that “checksum” “encompasses a multi-bit
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POLARIS INNOVATIONS LIMITED v. 3
ADVANCED MICRO DEVICES, INC.
error detection or correction data structure whose bits are
calculated using non-disjoint sets of inputs.” Id. But Pola-
ris also sought to exclude from the construction “a set of
simple parity bits, calculated from non-overlapping sets of
inputs.” Id. at 16. The Board rejected both parties’ at-
tempts to limit the scope of the term, concluding that
“checksum” encompasses ECC bits but is not limited to
them and that it includes a set of simple parity bits calcu-
lated from non-overlapping sets of inputs. Id. at 18. On
appeal, Polaris contends that this construction ignores the
’526 patent’s teachings that checksums and simple parity
bits are distinct concepts with distinct applications. 1 The
problem with this argument is twofold. First, the fact that
checksums and simple parity bits are distinct concepts does
not, as Polaris seems to suggest, preclude the Board’s con-
struction, in which checksums encompass simple parity
bits but are not coextensive with them. See Appellant’s
Br. 21–23. Second, nothing in the ’526 patent’s specifica-
tion supports the narrowing limitation Polaris urges. As
Polaris’s counsel conceded at oral argument, the specifica-
tion and claims both state that checksums encompass
1 Polaris also suggests that it was inappropriate for
the Board to resort to extrinsic evidence to construe “check-
sum” after concluding that the inventor had acted as his
own lexicographer in the ’526 patent. Appellant’s Br.
24–25. But the case Polaris cites, Multiform Desiccants,
Inc. v. Medzam, Ltd., simply says that if the specification
makes the meaning of a claim term sufficiently clear, that
meaning shall apply. See 133 F.3d 1473, 1477 (Fed. Cir.
1998). So it does not support a categorical rule that one
cannot consult extrinsic evidence when the inventor acts as
his own lexicographer. And, in any event, the Board did
not resort to extrinsic evidence to construe checksum; ra-
ther, it explained why the extrinsic evidence Polaris relied
on was inconsistent with the specification. See Final Writ-
ten Decision, at 16–18.
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4 POLARIS INNOVATIONS LIMITED v.
ADVANCED MICRO DEVICES, INC.
error-correcting bits, and such bits can be calculated from
overlapping and non-overlapping sets of inputs. Oral Arg.
at 5:38–8:35, No. 21-1917, https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=21-1917_0705202
2.mp3. We therefore conclude that the Board’s construc-
tion was correct.
We turn next to Polaris’s contention that the Board’s
obviousness analysis never addressed whether the prior
art discloses a “checksum [determined] based on the data
bits and the first and second indicators.” Polaris says that
the Board mistakenly observed that Polaris never ad-
dressed any element of claim 9 other than “checksum.” We
disagree. The full context of Board’s analysis shows that it
considered all of Polaris’s arguments and that, in saying
that Polaris had not addressed any other claim element be-
sides “checksum,” it was talking about the “checksum [de-
termined] based on the data bits and the first and second
indicators.” The Board first refers to Polaris’s arguments
relating to “the required ‘checksum,’” and a review of the
underlying citations shows that the arguments the Board
was referencing include Polaris’s arguments relating to the
“checksum [determined] based on the data bits and the
first and second indicators.” See Final Written Decision, at
55 (citing J.A. 892–95 (Patent Owner Resp. 51–54) and
977–79 (Przybylski Decl. ¶¶ 165, 168–70)). The Board then
observed that it had “review[ed] the record” and “con-
firm[ed AMD]’s analysis of the remaining requirements of
claim 9,” reaffirming that it had considered the entire rec-
ord and concluded that AMD had met its burden of proof.
See Final Written Decision, at 57. These two statements
indicate that the Board considered and rejected Polaris’s
arguments on this limitation, and Polaris has not other-
wise articulated why the Board’s conclusion is unsupported
by substantial evidence.
We conclude our discussion of Polaris’s appeal with its
argument that the Board violated the APA by relying on a
prior-art reference that neither party had cited to construe
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POLARIS INNOVATIONS LIMITED v. 5
ADVANCED MICRO DEVICES, INC.
“checksum.” Specifically, Polaris says that the Board re-
lied on a reference, Maxino, that AMD had cited only in its
invalidity discussion, not in the claim-construction context.
As a result, Polaris contends, it had no opportunity to re-
spond to the Board’s novel theory. But the Board did not
rely on Maxino to construe “checksum.” Rather, the Board
merely observed, using a “see also” citation, that Maxino
was consistent with the idea that a checksum encompasses
simple parity bits calculated from non-overlapping sets of
inputs, a conclusion that the Board reached independently
of Maxino’s disclosure. See Final Written Decision, at
16–17. We see no APA violation in the Board’s use of Max-
ino in this manner.
Seeing no merit in Polaris’s arguments, we affirm the
Board’s determination that claim 9 of the ’526 patent is un-
patentable as obvious.
II
A
Before turning to the merits of AMD’s cross-appeal, we
must address two threshold issues. First, AMD cross-ap-
peals the Board’s determinations with respect to claims 1,
9, 12, 24, and 25 despite prevailing on those claims before
the Board; accordingly, its cross-appeal is improper as to
those claims, and we dismiss them. Second, Polaris argues
that AMD does not have standing to appeal the Board’s de-
cision with respect to claims 2, 3, 5, 10, 11, 13–15, 17, and
21–23 because Polaris did not assert them in its district-
court case against AMD. We disagree.
“Standing to sue is a doctrine rooted in the traditional
understanding of a case or controversy.” Spokeo, Inc. v.
Robins, 578 U.S. 330, 338 (2016). “To establish standing,
the party invoking federal jurisdiction must demonstrate
(1) an injury in fact that is (2) fairly traceable to the de-
fendant’s challenged conduct and is (3) likely to be re-
dressed by a favorable judicial decision.” Apple Inc. v.
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6 POLARIS INNOVATIONS LIMITED v.
ADVANCED MICRO DEVICES, INC.
Qualcomm Inc., 17 F.4th 1131, 1135 (Fed. Cir. 2021) (ad-
dressing appellate standing in IPR appeals) (cleaned up).
“To establish injury in fact, [an appellant] must show that
he or she suffered an invasion of a legally protected interest
that is concrete and particularized and actual or imminent,
not conjectural or hypothetical.” Spokeo, 578 U.S. at 339
(cleaned up).
AMD has sufficiently demonstrated imminent harm.
Polaris filed an open-ended infringement complaint in dis-
trict court alleging that AMD had infringed “one or more
claims of the ’526 patent.” Polaris Innovations Ltd. v. Ad-
vanced Micro Devices, Inc., Case No. 1:18-cv-555, ECF No.
1 (W.D. Tex. July 2, 2018). And Polaris has not said that it
would not assert other claims against AMD if we upheld
the unpatentability of claim 9, as we have done. An appel-
lant shows standing when it demonstrates that it is engag-
ing in “activity that would give rise to a possible
infringement suit.” Consumer Watchdog v. Wis. Alumni
Rsch. Found., 753 F.3d 1258, 1262 (Fed. Cir. 2014). Here,
AMD “has engaged in acts that not only could give rise to
a possible infringement suit, but did give rise to an in-
fringement suit.” Grit Energy Sols., LLC v. Oren Techs.,
LLC, 957 F.3d 1309, 1320 (Fed. Cir. 2020) (emphasis in
original). And AMD’s injury is compounded by the fact that
IPR estoppel has attached to each of the claims it chal-
lenged in the IPR. See Altaire Pharms., Inc. v. Paragon
Bioteck, Inc., 889 F.3d 1274, 1283 (Fed. Cir. 2018) (noting
that “the estoppel effect in this case further supports Al-
taire’s claimed injury in fact”), remand order modified by
stipulation, 738 F. App’x 1017. That injury is traceable to
Polaris’s conduct, and a favorable judicial decision would
remove at least a subset of the ’526 patent’s claims as an
obstacle to AMD’s allegedly infringing activity. We con-
clude, therefore, that AMD has standing to bring its cross-
appeal. Accordingly, we turn to its merits.
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POLARIS INNOVATIONS LIMITED v. 7
ADVANCED MICRO DEVICES, INC.
B
AMD raises two challenges, but it can prevail on the
second only if it prevails on the first: that the Board erred
in failing to consider AMD’s motivation-to-combine argu-
ment. Because we conclude that the first challenge is mer-
itless, we do not reach the second.
AMD argues that its petition identified multiple com-
binations of Sridhara 2 and Iglesia 3 and motivations for
each—one combination starting with Iglesia (the Iglesia-
first theory) and another starting with Sridhara (the Sri-
dhara-first theory)—but the Board only addressed one of
them. In AMD’s view, the Board should have addressed
each combination explicitly and separately.
The Board did not err. Its motivation-to-combine anal-
ysis focused on the Iglesia-first theory, but the decision was
not limited to it. The Board began its analysis by agreeing
with Polaris that AMD “has not proved by a preponderance
of the evidence that a person of ordinary skill in the art
would have been motivated to combine the teachings of Ig-
lesia and Sridhara,” without regard to which acted as the
primary reference. J.A. 34. It then explicitly referenced
AMD’s Sridhara-first argument in addressing AMD’s be-
latedly raised theory based on Sridhara alone, observing
that “the portions of the Petition relied on present [AMD]’s
obviousness arguments solely based on the combination of
Sridhara with Iglesia.” J.A. 39 (emphasis in original); see
also id. (“[AMD] relies on the system architecture of Iglesia
to account for the lack of explicit disclosure in Sridhara of
a system with a processor and circuits.”). Together, these
2 Sridhara et al., Coding for System-on-Chip Net-
works: A Unified Framework, Vol. 13, No. 6 IEEE Transac-
tions on Very Large Scale Integration (VLSI) Systems, 655
(2005).
3 U.S. Patent No. 6,490,703.
Case: 21-1917 Document: 60 Page: 8 Filed: 07/18/2022
8 POLARIS INNOVATIONS LIMITED v.
ADVANCED MICRO DEVICES, INC.
statements show that the Board was aware of AMD’s Sri-
dhara-first theory and had concluded that it, like the Igle-
sia-first theory, lacked merit. Further, the Board’s focus
on the Iglesia-first theory matched AMD’s petition, which
likewise substantially focused on that theory. We conclude
that the Board addressed every ground of invalidity AMD
raised. We therefore affirm the Board’s determination that
AMD failed to show by a preponderance of the evidence
that a skilled artisan would have been motivated to com-
bine Iglesia and Sridhara.
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the reasons set forth
above, we affirm in part and dismiss in part.
AFFIRMED-IN-PART AND DISMISSED-IN-PART
COSTS
No costs.