Case: 22-1139 Document: 39 Page: 1 Filed: 02/24/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INTEL CORPORATION,
Appellant
v.
PACT XPP SCHWEIZ AG,
Appellee
______________________
2022-1139
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00539.
______________________
Decided: February 24, 2023
______________________
JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for appellant. Also represented by DIVA R.
HOLLIS, NATHAN S. MAMMEN; ROBERT ALAN APPLEBY,
JAMES E. MARINA, New York, NY.
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for appellee. Also
represented by NIMA HEFAZI, FREDERICK A. LORIG, Los An-
geles, CA; MARK YEH-KAI TUNG, Redwood Shores, CA.
______________________
Case: 22-1139 Document: 39 Page: 2 Filed: 02/24/2023
2 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
Before NEWMAN, PROST, and HUGHES, Circuit Judges.
PROST, Circuit Judge.
The Patent Trial and Appeal Board (“Board”) deter-
mined that Intel, Inc. (“Intel”) failed to prove certain chal-
lenged claims of U.S. Patent No. 9,552,047 (“the ’047
patent”) were unpatentable as obvious. Intel Corp. v.
PACT XPP Schweiz AG, No. IPR2020-00539, Paper 35
(P.T.A.B. Sept. 8, 2021) (“’539 Final Written Decision”). We
reverse.
BACKGROUND
Intel petitioned for inter partes review of several pa-
tents owned by PACT XPP Schweiz AG (“PACT”). Three
resulting Board decisions are relevant to this appeal. First,
in the ’535 proceeding, the Board determined that Intel
proved some, but not all, challenged claims of U.S. Patent
No. 8,312,301 (“the ’301 patent”) were unpatentable as ob-
vious. Intel Corp. v. PACT XPP Schweiz AG, No. IPR2020-
00535, Paper 33, 2021 WL 3506785 (P.T.A.B. Aug. 9, 2021)
(“’535 Final Written Decision”). Second, in the ’541 pro-
ceeding, the Board determined that Intel proved all chal-
lenged claims of U.S. Patent No. 9,075,605 (“the ’605
patent”) were unpatentable as obvious. Intel Corp. v.
PACT XPP Schweiz AG, No. IPR2020-00541, Paper 36,
2021 WL 8776166 (P.T.A.B. Aug. 31, 2021) (“’541 Final
Written Decision”). And finally, in the ’539 proceeding on
appeal here, the Board determined that Intel proved some,
but not all, challenged claims of the ’047 patent were un-
patentable as obvious. ’539 Final Written Decision, at 87.
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 3
The ’301, ’605, and ’047 patents all relate to optimizing
power consumption in multiprocessor systems. 1 Power op-
timization is important for maximizing battery life and
maintaining suitable temperatures for multiprocessor sys-
tems. There are a few ways to optimize power in a multi-
processor system, but the one at issue in this case focuses
on adjusting “clock frequency.” The clock frequency of a
processor refers to the rate at which that processor can pro-
cess data; the faster the frequency, the faster a processor
can complete a task. See id. at 3.
Three claims of the ’047 patent are representative for
purposes of this appeal. We address each in turn.
I
Claim 2, in relevant part, claims a multiprocessor sys-
tem
wherein for at least some of the [processors], the
clock frequency is adjustable at runtime according
to a state of the multiprocessor system.
’047 patent claim 2 (emphasis added); see Appellee’s Br. 6
n.1.
Intel relied on prior art reference Nicol 2 to teach this
“according to a state” limitation. The Board concluded that
Nicol failed to disclose this limitation because Nicol taught
adjusting clock frequency only according to an “antici-
pated” state, and the Board construed the claim to require
adjusting clock frequency according to an “existing” state.
’539 Final Written Decision, at 15, 38.
1“The ’047 patent is a divisional of the ’605 patent,
and the ’605 patent is a continuation of the ’301 patent.”
Appellant’s Br. 26.
2 U.S. Patent No. 6,141,762 (“Nicol”).
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4 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
Without explanation as to why or how, the Board
reached a contrary conclusion in the ’535 proceeding when
analyzing representative claim 12 of the ’301 patent.
Claim 12 of the ’301 patent claimed a multiprocessor device
wherein[] . . . the clock frequency of each [proces-
sor] is at least determinable by a state of the [mul-
tiprocessor] device
’301 patent claim 12 (emphasis added); see Appellee’s
Br. 6 n.1. In the ’535 proceeding, the Board concluded that
Nicol taught that “state” limitation even if “state” were con-
strued to include only “existing” states. ’535 Final Written
Decision, 2021 WL 3506785, at *28.
II
Claim 7, in relevant part, claims a multiprocessor sys-
tem that’s
adapted to . . . reduce the clock frequency in ac-
cordance with a hysteresis characteristic[].
’047 patent claim 7 (emphasis added). 3 In a generic sense,
hysteresis is “[a]ny phenomenon in which there is a lag be-
tween the cause and the induced or observed effect.”
J.A. 2738; see also J.A. 2413 l. 20–2414 l. 11.
Intel also relied on Nicol to teach the “hysteresis char-
acteristic” limitation of claim 7. But, according to the
Board, Nicol did not disclose this limitation because the
hysteresis in Nicol’s system was the result of a
3 The original claim language reads “in accordance
with a hysteresis characteristics.” ’047 patent claim 2. The
parties agree that the final “s” in “characteristics” is a typo.
See Appellant’s Br. 57 n.9; Appellee’s Br. 2. We accordingly
refer to this limitation hereinafter as a singular “hysteresis
characteristic.”
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 5
“predetermined choice.” ’539 Final Written Decision, at 50
(cleaned up).
Yet in the ’541 proceeding, the Board followed the op-
posite logic. There, Intel asserted that prior art Kling 4
taught the “hysteresis characteristic” limitation in repre-
sentative claim 1 of the ’605 patent. Claim 1 of the ’605
patent claimed a method for operating a multiprocessor
system in which
the multiprocessor system . . . reduc[es] the clock
frequency of . . . at least [a] part of the multiproces-
sor system in accordance with . . . a hysteresis char-
acteristic.
’605 patent claim 1 (emphasis added). The Board found
that Kling disclosed this limitation based on Kling’s teach-
ing of a system that implemented hysteresis “by comparing
the same signal against two thresholds,” ’541 Final Written
Decision, 2021 WL 8776166, at *16, where those two
thresholds were predetermined by the user, id. at *21.
III
Claim 10, in relevant part, claims a multiprocessor sys-
tem comprising
a plurality of temperature sensors and a heteroge-
neous plurality of clocked [processors]; and
wherein
the multiprocessor having a plurality of regions, a
temperature sensor being provided for each of said
plurality of regions to measure the temperature of
said specific region; and
4 U.S. Patent No. 6,367,023 (“Kling”).
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6 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
the clock frequencies of said [processors] being dy-
namically adjustable in accordance with the sensed
temperatures.
’047 patent claim 10; see Appellee’s Br. 6 n.1. Intel argued,
and PACT did not dispute, that a combination of Nicol and
Bhatia 5 disclosed these limitations. But PACT did dispute
that a person of ordinary skill would have been motivated
to combine Nicol and Bhatia. The Board agreed with
PACT. Although Intel had argued that a person of ordi-
nary skill would have been motivated to use “Bhatia’s ap-
proach of partitioning a system or chip into multiple
thermal zones, each monitored by its own thermal sensor,”
with Nicol’s system, ’539 Final Written Decision, at 73
(cleaned up), the Board concluded that Intel’s expert testi-
mony that this approach would have been “beneficial” was
“unsupported by record evidence,” id. at 75 (citing
J.A. 2772 ¶ 42).
This finding stands in direct contrast to the Board’s
finding that there was a motivation to combine Nicol and
Bhatia in the ’535 proceeding to render representative
claim 3 of the ’301 patent obvious. Claim 3 of the ’301 pa-
tent claimed a method of operating a multiprocessor sys-
tem by
grouping . . . a plurality of subsets of [proces-
sors] . . .
effecting a plurality of temperature measurements
in different regions of the system; and
based on the temperature measurement, . . . modi-
fying clock rates of the plurality of subsets of [pro-
cessors] . . . .
’301 patent claim 3; see Appellee’s Br. 6 n.1. The Board
found, in that proceeding, that Intel had demonstrated a
5 U.S. Patent No. 6,535,798 (“Bhatia”).
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 7
person of ordinary skill would have thought it “beneficial”
to combine Nicol and Bhatia to render this claim obvious
because “a person of ordinary skill in the art would have
understood that Bhatia’s approach of partitioning a system
or chip into multiple thermal zones, each monitored by its
own thermal sensor, . . . . would improve the accuracy of
Nicol’s . . . system.” ’535 Final Written Decision, 2021 WL
3506785, at *18 (cleaned up).
Intel appeals the Board’s ’539 Final Written Decision
with respect to claims 2–4, 7, 9–11, 13, and 27. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Intel appeals the Board’s determination that claims
2–4, 7, 9–11, 13, and 27 were not unpatentable as obvious.
Intel asserts that the Board’s conclusions are erroneous
both on the merits and under the Administrative Proce-
dure Act (“APA”) as a result of the inconsistent conclusions
between this proceeding and the ’535 and ’541 proceedings.
Because we agree with Intel on the merits of each chal-
lenge, we need not address its APA arguments.
On the merits, Intel challenges the Board’s claim con-
struction of “state” for claims 2–4; claim construction of
“hysteresis characteristic” for claims 7, 9, 13, and 27; and
factual finding of no motivation to combine Nicol and
Bhatia for claims 10 and 11.
Claim construction is a question of law reviewed de
novo. Data Engine Techs. LLC v. Google LLC, 10 F.4th
1375, 1380 (Fed. Cir. 2021). Obviousness is ultimately a
question of law reviewed de novo with subsidiary fact-find-
ings, like motivation to combine, reviewed for substantial
evidence. PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d
1376, 1381 (Fed. Cir. 2019). “Substantial evidence is such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” Novartis AG v. Torrent
Pharms. Ltd., 853 F.3d 1316, 1324 (Fed. Cir. 2017).
Case: 22-1139 Document: 39 Page: 8 Filed: 02/24/2023
8 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
We agree with Intel on the merits of all claims on ap-
peal and accordingly reverse.
I
Intel argues that the Board’s determination that
claims 2–4 were not unpatentable relies on an incorrect
claim construction of “state.” Appellant’s Br. 44–50. We
agree.
Claim 2 claims a multiprocessor system in which clock
frequency for at least some processors “is adjustable at
runtime according to a state.” ’047 patent claim 2 (empha-
sis added). The Board construed “according to a state” to
require that “the clock frequency is adjusted as a result of,
or in response to, an existing state of the multiprocessing
system or its [processors].” ’539 Final Written Decision,
at 15 (emphasis added). In doing so, the Board explicitly
credited PACT’s argument that adjusting clock frequency
“according to a state” excluded adjusting clock frequency
according to an “anticipated” state. See id. at 11–13. The
Board reasoned that anticipated-state clock frequency ad-
justments were excluded from the claim because the ’047
specification describes changing clock frequency in re-
sponse to only a variety of “preexisting” inputs, like the de-
scribed “configuration state.” See id. at 13–15.
On appeal, Intel argues that the Board’s construction
of “according to a state” is wrong because it excludes em-
bodiments disclosed in the ’047 patent. Appellant’s
Br. 44–45 (first citing Oatey Co. v. IPS Corp., 514 F.3d
1271, 1276–77 (Fed. Cir. 2008); then citing GE Lighting
Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
2014); and then citing Golden Bridge Tech., Inc. v. Apple
Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014)). PACT responds
that the Board’s construction is correct because the embod-
iments on which Intel relies aren’t covered by the claim due
to the claim’s “at runtime” limitation. Appellee’s Br. 28–30.
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 9
We start with the plain and ordinary meaning of the
claim according to a person of ordinary skill. See Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc). “[C]lock frequency is adjustable at runtime accord-
ing to a state of the multiprocessor system” does not limit
“state” to existing states. That plain and ordinary meaning
corresponds with the intrinsic evidence, which describes
embodiments adjusting clock frequency according to an an-
ticipated state. ’047 patent col. 3 ll. 1–22; id. at col. 4
ll. 17–19; id. at col. 4 ll. 65–66.
PACT admits that the ’047 patent describes embodi-
ments that adjust clock frequency according to an antici-
pated state. However, PACT argues that “Intel [cannot]
show that those [anticipated-state] embodiments concern
claims 2–4” since claims 2–4 require clock frequency ad-
justment “at runtime.” Appellee’s Br. 29. PACT instead
suggests that the anticipated-state embodiments concern
other claims, like claim 1. Oral Arg. at 23:20–46,
No. 22-1139, https://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=22-1139_12072022.mp3. We are not per-
suaded by this argument. As an initial matter, the Board
did not rely on the “at runtime” language to exclude the
anticipated-state embodiments; it relied on the “according
to” language. See ’539 Final Written Decision, at 12. But
even worse, PACT’s argument makes no sense on the mer-
its. Claim 1 also includes the “at runtime” limitation on
which PACT relies. See ’047 patent claim 1 (“[T]he clock
frequency is adjustable at runtime . . . .”). And we discern
no lexicography or disavowal excluding the anticipated-
state embodiments from the scope of claims 2–4. See
Golden Bridge, 758 F.3d at 1365.
Accordingly, we construe claims 2–4 to include adjust-
ing clock frequency according to an anticipated state. The
parties agree that, under such a construction, these claims
are obvious, see Oral Arg. at 24:29–50, so we reverse the
Board’s contrary conclusion.
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10 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
II
Intel argues that the Board’s determination that
claims 7, 9, 13, and 27 were not unpatentable relies on an
incorrect claim construction of “hysteresis characteristic.”
Appellant’s Br. 58–59. We agree.
Claim 7 claims a multiprocessor system that’s “adapted
to . . . reduce the clock frequency in accordance with a hys-
teresis characteristic.” ’047 patent claim 7 (emphasis
added). The Board noted that the ’047 patent “contains no
helpful description” of what a hysteresis characteristic is.
’539 Final Written Decision, at 46. So, without objection
from PACT, the Board accepted Intel’s “understanding” of
“hysteresis” for the purposes of its analysis. Id. at 47. In-
tel, in part, described hysteresis as
involv[ing] the nonlinear response of a circuit, in
which the response to a particular set of input con-
ditions depends both on the instantaneous values
and the recent past of the input and output signal,
with such behavior further characterized as the in-
ability to retract exactly on the reverse swing of a
particular set of input and output conditions.
Id.
Hysteresis is commonly used to avoid excessive switch-
ing. The parties agree that a modern thermostat is an ex-
ample of a circuit that exhibits hysteresis, and we adopt
PACT’s description as illustrative:
Suppose [a] thermostat’s goal is to keep the room
at approximately 70 degrees, and the thermostat is
set to a window between 68 degrees and 72 degrees.
Suppose further that the starting temperature be-
fore the thermostat is turned on is 66 degrees.
Once turned on, the thermostat will trigger the
heater to start, and the heater will stay on until the
thermostat senses that the room’s temperature is
72 degrees. At that point, the thermostat will tell
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 11
the heater to turn off. The room’s temperature will
gradually decline during this “heater off” period
until it reaches 68 degrees, at which point the ther-
mostat will tell the heater to turn back on, and the
cycle will repeat.
Appellee’s Br. 39–40 (emphasis in original). Compare such
a two-threshold system to one with a single threshold: sup-
pose, still, that the thermostat’s goal is to keep the room at
approximately 70 degrees but that the thermostat turns
the heater on and off as soon as the room temperature even
slightly deviates from that single measure. The two-
threshold thermostat avoids excessively switching the
heater on and off using hysteresis, which results in energy
savings.
On appeal, Intel argues that the Board implicitly and
incorrectly construed “hysteresis characteristic” in deter-
mining that Nicol did not teach this limitation. Appellant’s
Br. 58–64. Intel asserts that the Board precluded “hyste-
resis characteristic” from covering systems that use pro-
grammed hysteresis, like the thermostat. See id. at 58–59.
PACT responds that “the Board did not make a distinction
between programmed hysteresis and naturally-occurring
hysteresis.” Appellee’s Br. 40. According to PACT, the
Board’s construction “still involves a response by [a] pro-
grammed system” but requires that “that response is not
entirely predetermined.” Id. at 40–41 (cleaned up). To put
that in terms of the thermostat, PACT says that a thermo-
stat “adapted to . . . reduce the [room temperature] in ac-
cordance with a hysteresis characteristic” doesn’t cover a
thermostat that employs the two-threshold system if, say,
the heater has a preset time following the room tempera-
ture reaching one of the thresholds before it turns on or off.
But see J.A. 609 (“Lag is a form of hysteresis.”).
We start with the plain and ordinary meaning of the
claim according to a person of ordinary skill. Phillips,
415 F.3d at 1313. A “hysteresis characteristic,” according
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12 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
to the Board’s understanding of “hysteresis,” includes at
least a “nonlinear response of a circuit” and an “inability to
retrace exactly on the reverse swing of a particular set of
input and output conditions.” ’539 Final Written Decision,
at 47. 6 Neither of those characteristics preclude a prede-
termined response, and PACT points us to no other intrin-
sic or extrinsic evidence that otherwise indicates such a
limitation is warranted.
Accordingly, we construe claims 7, 9, 13, and 27 to
cover reducing clock frequency according to a hysteresis
characteristic, even if that characteristic is the result of, in
whole or in part, a predetermined choice. The parties agree
that, under such a construction, these claims are obvious,
see Oral Arg. at 37:17–32, so we reverse the Board’s con-
trary conclusion.
III
Intel argues that the Board’s determination that
claims 10 and 11 were not unpatentable relies on a finding
of no motivation to combine that lacks substantial evi-
dence. Appellant’s Br. 74–76. We agree.
There’s no dispute that Nicol and Bhatia disclose all
limitations of claims 10 and 11. The only dispute is
whether an artisan of ordinary skill would have been moti-
vated to combine those reference. See Appellee’s Br. 48–49.
6 This means the claim covers a multiprocessor sys-
tem “adapted to . . . reduce the clock frequency in accord-
ance with,” ’047 patent claim 7, “a nonlinear response of
[the] circuit” or an “inability to retrace . . . on the reverse
swing” of that response, ’539 Final Written Decision, at 47.
The meaning of such a claim is unclear, but we need not
resolve that question in the context of this appeal because
the parties seem to agree that the dispute is whether a hys-
teresis characteristic may or may not be the result of a “de-
liberate choice.” See id. at 50.
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INTEL CORPORATION v. PACT XPP SCHWEIZ AG 13
The Board found that such an artisan wouldn’t have been
motivated, explaining that Intel’s argument that such a
combination would have been “beneficial” lacked record ev-
idence. ’539 Final Written Decision, at 75.
The Board’s rationale for finding a lack of motivation
to combine is neither reasonable nor correct. The Board
cited Intel’s expert testimony in stating that Intel’s moti-
vation to combine argument was “unsupported by record
evidence.” See id. (citing J.A. 2772 ¶ 42). That expert tes-
timony, in turn, cites to Bhatia, which explains that its
“temperature sensor[s]” monitor and control corresponding
“thermal zones” to maintain system temperature within a
certain range. Bhatia col. 3 ll. 29–39; see J.A. 2772 ¶ 42
(citing Bhatia col. 3 ll. 29–39). Bhatia teaches that these
temperature controls are useful because different proces-
sors can have different workloads; and a higher workload
risks a high temperature; and a high processor tempera-
ture could cause circuit failure. Bhatia col. 1 ll. 5–59.
Intel’s expert explained that it would be “beneficial” to
implement a similar temperature control system with
Nicol because “the different [processors in Nicol] can [also]
have different workloads and thus different temperature
profiles.” J.A. 849 ¶ 249 (citing Nicol col. 5 ll. 42–44); see
J.A. 2772 ¶ 41 (citing J.A. 849 ¶ 249). The cited passage of
Nicol explains that different processors may be subject to
different voltages; and a low voltage risks a low tempera-
ture; and a low processor temperature could also cause cir-
cuit failure. Nicol col. 5 ll. 42–44. And the relationship
between workloads and voltage was well known in the
art—the higher the workload, the higher the voltage
needed to process that workload given a set period of time.
See id. at col. 5 ll. 23–24, 42–44 (explaining that Nicol’s sys-
tem “react[s] to variations in the system[’s] [work]load” by,
in part, changing voltage supply).
We fail to see how this record evidence is lacking. The
Board’s citations directly explain how temperature
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14 INTEL CORPORATION v. PACT XPP SCHWEIZ AG
regulation is beneficial in monitoring and controlling mul-
tiprocessors since those processors could be subject to dif-
ferent voltages (like in Nicol) or different workloads (like in
Bhatia). We thus reverse the Board’s finding on motivation
to combine and accordingly determine that claims 10 and
11 are obvious.
* * *
We reject the Board’s claim construction of “state” and
“hysteresis characteristic” and reverse its finding of a lack
of motivation to combine Nicol and Bhatia.
CONCLUSION
We have considered PACT’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we re-
verse the Board’s judgment that claims 2–4, 7, 9–11, 13,
and 27 are not obvious.
REVERSED
Intel Corporation v. Pact Xpp Schweiz Ag
Combined Opinion