Case: 20-1701 Document: 54 Page: 1 Filed: 05/24/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IRON OAK TECHNOLOGIES, LLC,
Appellant
v.
MICROSOFT CORPORATION, SAMSUNG
ELECTRONICS CO., LTD., GOOGLE LLC,
Appellees
______________________
2020-1701, 2020-1706, 2020-1707
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01552, IPR2018-01553, IPR2019-00106.
______________________
Decided: May 24, 2021
______________________
ALBERT BERTON DEAVER, JR., McAughan Deaver
PLLC, Houston, TX, for appellant. Also represented by
ROBERT JAMES MCAUGHAN, JR.
RICHARD ALAN CEDEROTH, Sidley Austin LLP, Chicago,
IL, for appellee Microsoft Corporation. Also represented by
SCOTT BORDER, JOSEPH A. MICALLEF, Washington, DC.
JOSEPH PALYS, Paul Hastings LLP, Washington, DC,
Case: 20-1701 Document: 54 Page: 2 Filed: 05/24/2021
2 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
for appellee Samsung Electronics Co., Ltd. Also repre-
sented by PHILLIP W. CITROEN, STEPHEN BLAKE KINNAIRD,
NAVEEN MODI, ANDERSON TO.
MATTHEW A. SMITH, Smith Baluch LLP, Menlo Park,
CA, for appellee Google LLC. Also represented by ANDREW
BALUCH, Washington, DC.
______________________
Before LOURIE, MAYER, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
Iron Oak Technologies, LLC appeals from three final
written decisions of the Patent Trial and Appeal Board
(“Board”), each holding claim 1 of
U.S. Patent No.
5,699,275 (“the ’275 patent”) unpatentable over the prior
art. Microsoft Corp. v. Iron Oak Techs., LLC, No. IPR2019-
00106,
2020 WL 633707 (P.T.A.B. Feb. 7, 2020); Samsung
Elecs. Co. v. Iron Oak Techs., LLC (Samsung I), No.
IPR2018-01552,
2020 WL 633816 (P.T.A.B. Feb. 7, 2020);
Samsung Elecs. Co. v. Iron Oak Techs., LLC (Samsung II),
No. IPR2018-01553,
2020 WL 633822 (P.T.A.B. Feb. 7,
2020). For the reasons explained below, we affirm as to all
three decisions.
I. BACKGROUND
The ’275 patent is entitled “System and Method for Re-
mote Patching of Operating Code Located in a Mobile
Unit.” ’275 patent, at [54]. According to its specification,
software suppliers and other sellers of computer systems
often need to correct or upgrade the existing software that
their customers use.
Id. at col. 1, ll. 13–15. But common
methods of doing so in the prior art had several disad-
vantages.
Id. at col. 1, ll. 15–23. Distributing floppy disks,
for instance, was time-consuming and forced customers to
use old software while waiting for updates.
Id. at col. 1,
ll. 17–20. Providing modem support to manually upgrade
software was also time-consuming, as well as expensive
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IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 3
and prone to human error.
Id. at col. 1, ll. 20–23. And a
third prior art solution described in the specification pro-
vided patches only to remote systems at fixed locations over
a single, continuous, interactive, and bidirectional commu-
nication link. See
id. at col. 1, ll. 29–42.
To substantially reduce or eliminate the disadvantages
of prior art systems and methods for updating software, the
’275 patent provides a system for remote patching of oper-
ating code located in a mobile unit.
Id. at col. 1, ll. 46–53.
One embodiment of the system includes a communication
network, a manager host, and several mobile units.
Id. at
col. 2, ll. 60–65; col. 3, ll. 10–11, 17–23. To enhance or cor-
rect a mobile unit’s current operating code, the manager
host can transmit a patch file that defines one or more
patches in a set of discrete patch messages that are suita-
bly sized for transmission through the communication net-
work.
Id. at col. 3, ll. 42–44, 57–62. On receipt of the patch
messages, a mobile unit can verify them, merge the defined
patches with its current operating code, and switch execu-
tion to the patched operating code.
Id. at col. 3, ll. 63–66.
According to the ’275 patent, the manager host can ad-
dress patch messages to mobile units as appropriate for the
patch file, including “to one of the mobile units, to all of the
mobile units, or to a group of mobile units.”
Id. at col. 5, ll.
15–19; see
id. at col. 3, ll. 61–62; col. 4, ll. 12–20. For in-
stance, one embodiment groups five mobile units into a pair
and a trio, and the specification explains that the manager
host can address a patch message to only the group of two
mobile units. See
id. at col. 3, ll. 17–23; col. 5, ll. 20–25. By
doing so, the pair of mobile units can have a different ver-
sion of operating code than the trio of mobile units.
Id. at
col. 4, ll. 11–20.
The ’275 patent also provides a method for remote
patching of operating code located in a mobile unit.
Id. at
col. 1, ll. 62–63. According to one embodiment of the
method, as depicted by the flowchart of Figure 5, a mobile
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4 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
unit receives an initial patch message that includes a soft-
ware version.
Id. at col. 10, ll. 22–24, 33–34. The mobile
unit then compares the software version of the initial patch
message to the software version of its current operating
code.
Id. at col. 10, ll. 36–40. If the operating code’s version
is appropriate for the patch, the mobile unit proceeds to,
inter alia, check the validity of the message, create patched
operating code, and switch execution to the patched oper-
ating code. See
id. at col. 10, l. 46–col. 11, l. 42. But, if the
operating code’s version is not appropriate for the patch,
the mobile unit transmits an error message, e.g., to the
manager host.
Id. at col. 10, ll. 42–45.
The ’275 patent contains numerous system and method
claims. Only independent claim 1 is at issue on appeal:
A system for remote patching of operating code lo-
cated in a mobile unit, comprising:
a manager host operable to initiate transmission
through a wireless communication network of at
least one discrete patch message defining at least
one patch;
a first mobile unit operable to receive the at least
one discrete patch message, the first mobile unit
further operable to create patched operating code
by merging the at least one patch with current op-
erating code located in the first mobile unit and to
switch execution to the patched operating code; and
a second mobile unit operable to receive the at least
one discrete patch message, the second mobile unit
further operable to create patched operating code
by merging the at least one patch with current op-
erating code located in the second mobile unit and
to switch execution to the patched operating code;
and
wherein the manager host is further operable to ad-
dress the at least one discrete patch message such
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IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 5
that the at least one discrete patch message is
transmitted to the first mobile unit but not to the
second mobile unit.
Id. at col. 13, ll. 32–53. Although not directly at issue on
appeal, dependent claim 14 recites: “[t]he system of claim
1, wherein the manager host is further operable to address
the at least one discrete patch message such that the at
least one discrete patch message is transmitted to the first
mobile unit and to the second mobile unit.”
Id. at col. 14,
ll. 22–26.
Only one prior art reference is necessary to resolve
these appeals: Japanese Patent Application No. 05-128022
(“Sugita”). 1 Sugita describes a method of updating soft-
ware on multiple mobile communications terminals using
wireless communication. See J.A. 390 (¶ 12). Sugita’s
method has an initial stage and a final stage. See
id. In
the initial stage, updates of mobile communications termi-
nals occur “in group units.”
Id. Specifically, Sugita de-
scribes a base station that transmits update information to
each mobile communications terminal “based on the group
ID of the group unit (all units, or the unit addresses belong-
ing to a specific group).”
Id. (¶ 13); see J.A. 391 (¶ 26) (de-
scribing a one-to-many communication format using group
IDs for updating terminals “in group units”); J.A. 393
(¶ 49). In the final stage, updates occur “individually” and
by individual ID, “one at a time.” J.A. 390 (¶¶ 12–13). In
one embodiment with multiple mobile communications ter-
minals, each terminal—m1, m2, m3, m4 . . . —“targeted for
1 Consistent with MPEP § 901.05(a), both Mi-
crosoft’s and Samsung’s translations convert Sugita’s ap-
plication number to No. 1993-128022. We note that the two
translations are not entirely identical. But Iron Oak does
not identify any substantive differences between the two
translations. We refer to and quote from Microsoft’s ver-
sion.
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6 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
update[s]” is “listed up” prior to the initial stage of trans-
mitting update information by group ID. J.A. 392 (¶¶ 34–
35).
Microsoft petitioned for inter partes review of claim 1
of the ’275 patent, and Samsung and Google each filed two
additional petitions challenging that claim. The Board in-
stituted review of Microsoft’s petition and Samsung’s two
petitions and granted Google’s motions to join each of Sam-
sung’s petitions. In instituting review of Microsoft’s peti-
tion, the Board construed “wherein the manager host is
further operable to address the at least one discrete patch
message such that the at least one discrete patch message
is transmitted to the first mobile unit but not to the second
mobile unit”—the “wherein” limitation—to require the
manager host be “further operable to decide which specific
mobile unit to send the at least one discrete patch message
to before beginning transmission” of the message. Mi-
crosoft,
2020 WL 633707, at *3. The Board adopted a sub-
stantially similar construction of the limitation in
Samsung I and Samsung II. Samsung I,
2020 WL 633816,
at *4; Samsung II,
2020 WL 633822, at *3.
The Board’s final written decisions found claim 1 of the
’275 patent unpatentable over the prior art. In Microsoft,
the Board found that Sugita anticipates claim 1 of the ’275
patent.
2020 WL 633707, at *9. Two of its determinations
are pertinent to this appeal. First, the Board maintained
its construction of the wherein limitation.
Id. at *3. It
found no evidence supporting Iron Oak’s arguments that
(1) at the time of transmission of the patch message to the
first mobile unit, the second mobile unit must be in a con-
dition that it could be updated by the transmitted patch
message and (2) an already updated mobile unit cannot
constitute the claimed second mobile unit.
Id. at *4. Given
the language of claim 1 and dependent claim 14, the Board
concluded that “[t]here is nothing in claim 1 that excludes
a second mobile unit that has already created patched
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IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 7
operating code from the at least one patch message from
meeting the claim 1 wherein limitation.”
Id.
Second, the Board found that Sugita discloses the
wherein limitation in two ways: transmitting update in-
formation by group ID and by individual
ID. Id. at *7–8.
As to transmitting by group ID, the Board found that
Sugita describes sending update information to units be-
longing in a specific group.
Id. at *7. Accordingly, termi-
nals in a specified group receive the update, while
terminals not in the specified group do not.
Id. The Board
gave substantial weight to the testimony of Microsoft’s ex-
pert, Dr. White, that “update information sent to the one
or more mobile terminals using the group ID for the first
group unit would not be meant for the one or more mobile
terminals in the second group unit.”
Id. As to transmitting
by individual ID, the Board found that Sugita discloses
transmitting update information one unit at a time, to a
non-updated mobile terminal on its target list and not to
an already updated terminal or a subsequently listed ter-
minal.
Id. at *8.
In Samsung I, the Board reached the same conclusions,
rejecting Iron Oak’s same arguments about the construc-
tion of the wherein limitation and finding that Sugita an-
ticipates claim 1 of the ’275 patent.
2020 WL 633816, at
*4, 7–9. The Board gave substantial weight to the testi-
mony of Samsung’s expert, Dr. Bederson, which was sub-
stantively similar to that of Microsoft’s Dr. White. See
id.
at *7. The Board additionally found that Sugita transmits
patch messages to a group unit and not a different group
unit “to avoid the problem identified by Sugita of overload-
ing the network.”
Id. at *8. Separately, the Board held
that claim 1 was obvious over a combination of two other
prior art references: Australian Patent Application No.
77395/91 (“Ballard”) and Japanese Patent Application No.
05-66937 (“Shimizu”).
Id. at *12.
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8 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
Finally, in Samsung II, the Board held that claim 1 of
the ’275 patent was obvious over a combination of two fur-
ther prior art references:
U.S. Patent No. 5,619,412
(“Hapka”) and
U.S. Patent No. 5,442,553 (“Parrillo”).
Iron Oak timely appealed to this court. We have juris-
diction pursuant to
28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal determinations de novo. In re Stepan
Co.,
868 F.3d 1342, 1345 (Fed. Cir. 2017). A finding is sup-
ported by substantial evidence if a reasonable mind might
accept the evidence to support the finding. Nobel Biocare
Servs. AG v. Instradent USA, Inc.,
903 F.3d 1365, 1374
(Fed. Cir. 2018).
Claim construction is a question of law with underlying
questions of fact. Wasica Finance GmbH v. Continental
Automotive Sys., Inc.,
853 F.3d 1272, 1278 (Fed. Cir. 2017).
Where the intrinsic record fully governs the proper con-
struction of a term, we review the Board’s claim construc-
tion de novo.
Id. Anticipation is a question of fact. Nobel
Biocare, 903 F.3d at 1375.
On appeal, Iron Oak argues that the Board erroneously
construed the second mobile unit and wherein limitations
to include a second mobile unit that has already created
patched operating code from the patch message transmit-
ted to the first mobile unit. Iron Oak also challenges the
Board’s anticipation and obviousness determinations. To
the extent necessary to a resolution of these appeals, we
address each of Iron Oak’s arguments in turn.
A. Claim Construction
The Board correctly construed the wherein limitation
not to contain the temporal restriction that Iron Oak seeks.
At institution, the Board construed the wherein limitation
such that the “manager host is further operable to decide
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IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 9
which specific mobile unit to send the at least one discrete
patch message to before beginning transmission” of the
message. Microsoft,
2020 WL 633707, at *3. None of the
parties argued that the Board’s interpretation was im-
proper.
Id. at *3; Samsung I,
2020 WL 633816, at *4; Sam-
sung II,
2020 WL 633822, at *3. Instead, Iron Oak argued
that the second mobile unit must be in a condition where
its current operating code could be updated by the patch
message sent to the first mobile unit. Conversely, a mobile
unit whose operating code had already been updated by the
patch message could not constitute the claimed second mo-
bile unit. This is because, according to Iron Oak, at the
time of transmission of the patch message, both mobile
units must be operable to create patched operating code
from their current operating code.
The Board rejected Iron Oak’s argument as unsup-
ported by the evidence. Microsoft,
2020 WL 633707, at *4.
It explained, “[t]he claim language does not specify when
the mobile units must be ‘operable to create patched oper-
ating code’ from current operating code, only that they are
‘operable to’ do so.”
Id. Moreover, the Board found nothing
in claim 1 that excludes a second mobile unit that has al-
ready created patched operating code using the transmit-
ted patch message from meeting the wherein limitation.
Id. According to the Board, “[a] second mobile unit that is
capable of creating patched operating code in some circum-
stances still satisfies the claim.”
Id.
We agree. Claim 1 recites a second mobile unit “oper-
able to receive the at least one discrete patch message” and
“further operable to create patched operating code by merg-
ing the at least one patch with current operating code lo-
cated in the second mobile unit and to switch execution to
the patched operating code.” ’275 patent, col. 13, ll. 44–49.
Claim 1 also recites a manager host “further operable to
address the at least one discrete patch message such that
the at least one discrete patch message is transmitted to
the first mobile unit but not to the second mobile unit.”
Id.
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10 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
at col. 13, ll. 50–53. Neither of these limitations require
the second mobile unit to be able to create patched operat-
ing code at the time the manager host addresses the patch
message to the first mobile unit. Nor do these limitations
exclude a second mobile unit that has already created
patched operating code from the discrete patch message.
In sum, there is no textual basis for Iron Oak’s reading of
claim 1.
Iron Oak’s arguments based on the claim language, the
Board’s construction, dependent claims, and the specifica-
tion are unpersuasive.
First, Iron Oak argues that “the at least one discrete
patch message” and “the at least one patch” in the second
mobile unit and wherein limitations require the second mo-
bile unit to be operable to create patched operating code
when the manager host transmits the patch message to the
first mobile unit. See
id. at col. 13, ll. 44–53 (emphases
added). Not so. The claim language plainly requires the
second mobile unit to be operable to create patched operat-
ing code from the patch message that the manager host
sends to the first mobile unit. But, critically, the second
mobile unit and wherein limitations do not impose a time
frame during which the second mobile unit must be opera-
ble to create patched operating code from the transmitted
patch message. The second mobile unit simply must have
the capability of creating patched operating code with the
patch message that the manager host transmits, and the
manager host simply must have the capability of address-
ing the patch message to one mobile unit and not another.
Second, Iron Oak argues that the Board’s construction
renders meaningless the requirement that the second mo-
bile unit be “further operable to create patched operating
code by merging the at least one patch with current oper-
ating code located in the second mobile unit.” See
id. at
col. 13, ll. 45–49. We disagree. This language requires the
second mobile unit to have the capability of creating
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IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 11
patched operating code from the patch that is transmitted
to the first mobile unit. It does not require the second mo-
bile unit to have such capability after the manager host
transmits the patch message to the first mobile unit. For
this reason, it is irrelevant whether an already updated
mobile unit can “thereafter” or “again” incorporate the
transmitted patch into its operating code. See Appellant’s
Br. 22–23. Indeed, we agree with the Board that a mobile
unit that has created patched operating code from the
patch message transmitted to the first mobile unit is
clearly operable to create patched operating code from the
transmitted message, as required by the second mobile
unit limitation. See Microsoft,
2020 WL 633707, at *4.
Third, Iron Oak argues that the Board’s construction of
the wherein limitation recognizes the temporal require-
ments of claim 1. This argument also lacks merit. The
Board’s construction recognizes only that the manager host
decides to which mobile units to send the patch message
before transmitting the message. 2 But this sequence does
not implicate whether the second mobile unit (to which the
manager host did not send the message) must be able to
create patched operating code after the manager host
transmits the message to the first mobile unit. It simply
requires the manager host to decide to which mobile units
to send the at least one patch message, without constrain-
ing the reasons why the manager host does not send the
patch message to the second mobile unit.
2 We reject any attempt by Iron Oak to stretch the
Board’s claim construction to require a decision to send up-
date information to the first mobile unit and a separate de-
cision not to send update information to the second mobile
unit. The Board required the manager host only to decide
to which mobile units to send the patch message. We see
no basis in the Board’s construction or the claim language
to require a separate decision not to send.
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12 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
Fourth, Iron Oak argues that dependent claim 14 sup-
ports its construction of claim 1. According to Iron Oak,
because dependent claim 14 requires the manager host to
be operable to address the patch message to both the first
and second mobile units, claim 1 necessarily requires the
second mobile unit to be operable to create patched operat-
ing code at the time the manager host transmits the patch
message. We are unpersuaded. Claim 14’s narrower
scope—requiring both mobile units to be non-updated—
cannot serve to constrain claim 1’s broader scope—which
only requires the first mobile unit to be non-updated. See
Phillips v. AWH Corp.,
415 F.3d 1303, 1314–15 (Fed. Cir.
2005) (en banc) (“[T]he presence of a dependent claim that
adds a particular limitation gives rise to a presumption
that the limitation in question is not present in the inde-
pendent claim.”).
Fifth, Iron Oak argues that Figure 5 and its accompa-
nying text requires the second mobile unit to be operable to
create patched operating code from the transmitted patch
message when the manager host transmits that message
to the first mobile unit. This argument fails. Figure 5 and
its accompanying text relate to a method of remote patch-
ing operating code and not a system. Moreover, even if Fig-
ure 5 contemplates checking a mobile unit’s operability to
create patched operating code after receiving a patch mes-
sage, the claim language of claim 1 does not. See Super-
Guide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875
(Fed. Cir. 2004) (“Though understanding the claim lan-
guage may be aided by the explanations contained in the
written description, it is important not to import into a
claim limitations that are not a part of the claim.”).
Finally, Iron Oak argues that the Board erroneously
relied on ParkerVision, Inc. v. Qualcomm Inc.,
903 F.3d
1354 (Fed. Cir. 2018). We see no error. In ParkerVision,
we held that “a prior art reference may anticipate or render
obvious an apparatus claim—depending on the claim lan-
guage—if the reference discloses an apparatus that is
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IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 13
reasonably capable of operating so as to meet the claim lim-
itations, even if it does not meet the claim limitations in all
modes of operation.”
Id. at 1361. The Board correctly re-
lied on ParkerVision to find that a second mobile unit that
is capable of creating patched operating code in some cir-
cumstances—i.e., an already updated second mobile unit—
still satisfies claim 1 of the ’275 patent. See Microsoft,
2020
WL 633707, at *4. We find no basis for Iron Oak’s conten-
tion that the second mobile unit’s operability to create
patched code is a “structure” and are unpersuaded by its
attempt to distinguish the case. See Appellant’s Br. 25.
For these reasons, we hold that the Board correctly rejected
the temporal restrictions that Iron Oak seeks.
B. Invalidity
Substantial evidence supports the Board’s conclusion
that Sugita anticipates claim 1 of the ’275 patent. A prior
art reference must disclose every limitation of the claimed
invention, either explicitly or inherently, to anticipate. Te-
lemac Cellular Corp. v. Topp Telecom, Inc.,
247 F.3d 1316,
1327 (Fed. Cir. 2001).
Iron Oak’s sole challenge to the Board’s findings on
Sugita is that Sugita does not disclose the wherein limita-
tion. The Board found that Sugita discloses this limitation
in two ways. First, Sugita transmits update information to
units belonging to a specific group. Microsoft,
2020 WL
633707, at *7. In this way, terminals in a specified group
(i.e., a first mobile unit) receive the update, while units not
in the specified group (i.e., a second mobile unit) do not.
Id.
Second, Sugita describes performing updates one unit at a
time.
Id. at *8. In other words, Sugita’s base station trans-
mits update information to an individual terminal on the
list of update targets (i.e., a first mobile unit) and not to a
successfully updated terminal or a terminal later on the list
(i.e., a second mobile unit).
Id.
Substantial evidence supports the Board’s finding that
Sugita’s use of group ID to transmit update information
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14 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
teaches the wherein limitation. Sugita explains that, in
the initial stage, its base station transmits the update in-
formation to each mobile communications terminal “based
on the group ID of the group unit (all units, or the unit ad-
dresses belonging to a specific group).” J.A. 390 (¶ 13) (em-
phasis added). Sugita reiterates that, “in the initial stage
of updating, multiple communication terminals are up-
dated in group units.” J.A. 391 (¶ 15) (emphasis added);
accord J.A. 393 (¶ 49). According to Dr. White, a skilled
artisan would recognize that this disclosure of multiple
“group units” means that “one or more mobile terminals
belong to different group units.” J.A. 384 (¶ 151). Dr.
White further testified that “update information sent to the
one or more mobile terminals using the group ID for the
first group unit would not be meant for the one or more
mobile terminals in the second group unit.”
Id. He con-
cluded that update information transmitted to the first
group ID is “transmitted to the first mobile unit but not the
second mobile unit,” as claimed.
Id. In view of Sugita’s
disclosures and Dr. White’s testimony, the Board reasona-
bly found that Sugita teaches the wherein limitation. 3
We see no reversible error in the Board’s analysis.
First, Iron Oak argues that “Sugita teaches an all or noth-
ing system and method,” where “every mobile terminal ca-
pable of being updated will be sent the update.”
Appellant’s Br. 26–27. But Iron Oak’s argument contra-
dicts Sugita’s express disclosure that it sends update infor-
mation to terminals “based on the group ID of the group
unit (all units, or the unit addresses belonging to a specific
group).” J.A. 390 (¶ 13) (emphasis added). Sugita plainly
3 Substantial evidence similarly supports the
Board’s finding in Samsung I that Sugita anticipates claim
1 in view of Sugita’s disclosures and Dr. Bederson’s sub-
stantially similar testimony.
2020 WL 633816, at *7–9; see
J.A. 895 (¶ 101), 1163 (¶ 13).
Case: 20-1701 Document: 54 Page: 15 Filed: 05/24/2021
IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION 15
contemplates updating mobile communications terminals
“in group units.” J.A. 391, 393 (¶¶ 15, 49). It is therefore
irrelevant that Sugita lists all mobile terminals targeted
for update or that there is no terminal “mn” that is excluded
from the list. See Appellant’s Br. 27. Iron Oak at most
shows that all mobile terminals eventually receive update
information in the initial stage. But such a showing does
not undercut the Board’s finding that Sugita can send up-
date information to terminals on its target list in a specific
group and not to terminals on its target list in another
group. 4 See Microsoft,
2020 WL 633707, at *7–8.
Second, Iron Oak misconstrues Dr. White’s testimony
that update information sent to terminals in a first group
unit “would not be meant for” terminals in a second group
unit. See Appellant’s Br. 29–30, 29 n.5. According to Iron
Oak, Sugita’s update information is meant for terminals in
both group units because all of the terminals are on
Sugita’s list of terminals to be updated. But the Board rea-
sonably understood Dr. White’s testimony to mean “update
information transmitted to the first group ID is ‘transmit-
ted to the first mobile unit but not to the second mobile
unit.’” Microsoft,
2020 WL 633707, at *7. In this way, the
update information is “meant for”—i.e., transmitted to—
the first group unit and not the second group unit.
For these reasons, we hold that substantial evidence
supports the Board’s finding that Sugita’s use of group ID
to update terminals teaches the claimed wherein
4 Iron Oak contends that the Board confused the mo-
bile units’ operability to receive updates with the manager
host’s operability to decide to which units to send the up-
dates. The Board did not misunderstand claim 1. Rather,
the fact that terminals in a specific group (and not termi-
nals in another group) receive the update demonstrates
that Sugita’s base station decides to which mobile units to
send the updates.
Case: 20-1701 Document: 54 Page: 16 Filed: 05/24/2021
16 IRON OAK TECHNOLOGIES, LLC v. MICROSOFT CORPORATION
limitation. We therefore need not reach the Board’s finding
on Sugita’s use of individual IDs. And because we hold that
substantial evidence supports the Board’s finding that
Sugita anticipates claim 1 of the ’275 patent, we need not
reach the Board’s conclusions on obviousness over Ballard
and Shimizu in Samsung I or obviousness over Hapka and
Parrillo in Samsung II.
III. CONCLUSION
We have considered Iron Oak’s remaining arguments
and find them unpersuasive. For the reasons discussed
above, we affirm.
AFFIRMED
